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.