Intellectual Property Rights

An Overview

DR.RAJESH DIXIT
Deputy Controller of Patents & Designs
Website: www.ipindia.nic.in
E-mail: [email protected]

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 INTELLECTUAL PROPERTY

• Creations of the Human Intellect

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What is intellectual Property?
 The right of property rights is the
power to exclude others from enjoying
property.

 Intellectual Property rights gives the

owners to exclude others from access
or use of protected subject matter.

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Intellectual Property-
International Treaties
 Laws Relating to Protection of Intellectual
Property in India amended to make it
compliant with International TRIPS
Agreements- by 1/1/2005
 GATT to WTO-Formation of WTO 1/1/1995-Barrierless
Globe
 WIPO- World Intellectual Property Rights Organization –
1970- to promote protection of IP worldwide, ensure administraive co-
operation among members
 TRIPS Agreement – Agreement on Trade Related
Aspects of Intellectual Property

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International Treaties and Conventions on Intellectual
Property-1

 The Paris Convention for the Protection of Industrial

Property –India enforcement date- December 7,1998
 The Berne Convention for the Protection of Literary
and Artistic Works- April 1, 1928 India
 Convention for the Protection of producers of
Phonograms against Unauthorised Duplication of Their
Programs- Feb12, 1975 India
 The Madrid Agreement concerning the International
Registration of Marks and Protocol Relating to the
Agreement- India sign on 8th April,2013
 The Nice Agreement concerning the International
Classification of Goods and Services for the purposes
of Registration of Marks- India enforced April 8, 1961

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International Treaties and Conventions on Intellectual Property-2

 Patent Co-operation Treaty- for filing, searching and

examination of applications for protection of inventions-
india enforcement date December 7, 1998
 Strasbourg Agreement Concerning the International Patent
Classification –India yet to sign
 Budapest Treaty on the International Recognition of the
Deposit of Micro-organisms for the Purposes of Patent
Procedure- enforcement date India December 17, 2001
 The Locarno Agreement Establishing an International
Classification for Industrial designs- India 2012
 Hague Agreement concerning the International Registration
of Industrial Designs- India not yet signed
 UPOV – Plant Varieties

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 ORGANISATION CHART
CGPDTM

Trade Marks Geographical

Patent Office RGNIIPM
Registry Indications
Registry

Mumbai
Kolkata
Kolkata Chennai Nagpur
Delhi
Delhi
Mumbai Chennai
Chennai
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DR.RAJESH DIXIT
 IP OFFICES IN INDIA

DELHI MUMBAI

CHENNAI KOLKATA
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Focus: Basic Concepts

 Patents
 Copyright And Related Rights
 Trademarks
 Industrial Designs
 Geographical Indications
 Layout - Designs Of Integrated
Circuits
 Undisclosed Information
 Present legislations in India
•Patents : The Patents Act. 1970. Amended in , 2005
•Design : The Design Act 1911. (Design Act. 2000 enacted)
•Trade Marks : Trade and Merchandise Marks Act,
1958. (Trademarks Act 1999 , enacted)
•Copyright : The Copyright Act, 1957 as amended in
1983,1984, 1992,1994 and 1999 and the
Copyright Rules, 1958.
•Layout Design of integrated Circuits : The Semiconductor
Integrated Circuit Layout Design Act 2000.
•Protection of undisclosed information:The Contract Law.
• Geographical indications : The Geographical Indication of
Goods (Registration and Protection) Act1999
• Plant Variety: The Plant Variety and Farmer,s Right
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Protection Act-2000
DR.RAJESH DIXIT
 Comparison of types of IP-1
Patent Trademarks copyright Geographical Design
Indications

What is Invention. Words, Original literary, Identification of Shape ,

phrase,logo used dramatic goods or services configuration,
protected as trademark on work,musical and from a pattern,
goods or services. artistic works, geographical ornamental etc
cinematograph source of origin. applied to article
films, sound and judged by
recordings. looks or appeal to
the eye.

How to File application File application for File application for File application for File application for
for grant of registration of registration of registration of registration of
protect patent. In Patent trademark. In copyright. With geographical design with Indian
Office Trademark Registrar of Copy indication .with GI Patent & Design
Registry Rights Registry Office

Who can Inventor(s) or User or proprietor First author or Association of Proprietor of new
assignee. or owner. assignee. persons or or original design
apply for producers. not previously
registration published.

Test for Novelty, Distinctiveness, Originality. Source of New and original.

