Mms Ipr Notes.docx

MMS IPR NOTES-The Copy Right Act,1957, The Patents Act,1999 and The Trade Marks Act, 1999

Notes on Laws relating to Intellectual Property rights(IPR):A property generated with the help of human intellect is called ‘intellectual property’ and is generated in various forms such as inventions, books, artistic creations, performances, shapes, words and pictures. Intellectual property is property in legal sense and it can be owned, sold, leased or licensed. IPRs are ‘Chose in action’ meaning, rights enforced only by legal action and not by taking physical possession. WTO which is responsible for the regulation of International trade, is also responsible for the global protection of Intellectual property rights. India is the signatory of WTO and as such it became the member of TRIPS(Trade relating to Intellectual property rights). The reason for enactment of and or amendment to various IPR Laws are to conform to the TRIPS. Salient points under various Acts which are collectively called Intellectual property laws:The Acts which are covered under IPR are as follows:1) The Trade Marks Act, 1999. 2) The Patents Act, 1970. 3) The Copyright Act, 1957 4) Designs Act, 2000. 5) Geographical Indications of Goods(Registration and Protection)Act,1999. 6) Protection of plant varieties and farmers’ rights, Act, 2001. 7) Semi conductor Integrated circuits Layout- design Act,2000. 8) Biological Diversity Act,2002. Trade Marks Act, 1999. The Trade and Merchandise Marks Act,1958 was the original act governing the trade marks in India. With the liberalization and opening up of our economy in 1991, increased globalization to make our Trade mark law compatible with WTO requirements, the 1958 Act is replaced by the present Trade Marks Act, 1999. Purpose of the Act:- An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. What is a trade mark? A trade mark is a visual symbol or sign in the form of a word or a label used for the identification of the Goods or services readily distinguishable from similar goods and services supplied by the others. The new Act came into force on 15-09-2003. Where a trade mark is used in connection with services, it may be called “service mark”. For example, service marks are used by hotels, restaurants, airlines, tourist agencies, car rental agencies, laundries etc The procedure for registration of a trade mark:- An application in writing to the Registrar of Trade marks. A single application can be made for the registration of a trade mark for different classes of goods and services. An application for registration of a trade mark has to be opposed within 3 months from the date of advertisement or such extended period of one month. An application for registration may be refused on the following grounds, namely:A) Absolute grounds for refusal:Trade marks which are - devoid of any distinctive character

-marks or indications which( may serve in trade to ) designate the kind, quality, quantity, intended Purpose, geographical indications etc of goods or services. For example, a mark like “shakti Energy – 500” relating to ayurvedic medicines having direct and close reference to character and quality of goods, court held, CANNOT be registered. An application for registration of trade mark “Tripti” for aerated water, juices(fruit) and non alchoholic beverages was opposed by the assignees of registered trade mark “TRIPP” on the ground that the applicant’s mark “Tripti” has direct reference to the character and quality of goods. It was held that the trade mark is not entitled to be registered under the Act. -A mark which consists exclusively of marks or indications which have become customary in the bonafide and established practices of trade -of such a nature as to deceive the public or cause confusion -contains matters likely to hurt the religious susceptibilities of any class or section of the citizens of India. -contains scandalous or obscene matter. -prohibited under the Emblems and Names(Prevention of improper use) Act, 1950. -If it (a) consists exclusively of shape of goods which results from the nature of goods themselves or (b) consists exclusively of the shape of goods which is necessary to obtain a technical result or (c) consists exclusively of the shape which gives substantial value to the goods

Nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration. ( ie if the trade mark refers to the nature of the goods, it is allowed. For eg., A logo like “cheetah” in Jaguar car.) B) Relative ground for refusal:-the identity or similarity of the trade mark with an earlier trade mark and identity or similarity of goods or services covered by the trade mark having chance of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. -the trade mark applied for is identical with or similar to an earlier trademark but is to registered for goods or services which are not similar to the goods or services for which the earlier trade mark is registered in the name of a different proprietor. However, the earlier trade mark which is registered for a different goods or service should be a WELL-KNOWN trade mark in India and the use of the trade mark for which an application is now sought without due cause, would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier existing trade mark which is registered for a different product or service. Here, the party opposing registration has to raise the above grounds of objection during opposition proceedings. As example, “Bajaj”, “Tata”, “Godrej”, “MRF” and “Birla” etc., have acquired a distinctiveness and reputation in their respective fields of operation and have become well known trade marks. Therefore, if any other person wants to take or derive unfair advantage in his business by adapting such well known trade mark to his product, he CANNOT do so.

