SIDDARTHA INSTITUTE OF SCIENCE AND TECHNOLOGY

PUTTUR
(AUTONOMOUS)

INTELLECTUAL PROPERTY RIGHTS

(20HS0814)

Academic Year : 2022-23

Year /Sem: III/II

By
Dr.C.Gangaiah Yadav
&
Mr.K.Sandeep Kumar

1
COURSE OBJECTIVES

1. To provide an understanding of the concept and significance of

intellectual property rights
2. To understand the concept of trademarks, copy rights, patents
and the need for their protection
3. To comprehend the concept of competition, unfair competition
and the latest developments in the
laws pertaining to intellectual property rights
COURSE OUTCOMES (COs)

1. Become aware of intellectual property rights, concepts, treaties,

agencies and international organizations involved in sanctioning IP
rights
2. Identify different types of intellectual properties, ownership rights
and the scope of the protection
3. Get an adequate knowledge on patents, trademarks, copy rights and
to get property rights for their intellectual work
4. Able to identify, apply, and assess ownership rights, registration
processes for IP rights
5. To discern the approaches for intellectual property management and
intellectual property audits
6. Demonstrate knowledge and understanding on unfair competition
and latest developments in IP rights at international level
 SYLLABUS
UNIT-I
INTRODUCTION TO INTELLECTUAL PROPERTY: Introduction, types of intellectual property,
international organizations, agencies and treaties, importance of intellectual property rights.
UNIT-II
TRADE MARKS: Purpose and function of trademarks, acquisition of trade mark rights, protectable matter,
selecting and evaluating trade mark, trade mark registration processes.
UNIT-III
LAW OF COPY RIGHTS: Fundamental of copy right law, originality of material, rights of reproduction,
rights to perform the work publicly, copy right ownership issues, copy right registration, notice of copy
right, international copy right law.
LAW OF PATENTS: Foundation of patent law, patent searching process, ownership rights and transfer
UNIT-IV
TRADE SECRETS: Trade secrete law, determination of trade secrete status, liability for misappropriations
of trade secrets, protection for submission, trade secretlitigation.
UNFAIR COMPETITION:
Misappropriation right of publicity, False advertising.
UNIT-V
NEW DEVELOPMENT OF INTELLECTUAL PROPERTY: new developments in trade mark law;
copy right law, patent law, intellectual property audits –International overview on intellectual property,
international - trade mark law, copy right law, international patent law, international development in trade
secrets law.
 UNIT 1
INTRODUCTION TO INTELLECTUAL
PROPERTY
 SYLLABUS

 Introduction
 Types of intellectual property
 International organizations, agencies and treaties,
 Importance of intellectual property rights.
Introduction
Types of intellectual property
 Trade Secrets

A trade secret consists of any valuable business information. The business secrets are not
to be known by the competitor. There is no limit to the type of information that can be
protected as trade secrets; For Example: Recipes, Marketing plans, financial
projections, and methods of conducting business can all constitute trade secrets. There is
no requirement that a trade secret be unique or complex; thus, even something as simple
and nontechnical as a list of customers can qualify as a trade secret as long as it affords
its owner a competitive advantage and is not common knowledge.
Protection of Trade Secrets: Although trademarks, copyrights and patents are all

subject to extensive statutory scheme for their protection, application and

registration, there is no federal law relating to trade secrets and no formalities are
required to obtain rights to trade secrets. Trade secrets are protectable under various
state statutes and cases and by contractual agreements between parties. For
Example: Employers often require employees to sign confidentiality agreements in
which employees agree not to disclose proprietary information owned by the
employer.
INTERNATIONAL ORGANIZATIONS, AGENCIES AND
TREATIES

There are a number of International organizations and agencies that promote the use
and protection of intellectual property. Although these organizations are discussed in
more detail in the chapters to follow, a brief introduction may be helpful:

