INTELLECTUAL PROPERTY RIGHTS

Intellectual property (IP) refers to the creations of the human mind like inventions, literary
and artistic works, and symbols, names, images and designs used in commerce. Intellectual
property is divided into two categories: Industrial property, which includes inventions
(patents), trademarks, industrial designs, and geographic indications of source; and
Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in
their radio and television programs. Intellectual property rights protect the interests of
creators by giving them property rights over their creations.

The most noticeable difference between intellectual property and other forms of property,
however, is that intellectual property is intangible, that is, it cannot be defined or identified
by its own physical parameters. It must be expressed in some discernible way to be
protectable. Generally, it encompasses four separate and distinct types of intangible
property namely — patents, trademarks, copyrights, and trade secrets, which collectively
are referred to as “intellectual property.” However, the scope and definition of intellectual
property is constantly evolving with the inclusion of newer forms under the gambit of
intellectual property. In recent times, geographical indications, protection of plant varieties,
protection for semi-conductors and integrated circuits, and undisclosed information have
been brought under the umbrella of intellectual property.

The Convention establishing the World Intellectual Property Organization (1967) gives the
following list of the subject matter protected by intellectual property rights:

• literary, artistic and scientific works;

• performances of performing artists, phonograms, and broadcasts;

• inventions in all fields of human endeavor;

• scientific discoveries;

• industrial designs;
• trademarks, service marks, and commercial names and designations;

• protection against unfair competition; and

• “all other rights resulting from intellectual activity in the industrial, scientific, literary or
artistic fields.”

With the establishment of the world trade Organization (WTO), the importance and role of
the intellectual property protection has been crystallized in the Trade-Related Intellectual
Property Systems (TRIPS) Agreement. It was negotiated at the end of the Uruguay Round of
the General Agreement on Tariffs and Trade (GATT) treaty in 1994.

The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims
at harmonizing and strengthening standards of protection and providing for effective
enforcement at both national and international levels. It addresses applicability of general
GATT principles as well as the provisions in international agreements on IP (Part I). It
establishes standards for availability, scope, use (Part II), enforcement (Part III), acquisition
and maintenance (Part IV) of Intellectual Property Rights. Furthermore, it addresses related
dispute prevention and settlement mechanisms (Part V). Formal provisions are addressed in
Part VI and VII of the Agreement, which cover transitional, and institutional arrangements,
respectively.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most
comprehensive multilateral agreement on intellectual property. The areas of intellectual
property that it covers are:

(i) Copyright and related rights (i.e. the rights of performers, producers of sound recordings
and broadcasting organisations);

(ii) Trade marks including service marks;

(iii) Geographical indications including appellations of origin;

(iv) Industrial designs;

(v) Patents including protection of new varieties of plants;

(vi) The lay-out designs (topographies) of integrated circuits;

(vii) The undisclosed information including trade secrets and test data.

COPYRIGHT – Copyright Act, 1957

Works in which copyright subsists

Copyright subsists in following classes of works:

a) Original literary, dramatic, musical & artistic works

b) Cinematograph films and

c) Sound recordings

The copyright will subsist in a work if the following conditions are fulfilled;

a) In the case of a published work:

i) the work is first published in India, or

ii) where the work is first published outside India, the author is at the date of
such publication, or in a case where the author was dead at that date, was at
the time of his death, a citizen of India;

b) In the case of an unpublished work other than work of architecture the author is
at the date of making of the work a citizen of India domiciled in India; and

c) In the case of a work of architecture, the work is located in India. The copyright
subsists only in the artistic character and design. It does not extend to processes
or methods of construction.

A work published in India shall be deemed to be first published in India

notwithstanding that it has been published simultaneously in some other country, unless
such other country provides a shorter term of copyright for such work; and a work shall be
deemed to be published simultaneously in India and in another country if the time between
the publication in India and the publication in such other country does not exceed thirty
days or such other period as the Central Government may, in relation to any specified
country, determine.

Original Works
 The copyright Act, 1957 requires that the literary, dramatic, musical and artistic work
will be protected only if they are ‘original’. The word ‘original’ is not defined in the Act but
has been explained by judiciary in a number of cases.

The House of Lords in Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1
WLR 207 (HC) held that the word ‘original’ does not mean that the work must be the
expression of original or inventive thought. Copyright Acts are not concerned with the
originality of ideas, but with the expression of thought, and in the case of literary work, with
the expression of thought in print or writing. The Act does not require that the expression
must be in an original or novel form, but that the work must not be copied from another
work that it should originate from author.

