If you have been asking yourself this question, then this ppt is for you!

What is “Intellectual Property”?

Intellectual properties refer to creations of mind, literary and work of art, symbols, names and signs used in commerce.

Allows creators, or owners, of  patents,

trademarks or copyrighted works to benefit from their own work or investment in a creation.  

Intellectual Property Rights (IPR)

Intellectual property rights are the rights given to persons over the creations of their minds.

They usually give the creator an exclusive right over the use of his/her creation for a certain period of time.

Recognition of IP

• Paris Convention for the Protection of Industrial Property(1883)

• Berne Convention for the Protection of Literary and Artistic Works (1886).

• Both treaties are administered by the World Intellectual Property Organization (WIPO).

Importance of IP

• Help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being.

• Help strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.

Major Types of IP

Functional & Technical Inventions

Patents Act, 1970 Amended

in 1999 & 2005

Purely Artistic works

Copyright Act,1957

Amended in1982,1984, 1992,

1994 & 1999

A symbol, logo, word, sound, color, design, etc.

TrademarkAct, 1999Amended in 1994,1996 & 2000

WIPO ( World Intellectual Property Organization ) was established by the WIPO Convention in 1967.

The WIPO is a specialized agency of the United Nations.

It promote the protection of IP throughout the world.

Headquarter is in Geneva, Switzerland World Intellectual Property Day:  Observed

on 26th April. Purpose to "raise awareness of how

patents, copyright, trademarks and designs impact on daily life”.

Why protect intellectual property?

Protection of IP rights is an incentive to human creativity

Promotes respect for individual artists, and enables them to earn livelihoods

Prevents infringement IP serves as an instrument for cultural,

social, economic and technological development

New creativity helps create sustainable and competitive businesses locally and internationally

IP-based industries contribute significantly to national economies

TRIPS

An international agreement administered by the WTO.

The TRIPS Agreement was signed in Marrakesh, Morocco on 15 April 1994 which came into effect on 1st January 1995, is the most comprehensive multilateral agreement on intellectual property.

India signed TRIPS agreement on 15th April 1994 and came into force on 1st Jan’1995

Features of the Agreement

Standards-Sets out the minimum standards of protection to be provided by each Member.

Enforcement Deals with domestic

procedures and remedies for the

enforcement of intellectual property rights.

Dispute Settlement The Agreement

settles disputes between WTO Members

in respect to the TRIPS obligations,

subject to the WTO's dispute settlement

procedures.

Principles

The Agreement provides for certain basic

principles, such as national and most-

favoured-nation treatment.

The obligations under the Agreement will

apply equally to all Member countries.

Members are left free to determine the

appropriate method of implementing the

provisions of the Agreement within their

own legal system and practice.

THE PATENT ACT, 1970DEFINITIONS

• Patent• Invention• Discovery• Patentee• Patent agent

NEED OF PATENT

CONDITIONS TO BE SATISFIED BY AN INVENTION TO BE PATENTABLE

• Novelty• Inventiveness (Non-obviousness)• Usefulness

TYPES OF INVENTIONS WHICH ARE NOT PATENTABLE IN INDIA (SECTION 3)

• Frivolous or contrary to law• Commercial exploitation• Discovery of scientific principle• Known process, machine or apparatus • Re-arrangement or duplication of known devices• A method of agriculture or horticulture• Inventions relating to atomic energy • Musical or artistic work

HOW TO REGISTER A PATENT

CONSEQUENCES OF GRANT OF PATENT

RIGHTS OF A PATENTEE:

• Right to exploit the patent• Right to grant licence etc.• Right to surrender• Right to sue for infringement

EXPIRY OF A PATENT

• Patent has lived its full term.

• Patentee fails to pay the renewal fee.

• Validity of the patent has been successfully.

challenged by an opponent.

• Patent is revoke.