1.4.1 International Trademark Association (INTA) is a not-for-profit international

association composed chiefly of trademark owners and practitioners. It is a global
association. Trademark owners and professionals dedicated in supporting trademarks
and related IP in order to protect consumers and to promote fair and effective commerce.
More than 4000 (Present 6500 member) companies and law firms more than 150
(Present 190 countries) countries belong to INTA, together with others interested in
promoting trademarks.
1.4.2 World Intellectual Property Organization (WIPO) was founded in 1883 and
is specialized agency of the United Nations whose purposes are to promote
intellectual property throughout the world and to administer 23 treaties (Present 26
treaties) dealing with intellectual property. WIPO is one of the 17 specialized
agencies of the United Nations. It was created in 1967, to encourage creative activity,
to promote the protection of Intellectual Property throughout the world. More than
175 (Present 188) nations are members of WIPO. Its headquarters in Geneva,
Switzerland, current Director General of WIPO is Francis Gurry took charge on
October 1, 2008. The predecessor to WIPO was the BIRPI [Bureaux for the
Protection of Intellectual Property] it was established in 1893. WIPO was formally
created by the convention (meeting) establishing the world intellectual Property
organization which entered into force on April 26 1970.
1.4.3 Berne Convention for the Protection of Literary and Artistic Works (the Berne
Convention) An International copyright treaty called the convention for the protection of
Literary and Artistic works signed at Berne, Switzerland in 1886 under the leadership of
Victor Hugo to protect literary and artistic works. It has more than 145 member nations.

1.4.4 Madrid Protocol It is a legal basis multilateral treaties Madrid (it is a city situated
in Spain) Agreement concerning the International Registration of Marks of 1891, as well
as the protocol relating to the Madrid Agreement 1989. The Madrid system provides a
centrally administered system of obtaining a bundle of trademark registration in separate
jurisdiction. The protocol is a filing treaties and not substantive harmonization treaty. It
provides a cost-effective and efficient way for trademark is the holder. It came into
existence in 1996. It allows trademark protection for more than sixty countries, including
all 25 countries of the European Union.
 THE IMPORTANCE OF INTELLECTAL PROPERTY RIGHTS

Protecting Intellectual Property Rights

Technology has led to increase awareness about the IP
Some individuals and companies offer only knowledge. Thus, computer
consultant, advertising agencies, Internet companies, and software
implementers sell only brain power.
Domain names and moving images are also be protected
More than fifty percent of U.S. exports now depend on some form of
intellectual property protection.
The rapidity with which information can be communicated through the
Internet has led to increasing challenges in the field of intellectual property.
REFERENCES

 Intellectual property right, Deborah, E. Bouchoux, cengage learning

 Intellectual property rights: Protection and Management. India, Nityananda KV,
Cengage Learning India Private Limited..
 Intellectual property right - Unleashing the knowledge economy, Prabuddha
ganguli, Tata McGraw Hill Publishing CompanyLtd.
 Law relating to Intellectual Property rights. India. Ahuja VK IN: Lexis Nexis
 Intellectual Property Rights, India. Neeraj P &Khushdeep D, PHI learning pvt
limited.
Web REFERENCES

1. https://www.youtube.com/watch?v=eudMbGz9Umc&t=32s&ab_channel=Fort

ifySolutions

2. www.google.com

3. www.wikipedia.com

4. www.studymafia.org

5. www.pptplanet.com
 UNIT 2
TRADE MARKS
 SYLLABUS

 Purpose and function of trademarks

 Acquisition of trade mark rights

 Protectable matter

 Selecting and evaluating trade mark

 Trade mark registration processes

DEFINITION OF TRADEMARK

The modern definition of trademark is that “it is a word, name, symbol, or device or a
combination thereof, used by a person [including a business entity], or which a
person has a bonafide intention to use, to identify and distinguish his or her goods
from those manufactured by others and to indicate the source of those goods.”
PURPOSE AND FUNCTION OF TRADEMARKs

Trademarks perform two critical functions in the marketplace: [1] They provide assurance that
goods are of a certain quality and consistency, and [2] They assist consumers in making
decisions about the purchase of goods. The main purpose of trademark is to show the
difference about the quality of goods and service. For example: If a trademark such as NIKE
could be counterfeited (imitating) and used by another on inferior merchandise (goods), there
would be no incentive for the owners of the NIKE mark to produce high-quality shoes and to
expend money establishing consumer recognition of the products offered under the NIKE
marks.
Thus, protection of trademarks results in increased completion in the marketplace, with both
the producer of goods and services and the consumer as the ultimate beneficiaries. Business
benefit because they can reap the rewards of their investment in developing and marketing a
product with one fearing another business will deceive consumer by using the same or a
confusingly similar mark for like goods, and consumers benefit because they are able to
identify and purchase desired and quality goods.
ACQUISITION OF TRADE MARK RIGHTS

