Intellectual Property – GESIA IT Association

Intellectual Property

  • What is intellectual property?
  • Intellectual property (IP) is a property that results from creation of the human mind, the intellect.Intellectual property can be bought, sold or licensed and must be adequately protected for exploitation. It can include (patentable) inventions, logo’s, industrial processes, software, data, written work, designs, images etc.
  • Why is the word ‘Property’ used in case of Intellectual Property?
  • Intellectual Property is referred to as property like any tangible property like land, house, vehicle etc. sincethe same has commercial value. The only point of difference with IP that the same is created through human intellect. Therefore, IP can be bought and sold just like conventional property e.g. a house or a car.
  • What are the legislations covering IPRs in India?
  • Patents: The Patents Act, 1970.
    Trade Mark: The Trade Marks Act, 1999.
    Protection of Undisclosed Information(TRADE SECRETS): No exclusive legislation exists but the matter would be generally covered under the Indian Contract Act, 1872.
    Geographical Indications: The Geographical Indications of Goods (Registration and Protection) Act, 1999.
    Copyright: The Copyright Act, 1957.
    Design: The Designs Act, 2000.
    Plant Varieties: The Protection of Plant Variety and Farmers’ Rights Act, 2001
    Layout Design of Integrated Circuits: The Semiconductor Integrated Circuits Layout Design Act, 2000.
  • What is Patent?
  • A patent gives exclusive ownership right granted by a country to the owner of an invention, provided the invention satisfies certain conditions setby law. Once the criteria for grant of patent are satisfied, a certificate is issued to the owner of the invention by the patent office of the country conferring this right. When a patent is granted the same gives exclusivity of right which implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available to the owner of the invention only for a limited period to make exclusive use of the patent and reap commercial benefit out of it.Companies can use the patent rights to attain monopoly over the invention to the extent covered by the rights and therefore gain competitive advantage in the relevant technology field over other players in the market.
  • Why should you avail patent protection?
    • The purpose of patents is to encourage inventors to make an investment in time and money in research and development by providing exclusive rights for a limited time in exchange for an early public disclosure of the invention.
    • Without protection your invention can be accessed by any third party and benefited by the exploitation.
    • When a patent is granted it excludes others from using, selling, offer to sell, import and any act of exploitation of the patented invention. Even if a potential infringer tries to use the patented the invention the patentee can avail legal help to protect the patented invention.
    • Above all these, an inventor can license his invention to a bigger corporate by obtaining a huge revenue.
  • How is invention defined in the Indian Patents Act, which can qualify for grant of a patent?
  • There is a three-part test which determines if an invention is patentable. In accordance with the Indian Patent Act, 1970, an invention must possess the following:
    1. Is the invention useful? (This is a very easy criterion to satisfy - any use will suffice).
    2. Is the invention novel? (The invention must be different in some way from previous inventions).
    3. Is it "unobvious?" (This test is perhaps the most subjective. It is determined by asking the question "Would a person with ordinary skill in the industry of the invention, and possessing complete knowledge of the prior art, consider that the invention provides new and unexpected results?")
  • What are the rights conferred to the patentee?
  • The patentee enjoys following rights upon grant:
    • To prevent 3rd parties, from exploiting your patented invention.
    • Right to grant license.
    • Power to assign rights or grant license and earn monetary benefits out of the assignment and license of the technology;
    • Right to surrender your patent before the expiry for the benefit of the general public.
    • Right to sue for infringement for any unauthorized use of your patent.
  • What is the term of a patent in the Indian system?
  • Term of the patent is 20 years from the date of filing for all types of inventions. On expiry, invention becomes a part of public domain.
  • How is "Trademark" defined?
  • A trademark in plain simple understanding is a mark that is identified with the source of a product or service in the course of trade. Trademark may be one or a combination of words, letters and numerals. The same may also consist of colors, combination of colors, symbols, etc. It is used by traders/companies/firms etc to distinguish their goods and services from those of their competitors. A consumer uses the trademark for making a choice while buying a particular product. Trademarks do not protect the design or the ideas behind the goods or services from imitation or duplication but prevent other traders/company/firm from deceiving customers into believing that goods or services actually produced by them were produced by the trademark holder.
  • What are the functions that Trademark helps you in?
    • Builds Brands:
      • Identifies product and its qualities.
      • Advertises the product
    • Establishes Quality:
      • guarantees unchanged qualities
    • Creates Image:
      • Creates an image of the product/service
    • Determines Goodwill:
    • The brand value of the trademark determines your goodwill in the market with the competitors.
  • Who can apply for Trademark Registration?