-a trade mark shall not be registered if, or to the extent that its use in India is liable to be prevented (a) by virtue of any law, in particular, the law of PASSING OFF, protecting an unregistered trade mark used in the course of trade; or (b) by virtue of a copyright. Here also, the party opposing the registration has to raise the grounds of objection during opposition proceedings. What is a passing off Action? “Passing off” action is an action where a person tries to pass of his goods or services as those of the proprietor of the unregistered trade mark. Generally, no person is entitled to institute any proceedings to prevent or to recover damages for the infringement of an unregistered trade mark. However, Trade marks Act, 1999, while recogni sing the above principle, provides that even in respect of an unregistered trade mark, the proprietor (of the unregistered trade mark) may initiate passing off action against those who try to pas of their goods or services as those of the proprietor of the unregistered trade mark. C) Other Grounds for refusal:- A word shall not be registered as a trade mark if is commonly used and accepted name of any single element or a single chemical compound in respect of a chemical substance or preparation or that is a word which is declared by the World Health Organization and notified in the prescribed manner by the Registrar from time to time as an international non proprietary name or which is deceptively similar to such name. - In case of names and representations of living person or persons whose death took place within twenty years prior to the date of application for the registration of the trade mark, the Registrar may require the written consent of such living person or the legal representative of the deceased person before he proceeds with the application. The trade mark, when registered, DATES BACK to the date of the making of application. What is the DURATION of a Trade mark? The owner of the trade mark gets a perpetual right to its use in relation to the goods and services in respect of which it is registered. The registration is for ten years but may be renewed from time to time perpetually for further periods of ten years. Protection of Trade marks:Trade marks can be protected in the following ways, namely, 1) Infringement Action. 2) Passing Off Action. 3) Criminal Action. Infringement Action:-When a person gets his trade mark registered under law, he acquires valuable rights by reason of such registration. Registration of the trade mark gives him an exclusive right to the use of trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by ANY OTHER PERSON by a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain INJUNCTION, DAMAGES OR ACCOUNT OF PROFIT made by the other person. Passing off Action:- Here, as stated earlier, the Trade Mark need not be registered. It can be a trade mark or a get up. In “passing off”, the main principle is that no one has any right to represent for trade purposes, his goods or business as being the goods or business of somebody else. What are the reliefs in the suits for infringement or passing off? Injunction and damages or an account of profits together with or without any order for the delivery of

the infringing labels and marks for destruction or erasure. Criminal Action:Criminal complaints can be filed in the court of Metropolitan Magistrate or First Class judicial magistrate against accused persons whose whereabouts are known or unknown, charging them, inter alia(among other things) with having falsified a trade mark or applied a false trade mark or a false description to goods or having in possession blocks, plates or other instruments for falsifying trade marks or having in possession for sale or selling goods or things to which a false trade mark or false trade description is applied. Removal of Trade mark:A Trade mark registered WITHOUT ANY BONAFIDE intention on the part of the applicant to use it in relation to those goods AND that there has infact been no bonafide use of the trade mark in relation to those goods up to a date of three months before the date of application for taking off the trade mark from the register or that up to a date of three months prior to the date of application, a continuous period of five(5)years from the date on which the trade mark is actually entered in the register or a longer period has elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods or services by any proprietor thereof for the time being. ------------------------Patents Act, 1970 Earlier there was only PROCESS PATENT and no PRODUCT PATENT for drugs, foods and chemicals. Now product patent has also come into existence for drugs, foods and chemicals. The Product patent protection already exists IN ALL OTHER FIELDS. A patent is a right granted to a person who has invented a new and useful article or an improvement of an existing article or a new process of making an article. A Patent is not granted for an idea or principle as such, but for some article or the process of making some article applying the idea. Application for Patent:Who can apply for patent? 1) Any person claiming to be the true and first inventor of the invention; 2) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application; 3) by the legal representative of any deceased person who immediately before his death was entitled to make such an application. The application as above may be made by any of the persons mentioned above either alone or jointly with any other person for ONE INVENTION ONLY before the patent office. Every application for a patent shall be accompanied by a SPECIFICATION describing the invention and shall begin with a title sufficiently indicating the subject matter to which the invention relates. A PATENT SPECIFICATION is the heart and soul of a patent. There are two types of Specification, one PROVISIONAL SPECIFICATION and another, COMPLETE SPECIFICATION. Provisional specification is filed when the inventor is about to complete his invention. As patent law in India is based on “first to file” principle, is is advisable to file a provisional application with the Patent Office. ‘Complete specification’ is the full description of the invention alongwih all claims related to the invention and has to be filed within 12 months of the date of filing Provisional specification. This period of 12 months can be extended by the controller of Trade mark and Patents, at his discretion for three more months. Beyond this period, if Complete specification is not filed, the patent application is deemed to have been abandoned.