In most foreign countries, trademark rights arise from registering the mark with a
governmental entity. The law in the United States is quite different: trademark rights arise
from adoption and use of a mark. A person using a mark may have valid and enforceable
rights in a mark even though the mark is not registered with the PTO, such an owner will
have priority even over a subsequent user who has secured a federal registration for a mark
with the PTO. The “use” required to establish trade mark rights is more than token use, it
must be public use, while actual sales of products or services are not required, a certain level
of presale activity is required. For example: Sales within a company or to personal friends
are insufficient to show use, while soliciting [plead for something] and accepting order is
usually sufficient to show commercial use. Thus, a person using a mark may have valid and
enforceable rights in a mark even though the mark is not registered with the PTO. Such an
owner will have priority even over a subsequent user who has secured a federal registration
for a mark with the PTO.
PROTECTABLE MATTER

Slogans, Letters and Numbers: A word or other groupings of letters is the most
common type of mark For Examples: APPLE, SILICON, GRAPHICS, NETSCAPE,
IBM, and NBC. Slogans from advertising campaigns are also used as trademarks.
Example slogans which have strong trademark rights given in Figure
Logos and Symbols: Logos are probably the next most common form of mark. A logo
can be described as a design which becomes a mark when used in close association with
the goods or services being marketed. The logo mark does not need to be elaborate; it
need only distinguish goods and services sold under the mark from other goods and
services. Examples of logo marks are:

McDonald's double arches:

SELECTING AND EVALUATING A TRADEMARK

Selecting a Mark
The selection of mark occurs in a variety of ways.
Companies hold contests and encourages employees to create a mark for
a new product line or service
Companies engage sophisticated research
Branding firms that will conduct surveys and create a mark and a logo
or design for the company.
There are name creation software programs that help individuals and
companies create marks
 Reviewing a Proposed Mark

Once a mark is selected, it should be carefully scrutinized to ensure that it will not be
excluded from protection under the Lanham Act.

 Firstly they have check whether the mark contains scandalous (giving offence to
moral sensibilities and injurious to reputation)
 Whether consent from a living person will be required,

 Whether the mark is generic,

 Whether it is statutorily protected

 Whether the mark is descriptive of some feature of the goods and services offered
under the mark,

 It also see that the mark includes foreign terms

 Many law firms specializing in trademark work use a questionnaire form or data
sheet to gather questionnaire form or data sheet to gather basic information from
clients about their marks
TRADEMARK REGISTRATION PROCESSES

Preparing the application

Once a mark has been selected and evaluated for use and registrability, an
application for federal registration of the /mark should be prepared and filed.
An application is provided by PTO
The name of the applicant
The citizenship of the applicant
The address of the applicant
The address of the applicant
An identification of the goods and or services offered under the mark
A drawing of the mark
A verification or declaration signed by the applicant or agent or attorney
 Registration

 A registration will issue about twelve weeks after publication in the official
gazette

 If no notice of opposition is filed to the application

 For an ITU [Intent-to-Use] application registration will occur after publication in

the official Gazette.
 The PTO will issue a certificate of registration for the mark

 The term of the registration is presently ten years from the date the mark is
registered [for registration issued before November 16, 1989, the term is twenty
years]
 “TM” for Trademark & SM for service mark.
REFERENCES

 Intellectual property right, Deborah, E. Bouchoux, cengage learning

 Intellectual property rights: Protection and Management. India, Nityananda KV,
Cengage Learning India Private Limited..
 Intellectual property right - Unleashing the knowledge economy, Prabuddha
ganguli, Tata McGraw Hill Publishing CompanyLtd.
 Law relating to Intellectual Property rights. India. Ahuja VK IN: Lexis Nexis
 Intellectual Property Rights, India. Neeraj P &Khushdeep D, PHI learning pvt
limited.
Web REFERENCES

1. https://www.youtube.com/watch?v=j2u-7ESS1hU&ab_channel=TGAgri

2. www.google.com

3. www.wikipedia.com

4. www.studymafia.org

5. www.pptplanet.com
 UNIT 3
LAW OF COPY RIGHTS
 SYLLABUS
 Fundamental of copy right law
 Originality of material
 Rights of reproduction
 Rights to perform the work publicly
 Copy right ownership issues
 Copy right registration
 Notice of copy right
 International copy right law
 LAW OF PATENTS: Foundation of patent law
 Patent searching process
 Ownership rights and transfer
FUNDAMENTALS OF COPYRIGHT

What is a Copyright?