INFRINGEMENT

• Types of Patent Infringement

(a) Direct

(b) Indirect

(c) Contributory

(d) Induced

• Patent infringement cost

• How to Sue for Patent Infringement

Damages

PATENT CO-OPERATION TREATY• The PCT is an international treaty, administered by

the World Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries

ADVANTAGES• Brings the world within reach• Postpones the major costs associated with

internationalizing a patent application• Provides a strong basis for patenting decisions• Is used by the world’s major corporations,

universities and research institutions when they seek international patent protection

• Allows you to apply securely and easily online, and to save money by doing so

PATENT APPLICATIONS

PATENT GRANTS

SWISS COMPANY LOSES DRUG PATENT CASE IN INDIA - APRIL 2013

INDUSTRIAL DESIGN

ORIGIN

Designing and Printing of Linen Act(1787)

U.K

Design Act,1911

British Govt. in India

Indian Design Act,2000

ADVANTAGES OF INDUSTRIAL DESIGN

• Beautiful & Appealing

• Increases market potential

• Safeguarding the features of the product

• Exclusivity

• Encourage fair and competitive trading

practices

• Promotes Creativity

Few Examples

INDIAN DESIGN ACT,2000

• Repealed & Replaced the Designs Act,1911

• Meaning of ‘Design’ under the Act

• Controller of Industrial Design

MAIN PROVISIONS OF THE ACT1. The ‘Controller General of Patents, Designs and

Trade Marks’ appointed shall be the controller for Industrial design.

2. Registration Formality

3. Prohibition of Registration

4. Certification

5. Expiration & Renewal

6. Public Inspection

7. Petition for the cancellation

8. Benefits of Registration

9. Refused applications

10.Infringement

ARTICLES Article 25-Registeration for Protection

1 .Exclusivity

2 .Obligation

Articles 26-Protection

1.Ownership

2.Exception to Protection

3.Duration

STEPS FOR REGISTRATION Step 1.

Finding out whether any registration already exists

Step 2.

Preparing a representation of the design

Step 3.

Identifying the class of design

Step 4.

Providing a statement of novelty

 

Step 5.

Including a disclaimer

Step 6.

Claiming a priority date

Step 7.

Determining the fee to be paid

Step 8.

Ensuring all enclosures are attached

Step 9.

Complying with objections (if any)

Step 10.

Providing full details

INDUSTRIAL DESIGNS THAT CANNOT BE REGISTERED

 

• Opposing to public moral values.• Any process of construction.• Not distinguishable from previously registered

designs.• Includes Trademark.• Books, jackets, calendars, certificates, forms and

other documents, dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals

• Flags, Emblems or Signs of any country.• Integrated circuits. 

THE HAGUE SYSTEM

• The Hague System for the International Registration of Industrial Designs provides a practical business solution for registering up to 100 designs in over 60 territories through filing one single international application

ADVANTAGES• Minimum of formality and expense• Single international application, in one

language, accompanied by the payment of a single set of fees, in one currency and with one Office (the International Bureau).

• Better management of the protection offered

INDUSTRIAL DESIGN APPLICATIONS

INDUSTRIAL DESIGNS REGISTRATION

CASE STUDY1.Bharat Glass Tube Limited VS Gopal Glass Works Limited

2. The case of a toymaker

3.Turning an IP Dispute into a Business Opportunity

TRADEMARKMEANING

• Trademark??• Service mark??

Consists of • Words e.g. coca cola• Letters e.g. idea• Numbers e.g. 501• Symbols e.g. McDonald’s golden arches • Signature e.g. Ford or Johnnie Walker • Shape e.g. Motorola

FUNCTIONS

• Identify • Distinguish• Source of origin• Quality • Advertise

TYPES OF TRADEMARKS• Product Trade-Mark

Example: Nike "swoosh”

Make my trip and Tata• Service Trade-Mark

Example: CCD,

Kaya skin clinic • Certification Mark

Example: ISI• Collective Mark:

Example: CA,

NAAC,

NGO • Defensive Trade-Mark

Example: Mercedes• Jointly owned trademarks

TYPES OF NON CONVENTIONAL TRADEMARKS

1) SOUND MARKS:• Yahoo- yodel• MGM and their lion's roar; • Intel and the three-second chord sequence used

with the Pentium processor

2) SCENT MARK• First Scent Mark in the European Union was - “the

smell of fresh cut grass” for goods, namely tennis balls in 1999

• Odor of beer for dart flights and the scent of roses for tyres -first olfactory marks to be registered in the U.K

• The fragrance of 'Chanel No 5' for perfume failed

EVOLUTION OF TRADEMARK LAW IN INDIA

Problems solved by applying section 54 of specific relief act of 1877 and trade marks were registered under Indian registration act 1908

Indian trade mark act was passed in 1940 in correspondence with English trademarks act. Later was replaced by trademarks and merchandise act 1958

On September 15, 2003, the Indian trade mark act and its trademark rules came into effect.

This was done to make it compliant to TRIPS obligation

INDIAN TRADEMARK ACT ,1999

• Classification system • Requirements for filing trademark application

REGISTRATION

PROCEDURE

• Term and renewal of trade-mark• Licensing and assignment• Enforcement

MARKS THAT CANNOT BE REGISTERED

• Marks that describe value, quantity, quality, or

intended purpose of the goods or services;

• Marks that are deceptive;

• Marks that are contrary to public order or morality;

• Marks that consist of armorial bearings, flags and

other emblems or official signs of States or

international intergovernmental organizations;

• Marks of such a nature as to infringe rights acquired

by third parties in the country where protection is

claimed (for example: marks that are identical or

similar to earlier marks for identical or similar goods

or services; or marks that are identical or similar to

well-known marks).

INFRINGEMENT

• Fundamentals of infringement (Any or below all aspect will be considered under infringement)

• copy of whole registered mark with a few additions and alterations,

• The infringed mark is used in the course of trade the use of the infringed mark is printed or usual representation of the mark in advertisement. Any oral use of the trademark is not infringement.

• The mark used by the other person almost resembles the mark of the registered proprietor which is likely to mislead or cause confusion

• Grounds for Infringement of registered Trademark

• Advertising an infringed trademark leads to unfair advantage or is harmful to the unique characteristics and also does not support the reputation of earlier trademark.

• Any person who is not registered owner of a trademark or a person who is given the permission uses the trademark which is identical or similar to the original trademark or is does not uses it for goods and services for which it is registered. The trademark that has been registered has already created a reputation of its own and use of infringed mark will cause unfair advantage or is harmful to the reputation of trademark which is registered

• A person who uses a registered trademark as his trade name or in his business concern or part of both which deals with goods and services for which the trademark is registered.

• If any distinct part of a trademark that is registered and which has words, the trademark can be infringed by verbally using those words as well as visual representation of it.

• If any person intentionally uses the trademark for which he knows that he is not authorized by the owner of the mark then it is considered to be infringement.

• Remedies

– an action for infringement in case of a registered trademark

– an action for passing off in the case of an unregistered trademark

• Relief

– Injunction

– Damages

– Accounts of profits

– E.g – Finolex Cables

E.g.: Gorbatschow Wodka KG (“Plaintiff”) -Vs-  John Distillers Limited (“Defendant”)

E.g.: McDonalds

INTERNATIONAL REGISTERATIONS

TWO WAYS:• File a trademark application with the

trademark office of each country in which you are seeking protection,

• Use the Madrid system

MADRID SYSTEM• Madrid system for the international registration of trademarks

provides one single procedure for the registration of a mark in several territories. It is governed by two treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of WIPO in Geneva, Switzerland.

ADVANTAGES:• Apply for protection of a mark in over 80 territories• Can extend its geographical scope to additional Contracting Parties

in a quick, simple and cost-effective manner;• Just one single expiry date and the registration can be renewed

simply (and also electronically)• Administration costs are less, compared to several filings in national

territories• India became a member of Madrid protocol on july 8 2013

RISE IN NUMBER OF APPLICATION

TRADE MARK APPLICATION

CASE STUDIES

• Cadbury V/S Nestle• William Grant & Sons Ltd. v. McDowell & Co. Ltd