Research Methodology and

Intellectual Property Rights

 Industrial Designs
◼ The word ‘Design‘ is defined as the
features of shape, configuration,
pattern, ornament or composition of
lines or colours applied to any article.
◼ The Design may be of any dimension i.e.
one or two or three dimensional or a
combination of these.
◼ In addition, it may be created by any
industrial process or means, whether
manual, mechanical or chemical,
separate or combined, which in the
finished article appeal to and is judged
solely by the eye.
Eligibility Criteria
◼ The Design for which the protection is
being sought must be novel or original.
◼ The Design should be significantly
distinguishable from the already
registered.
Acts and Laws to Govern Industrial
Designs
◼ In India, Industrial Designs are governed
under The Designs Act‘, 2000 and Design
Rules‘, 2001, which have been amended
from time to time in 2008, 2013, 2014 and
2019. The Design should include the
following characteristics:
✓ It should be novel and original.

✓ It should be applicable to a functional

article.
✓ It should be visible on a finished article.

✓ There should be no prior publication or

disclosure of the Design.
Some of the famous Industrial Designs are
mentioned below:
✓ Coca-Cola Bottle - The contoured-
shaped glass bottle of the Coca Cola
Company is marvelled as a master
showpiece in the field of industrial
design. It was designed in 1915 and is
still a cynosure for all eyes.
✓ Piaggio Vespa - Piaggio is an Italian
company famous for manufacturing
Vespa scooters. These scooters are sold
worldwide since 1940s.
✓ iPhone - It is a highly popular mobile
phone manufactured by American
✓ Mini Cooper - Mini Cooper is an
automobile car manufactured by 82 the
British Motor Corporation in the later
part of the 20th century.
Design Rights
The Design registration also confers a
monopolistic right to the Proprietor by
which he can legally exclude others from
reproducing, manufacturing, selling, or
dealing in the said registered Design
without his prior consent.
Enforcement of Design Rights
Owner can file the infringement case in the
court (not lower than District Court) in
order to stop such exploitation and for
claiming any damage to which the
registered proprietor is legally entitled.
The court will ensure first that the Design of
the said product is registered under the
Designs Act, 2000. If the Design is found
not registered under the Act, there will not
be legal action against the infringer.
If the infringer is found guilty of piracy or
infringement, the court can ask him to pay
the damage (₹ 50,000/-) in respect of
infringement of one registered Design.
Non-Protectable Industrial Designs in
India
✓ Any Industrial Design which is against public
moral values.
✓ Industrial Designs including flags, emblems
or signs of any country.
✓ Industrial Designs of integrated circuits.
✓ Any Design describing the ‘process of
making of an article‘.
✓ Industrial Designs of – books, calendars,
certificates, forms and other documents,
dressmaking patterns, greeting cards, leaflets,
maps and plan cards, postcards, stamps,
medals.
✓ The artistic work such as: Paintings,
sculptures, drawings including a diagram,
map, chart or plan.
✓ Photographs and work of architecture.
✓ Any other work related to artistic
craftsmanship.
✓ Industrial Designs does not include any
Trademark
Protection Term
The registered Designs are protected for 10
years in India and can be extended by 5
years after making a renewal application.
Procedure for Registration of
Industrial Designs
1. Prior Art Search –Before filing an
application for registration of Industrial
Designs, it is prudent to ensure that the
same or similar Design has not been
registered earlier. This search can be
carried out using various search engines,
such as:
✓ Design Search Utility (CGPDTM)

✓ Global Design Database (WIPO)

✓ Hague Express Database (WIPO)

✓ Design View (EUIPO)

2. Application for Registration
✓ The application for registration of Design
can be filed by an individual, small entity,
institution, organization and industry. The
application may be filed through a
professional patent agent or legal
practitioner. If the applicant is not a resident
of India, an agent residing in India has to be
employed for this purpose.
✓ After the application has been filed, an
officer (examiner) analyses the application
for qualifying the minimum standards laid
down for eligibility criteria for registration.
✓ Process of Industrial design is shown in
figure 1
figure 1 Process for Industrial design
Importance of Design Registration
✓ Registering a design gives the
owner exclusive rights over it,
meaning only they can use that
design for their products.
✓ This protection helps prevent
others from copying or imitating
the design, which reduces piracy.
✓ By having a unique design, the
owner can increase product sales
and build a good reputation in the
market.
Cancellation of the Registered
Design
The registration of a Design may be
cancelled at any time. The petition has to
be filed in Form-8 with prescribed fee to
the Controller of Designs.
The application can be made on the
following grounds:
✓ Design has already been registered.

✓ Design has been published in India or

elsewhere before the date of registration.
✓ Design is not novel and original.