 Copyright is a form of protection provided by U.S. Law to the authors of

“Original Works of Authorship” fixed in any tangible medium of expression.
 The manner and medium of fixation are virtually unlimited.

 Creative expression may be captured in words, number, notes, sounds, pictures

or any other graphic or symbolic media.
 The subject matter of copyright is extremely broad, including literary, dramatic,
musical, artistic, audiovisual and architectural works.
 Copyright protection is available for both published and unpublished works.
History
• In England prompted the first insistence upon protection for publication of books
Bookbinders and printers demanded protection from copying of books.
• Authors also began to demand protection from unauthorized copying and demanded to
share in the financial rewards
• Finally, in 1710, parliament enacted the first copyright statute [Act/law], the Statute of
Anne [Named after Anne, Queen of Great Britain, the Statute become the foundation for
British and American Copyright Law]
Common Law Right
 The enacted the first copyright act in 1790 and the first federal copyright
registration were issued.
 Until January1, 1978 [the effective date of the 1976 copyright Act] the U.S had a
dual system of copyright protection.
 Until 1978, an author has a perpetual common law right to their unpublished works.
 Once the work was published, however, the common law perpetual copyright was
extinguished and protection was afforded by virtue [quality] of the 1909 act, provide
protection up to fifty-six years.
ORIGINALITY OF MATERIAL

Introduction
The limits of copyright ability are dictated [command] by federal statute
According to 17 U.S.C § 102, copyright protection exists in original works [tangible
medium]
Thus, there are three basic requirements for copyright ability:
1. A work must be original
2. A work must be fixed in a tangible form of expression; and 3. A work must be a work
of authorship
Originality of Material
To be eligible for copyright protection
Material must be original
Meaning
Independently created
Possess a modicum of creativity
It should not confused with novelty, worthiness or aesthetic [dealing with beauty]
appeal
“Originality” thus does not mean “first”, it merely means “independently created”,
A slight amount of “creative spark”.
 RIGHTS OF REPRODUCTION

 The most fundamental of the rights granted to copyright owners is the right to
reproduce the work
 A violation of the copyright act occurs whether or not the violator profits by the
reproduction

 Only the owner has the right to reproduce the work

 Secretly taping a concert, taking pictures at a performance, or recording all violate

the owner’s right to reproduce
 The suggestion of congress, in 1978 a group of authors, publishers and users
established a not-for-profit entity called Copyright Clearance Center [CCC]
RIGHTS TO PERFORM THE WORK PUBLICLY

 Section 106 [5] of the Copyright Act provided that

 In the case of all copyrighted works other than sound recording & works of
architecture, the copyright owner has the exclusive right to display the work publicly.
 A display is “public” under the same circumstances in which a performance is
“public”.

 Namely if it occurs at a place open to the public (or) at a place where a substantial
number of persons outside of the normal circle of a family.
COPYRIGHT OWNERSHIP ISSUES [17 U.S.C. § 201(a)]
 Copyright in a work protected under the copyright act vests [provide
with power and authority] in the author or authors of the work
 Issues about ownership arise when more than one person creates a
work
Ownership of a physical object is separate and distinct
from ownership of the copyright embodied in the material
object

 Unless copyright has been explicitly conveyed with those physical articles, the
original authors generally retain all other rights associated with the works.
COPYRIGHT REGISTRATION

 A work is “created” when it is fixed in a copy or phonorecord for the first

time.

