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UNIT I - Introduction
2/1/24 - Class 1
Introduction
There is a list of cases but it’s not exhaustive.
Focus is on trade secrets, patents, copyrights, trademarks, etc.
Meaning of Intellectual Property: Anything which is a result/outcome of your
mind and intellect. Creating or inventing anything out of one’s intellect to be
protected or rewarded. (Rewarded because it will give others an incentive to
create and invent things.)

Purposes of Intellectual Property Law

1. To reward the creator or inventor: The words ‘creator’ and ‘inventor’ have to
do with the type of IP property. They are rewarded by giving that person a
monopoly and exclusivity over its use. The monopoly provides exclusive rights
and for anyone else to use it, they will have to seek permission from that
person. The right owner gives someone else permission via licenses.

2. IP law also aims to serve the public good: It is often forgotten or overlooked.
Ways in which it serves public interests are:
A)
IP rights are given for a specific period of time: Monopoly is not granted in
perpetuity in some cases. Once the monopoly has expired, the subject matter
falls in the public domain and the general public does not have to seek
permission from the creator or inventor. This is not the case in all IPs given,
and in those cases, IP law serves the public good in other ways.
B)
Avoid Consumer Confusion in the Marketplace: It does so by refusing
registration of similar/same marks.
C)
Compulsory Licensing: Law casts an obligation to work certain patents -

UNIT I - Introduction 1
 Someone who has been given a patent on a subject matter has to work the
patent to the fullest manner possible - make it available to the public to the
fullest scale possible. This can be done by granting licenses to others with
reasonable conditions or by manufacturing it himself. If the license is not
granted or a license granted has greater demand than supply - this will lead to
a compulsory license. This is given in the Patent Act 1970 wherein the
government grants a license on the existence of certain situations or
conditions (3 grounds). These conditions, given in Section 84 of the Act,
include:
i) Subject matter is not being worked
ii) the license is made available through unreasonable terms or licenses such
as reasonably affordable prices.

This is a form of
price regulation also.
Even where the compulsory license is granted, the law keeps in mind the
rights of the patent/patentee as it is the outcome of the effort of the creator.

Protection of Patentee after grant of Compulsory License.

a. Non-exclusive license
b. The granter of compulsory license is required to ensure the rights of all
parties involved are protected.
D)
Allow Parties to Oppose the Grant of Patent: When a patent application is
made, the law allows other parties to oppose the grant of patent so that wrong
patents are not granted. Wrong patents include patents on things that already
exist.

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India is a signatory to TRIPS and requires member states to protect 7 types of
intellectual property. It lays down the minimum standards to be met by member
states and how it is executed is to be decided domestically.
Types of Intellectual Property:

1. Patent

2. Trademark

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 3. Copyrights

4. Undisclosed information (Trade Secret)

5. Semi-conductors and integrated circuits

6. Industrial design

7. Geographic indicators

Additionally, members are required to protect plant varieties through patents or

sui generis mechanisms.
A non-mandatory provision of TRIPS imposed by a country in a manner that goes
beyond that provision as given in TRIPS, it is called a TRIPS PLUS provision.

India is TRIPS compliant - it has statutes on all types of IPR except undisclosed
information, which is protected by Indian courts through their decisions.

PATENT
Patents are rights granted to protect INVENTIONS. They are governed by the
Patents Act 1970.

Invention - the meanings vary scientifically and in the eyes of the law.
Legally - new product or process involving an inventive step and capable of
industrial application. (As per Patent Act 1970.)
Patents Act excludes certain things from patent protection even if they meet the
above criteria (given in S3 of the Patents Act 1970). The reason for this is largely
public interest and to avoid granting a monopoly on it.

It is also often done because many further inventions may depend on it.
Eg: Method of agriculture, scientific formulas (abstract theory), business method.

However, the US legislations only have a positive list of subject matter and no list
of subject matters that are excluded from patents. Business methods are allowed
under process patents in the US.

REQUISITES OF PATENTABILITY
There are substantive and procedural requisites, both have to be met
simultaneously.