Literary work

The copyright Act does not define “literary work” except that it includes computer
programmes, tables and compilations including computer databases.

Literary work means any work written or printed in any language. It need not be of
literary quality i.e. may not have any literary merit. Examples of literary works are as
follows:

 Fiction, nonfiction, novel, poem, story etc.,

 Published or unpublished works

 Newspaper, magazine, journal, pamphlet, book etc.

 Dictionaries and encyclopedia.

 Catalogues and brochures.

 Tambola ticket books

 Question papers for examination

 Dissertation and thesis

 Contract forms

 Railway time tables,

 Tables and compilations including databases

  Abridgment, Original adaptation and translation

 Computer programme are defined as a set of instruction expressed in words, cods,

schemes or any other form including a machine readable medium capable of cashing
a computer to perform a particular task or achieve a particular result.

Dramatic work

Dramatic work includes;

 Any piece for recitation;

 Choreographic work or entertainment in dumb show:

 Scenic arrangement or acting form of which is fixed in writing or otherwise;

 Dramatic work does not include cinematograph films. The principles applicable to
literary works are applicable to dramatic works.

Musical work

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.

Adaptation of a musical work is also entitled to copyright protection. Adaptation

means any arrangement or transcription of the work.

All kinds of musical works will be covered namely, serious or light, modern or
classical chormous.

Artistic work

Artistic work means –

 Painting, drawing including a diagram, map, chart or plan: Drawing includes a

mechanical or an engineering drawing but does not include one traced from another
as it is not original. Any painting or a drawing is protected by copyright even though
it does not have any artistic quality. Operas, musicals solo instruments, few
instruments in the form of sonatas, chamber music etc. or many instruments like
bands & orchestras.
  Engraving which includes etchings, lithographs, wood cuts, prints and other similar
works;

 Photograph which includes photolithograph and any work produced by any process
analogous to photography but does not include any part of a cinematograph film;

 Works of sculpture including casts and models;

 Work of architecture meaning any building or structure having an artistic character

or design, or any model for such building or structure. For example layout of a
garden containing steps, walls, ponds etc.

 Any work of artistic craftsmanship

Cinematograph film

It 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 film. The
author of cinematograph film is the producer according to section 2 (d)(v).

Copyright does not subsist in a cinematograph film if a substantial part of the film is
an infringement of the copyright in any other work. The performance of cine artist is not
protected by the Act.

Sound Recordings

According to section 2(xx), Sound recording means a recording of sounds from which
such sounds may be produced regardless of the medium on which such recording is made or
the method of which the sounds are produced. Copyright will subsist in a sound recording
only if it is lawfully made [Section 13(2)(b)]. The author of sound recording is the producer.
Copyright in the music vests with the composer whereas in the recording vests with the
producer of the sound recording.

Section 32 A introduced in 1984 requires certain particulars to be displayed on sound

recording or video films or video cassettes, like name and address of the person who had
made the sound recording, name and address of the owner of the copyrights in the work.
Year of its first publication, certificate granted by the Board of Film.
PATENT – Patent Act, 1970

The scope of patentability implies what is patentable, thus limiting patent protection to new
entities and preventing particularly pharmaceuticals companies from filing patent
applications for drugs that are not substantially different from the original products. The
Patentable subject matter requirement lays down list of subjects that are eligible to get a
patent (patentable invention) and the list of subjects that are not eligible for a patent (non-
patentable inventions). The ‘patentable invention’ may be product or process.

WHAT IS AN INVENTION

Invention means a new product or process involving an inventive step and capable of
industrial application. New invention means any invention or technology which has not
been anticipated by publication in any document or used in the country or elsewhere in the
world before the date of filing of patent application with complete specification i.e., the
subject matter has not fallen in public domain or it does not form part of the state of the
art.