 Although not required to provide copyright protection for a work, registration

of copyright with the Copyright Office in expensive, easy and provides several
advantages, chiefly, that registration is a condition precedent for bringing an
infringement suit for works of US origin.
 To register a work, the applicant must sent the following three elements to the
Copyright Office: a properly completed application form, a filing fee, and a
deposit of the work being registered.
 Registration may be made at any time within the life of the copyright.
NOTICE OF COPYRIGHT
 Since March 1, 1989 (the date of adherence by the United States to the Berne
Convention), use of a notice of copyright (usually the symbol © together with the
year of first publication and copyright owner‟s name) is no longer mandatory,
although it is recommended and offers some advantages.
 Works published before January 1, 1978, are governed by the 1909 copyright Act.
 Under that act, if a work was published under the copyright owner‟s authority
without a proper notice of copyright, all copyright protection for that work was
permanently lost in the United States.
INTERNATIONAL COPYRIGHT LAW
 Developments in technology create new industries and opportunities for reproduction
and dissemination of works of authorship.
 A number of new issues have arisen relating to the growth of electronic publishing,
distribution, and viewing of copyrighted works.
 Along with new and expanded markets for works comes the ever-increasing challenge
of protecting works form piracy or infringement.
Copyright protection for computer programs
Copyright protection for Automated Databases
Copyright in the Electronic Age
The Digital Millennium Copyright Act
FOUNDATION OF PATENT LAW
 The work Patent is a shorthand expression for “letters patent”
 A Patent is a grant from the U.S. government to exclude others from making, using, or
selling another person’s new, nonobvious, and useful invention in the United States for
 the term of patent protection.
 It is protected for 20 years
 Under patent law, inventors can enjoin the making, using or selling of an infringing
invention even if it was independently created.
 A Patent allows its owner to exclude others from using the owner’s invention; it does
not provide any guarantee that the owner can sell the invention.
PATENT SEARCHING PROCESS

The Need for a Search:

Patentability requires novelty and non-obviousness.

The patentability search, sometimes called a novelty search

A search is recommended to determine the feasibility of obtaining a patent.

A novelty search is somewhat limited in scope and is designed to disclose whether an

application will be rejected on the basis of lack of novelty or obviousness.

A novelty search can usually be completed for less than $1,000.

OWNERSHIP RIGHTS

 Patents are items of personal property and thus may be owned, sold, licensed, or
devised by will.
 Applications for patent must be filed by the actual inventor of the article, process,
design, or plant.
 If there is more than one inventor, the application must be signed by all inventors.

 In many instance, employees are required to sign agreements with their employers
whereby they agree that any invention or discovery invented by them while on the
job will belong to the employer and that they will agree to assist and cooperate in
any manner, including signing applications for patents, to ensure the employer’s
rights are protected
 Although the oath in the patent application is signed by the individual inventor,
when the application is filed, a simultaneous assignment is also filed identifying
the employer as the “true” owner of the application and the invention.
OWNERSHIP TRANSFER
 As objects of intellectual property or intangible assets, patents and patent
applications may be transferred.
 A transfer of patent or patent application can be the result of a financial transaction,
such as an assignment, a merger, a takeover or a demerger, or the result of an
operation of law, such as in an inheritance process, or in a bankruptcy.
 The rationale behind the transferability of patents and patent applications is that it
enables inventors to sell their rights and to let other people manage these intellectual
property assets both on the valuation and enforcement fronts. As The Economist put
it,
 "Patents are transferable assets, and by the early 20th century they had made it
possible to separate the person who makes an invention from the one who
commercializes. This recognized the fact that someone who is good at coming up
with ideas is not necessarily the best person to bring those ideas to market.”
REFERENCES

 Intellectual property right, Deborah, E. Bouchoux, cengage learning

 Intellectual property rights: Protection and Management. India, Nityananda KV,
Cengage Learning India Private Limited..
 Intellectual property right - Unleashing the knowledge economy, Prabuddha
ganguli, Tata McGraw Hill Publishing CompanyLtd.
 Law relating to Intellectual Property rights. India. Ahuja VK IN: Lexis Nexis
 Intellectual Property Rights, India. Neeraj P &Khushdeep D, PHI learning pvt
limited.
Web REFERENCES

1. https://www.youtube.com/watch?v=AsiOdzolv1o&ab_channel=Shanmugapri

yaThangavelu

2. www.google.com

3. www.wikipedia.com

4. www.studymafia.org

5. www.pptplanet.com
 UNIT 4
TRADE SECRETS
 SYLLABUS

 Trade secrete law

 Determination of trade secrete status

 Liability for misappropriations of trade secrets

 Protection for submission

 Trade secrete litigation.