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 Substantive Requisites of patentability
A) A patent application, as a first hurdle, has to meet the eligibility criteria and not
fall under the subject matter covered in Section 3 - patent eligible subject matter

B) New/ novelty - the subject matter should not form a part of the prior art. Prior
Art - information available in the prior domain.
C) Inventive step aka non-obviousness - TRIPS and the Patents Act uses
‘inventive step’ and the US legislation uses ‘non-obviousness’. (S.103 of the US
Patents Act). TRIPS says both can be used interchangeably.

S.(2)(1)(J) of Patents Act 1970 v. S. 103 of the US Patents Act

Obviousness is judged based on a person who has an ordinary skill in the art.

D) Capable of Industrial Application - utility or useful or beneficial. Utility and

usefulness are used by the US law while CoIA is used by Indian law and TRIPS.
TRIPS says that both are interchangeable.

Procedural Requisites of Patentability

A. Disclosure - Patents are quid pro quo - it is granted in exchange for full
information. It is done for the following reasons:

(i) add to public information

(ii) ascertain the utility

B. Enablement -Disclosure must meet the requirement of enablement. The
disclosure must enable a person having ordinary skill in the art to make use of the
invention. There is a requirement for the disclosure to be in such detail that
anyone with basic skills in the field can read it and make use of it.

C. Best Mode - Comes into the picture when there are more than one ways/modes
of performing the invention. The applicant is required to disclose the best mode of
performing the invention when there are more than one modes of performance.

D. Claims - It determines the boundaries of patent monopoly. Its drafting must

be done in such a manner that the patent will be granted. (substantive and
procedural requirements to be met) When a patent is granted, the monopoly
vests on the claims.

UNIT I - Introduction 4
 Usually, applicants have a tendency to have broad claims to get monopoly over
more things but that leads to a likelihood of being hit by prior art. If the claim is too
narrow, you may end up giving up on monopoly over matters that you deserve to
have it over. If the applications are too broad, it does not get reject outright, the
patent office will ask you to amend the application and narrow it down.
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Patent Applications have to be accompanied by a ‘specification’. Specifications

are a techno-legal document. Specifications are required to complete the
requirement of ‘disclosure’ in a patent application. The specification provides a
completely detailed technological disclosure of the invention. All the procedural
requirements are a part of the specification.

Its called a techno-legal document because the content is technology specific and
it ends with claims. (Legal part)
The Patent’s Act 1970 allows a mechanism to oppose the grant of a patent under
Section 25 - on the same grounds that a patent is granted. If those grounds are
not met, it becomes a reason to oppose the grant of the patent.
Opposition is allowed at three stages - pre-grant, post-grant, and revocation

Pre -grant: Prior to the grant of patent - given under section 25(1)

Post-grant: After the grant of the patent - given under section 25(2). It has to be
done within the expiry of a specific period after the grant of the patent (1 year).

Revocation: Cancellation of patent. Both revocation and post-grant are done after
the grant of the patent. Unlike Post Grant Opposition, Revocation can be sought
at any time during the validity of the patent.

In India, there is no presumption as to the validity of the patent. In the US there is a

presumption of validity of the patent.
Therefore, the burden of proof of validity is on the patentee in India and it is on
those opposing its validity in the US.

(US Concept) Patent Trolls: A party who has been granted a patent but has no
intention to work the patent. They have been granted a wrong patent and are
aware of it but wait for someone to stumble upon it. When someone eventually
stumbles upon it, they will move aggressively towards claiming infringement, there
will be a validity of the patent and the burden of proof is on the alleged infringer.

UNIT I - Introduction 5
 6/1/24
Infringement can be of two types:

A) Literal Infringement: US SC has said it’s a very dull and boring way of
infringement. Literal infringement is present when every single element of the
patented invention is present in the infringement. It is usually the alleged infringer
that argues in favor of this.

Cons: Limiting the courts to the literal infringements will reduce the economic
value of the patent. A competitor can make minor and inconsequential changes to
get away with infringement.

There is an ongoing debate on the need to go beyond literal infringement.

