Intellectual Property Considerations in the Outsourcing Industry (May 4, 2010)

7/28/2019 Intellectual Property Considerations in the Outsourcing Industry (May 4, 2010)

1/18

LawQuest 2010. All Rights Reserved


Presented by

Poorvi Chothani, Esq.LawQuest, Mumbai

www.lawquestinternational.com

Intellectual Property

Considerations in theOutsourcing IndustryMumbai, May 4, 2010


2/18


Overview

Member of the World Trade Organization (WTO) Trade Related Aspects of Intellectual Property Rights

TRIPS Compliant

Berne Convention

Paris Convention

Universal Copyright Convention

Patent Cooperative Treaty


3/18


Some Relevant Indian IP Laws

The Copyright Act, 1957 and the Copyright Rules, 1958

The Patents Act, 1970 and the Patents Rules, 2003 * with relevantRules and Amendments

The Trademarks Act, 1999 and the Trademarks Rules, 2000

The Biological Diversity Act, 2002

The Geographical Indication of Goods (Registration and Protection)

Act, 1999

The Designs Act, 2000and the Designs Rules, 2001* with relevantRules and Amendments.


4/18


Significant Provisions

Inalienable moral rights Waiver Concept does not apply to computer software

Work For Hire

Compulsory Licensing

Version Recordings

Broad fair use exceptions Non-commercial personal use deemed as fair use and does not

constitute infringement.


5/18


Significant Provisions

Patents

Joint Owners- Consent- Accounting- Rights- Infringement- Responsibilities

Computer Programs and businessmethodsper se not patentable

Protect Computer Programs astrade secrets

Controller of Patents

First to File vs. First to Invent

Compulsory License

Research and Experimental Use


6/18


Assignment of IP Rights

Of Copyright

Territory

Term

Lapse

Consent

Of Patents

Joint Owner Needs Consent of other owner (s) toassign rights

Valid only if in writing and registered in India


7/18 LawQuest 2010. All Rights Reserved

Indian Patent Applications

Patent Applications for:

inventions originating in India; or

involving an Indian resident inventor

must first be filed in India, unless a foreign filing

license has been granted by the Indian PatentOffice



Patents - Some Special Provisions

Compulsory licenses for export of medicines tocountries which have lack of infrastructural orproduction capacity for meeting public health

emergencies.

In case of Infringement - Only civil remedy ofinjunction, damages, and accounts for profits.



Penalties

Imprisonment up to 2 years or with fine or with both. Amount of fineis not specified.

Unauthorized claim of patent rights - fine up to Rs.1,00,000.

Wrongful use of words, "patent office" - imprisonment for a term upto 6 months, or with a fine, or with both.

Refusal or failure to supply information - fine up to 10,00,000.

Furnishing false information knowingly - imprisonment up to 6months or with fine or with both.

Offences by companies the company as well as every person incharge of and responsible to, the company shall be liable.



Data Privacy and Protection

No Specific Statute

Existing legislation provides limited protection

Information Technology Act - limited protection againstcertain types of data misuse or computer offencesinvolving unauthorized access to data on computers andnetworks

E.g. hacking, damage to computer source code, virusintroduction

Civil and criminal remedies available



Legal Framework for Data Privacy

The Constitution of India

The Information Technology Act, 2000 Protects against computer offences Provides for both civil and criminal remedies

The Specific Relief Act, 1963 To enforce specific performance provisions in the contract against the

Indian service provider

The Indian Penal Code, 1860 and

Criminal Procedure Code of 1973 (corporeal property) To prosecute incidents of theft and criminal breach of trust and fraud



Legislative Action

Amendment to the Information Technology Act of2000:

Negligence in implementing and maintainingreasonable security practices damages payable INR1 Crore (approximately US$ 243,902 at USD1 = INR 41)

Disclosing personal data without the data subjectsconsent - damages are limited to INR 25 lakhs(approximately US$ 60,976 at USD1 = INR 41)



Data Privacy Pending Legislation

An amendment to the ITA to expressly address dataprivacy approved by Indian cabinet of ministers in 2006(Executive branch)

The new bill: Stipulates security practices to be followed by

corporations that handle personal data

Impose civil and criminal penalties for negligenthandling or intentional misuse of personal data

Permits private enforcement for civil remedies



Other Protection

Specific Relief Act to Enforce Protective ContractualProvisions

Indian Penal Code: Limited criminal recourse available:

To prosecute incidents of theft, criminal breach of trust and fraudinvolving data

Laws extend to offenses against corporeal property only

Common Law Remedies: Civil damages and injunctive

relief available: Breach of contract

Breach of confidence



Enforcement

In India, the enforcement system for IP rights includes: Civil remedies Criminal penalties Settlement out of court without trail

Compensatory damages

No punitive damages

Registration of copyrights

Criminal prosecution in trademark and copyright and incertain cases for patents, but not in designs cases



Recommendations

Practices to Safeguard Trade Secrets and ConfidentialInformation between:

Comprehensive operative contracts, specificallyproviding for ownership of IP

Non-disclosure agreements directly with the Indian

service providers employees and consultantsassigned to the project wherever practicable



LawQuests Areas of Practice

Areas of Practice

Corporate Law

Intellectual Property Law

Real Estate Law

Employment Law

Global Work Permits andBusiness Visas

The U.S. The U.K.Canada IndiaPoland Mauritius

Australia New ZealandSingapore The Philippines

About LawQuest

Provides Client Centric Legal Solutions

Member of the NY State Bar Association, theABA, IBA

Member of the American ImmigrationLawyers Association

Founder Member of the Global MigrationAction Group in AILA

Former Member of the Alliance of Business

Immigration Lawyers (ABIL) Member of the European Association of

Attorneys A Worldwide Network of Lawyers


18/18 LawQuest 2010 All Rights Reserved

Thank You

522 Maker Chambers V

221 Nariman Point

Mumbai 400021

Tel: +91 22 6615 6555

Fax: +91 22 2287 2080

Email: [email protected]

URL: www.lawquestinternational.com
mailto:[email protected]://www.lawquestinternational.com/http://www.lawquestinternational.com/mailto:[email protected]

Intellectual Property Considerations in the Outsourcing Industry (May 4, 2010)

Documents

Transcript of Intellectual Property Considerations in the Outsourcing Industry (May 4, 2010)