It was held in Raj Parkash v. Mangat Ram Choudhary, that “invention is to find out or
discover something not found or discovered by anyone before and it is not necessary that
the invention should be anything complicated and the essential thing is that the inventor
was the first one to adopt it and the principle therefore is that every simple invention that is
claimed, so long as it is something novel or new, would be an invention and the claims and
the specifications have to be read in that light and a new invention may consist of a new
combination of all integers so as to produce a new or important result or may consist of
altogether new integers and the claims for anticipation by the defendant has to be either by
prior user or by prior publication”. It was further observed that “whether a patent sets out
an invention is to be determined by a true and fair construction of the specifications and the
claims and in construing the specifications it would be erroneous to rely too much on the
title thereof because the title cannot control the actual claim and a misleading title similarly
is of no consequence and the words of the specifications should be given their ordinary
meaning but where necessary must be construed in the sense in which they are used in a
particular trade or sphere in which the invention is sought to have been made and it is the
pith and marrow of the invention that has to be looked into and one should not get bogged
down or involved in the detailed specifications and claims made by the parties who claim to
be patentee or alleged violators”.

Inventive step means a feature of an invention that involves technical advance as compared
to existing knowledge or having economic significance or both and that makes the invention
not obvious to a person skilled in the art." The term capable of industrial application means
that the invention is capable of being made or used in an industry. The term ‘industrial
application’ was introduced in the Patents Act through an amendment in 2002. As per the
definition of ‘invention’ prior to the amendment, an invention had to be new and useful for
grant of patent. As per Section 64(1)(g), lack of utility is a ground for revoking a patent. In
Lakhapati Rai & Ors. v. Srikissen Dass & Ors. (1917), it was held that ‘utility’ does not mean
improvement. It means practicability. The test of utility is whether the invention will work
and whether it will do what is claimed for it.

1. NOVELTY

Novelty is an essential requirement and an undisputed state of patentability. An invention

will be patentable if it is novel or new in the light of the prior art or it has never been
anticipated before. Prior art includes all the information and knowledge relating to
invention that was available. Public knowledge about the invention or public use if an
invention before the filing date of the patent application will anticipate the invention and
negate its novelty. Prior knowledge must be accessible to the public in order to anticipate an
invention, and it is considered to be accessible it is available in a public library or any other
similar location (Lallubhai Chakubhai Jariwala Vs. Chimanlal Chunilal & Co.)

An invention will be considered novel if it does not form a part of the global state of the art.
Information appearing in magazines, technical journals, books, newspapers etc. constitute
the state of the art. Oral description of the invention in a seminar/conference can also spoil
novelty. Novelty is assessed in a global context. An invention will cease to be novel if it has
been disclosed in the public through any type of publications anywhere in the world before
filing a patent application in respect of the invention. Therefore it is advisable to file a
patent application before publishing a paper if there is a slight chance that the invention
may be patentable. Prior use of the invention in the country of interest before the filing date
can also destroy the novelty. Novelty is determined through extensive literature and patent
searches. It should be realized that patent search is essential and critical for ascertaining
novelty as most of the information reported in patent documents does not get published
anywhere else. For an invention to be novel, it need not be a major breakthrough. No
invention is small or big. Modifications to the existing state of the art, process or product or
both, can also be candidates for patents provided these were not earlier known. In a
chemical process, for example, use of new reactants, use of a catalyst, new process
conditions can lead to a patentable invention.

‘State of the art’ has not been defined under the Patents Act, the following general
principles are applied by the Patent Office to determine the novelty of an invention during
the examination procedure by applying provisions of section 13, read with the provisions of
sections 29 to 34 :

An invention is not considered to be novel-

(a) if it has been anticipated by publication before the date of filing of the application in any
of the specifications filed in pursuance of application for patent in India on or after 1st
January, 1912.

(b) if it has been anticipated by publication made before the date of filing or the date of
priority of the application in any of the documents in any country; or

(c) if it has been claimed in any claim of any other complete specification filed in India,
which was filed before the date of application though published after the date of that
application.

2. NON-OBVIOUS

A patent application involves an inventive step if the proposed invention is not obvious to a
person skilled in the art i.e., skilled in the subject matter of the patent application. The prior
art should not point towards the invention implying that the practitioner of the subject
matter could not have thought about the invention prior to filing of the patent application.
Inventiveness cannot be decided on the material contained in unpublished patents. The
complexity or the simplicity of an inventive step does not have any bearing on the grant of a
patent. In other words a very simple invention can qualify for a patent. If there is an
inventive step between the proposed patent and the prior art at that point of time, then an
invention has taken place. A mere 'scintilla' of invention is sufficient to found a valid patent.
It may be often difficult to establish the inventiveness, especially in the area of upcoming
knowledge areas. The reason is that it would depend a great deal on the interpretative skills
of the inventor and these skills will really be a function of knowledge in the subject area.