Inventive use based. geographical
protection
7/10/19 concept, utility. DR.RAJESH DIXIT origin.
 Comparison of types of IP-2
Patent Trademarks copyright Geographical Design
Indications

Term of 20 years 10 years initially Over 60 years 10 years initially 10 years initially
Renewable Renewable extendable by 5
protection indefinitely indefinitely years

Protection Right to exclude Right to exclude Right to prevent Exclusive right to Powers to
others from others whose use unauthorized the use of GI in exclude others to
provided making, using may cause copying or public relation to those use or apply
selling, offering to confusion or performance goods. registered design
sell, and importing deception

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 INDUSTRIAL PROPERTY

PATENT TRADEMARK
Auto-Focus Mechanism Brand Name
Subject Matter of TradeMark
Subject Matter of Patent

DESIGNS
External Appearance of Camera
7/10/19 Subject DR.RAJESH
Matter ofDIXIT
Design.
I. Patent
 A Patent is a right granted for an invention, a
product or a process that provides, in general, a
new way of doing something, or offers a new
technical solution to a problem, by the
Government on the Patentee for a limited period
 Duration of Patent rights: 20 years
 The rights is the exclusive privilege to prevent
others from practicing i.e. making, selling,
offering for sale, importing, distributing and using
the inventions (or authorizing others to do so)
in consideration of his disclosure of the invention
covered by the patent.
What is an invention
 An invention is patentable if it is new, involves an inventive
step (i.e. it is not obvious) and is capable of industrial
application
 New or Novel means it does not form part of the prior art; Prior art refers
to all the relevant technical knowledge available to the public anywhere in
the world prior to the first filing date of the relevant patent application
 Inventive step means a feature of an invention that involves
technical advance as compared to the existing knowledge
or having economic significance or both that makes the
invention not obvious to a person skilled in the art;
 Capable of industrial application means that the invention is
capable of being made or used in an industry. An invention
cannot be a mere theoretical phenomenon; it must be useful and provide
some practical benefit
Inventions not patentable: examples
Inventions which are
 frivolous against Natural Laws, injurious to public morality,
injurious to public health of human beings, plants and
animals, discovery of scientific principles, discovery of a new
property of a known substance
 mathematical or business methods or a computer program
per se or algorithms or rule or method of performing mental
act or method of playing game
 in the area of traditional knowledge
 relating to atomic energy and invention prejudicial to the
interest of security of India
 productions of new substance by mere admixture
arrangement
 Patent is a territorial right
Disclosure requirement
 An equally important requirement for a grant of patent is
that a patent application must disclose the invention in
a manner sufficiently clear and complete for the invention
to be carried out by a person skilled in the specific
technical field
 In some countries, patent law requires that the inventor
discloses the “best mode” for practicing the invention
 For patents involving microorganisms, microorganism is
required to be deposited at a recognized depositary
institution
Examples of the patentable inventions

 a novel and new chemical entity or drug

 cordless telephone system
 electronic weighing machine
 process of recovery of silver from spent
waste
 disposable blood bag
 process for making ink for marking voters
in the election process
Disposable blood bag system – Sri Chitra Tirunal
Institute of Medical Science and Technology
 Product
manufactured and
marketed by
Hindustan Latex
Limited.
 Widely used in the
country and exported
to several countries
including UK, USA
earning valuable
foreign exchange.
Minor modifications patentable:
example
 Sewing needle with eye at
the top and sharpened from
bottom
Inventive feature:
 Sewing needle with eye
at the bottom and
sharpened from bottom
Patents ─ interfacing innovation

Invention Patent

Innovation
 Requesting for No request deemed
Filing an application Publication(Sec.11A)
examination with drawn
Appeal to appellate
Board.
Opportunity
Examination Objection Refused
for hearing
Appeal to H.C.

Gant
Opposition Pre –Grant Opposition Appeal to appellate
failed if any Board.
entry of
Patent in the register
Allowed

High Court
Patent certificate
issued

Advertisement
in Journal(Sec.43(2 Renewal fee

10 July 2019 DR.RAJESH DIXIT

Post Grant Opposition
II. Industrial design: the context
 Integral part of consumer culture and competition to
draw consumer’s attention
 Adequate protection essential to grant to an original
design and the embedded creativity
 As per law – only the aesthetics or design element –
registered and protected
 Right to prevent all other from producing, importing,
selling or distributing products having an identical
appearance or a fraudulent or obvious imitation
 Gives you a Unique Selling Point (USP)
 Is an asset & can be licensed
What is a Design
 “Design” means only the features of shape, configuration,
pattern, ornament or composition of lines or 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;
 “Article” means any article of manufacture and any
substance, artificial, or partly artificial and partly natural and
includes any part of an article capable of being made and
sold separately;
 It means the features applied to an article and not the article
itself. Features are conceived in author’s intellect who gives
them a material form as a specimen, prototype or model
Design Examples
Industrial Design

©
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Patent Office ,New Delhi
 Criteria of registration

Toqualify for registration the design

 must be new or original
 must not have been previously published in India
 is not significantly distinguishable from known designs or
combination of known designs; or
 comprises or contains scandalous or obscene matter shall
not be registered.
 Initial period of registration 10 years; further extendable
for another period of 5 years
 Example: Distinctive shape of a coco-cola bottle or textile
designs.
Sugar cubes of noticeable shape and
configuration allowed
 WHERE TO FILE THE APPLICATION ?