 UNFAIR COMPETITION: Misappropriation right of

publicity
 False advertising.
TRADE SECRETE LAW
 The type of information that must be kept confidential in order to retain
its competitive advantage is generally called a “Trade Secret”
 A trade secret is any information that can be used in the operation of a
business or other enterprise that is sufficiently valuable and secret to
afford an actual or potential economic advantage over others.
 Restatement (Third) of Unfair Competition § 39 (1995).
 A recipe, a formula, a method of conducting business, a customer list, a
price list, marketing plans, financial projection, and a list of targets for a
potential acquisition can all constitute trade secrets.
 Generally, to qualify for trade secret protection, information must
be valuable;
not be publicly known; and
be the subject of reasonable efforts to maintain its secrecy
DETERMINATION OF TRADE SECRET STATUS

Restatement of Torts (a wrongful act or an infringement of a right) §757 cmt.b

lists six factors to be considered in determining whether information qualifies as a
trade secret. Courts routinely examine these factors to determine whether a
company’s information constitutes a trade secret.

The extent to which the information is known outside the

company
 Although information may be known to other outside the company
and still qualify as a trade secret, the greater the number of people
who know the information, the less likely it is to qualify as a trade
secret.
 Secrecy need not be absolute.
LIABILITY FOR MISAPPROPRIATION OF TRADE SECRETS

Misappropriation of a trade secret occurs when a person possesses, discloses, or

uses a trade secret owned by another without express or implied consent and
when the person

 Used improper means to gain knowledge of the trade secret;

 Knew or should have known that the trade secret was acquired by
improper means; or
 Knew or should have known that the trade secret was acquired under
circumstances giving rise to a duty to maintain its secrecy.
PROTECTION FOR SUBMISSION

Submission to Private Parties

In may instance individuals wish to submit an idea for an invention, process, game,
or entertainment show to a company or business in the hope that the company or
business in the hope that the company will market and develop the idea and the
individual will be compensated for the idea?

Idea submission disputes frequently arise in the entertainment industry. In oen

case an individual claimed that the producers of the Cosby Show (American
comedian) misappropriated her idea for a television program portraying a
wholesome and loving African American family. A court held there were no
people and the idea was so general as to lack the element of concreteness to be
protectable.
Submission to Government Agencies
 Private companies that present bids to government agencies in the hope of obtaining
a government contract are often required to disclose confidential or trade secret
information to the agency.
 Under freedom of information act (both at the state and federal levels), the proposal
might later be released to any member of the public requesting the document, thus
resulting in loss of confidential information to possible competitors.
 The protected information is usually blocked out.
 If a government agency discloses trade secret information, the owner may have a
cause of action for an unconstitutional taking of private property and may be awarded
compensation if the owner had a reasonable expectation of confidentiality.
TRADE SECRET LITIGATION
 If a trade secret is disclosed in violation of a written confidentially agreement, and
the parties cannot resolve the dispute themselves, an action for breach of contract
may be brought, similar to any other breach of contract action.
 The plaintiff may add other causes of action as well, for example, for
misappropriation in violation of a state trade secret law. If no written agreement
exists, the plaintiff must rely upon case law or state statutes protecting trade
secrets, or both.
 To protect itself against a lawsuit by another alleging trade secret violation,
companies should require new employees who will have access to confidential
information to acknowledge in writing that accepting employment with the new
company does not violate any other agreement or violate any other obligation of
confidentiality to which the employee may be subject.
 UNFAIR COMPETITION

MISAPPROPRIATION
 The doctrine of misappropriation first arose in International News Service V.
Associated Press, 248 U.S. 215 (1918), in which the Supreme Court held that an
unauthorized taking of another’s property, in that case, news information, that it
invested time and money in creating was actionable as misappropriation of property.
 In INS, news information originally gathered by the Associated Press relating to
World
 War I was pirated by International News Service and sold to its customers.
 Because the news itself, as factual matter, could not be copyrighted, the plaintiff
could not sue for copyright infringement.
 Instead it alleged that its valuable property right had been taken or misappropriated
by the defendant.
RIGHT OF PUBLICITY