What after application for a patent? An application for patent shall not ordinarily be open to public for a prescribed period. If the applicant so desires, the application may be published before the prescribed period by the Controller general of Patents, designs and Trade marks. On the expiry of the prescribed period as stated above, the application for patent shall be published. Upon publication, the Biological materials, specifications, drawings etc., shall be available to the public. The application and specification and other documents related thereto shall be referred at the earliest by the controller general of Patents, designs and Trade marks to an EXAMINER for making a report to him(ie to the Controller) regarding the following matters, namely:1) whether the application, the specification and other documents relating thereto are according to the requirements of this Act and the rules thereunder. 2) Whether there is any lawful ground of objection to the grant of the patent under the Act in pursuance of the application. 3) The Examiners check whether the invention has already been published or claimed by any other person. In this check, it is interesting to note that though patent granted is valid only within the national Boundaries of a country, the publication is done GLOBALLY. If it is found that the application claims are already published in any of the national or international journal, the applicant may not be granted the patent. Where an application for a patent has been published but a patent has not been granted, any person may, in writing, represent by way of opposition to the controller against the grant of that patent, on the ground, inter alia, that the applicant for the patent wrongfully obtained the invention or any part thereof from him. On receipt of the report of the Examiner, the Controller may either grant the patent or may require the applicant to make necessary amendments after giving the applicant an opportunity of being heard. The inventor has to give satisfactory reply or suggest amendments to the satisfaction of the Controller within fifteen months(extendable by three more months) of raising objection by the patent office. If nothing is heard from the inventor at the expiry of fifteen months, the patent application is deemed to be abandoned. In case no objection is found or the inventor satisfactorily answers to all the objections, the Controller accepts the patent application along with the Complete specification and then the Invention is advertised in the Official Gazette. After this advertisement in the Official Gazette , if there is no opposition to the grant of patent (known as Pre grant opposition) or the opposition is properly answered, Patent is granted to the applicant under the seal of Patent Office. A patent is valid for a period of twenty(20) years FROM THE DATE OF PUBLICATION OF THE APPLICATION FOR A PATENT. Why validity of a patent is twenty years from the date of PUBLICATION OF THE APPLICATION? This is because, on and from the date of publication of the application for patent and until the grant of patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the investigation has been granted on the date of the publication of the application. However, the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted. Some general information on PATENTS:-The three standard requirements for a patent to be registered are novelty, utility and inventive steps/non obviousness. It should be new, new steps and should be commercially exploitable.

-During the term of the patent, the owner of the patent, ie, the patentee can prevent any other person from using the patented invention. After the expiry of the duration of the patent, anybody can make use of the invention, since it becomes a public domain. -A patent is a creation of STATUTE and is therefore territorial in Extent. Thus, a patent granted in one country cannot be enforced in another country UNLESS the invention concerned is patented in that country also. What is infringement? Infringement of patent consists in the violation of any “exclusive rights” of the patentee, namely, to make, use, exercise, sell or distribute the invention in India. Where the invention claimed is an article or substance, the rights of the patentee are infringed by any one who makes or supplies that article or substance commercially for use by others. Where the patent is for a process, the right of patentee is infringed by one who uses or exercises that method or process in India.

Where to file relief for infringement? Action for infringement of a patent must be instituted by filing a suit in the Court having jurisdiction not inferior to that of a District Court. The right to sue for infringement belongs to the patentee. A person who threatens to infringe may also be sued. The burden of establishing infringement is on the plaintiff , ie who has filed a suit. What are the reliefs available? It includes an injunction AND at the option of the plaintiff, either damages or an account of profits. The limitation period for taking action for infringement is three years from the date of infringement. -APPLICATION FOR PATENT ABROAD:- For applying ABROAD, one has to first apply in India and after six weeks to apply abroad. -A Patent is a Monopoly right. - In case of an invention in the Research and Development(R&D) Dept. of a Company, the application for a patent should be made both by the Employer and the employee to avoid future complication in the event of the employee in the R&D department resigns. What is Para IV filing? In case of Para IV filing, the generic manufacturer claims that either his product does not infringe the patent and /or the patent itself is invalid. A successful patent challenge allows the challenger, a 180 days exclusivity in which no other company can launch a generic version. What is “Evergreening” of a patent? When a patent is ending its tenure of Twenty years, there is a natural tendency on the part of the patent holder to extend the patent by applying some cosmetic touches to the patent and then apply to the patent authority to extend the same. In this way he can prevent it from becoming “generic”. However, Indian Patent Law, under Section 3(d) of the Patents Act, 1970, provides that the mere discovery of a 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 a known substance or of the mere use of a known process, machine or apparatus does not entitle a person for a patent or the extension of the patent. What is Compulsory Licensing? Compulsory licensing is a process where a Government allows a ‘Generic Competitor’ to market a more affordable version of a ‘Patented Drug’ on payment of royalties to the Originator Company, which holds the Patent.