B) Non-Literal Infringement: Also referred to as infringement under the doctrine
of equivalence. It broadens the scope of patent monopoly. The infringement is
not exactly what is covered under the patent monopoly. This is where a majority of
patent infringement cases lie. This would mean that courts are going beyond the
language of the claim. It is usually the patentee that argues in favor of this
Cons: Others in the field will be uncertain about the boundaries of the monopoly
granted to the patentee.

Eg: Patented Entity: A+B+C

alleged infringement: A+B+Z

Courts would now check if Z=C to see if the matter can be brought under the
doctrine of equivalence.

To ensure that the patentee does not unduly broaden the scope of the patent,
there are limits set by judicial decisions. This is usually raised by the alleged
infringer.
Limit to the Doctrine of Equivalence (there are many, we’re only learning one)

1. Doctrine of Prosecution History Estoppel (DOPHE)

This is the limit that is most often raised by alleged infringers.

TRADEMARKS

UNIT I - Introduction 6
 Subject Matter is a mark. A trademark is a mark. A mark is a word, phrase,
symbol, color, or a combination of all of these that a producer uses on their goods
or services to distinguish themselves from the goods and services of other
producers.

The aim is to DISTINGUISH and avoid consumer confusion in the marketplace. It

does so by ensuring that producers/parties do not use similar marks on similar
goods.

Acquiring Rights over a mark:

1. Consistent use of the mark - Consumers start associating the mark with the
product. The law or courts have not quantified a timeframe to meet this
requirement.

2. Registration of Mark - under a statute (in India, by following the Trademarks

Act 1999). Registration is not mandatory. But if a mark is registered, the
registered proprietor can bring a trademark infringement action. If it is not
registered, the user of the mark can bring a passing-off action.
In a passing-off action, the burden of proof is on the plaintiff
and is therefore considered a more burdensome task. In a trademark
infringement action, there is a presumption of validity of the trademark.
Registration is considered proof of the validity of the trademark.

Burden of Proof includes the establishment of the classical trinity of passing off:

1. As a result of the use of the mark over a certain period of time, the business
has earned a reputation.

2. Misrepresentation by the defendant that they have rights over the mark -
proved by showing the use by the defendant of the mark on their own goods.

3. Use by the defendant has or is capable of causing damage to

reputation/business.

Section 27 of the Trademarks Act protects the rights of unregistered owners of

marks.
Trademark Infringement: A registered mark is also protected against such use
that is deceptively similar to the protected trademark. Deceptive similarity has

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 been defined under the Act.

If an identical or deceptively similar mark is used in a different class of goods, an

infringement action can be brought. This is the general rule, under Section 29(2)
of the Act.

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Infringement

When registered Trademark / identical or deceptively similar mark for the same
class of goods.
General Rule: One mark, one source → exception - concurrent registration

The license of Trade Mark: registered users of trademarks - action can be brought
by registered user or registered proprietors.
S.29

Infringement happens and passing-off (would still have to satisfy the limits) - in
goods of the same class, as the aim is to establish consumer confusion.

When a junior user registers a TM and a subsequent senior user brings passing
off - registration would not be considered. The main Aim of TM is the protection
of consumer interests.
Trade and Merchandise Act 1950 :: Trade Marks Act 1999

TRIPS mandates higher protection for well-known trade marks incorporated

under Trademarks Act 1999. eg - prior use of a well-known trade mark

If a trademark ‘X’ is considered well known and Y gets X registered for a different
class of goods, X would be allowed to bring in infringement by virtue of it being a
well-known mark.
Factors of a well known Trademark (S.11)

1. The duration of monopoly is not perpetual

Patent expires 20 years from date of application
Trade marks - 10 years, renewable by 10 years - do not fall within the ambit of
a well-known trade mark (non-renewable does not mean end of right)

UNIT I - Introduction 8
 2. Concept of Genericide
- falling into common use
- generic mark - a class of goods themselves v arbitrary mark - eg: Apple for
computers

9/1/24

Trademarks can be lost for many reasons including:

1. Genericide: the product is now generic. If it is generic, it cannot be said to
have uniqueness - which is an absolute requisite for trademarks. The term
‘genericide’ is not used in the trademarks act.