 The right of publicity gives individuals, not merely celebrities, the right to
control commercial used of their identities or personas.
 The right of publicity protects a commercial interest, the vast majority of cases
involve celebrities inasmuch as they can readily show economic harm when their
names, photographs, or identities are used to sell products or suggest a sponsorship
of merchandise.
 Publicity rights are governed by state law.
 The right of publicity has evolved from the right of privacy, which protected
against unreasonable invasions upon another person’s solitude and provided
remedies for the disclosure of private information.
FALSE ADVERTISING

In 1943, the federal trademark law, the Lanham Act, was passed.
Section 43(a) of the act (15 U.S.C. § 1125) prohibited false designations of
origin, namely, descriptions or representations tending falsely to describe or
represent goods or services.
It was not an effective vehicle to use when a party made misrepresentations
relating to the nature or quality of goods or services.
Moreover, until the passage of the Lanham Act, Plaintiffs, an element that was
often difficult to demonstrate.
Although the individual states enacted statutes prohibiting false advertising,
these statutes varied from state to state and were often ineffective to prohibit false
advertising that was national in scope.
REFERENCES

 Intellectual property right, Deborah, E. Bouchoux, cengage learning

 Intellectual property rights: Protection and Management. India, Nityananda KV,
Cengage Learning India Private Limited..
 Intellectual property right - Unleashing the knowledge economy, Prabuddha
ganguli, Tata McGraw Hill Publishing CompanyLtd.
 Law relating to Intellectual Property rights. India. Ahuja VK IN: Lexis Nexis
 Intellectual Property Rights, India. Neeraj P &Khushdeep D, PHI learning pvt
limited.
Web REFERENCES

1. https://www.youtube.com/watch?v=4JM5oTNwg74&ab_channel=btechcsetut

orial

2. www.google.com

3. www.wikipedia.com

4. www.studymafia.org

5. www.pptplanet.com
 UNIT 5
NEW DEVELOPMENT OF INTELLECTUAL
PROPERTY
 SYLLABUS

 New developments in Trademark law

 New developments in Copyright law

 New developments in Patent law

 Intellectual property audits

 International overview on intellectual property

 International Trademark law

 International Copyright law

 international Patent law

 International development in trade secrets law.

NEW DEVELOPMENT IN TRADE MARKS LAW

The Internet
 Trademark owners throughout the world are struggling with new issues presented
by increased electronic communication, primarily that occurring through the
Internet.
 The Internet derives from a network set up in the 1970s by the Department of
Defense to connect military and research sites that could continue to communicate
even in the event of nuclear attract.
 In the 1980s, the National Science Foundation expanded on the system, and its
first significant users were government agencies and universities.
 In the early1990s, however, it became apparent that the system could provide a
global communication network, allowing people from all over the world to talk
with each other; send written messages, pictures, and text to each other; and
establish web pages to advertise their ware and provide information to their
customers.
• Assignment of Domain Names

• Internet Corporation for Assigned Names and Numbers [ICANN]

• Protecting a Domain Name

NEW DEVELOPMENT IN COPYRIGHT LAW
 While acknowledging that clothing is a useful article and thus not subject to
copyright protection, a New York Federal court ruled that lace design, copyrighted
as writing and incorporated into wedding dresses, were protectable and enjoined
another maker of wedding dresses from making or marketing copies. Similarly,
detailed embroiders or some other two dimensional drawing or graphic work
affixed to a portion of a garment may be copyrightable.
 A federal court in California recently held that while type fonts themselves are not
protectable under copyright law, a software program that generated and created the
typefaces was protectable.
NEW DEVELOPMENT IN PATENT LAW

The patent Act has proven remarkably flexible in accommodating changes and
development in technology. Thus advisement in technology generally has not
necessitated changes in the stately governing patent protection.

Business method and software patent

Biotechnology patent

American Investors Protection Act of 1999 [AIPA]

Introduction of International Patent protection

The European patent organization

INTELLECTUAL PROPERTY AUDITS

Many companies believe that copyright extends only to important literary

works and therefore fail to secure protection for their marketing brochures or
other written materials. Similarly, companies often fail to implement measures
to ensure valuable trade secrets maintain their protectability. Because clients
are often unaware of the great potential and value of this property, law firms
often offer their clients an intellectual property audit to uncover a company’s
protectable intellectual property. The IP audit is analogous to the accounting
audit most companies conduct on an annual basis to review their financial
status.