Compulsory licensing are a legally recognized means to overcome barriers in accessing affordable medicines. Section 84 (1) of the Patents Act,1970 states that after expiration of three years from the date of grant of Patent, any person may make an application for grant of COMPULSORY LICENCE on three grounds namely, 1) The reasonable requirements of the public have not been satisfied or 2) The patented invention is not available to the public at an affordable price or 3) The patented invention is not worked in the territory of India.(ie if patented invention is “worked in India”, compulsory licence may not be granted) If the patented invention or product of a company is available in India through import without any cost or availability impediment/obstruction/hindrance, then it is presumed that the said company is “working a patent in India”.In a recent case, the Controller of Patents office, while denying Compulsory License to Hyderabad based Lee pharma, to manufacture Saxagliptin, the anti diabetes compound of Anglo-Swedish drug maker, AstraZeneca, observed that manufacture in India is not a necessary precondition in all cases to establish a case of “working in India”.(Economic times 23/08/2015)

----------------------------Copyright Act, 1957 -A Copyright shall subsist in an original literary work. -How to determine whether a particular piece of work can be a copyright or what are the requirements of Copyrightability? Copyright means the exclusive right to do or authorize others to do certain acts in relation to :a) LITERARY, Dramatic or Musical works. b) Computer Programme. c) Artistic Work. d) Cinematograph film and e) Sound Recording. - How to determine whether a particular piece of work can be a copyright or what are the requirements of Copyrightability? Copyright protects only what is EXPRESSED and not the IDEA that has been used to express. In India, works are protected as long as there is Original Expression. Originality relating to EXPRESSION OF THOUGHT. Thus, a work not copied from another work is original ie it should originate from the author. It does not mean the expression of Original or Inventive thought. A person who possesses Copyright of a literary work can, inter alia, do the following in respect of a work or a substantial part thereof, namely:a) Reproduce the work in any material form including storing of it in any medium by electronic means. b) Issue copies of the work to the public not being copies already in circulation. c) make any translation of the work or d) make any adaptation of the work. Adaptation includes any use of the work involving its rearrangement or alteration. Whether registration of copyright is compulsory? A copyright is an Unregistered Intellectual property right where the protection is AUTOMATIC and the registration is NOT COMPULSORY but OPTIONAL and not a condition precedent for acquiring a copyright. However, if the author of the Copyright desires to have the Copyright registered, he can make an application in the prescribed form accompanied by the prescribed fees to the “Registrar of Copyrights” for entering the

particulars of the work in the “Register of Copyrights”. In the Register of Copyrights, the details such as a)the names or titles of works and b)the names and addresses of authors, publishers and owners of Copyright and such other prescribed particulars are entered. The Registrar of Copyrights shall act under the superintendence and directions of the Central Govt. The advantage of registration of a copyright is that the register of copyright shall be a primafacie (at the first sight) evidence of particulars entered therein. A certified copy of an entry in the Register of Copyrights is taken as a prima facie evidence in all courts without further proof of production of the original. Further, the Registrar publishes in the Official Gazette, all entries made in the Register of Copyrights. How long a copyright lasts? A copyright lasts for a period of sixty YEARS(60) from the beginning of the calendar year next following the year in which the Author dies. In case of a work of Joint ownership, the copyright would last for sixty years from the beginning of the calendar year next following the year in which the last surviving joint owner dies. What is Infringement of a copyright? The following amounts to infringement of a copyright, namely, - Infringement of a copyright is anything done to the prejudice of the exclusive right of the owner of the copyright. - Permits any place to be used for the COMMUNICATION of the work TO THE PUBLIC where such communication constitutes an infringement of the copyright in the work. - when any person sells, hires, distributes, exhibits in public or imports into India, any infringing copies of the work. Here it should be noted that import of one copy of the work for private and domestic use of the importer is allowed. Who administers the copyright Act or who is the Authority for the copyright? The Central Govt., shall appoint a Registrar of Copyrights and may appoint one or more Deputy registrars of copyrights. A Copyright office shall be established for the purposes of the Copyright Act and it shall be under the immediate control of the “Registrar of Copyrights” who shall act under the superintendence and control of Central Government. ---------------------------------------