3. UTILITY

An invention must possess utility for the grant of patent. No valid patent can be granted for
an invention devoid of utility. The patent specification should spell out various uses and
manner of practicing them, even if considered obvious. If you are claiming a process, you
need not describe the use of the compound Produced thereby. Nevertheless it would be
safer to do so. But if you claim a compound without spelling out its utility, you may be
denied a patent

4. DISCLOSURE

Sufficient disclosure of the invention is the consideration on which a patent monopoly is

granted. Therefore, it is incumbent upon the applicant to make a clear, precise, honest, and
open disclosure of the invention. The patent specification should describe the invention
clearly. It is the duty of a patentee to state clearly and distinctly the nature and limits of
what he claims. If the language used by the patentee is obscure and ambiguous, no patent
can be granted, and it is immaterial whether the obscurity in the language is due to design,
carelessness, or want of skill. Lack of clarity is a ground for opposition.

WHAT ARE NOT INVENTIONS ?

According to Section 3 of the Patents Act, 1970, the following are not inventions within the
meaning of the act-

a) Inventions which are frivolous or contrary to well established natural laws are
not inventions under the Act;
b) An invention, the primary or intended use or commercial exploitation of which
could be contrary to public order or morality.
c) The mere discovery of a scientific principle or the formulation of or discovery if
any living thing or non-living substance occurring in nature;
d) The mere discovery of new form of a known substance which does not result in
the enhancement of the known efficacy of that substance or the mere discovery
of any new property or new use for known substance or of the mere use of a
known process, machine or apparatus unless such know process results in a new
product or employs at least one new reactant.
e) A substance obtained by a mere admixture resulting only in the aggregation of
the properties of the component thereof or a process for producing such
substance;
f) The mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
g) A method of agriculture or horticulture;
h) Any process for medicinal, surgical, curative, prophylactic(diagnostic,
therapeutic) or other treatment of human beings or any process for a similar
treatment of animals to render them free of disease or to increase their
economic value or that of their products.
i) Plants and animals in whole or any part thereof other than microorganisms but
including seeds, varieties and species and essentially biological process for
production or propagation of plants and animals;
j) A mathematical or business method or a computer program per se or algorithm;
k) A literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever, including cinematographic works and television productions.
l) A mere scheme or rule of method of performing mental act or method of playing
a game;
m) A presentation of information;
n) Topography of integrated circuits;
o) An invention which in effect is traditional knowledge or which is an aggregation
or duplication of known properties of traditionally known component or
components;
p) An invention falling within the scope of traditional knowledge is not considered
an invention under the Act.
DESIGN – Designs Act, 2000

Section 2 (d) of The Designs Act, 2000 defines designs as under:

"design" means only the features of shape, configuration, pattern, ornament or composition
of lines of colours applied to any article whether in two dimensional or three dimensional or
in both forms, by any industrial process or means, whether manual, mechanical or chemical,
separate or combined, which in the finished article appeal to and are judged solely by the
eye; but does not include any mode or principle of construction or anything which is in
substance a mere mechanical device, and does not include any trade mark as defined in
Clause (v) of Sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 (43
of 1958) or property mark as defined in Section 479 of the Indian Penal Code (45 of 1860) or
any artistic work as defined in clause) of Section 2 of the Copyright Act, 1957 (14 of 1957);

From the above definition a design must have the following essential ingredients:

(a) Feature - of shape, configuration, pattern, ornament or composition of lines or colours;

(b) Applied to any article;

(c) The article may be in two dimensional or three dimensional form;

(d) Feature applied to an article by any industrial process or means, whether manual,
mechanical or chemical separate or combined;

(e) Finished article which has appeal to the eye;

(f) It does not relate to feature which are dictated by function i.e. mere mode or principle of
construction or anything which is in substance a mere mechanical device;

(g) Does not include a ‘trade mark’ or a ‘property mark’ or any ‘artistic work’ as defined
under The Trade and Merchandise Marks Act, 1958, Indian Penal Code 1860 and The
Copyright Act 1957 respectively.

The essence of design protection is the protection of the appearance of an article. The
protection of appearance depends on feature applied to an article such as shape, surface
pattern, ornamentation, configuration, texture etc. The feature applied to an article imparts
an aesthetic eye appeal enhancing the value and marketability of the product/article making
it a registrable design. If the feature is merely functional in nature the same would be
incapable of any design protection.

A design may be three dimensional or two dimensional. Three dimensional - shape and
configuration e.g. shape of a bottle, Kettle, chair etc. Two dimensional - a pattern or
ornament e.g. pattern on fabric, wallpaper etc.