Conducting the Audit

International Overview on Intellectual Property Rights
International Property Rights Index Rankings
The image associated with this blog post is a map of IP rights for each country. The
lighter shades of blue are better scores while the dark shades of blue are worse
scores on the index. The top 5 countries for IP rights according to the index are:
1. Finland
2. Switzerland
3. Singapore
4. New Zealand
5. Japan
The U.S. is ranked 13th, and right above the U.S. is Austria and below is Canada.
China is ranked 49th, and directly above China is Slovenia and below is Latvia.
INTERNATIONAL TRADEMARK LAW

INTERNATIONAL TRADEMARK PROTECTION

A trademark is registered for the territory in which the respective trademark office is
based. Trademarks are territorial and must be filed in each country where protection is
sought. Protection of a trademark can be granted on a national basis, but can also be
subject to the territorial extension to the European Union. This grant of protection is
handled by the EUIPO = European Union Intellectual Property Office. Where opposition
is entered against a registration within the opposition period, and if the refusal leads to a
decision to refuse protection of the mark in one of the member states, the application will
be rejected entirely. The applicant would have the option to claim priority of previous
applications of a union trademark by applying again for registration in every other
country and pay the official fees.
INTERNATIONAL COPYRIGHT LAW
 Based on treaties
 Attempts to ensure uniformity among member states
Creators and users of copyrighted works should be aware of the differences in
intellectual property law between nations.
Many works are now distributed internationally or use components from authors in
other nations.
No international copyright law exists that will protect a work in every country of the
world. However, several key international treaties that the US has signed protects works
from and within member nations.
Determine international protection
To determine the protection that a work has within a country that has not signed a treaty,
of which the US is a member, you will need to consider the copyright laws of that
nation.
INTERNATIONAL PATENT LAW
The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded
in 1970. It provides a unified procedure for filing patent applications to protect
inventions in each of its contracting states. A patent application filed under the PCT is
called an international application, or PCT application.
A single filing of a PCT application is made with a Receiving Office (RO) in one
language. It then results in a search performed by an International Searching Authority
(ISA), accompanied by a written opinion regarding the patentability of the invention,
which is the subject of the application. It is optionally followed by a preliminary
examination, performed by an International Preliminary Examining Authority (IPEA).
Finally, the relevant national or regional authorities administer matters related to the
examination of application (if provided by national law) and issuance of patent.
INTERNATIONAL DEVELOPMENT IN TRADE SECRETS LAW

Under U.S. law, a trade secret is a commercially valuable piece of information not
generally known or readily ascertainable to the public that is subject to reasonable
measures to maintain confidentiality. The Defend Trade Secrets Act of 2016 established
a federal private civil cause of action for the misappropriation of a trade secret. Its aim
is to provide businesses with a uniform, reliable, and predictable way to protect their
valuable trade secrets anywhere in the country. In light of this new law, and the
continued domestic and international attention being paid to trade secrets, the USPTO
will hold a public symposium on developments in the protection of trade secrets. Topics
to be discussed include: (1) Measuring the Value of Secrecy; (2) Use of the DTSA in
Practice; (3) Differences in Trade Secret Protection in Foreign Jurisdictions; and (4)
Considerations of Business Owners in International Cases. Experts from academia,
private legal practice, international organizations, and industry will serve as panelists.
REFERENCES

 Intellectual property right, Deborah, E. Bouchoux, cengage learning

 Intellectual property rights: Protection and Management. India, Nityananda KV,
Cengage Learning India Private Limited..
 Intellectual property right - Unleashing the knowledge economy, Prabuddha
ganguli, Tata McGraw Hill Publishing CompanyLtd.
 Law relating to Intellectual Property rights. India. Ahuja VK IN: Lexis Nexis
 Intellectual Property Rights, India. Neeraj P &Khushdeep D, PHI learning pvt
limited.
Web REFERENCES

1. https://www.nachtwey-ip.eu/en/international-trademark-

law/#:~:text=A%20trademark%20is%20registered%20for,country%20where%2

0protection%20is%20sought.

2. www.google.com

3. www.wikipedia.com

4. www.studymafia.org

5. www.pptplanet.com
THANK YOU