The purpose of a trademark is to indicate to the users the origin of the goods.
Even a strong mark can be subjected to genericide. - This is often the case with
new products. People associate a technology or an act with the brand itself
(Pampers, Paytm etc) so it becomes generic.
Genericide can be specific to a region.

Marks are of two types:

1. Strong mark: inherent distinguishing quality attached eg: symbol /logo

2. Weak Mark: no inherent ability to distinguish - eg: descriptive term. But it can
still get a trademark based on acquired distinctiveness.

Acquired Distinctiveness -

It is received based on USE. - How much use is not quantified in the Act.
S. 9 Trade Marks Act 1999
Same thing in the US - is called ‘Secondary Meaning’.

Domain Names
Indian SC in Satyam Infome v. Siffy Info Solutions said that domain names
perform the same function as trademarks and are therefore entitled to equal
protection as trademarks. This implies that if someone gets a domain name
registered, the same actions that can be brought in a trademark infringement can
be brought here.

Difference:

UNIT I - Introduction 9
 Trademark law is fundamentally territorial in nature. It falls under a territorially
specific statute but domain names are universally governed and have a global
nature.

WIPO and ICAN have come up with the Uniform Domain Name Dispute
Resolution Policy (the ‘Policy’) - to resolve disputes on domain names across the
globe and it mandates arbitration as a mode of dispute resolution. It recognizes
that if a domain name is registered not in good faith, it will almost always result in
the transfer of the domain name in favor of the complainant. Bad Faith
Registration includes:

1. Cyber Squatting: A person gets several domain names registered only with
the intention of selling them back to their rightful owner.

It allows applications seeking transfer of domain name to their name in lieu of

some grounds as per s.4(a) of the Policy.

COPYRIGHT
Subject Matter: Original Words
Copyright Act of 1957 identifies under S13 the kinds of work in which copyright
subsists:

1. Literary - includes Computer Programs - they are considered as literary works

2. Dramatic

3. Artistic

4. Musical

5. Sound Recording

6. Cinematograph Film

Indian SC in the case of Eastern Book Company v D B Modak - explained the

concept of originality in the case of literary work - ‘work must originate from the
author rather than being copied from someone else.’ It also said that in
determining originality, the court does not consider the quality of the literary
work - literary merit is not considered.

Fundamental Rule of Copyright: Copyright does not protect ideas, it protects

expressions of those ideas. - Idea expression dichotomy of copyright law.

UNIT I - Introduction 10
 Works can be fiction or non-fiction/of fact - they are both eligible for copyright but
fictional work has a higher protection. This is because the factual base of works
of facts cannot be protected, it is only the specific expression that can be
protected. Fictional work are original from its very base.
Registration is not mandatory but registration has some benefits.

Copyright is said to give its owner both economic and neighboring rights.

1. Economic rights - right to produce, sell, copy etc. Make income out of the
creations.

2. Neighboring rights -
a.
Author’s special rights a.k.a. Moral Rights of the Author - The Copyright Act
uses “author’s special rights” but globally it is called the “moral rights of the
author”. They are of two rights:

(i) Right to paternity - Author has the right to be named and recognized as the
author of the work even if the work is sold.

(ii) Right to integrity - If the author’s work is destroyed, mutilated, or changed

to such an extent that it prejudices his reputation, then these rights come into
the picture. He has the right to prohibit such modifications. This is often used
in the case of parodies. Parodies do not constitute copyright infringement.
Parodies fall under ‘fair use’ of a work.

b.
Fair Use -Copyright Act 1957 uses the phrase ‘fair dealing’ under section 52.
s. 107 US Copyright Act uses the phrase ‘fair use.’ The privilege given to
someone other than the copyright owner to use the work without permission.
Fair use constitutes a defense to a copyright infringement action. It is often
referred to as an affirmative defense - meaning that the person claiming it
has admitted to the use of the copyrighted work without the permission of the
copyright owner but it is the way in which it is used that defends him from
such action.