✓ It is not a Design
Application Forms
A list of important forms is mentioned below.
Famous Case Law
Apple Inc. vs. Samsung Electronics
Co.
In 2011, Apple Inc. filed a case against
Samsung Electronics Co. in the United
States District Court for infringing their
Designs and Utility Patents of the user
interface like screen app grid and tap to
zoom.
As evidence, Apple Inc. submitted the side-
by-side image comparison of the iPhone
3GS and the i9000 Galaxy S to
demonstrate the alleged similarities in
both models.
However, later it was found that the images
were tempered by the Apple Company to
match the dimensions and features of the
controversial Designs.
So the counsel for Samsung Electronics
blamed Apple of submitting false and
misleading evidence to the court and the
company countersued the Apple
Company in South Korea; Tokyo, Japan;
and Mannheim, Germany, United States
District Court for the District of
Delaware, and with the United States
International Trade Commission (ITC)
in Washington D.C.
The proceedings continued for the 7 years
in various courts. In June 2018 both
companies reached for a settlement and
Samsung was ordered to pay $539
million to Apple Inc. for infringing on its
patents.
◼ In 2011, Apple sued Samsung, claiming that
Samsung copied the designs and features of
the iPhone, such as the app grid and tap-to-
zoom feature. To support this, Apple showed
side-by-side images of an iPhone and a
Samsung phone (the Galaxy S) to highlight the
similarities.
◼ However, Samsung argued that Apple had
altered the images to make the phones look
more similar than they actually were. Samsung
accused Apple of presenting misleading
evidence and counter-sued Apple in several
countries, including South Korea, Japan, and
Germany.
◼ The legal battle went on for seven years across
various courts. Finally, in 2018, the companies
reached a settlement, with Samsung agreeing
to pay Apple $539 million for infringing on its
patents.
Geographical Indications
◼ In every country, there are certain
regions famous for their traditional
knowledge/heritage in various sectors,
such as agriculture, food products,
textiles, etc.
◼ People from far-off places used to travel
to buy these products.
◼ With the passage of time, a specific link
between the goods produced and
geographical location evolved, resulting
in the growth of Geographical
Indications (GI).
◼ A GI is defined as a sign which can be
used on products belonging to a
particular geographical location/region
and possesses qualities or a reputation
associated with that region.
◼ In GI, there is a strong link between the
product and its original place of
production.
Acts, Laws and Rules
Pertaining to GI
◼ In India, GI was introduced in 2003 and
is governed under the Geographical
Indications of Act, 1999‘ and the
Geographical Indications of Goods
(Registration & Protection) Rules, 2002.
Ownership of GI
◼ The ownership/holders of GI (registered)
can be of the producers, as a
group/association/ cooperative society or
association or in certain cases,
government.
Rights Granted to the Holders
✓ Right to grant the license to others - The
holder has the right to gift, sell,
transfer/grant a license, or enter into any
other arrangement for consideration
regarding their product.
✓ Right to sue - The holder of GI has the right
to use and take legal action against a person
who uses the product without his consent.
✓ Right to exploit - The holder of GI can
authorize users with exclusive right to use
goods for which the GI is registered.
✓ Right to get reliefs - Registered proprietors
and authorized users have the right to obtain
relief concerning the violation of such GI
Registered GI in India
GI products registered in India belong to
the domains of handicrafts, agricultural,
food stuffs, alcoholic beverages, etc.
The first GI tag was granted in 2004 to
Darjeeling Tea and the latest being
Kashmir Saffron and Manipur Black rice
(Chakhao) in May 2020.
A total of 370 GI have been registered in
India till May 2020.
A few standout GI are mentioned in
table 1
Table 1 List of popular GIs registered in India
Identification of Registered GI
Registered GI products are granted a tag,
which is printed on the registered
products.
The tag confirms the genuineness of the
product in terms of its production (by set
standards) and location of production.
GI registered products can be
grown/produced in any part of the world
using standards laid down by the GI
Registry. However, these products
cannot be labelled as GI as they are not
produced/ manufactured in a specific
geographical location
Non-Registerable GI
✓ The use of which would be likely to
deceive or cause confusion.
✓ The use of which would be contrary to
any law.
✓ Which comprises or contains scandalous
or obscene matter.
✓ Which comprises or contains any matter
likely to hurt the sentiments of society.
✓ Religious susceptibilities of any class or
section of the citizens of India.
Procedure for GI Registration
◼ Once the prior search for registered GI is
done, the applicant has to file an
application.
◼ The application for GI can be forwarded
by an individual or an organization or
authority of people established under
Indian law.
◼ The application in a prescribed format is