A piece of paper on which a pattern is drawn cannot be a subject matter for registration of
design. Label put on a carton to be used as container for the goods can never amount to
design within the meaning of Section 2(3) of The Designs Act, 1911.

The paper used for printing or canvas used for painting have no function other than to carry
the printing or painting. Therefore, they are unregistrable.

In Re Littlewoods Pools Ltd’s Application (1949) 66 RPC 309 - application was made to
register a form of football coupon consisting of a rectangular sheet of paper on which a
pattern was formed by straight lines, the spaces between were filled with literary matter.
Wynn-Parry J in holding that the paper was not an article stated that as the function of the
paper was “solely to carry the imprint of the design” and did not have any other function it
was not an “article”, within the meaning of the Act.

It would appear to follow that paper or canvass could be considered an article. However, to
be registrable an article must have some function other than that of merely carrying the
design. A drawing or painting on ordinary paper or canvas are not the same as wallpaper or
wrapping paper or textiles.

The wallpaper, wrapping paper or textiles all perform a function other than just being a
vehicle for the design. For example the wallpaper is used for sticking on the wall to either
enhance the decor of a room or for the more practical purpose of covering cracks or faults
in the wall surface. Textile material is used for making up a variety of articles e.g. curtains,
clothing, bed linen etc. This factor makes these registrable articles.

GEOGRAPHICAL INDICATION - THE GEOGRAPHICAL INDICATIONS OF GOODS

(REGISTRATION AND PROTECTION) ACT, 1999
Geographical Indication (GI) of Goods are indications which identify goods or a product as
emanating from a territory or a region or a country, where a given quality, reputation or any
other characteristics of the goods or product are essentially attributable to that particular
geographical origin. In other words, such a name conveys to the public an assurance of
specific quality and distinctiveness attached thereto which is essentially attributable to a
particular place, locality or region of a country or a country itself.

In simple terms, a GI is an indication which identifies agricultural goods, natural goods or

manufactured goods originates in the territory of country, or a region or locality and it
should have a given quality, reputation or other characteristics of goods which are
essentially attributable to its geographical origin.

TRADEMARK - THE TRADE MARKS ACT, 1999

Trademarks are used by traders to distinguish their goods and services from their
competitors in a crowded market place. The idea behind branding being to create an
association with the product for consumers to easily identify it. A trademark symbolises
origin of goods and gives confidence to the purchaser of their consistent quality and value
so that each time the product with the same brand is purchased, the consumer is sure of its
nature and quality. Companies spend a fortune in brand building and creating an association
in the minds of consumer and advertising and promotion play a key role in such exercise
thereby building value for the brand and making it a valuable asset. In economic terms thus
a brand / trademark can be sold as property and monetized even by way of licensing /
franchising. Thus it simultaneously become relevant for the companies to protect the value
and its strength in generating revenues in a market place form counterfeiting, imitation
products, look alikes, etc. The law on trademarks thus looks at all these aspects of
trademarks and accordingly the Indian law has detailed provisions to take care of such
business environment.

In Sumat Prasad vs. Sheojanan Prasad AIR 1972 SC 2488 it was held that “The function of a
trade mark is to give an indication to the purchaser or a possible purchaser as to the
manufacture or quality of the goods, to give an indication to his eye of the trade source
from which the goods come, or the trade hands through which they pass on their way to the
market.”

In M/s Power Control Appliances & Ors. Vs. M/s Sumeet Machines Pvt. Ltd 1994 (2) JT 70, it
was held that “It is a settled principle of law relating to trade mark that there can be only
one mark, one source and one proprietor. It cannot have two origins.” Therefore the
primary function of a trade mark is to indicate the source and origin of the goods sold under
it.

Thus, it can be said that a trademark serves to identify source of goods and as indicator as
origin of goods. A trademark also guarantees a consumer of the consistent quality of the
products upon which it is used. These principles have been enshrined in the modern
definition of a trademark. Indian Act defines a “trade mark” in section 2(1)(zb) and states
that a trademark means a mark:

(a) Capable of being represented graphically; (b) Capable of distinguishing the goods or
services of one person from those of others; and (c) Used or proposed to be used in relation
to goods or services for the purpose of indicating or so to indicate a connection in the
course of trade between the goods or services and some person having the right, whether
as a proprietor or a permitted user, to use the mark.