KOLKATA Receiving & Examination

H.O.

DELHI MUMBAI CHENNAI

Receiving Center Receiving Center Receiving Center
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III. Trademark: changes in law
 In view of developments in trading and
commercial practices
 Increasing globalization of trade and industry
 The need to encourage investment flows and
transfer of technology
 The need for simplification and harmonization of
trade mark management systems
 Trade mark: means a mark capable of being
represented graphically and which is capable of
distinguishing the goods or services of one
person from those of others and may include
shape of goods, their packaging and combination
of colours
Trademark
A trademark is an identification symbol. It could be a
Word, Letter, Numerical, Abbreviation of Names,
Device Names, Signature, Photograph of a Person or a
Combination of all Cannon

 In order to be eligible for protection a mark must be

distinctive of the proprietor so as to identify the
proprietor’s goods
 The registration of a trademark is for a term of ten
years and is renewable from time to time
Trademark
Protection of trademark
 Indicates the origin of a product e.g “Brook Bond” – tea
originating from Company – manufacturing tea and
marketing under that mark
 The quality of tea sold under mark such as “Brook Bond
Tea”, which is different from tea labeled with mark “Taj
Mahal”; the trade Mark “Sony” associated with electronic
goods, particular excellent quality, and distinguishes from
products of Sony’s competitors Samsung
 Creates an image of a product in the minds of public. The
mark “M” stands for food items of the American fast food
chain MACDONALD. Instantly links with the reputation for
food items – offered for sale – in the market
Service mark
 Where a trademark is used in connection with the
services, it may be called ‘service mark’ e.g. service
marks are used by hotels, restaurants, airlines or
tourist agencies
 Service: means service of any description which is
made available to potential users and includes the
provision of services in connection with business of any
industrial or commercial matters such as banking,
communication, education, financing, insurance, chit
funds, real estate, transport, storage, material
treatment, processing, supply of electrical or other
energy, boarding, loadging, entertainment, amusement,
construction, repair, conveying of news or information
and advertising.
Grounds of refusal of registration of
trademark

 which is devoid of any distinctive character, that is to say, not

capable of distinguishing the goods or services of one person from
those of another person:
 which consist exclusively of marks or indications which may serve in
trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods or
rendering of the service or other characteristics of the goods or
services;
 which consist exclusively of marks or indications which have become
customary in the current language or in the bona fide and
established practices of the trade.
 Provided that a trade mark shall not be refused registration if
before the date of application for registration it has acquired
a distinctive character as a result of the use made of it or is a
well-known trade mark.
TMR Flow Chart
IV. Copyright
 Grants exclusive rights to the creators of
original literary, scientific , artistic and other
works
 Prevents only the form of expression of ideas
and not the ideas themselves; the protection
is to the creativity in the choice and
arrangement of words, musical notes, colours,
shapes and so on
 No protection Protected
 COPYRIGHT
Original
Works:
Literary
Arts,
Sciences
Drama
Music
Sound
recordings
Cinematograp
h films
Works: examples
 Works: Ideas expressed in material form wherein
sufficient labour, skill and capital has been used.
 Literary work: Works expressed in print or writing
irrespective of literary quality. Includes computer
programmes, tables and compilations including computer
databases
 Examples: Question papers, Guide books, Dictionaries,
Catalogues, Letters (Private letters, Commercial letters,
Government letters), Questionnaire for collecting
statistical information, Research theses and dissertations
 Works Not Protected. Examples: Titles, single word (not
as literary work, but may be protected as artistic work),
advertisement slogans
Works: examples
Dramatic Works: Plays, theatre productions
Musical Works: Both written and unwritten (Separate Rights in
Lyric and Music)
Artistic works: Paintings, cartoons (they are both Literary and
Artistic), photographs, sculptures, any work of artistic
craftsmanship e.g. label, logos, colour combinations
Architecture: Any building or structure having an artistic
character or design, or any model for such building or
structure
Cinematograph Films: Feature film, documentary, video,TV
film
Sound Recordings: Phonograms, records, CD-Roms
Separate Rights in the Works Embodied in Film or Record
Copyright
 Moral rights and Economic rights
 Rights are the exclusive rights to authorise
others to use the protected works e.g.
reproduction, performing, recording,
broadcasting, and translation
 Assignable, Moral rights still available to stop
distortion, mutilation, modification prejudicial to
his honour and reputation
 Copyright subsists for a lifetime of the authors
plus 60 years
V. Geographical Indications
 Geographical indication: in relation to goods, means an
indication which identifies such goods as agricultural
goods, natural goods or manufactured goods as
originating, or manufactured in the territory of a country,
or a region or locality in that territory, where a given
 quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in
case where such goods are manufactured goods one of the
activities of either the production or of processing or
preparation of the goods concerned takes place in such
territory, region or locality, as the case may be.
 Duration: the registration is for a period of ten years and
renewal from time to time.
Geographical Indication
 Geographical indication is an indication
that identifies a good as originating in a
territory where a given quality, reputation
or other characteristic of the good is
essentially attributable to its geographical
origin.
 In other words, it was produced there by
harvesting, mining, conversion, processing
or manufacture
 Example
Darjeeling tea, French wine, basmati rice
 Filing an application