submitted to the Registrar, Geographical
Indications along with the prescribed
fee.
◼ Once the application is filed at GI
Registry, the Examiner will scrutinize
the application for any deficiencies or
similarities.
◼ If the examiner finds any discrepancy, he
will communicate the same to the
applicant, which is to be replied within
one month of the communication of the
discrepancy.
◼ Once the examiner is satisfied with the
response/s, he files an examination
report and hands over the same to the
Registrar.
◼ After getting a green signal from the
Registrar, the application is published in
the official Geographical Indication
Journal for seeking any objections to the
claims mentioned in the application.
◼ If no opposition is received, the GI gets
registered by allotting the filing date as
the registration date. Initially, GI is
registered for ten years but is renewable
on the payment of the fee.
Figure 2: Flow chart for the process of GI registration.
Case study of Basmati patent
◼ In late 1997, the United States Patent
and Trademark Office granted a patent
to Ricetec Inc., the United States based
multinational company headquartered in
Alvin, Texas for a novel ‘grain’ also
known as ‘basmati’.
◼ The company claimed the protection of
new varieties of ‘basmati’ crops with
better qualities than the original crop.
◼ It has been using several versions of the
crop by selling it with the name
‘Jasmati’ or ‘Kasmati’ in the
international rice market.
The patent was granted to the company for
basmati rice grains.
Later, the patent was opposed by the Indian
NGOs like Research Foundation for
Science, Centre for Food Safety and
ultimately, Centre for Scientific and
Industrial Research too, objected to it.
The Indian sub-continent protected its
traditional crop basmati while Thailand
contested for the safeguarding of its
claim for jasmine rice.
In 2000, after examining evidence, the
Indian Government challenged the
patent claims by the company.
Case study of Neem Patent
The neem tree originates from the Indian
subcontinent and now grows in the dry
regions of more than 50 tropical
countries around the world.
The neem tree has multiple uses. It is
mentioned in Indian texts written over
2000 years ago and has been used for
centuries by local communities in
agriculture as an insect and pest
repellent, in human and veterinary
medicine.
The patent for Neem was first filed by
W.R. Grace and the Department of
Agriculture, USA in European Patent
Office. The said patent was deemed to
be a method of controlling fungi on
plants comprising of contacting the fungi
with a Neem oil formulation.
A legal opposition was filed by India
against the grant of the patent.
“It was pure and simple piracy. The oil
from neem has been used traditionally
by farmers to prevent fungus. It was
neither a novel idea nor was it invented.
It is the major victory that the appeal has
been dismissed.”
Case study of Curcuma (Turmeric)
Patent
In 1995, the United States awarded patent
on turmeric to University of Mississippi
medical centre for wound healing
property.
The claimed subject matter was the use of
"turmeric powder. The inventors in their
claims also described turmeric as a
yellow powder developed from the
rhizome of the plant Curcuma longa, is
widely used in food colouration mainly
in Indian cuisines.
A re-examination claim with USPTO was
file for the invalidation of patent
application no. 5401540 by the Indian
Council for Scientific and Industrial
Research (CSIR) on October, 1996 as
the patent lacked the element of novelty
on the ground of healing power of
turmeric powder which was already
found and put into practice in India for
ages.
The patent was finally invalidated on the
ground of prior art since it was
evidently confirmed and established by
USPTO that the use of turmeric both in
the powdered and the paste form served
the same purpose. Therefore, the
traditional knowledge that belonged to
India was safeguarded in Turmeric case.
The withdrawal of the turmeric patent is
now seen as a first step in reversing
biopiracy.
Programme for Inspiring
Inventors and Innovators
✓ Promotion & Propagation of Inventions and
Innovations.
✓ Prize Award to Meritorious Inventions and
open-source Technologies.
✓ Innovate India Conference.
✓ Intellectual Property & Innovation
Facilitation.
✓ Intellectual Property and Technology
Facilitation Centre (IPFC).
✓ NRDC-University Facilitation Innovation
Centers.
✓ Patent Seminars, Patent Search.
✓ On-Line IPR & Knowledge
Management Courseware for
Certificate Programme.
✓ Technology Knowledge
Management Programme
Programme for Development of
Technology Inspiring for
Commercialization
✓ Digital Knowledge Base (Innovation Portal)
for Commercialization of Innovations.
✓ Basic Engineering Design Package.
✓ Market Survey on assigned technologies.
✓ Development Projects and value addition
for priority projects.
✓ Promotion of Innovation in Rural & North
East Region.
✓ Entrepreneurship Development Programme
in backward and rural areas through
Innovative Appropriate Technology.
✓ Organic Fruits Cultivation & Processing
Programme at Mizoram (MFCP Certified
Programme).
✓ Dissemination of Information through
R&D-Industry Meet, Conferences,
Seminars, Workshops, Exhibitions, Foreign
Exhibition, Publication, etc.