INTELLECTUAL PROPERTY LAWS IN INDIA by Mr Koshy

Report
INTELLECTUAL PROPERTY
LAWS IN INDIA
PRESENTED BY:
Mr. Joseph Koshy
Head, Intellectual Property, Fox Mandal
FOX MANDAL
OUR OFFICES
In India:
New Delhi, Noida, Bangalore,
Bhubaneswar, Chandigarh,
Chennai, Hyderabad, Kolkata,
Mumbai and Pune with associate
offices at Cochi, Trivandrum
In Other Countries:
United Kingdom (London),
France (Paris), Guinea
(Conakry) and Bangladesh
(Dhaka)
INTELLECTUAL PROPERTY
Intellectual Property refers to creation that arises from the human intellect i.e.
inventions in all fields of human endeavor, scientific discoveries, industrial designs
for article, literary & artistic work, symbols etc. used in commerce.
Nature/ characteristics of Intellectual Property:
•
Creation of human mind (Intellect)
•
Intangible property
•
Exclusive rights given by statutes
•
Time-bound and Territorial/Jurisdictional
TRIPS Compliance
• India is a signatory of TRIPs Agreement in the Uruguay Round
agreement of 1995 and hence, the government has initiated action
to bring in the requisite changes.
• In the last few years, India has enacted fully TRIPs-compliant
Trademarks Act, Copyright Act, Designs Registration Act,
Geographical Indications Act and Protection of Layouts for
Integrated Circuits Act.
• A novel Plant Varieties Protection and Farmers Rights Act 2001
and the Bio-diversity Act 2002 are also in Place.
Two Kinds of Intellectual
Property
Industrial Property i.e. Trademarks,
Patents, Industrial Designs etc.
Copyright i.e. Artistic works, Literary
works
PATENTS
Patent is a monopoly or exclusive right granted by a country in favour
of the owner of an invention (both process & products ) to make, use,
manufacture & market their invention.
 The patent right is territorial in nature.
 Patents provide incentives to individuals by recognizing their
creativity & these incentives encourage innovation.
 Patents Act, 1970, in TRIPS compliant and has incorporated all
parameters.
 Term of Registered Patent: 20 years.
TRADEMARK
 Trademark is a distinctive sign that provides to the owner of the mark the
exclusive right to use it and identify goods or services belonging to the owner.
 Trademark consists in symbol, logo, word, sound, color, design, or other
device that is used to identify a business or a product in commerce.
 Trademark application can be filed in an appropriate national or regional
trademark office. WIPO administers an international registration application
for trademarks.
 The Trade Marks Act, 1999 governs the Trademark laws.
 Term of Registered Trademark: 10 years and Renewable.
COPYRIGHT
 Copyright exist in unique expression of idea/ for creating an original literary or dramatic
or musical or artistic work.
 In India, The Copyright Act, 1957 governs the law on copyright.
 Copyright protects the expression of an idea and not the idea itself.
 The owner may assign to any person the copyright.
 Copyright is a kind of incentive for recognizing the work and rewarding economic benefits.
 The work is open for public inspection once the copyright is registered.
 Copyrighted work can be used for teaching, research and development without permission
if used fairly.
COPYRIGHT
What can be covered under copyright:
Works relating to Literary, Films, Dramatic, Musical, Artist, Sound recording
What is not covered under copyright:
Ideas, Facts, Recipes, Work lacking originality, Names, Titles and Short Phrases.
Duration of copyright:
 Author’s lifetime + 50 years from the end of the calendar year in which the author dies,
 50 years for films and sound recordings,
 25 years for typographical arrangements of a published edition,
 Copyright protection always expires on December 31 of the last calendar year of
protection.
DESIGNS
 Designs consists in ornamental or aesthetic aspects of an article distinguishing it
with other article, which may consist of 3D or 2D features, such as shape or
surface, patterns, lines or color and is part of article itself.
 It makes an article attractive and appealing and hence they add to the commercial
value of a product and increase its marketability.
 Any technical features of the article not protected as intellectual property.
 The Designs Act, 2000 deals with the designs aspect of intellectual property.
 Terms of the Design: 15 years. Initially the right is granted for a period of 10 years,
which can be extended, by another 5 years.
Organization Structure – IP
Offices
Ministry of Industry &
Commerce
Office of the Controller
General of Patents, Designs
And Trademarks
Designs wing
(Kolkatta)
Patent office
( Kolkatta, Delhi,
Mumbai,
Chennai)
Trade Marks
Registry
( Kolkata, Delhi,
Mumbai,
Ahmedabad
Chennai)
Geographical
Indications
Registry
( Chennai)
Patent
Information
Service
( Nagpur)
TECHNOLOGY TRANSFER &
LICENCING AGREEMENTS
Technology transfer is the process by which a technology, expertise, knowhow
or facilities developed by one individual, enterprise or organization is
transferred to another individual, enterprise or organization
Technology
Transfer
Agreement
License Agreement
(The license agreement normally refers to
the licensing of intellectual property rights
such as patents, trade marks, copyrights,
etc)
Know-how Agreement
(know-how agreement involves the
transfer of information or skills which
have not received statutory recognition)
Important clauses and issues –
Technology Transfer Agreements
 Define Technology and Lists of IPRs
 Grant of License
 Rights and Obligations of Licensee and Licensor
 Exclusive/ Non-exclusive
 Transferability
 Revocability
 Royalty payment and calculation
(Contd…)
 Territory
 Sub-licensing
 Advertising and Promotion
 Audit of accounts from outside agency
LICENSING LAWS
• No specific licensing laws for IP in India.
• Principally governed by the Indian Contracts Act,
1872.
• Governed by common law practices.
ROYALTY PAYMENTS
In terms of the extant foreign exchange laws in India,
banks may permit drawal of foreign exchange by
persons for payment of royalty and lump-sum
payment under technical collaboration agreements
freely, without the approval of the Government of
India;
ROLE OF INDIAN
JUDICIARY
The principal function of Judiciary is to provide
legal remedies against infringement of personal and
property rights of persons.
Infringement of intellectual property rights is a
tortuous invasion of property.
Contd….
• The Courts in India are empowered under the domestic
laws to grant reliefs against violation of Intellectual
Property rights.
• The judiciary plays two distinct roles in relation to IP:
1. Interpretation of the various IP Statutes.
2. Adjudication of IP Matters.
REMEDIES FOR
INFRINGEMENT
The remedies for misappropriation of IP granted by
the Judiciary can be in the forms of:
1. Civil Remedies
2. Criminal Remedies
REMEDIES
 CIVIL
1. Injunction - Spring Board Doctrine
a. Interlocutory or interim
b. Permanent or Final
c. Injunction against threats.
2. Anton Pillar Orders or Ex Parte Orders
3. Orders for deliver-up/surrender or seize and destroy
4. An award of costs and damages
5. Tracing orders.
 CRIMINAL
Criminal action (Imprisonment/ Fine) is provided only for trade marks and
copyrights infringement.
Contd…
 Civil & Criminal Remedies are distinct and independent
and can be availed simultaneously.
 When a court has to form an opinion upon a point
crucial to a case and pertaining to technology or art the
opinion of that of an expert can be sought by the court
under Section 45 of the Indian Evidence Act.
 The provisions of The Arbitration & Conciliation Act
are also applicable to all IP disputes.

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