examination objections Opportunity refused

for hearing

acceptance Appeal to IPAB

Advertizedin Opposition
Journal if any
Allowed or refused
Entered in Appeal to IPAB
theregistered Acceptance

Registration certificate
issued
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Darjeeling tea (logo and word)
GI: essential elements
 An indication or appellation of origin
 Used to identify agricultural, natural or manufactured
goods originating in the said area
 Originates from a definite territory in India
 Should have a special quality or characteristics or
reputation based on the climatic or production
characteristics unique to the geographical location
 GI to qualify for protection an indication must:
1. Identify the good and its area of geographical origin.
2.Possess a given quality, reputation or other
characteristics which
3.Is essentially attributable to its area of geographic
origin.
Examples

Kathputli of Rajsthan Malabar pepper

Kanchipuram Silk
 Features of Chanderi Fabric – the booties
 Made exclusively by hand

 Interlaced and permanent in

nature - their original
shape and structure always
remain the same

 Colour, shine and

brightness is ever lasting

 No comparison
anywhere else in the country

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VI. Layout designs in Integrated Circuits

 A semiconductor integrated circuit is a product having

transistors and other circuitry elements, which are
inseparably formed on a semiconductor material or an
insulating material or inside the semiconductor material
and designed to perform an electronic circuitry function.
 In India, the Semiconductor Integrated Circuits Layout-
Design Act, 2000 is the prevailing law.
 Registering the layout-design under the Act gives the
rights holder the exclusive right to the layout-design and
to obtain relief in respect of infringement.
Layout designs
 Large scale integration of a number of electrical circuits in a
very small component became possible due to advances in
semi-conductor technology.
 Integrated circuits are creations of human mind and are used in
a wide range of products using data processing etc.
 A period of 10 years counted from the date of filing an
application for registration or from the date of first commercial
exploitation anywhere in India or in any convention country or
country specified by Government of India whichever is earlier.
 Semiconductor Integrated Circuits Layout-Design Registry Room
No. 3014-3015 Department of Information Technology
Electronics Niketan, 6 CGO Complex, Lodi Road New Delhi-
110003
Layout designs
 Layout-designs are prohibited from registration under the
Act if they are:
 Not original
 Have been commercially exploited anywhere in India or in
a Convention country
 Not inherently distinctive
 Not inherently capable of being distinguishable from any
other registered layout-design.
 A layout-design shall be considered to be original if it is
the result of its creator's own intellectual efforts and is not
commonly known to the creators of layout-designs and
manufacturers of semiconductor integrated circuits at the
time of its creation
VII. Confidential information / Know- how

 Confidential information is any information

generally not known or readily accessible to
persons in the field and is of commercial value
that is being prevented from being disclosed by
the owner of the information e.g. the list of
customers
 Know – how is a form of confidential information
that may not have the benefit of patent
protection e.g. aggregation of known processes,
accumulation of data, a secret formulation
 No specific law on trade secrets.
 Protected under the contract law.
Designated Authorities for IPR protection

Nature of IPR Designated Authority

Patent The Patent office and its branches (Kolkatta, Delhi,

Mumbai, Chennai); Controller General of Patents, designs
and trademarks
Trademark Registry of Trademark (Mumbai, Ahmdabad, Kolkata, New
Delhi, Chennai)
Design Controller General of Patents, designs and trademarks
(Kolkatta)
Copyright Registrar of Copyrights, New Delhi
Geog. Indicator Registrar of Geographical Indicators, Chennai
Integrated Circuits Semiconductor Integrated Circuits Layout-Design Registry
(SICLDR), New Delhi

Plant Variety National Plant Variety and Farmers' Rights Protection Authority,
Ministry of Agriculture, New Delhi
 Thanks
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