10/1/24

UNIT I - Introduction 11
 How do courts determine whether the use constitutes fair use?

Section 107 of the US Copyright Act identifies factors that are to be taken into
account to determine fair use: (not exhaustive)

1. The nature of the copyrighted work - whether the work is a work of fact or
fictional since factual matters cannot be copyrighted

2. Purpose of use: The reason for which the work has been used - for profit or
not for profit. Where it is not for profit, it MAY result in fair use finding and the
former by itself does not negate a finding of fair use - eg newsreporting.

3. The amount and substantiality of the portion used in relation to the

copyrighted work: How much has the alleged infringer used.

Harper v Roe - The US SC said that the heart of the book has been taken
including quotes that give away the essence of the book which will not amount
to fair use.

4. Effect of the use on the market for the copyrighted work - how does it impact
the market for the original work? If the use has an adverse impact, then this
would negate a finding of fair use. The Market Substitution test in the US SC
has said that parodies operate in a different market than the copyrighted work.

Section 52 gives a list of examples where the use is fair.

Eg: A fair dealing for purposes of review: Where the use is for purposes of
reviewing the copyrighted work, it MAY be considered as fair dealing. Courts will
still have to determine if it is fair on a case-to-case basis.
The Indian courts also refer to the aforementioned factors in their references.

Limitations to the exclusivity:

1. Fair Use

2. Doctrine of Merger: It recognizes that if there are very few ways (or even
one) of expressing an idea, the ideas are merged and therefore no copyright
can be availed upon the expression too. It comes into play very often in the
case of computer programming. This limits a finding of infringement.

3. Scenes a faire - Scenes that must be there. The idea is to allow things to reach
the public domain.

UNIT I - Introduction 12
 TRADE SECRETS
Subject Matter- Information

‘Undisclosed Information’ as per TRIPS.

The only IP that India doesn’t have a specific legislation for protection. But that
doesn’t mean india is not TRIPS compliant since Indian courts do their part in
protecting trade secrets.
Meaning: information not disclosed by the holder of that information which gives
the information holder a competitive edge over the competitors that do not have
such information.
It is the most sought-after means of protection by people (in comparison to
patents mostly). There is a preference for Trade Secrets over patents because:

1. Since the subject matter of trade secrets is information, it gives way for
broader protection as opposed to patents that only protect inventions.

2. Sometimes the only option available is trade secrets since patents have
specific requirements to be met (check this)

3. Patents are anti-thesis of trade secrets since they require complete disclosure.
One can only have trade secret protection or patents. Trade secrets are
premised on the idea of secrecy.

12/1/24
The decision of whether to go for patents or trade secrets only applies when the
subject matter is covered under both. Eg: Customer lists cannot be patented.
Pros and Cons:

1. Time Bound: Patents are time-bound in nature (20 years from the date of filing
of the application) as opposed to trade secrets. Once the patent expires, the
information falls into the public domain.

2. Trade secret law allows others to find out a trade secret through proper
means. When proper means is used, they cannot be prohibited from using the
trade secret.
Reverse engineering is a process of backtracking the production of a

UNIT I - Introduction 13
 commodity to find out the manner of its creation. The findings so arrived at
can be used to create a new product under trade secrets but the trademark of
the old product cannot be used.
Patents on the other hand are completely protected- even if another person
comes across the invention using their own resources with no knowledge of
the pre-existing patent. Therefore, there is no innocent infringement of
patents.
In such cases, while damages may not be awarded, injunctions are granted.
(s.111 of the Patents Act)

3. Contract law may not always be effective in protecting trade secrets as it only
applies to those privy to the contract. The US has a statute called the
Economic Espionage Act which imposes penalties for misappropriation of
trade secrets. In comparison, contract law does not make violation or
misappropriation an offence.

4. There is greater requirement for disclosure in jurisdictions where trade secrets

are adequately protected as compared to courts that do not protect trade
secrets.

Proper v Improper Means

US Courts have said that it is not possible to give an exhaustive list of what may
constitute improper means.

UNIT I - Introduction 14