    • proprietor
    • Legal heirs of Proprietor
    • Individual proposing a business in particular goods/services
    • Corporate
    • Assignee
    • Foreign applicants
  • What are the Categories in which a Trademark can be protected?
    • Word mark:
      • Logo
      • Mark
      • Label
      • Slogan
    • Composite Marks:
      • Word + Word
      • Word + Design
      • Design + Design
      • Color Combination
    • Common marks:
      • Suggestive (Citibank)
      • Descriptive
      • Generic (any word that is used by traders in the market and which is a part of public domain)
      • Arbitrary
      • Certification mark (ISI)
    • Non-traditional trademarks;
      • Sound
      • Smell
  • When can a Trademark be refused registration?
  • The Act governing the regulation of Trademarks in India is The Trademarks Act, 1999. Among the several provisions of the Act, the governing provisions of approval and refusal of trademarks are Section 9 (Absolute grounds for refusal of registration) and Section 11 (Relative grounds for refusal of registration).
    • Section 9: In a nutshell, this section prevents the registration of marks that are descriptive, generic, and scandalous, consist exclusively of marks or indications, which may serve in trade to designate kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or services or other characteristics of the goods or service. However, if a mark has any of the aforementioned characteristics, it will be permitted to be registered if it has acquired a distinctive character and is a well-known mark as a result of use.
    • Section 11: This section provides that a mark shall not be registered if the mark causes likelihood of confusion on the part of the public i.e. likelihood of association with an earlier trademark; If the applied-for mark is identical to a well-known trademark in India and use of later mark may be detrimental to the distinctive character of the well-known trademark; The provision further envisages that where the goods are of different description refusal will not be justified but registration may be refused if the mark is likely to be deceptive or cause confusion.
  • What is the term of a registered trademark?
  • The initial registration of a trademark shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees.
  • What does the term 'Geographical Indications (GI)' stand for?
  • Geographical Indications are names associated with goods which identify such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or a locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin. Some examples of GI are Darjeeling Tea, Pochampalli Saree, Chanderi Saree, Kanjeevaram Silk, Champagne Wine, Scotch Whisky, Rosgulla and the latest addition to the list is KadaknathChicken(Madhya Pradesh).
  • Who can apply for GI's registration?
  • Any association of persons or producers or any organization or authority established by or under any law for the time being in force representing the interest of the producers of the concerned goods, who are desirous of registering geographical indication in relation to such goods can apply for GI’s registration.
  • Who is a registered proprietor of a geographical indication?
  • Any association of persons or of producers or any organization or authority established by or under the law can be a registered proprietor. Their name should be entered in the Register of Geographical Indication as registered proprietor for the Geographical Indication applied for.
  • Who can use the registered geographical indication?
  • An authorised user has the exclusive rights to the use of geographical indication in relation to goods in respect of which it is registered.
  • Who is an ‘authorised user’?
  • ‘Authorised user’ is any person claiming to be the producer of the goods in respect of which a geographical indication has been registered. For becoming an authorized user, the person has to apply in writing to the Registrar in prescribed manner and by paying requisite fee.
  • What is the benefit of registration of geographical indications?
  • It confers legal protection to Geographical Indications in India and prevents unauthorized use of a goods/produce by others. It provides legal protection to Indian Geographical Indications which in turn boost exports. It promotes economic prosperity of producers of goods produced in a geographical territory. The registration of GI is granted primarily for a period of 10 years which can be renewed from time to time for further period of 10 years each.
  • What is the cost of registering a GI in India?
  • Some important fees prescribed are given below:-
    On application for the registration of a geographical indication for goods included in one class Rs.5000/-
    On a single application for the registration of a geographical indication for goods in different classes Rs. 5000/- each class
    On application for the registration of an authorized user of a registered geographical indication Rs. 500/-
    For renewal of an authorized user Rs. 1000/-
  • What is copyright?
  • Copyright subsists in all original published or unpublished literary, artistic works. Copyright is owned by the original creators of any literary, dramatic, musical and artistic works and in respect to cinematography films and sound recording the rights vests with the producers.
  • What does copyright cover?
  • (i) Literary, dramatic and musical work. Computer programs/software are covered within the definition of literary work;
    (ii) Artistic work;
    (iii) Cinematographic films which include sound track and video films;
    (iv) Record-any disc, tape, perforated roll or other device.
  • What is the term of a copyright?
    1. If published within the life time of the author of a literary work, the term is for the life time of the author plus 60 years.
    2. For cinematography films, records, photographs, posthumous publications, anonymous publication, works of government and international agencies, the term is 60 years from the beginning of the calendar year following the year in which the work was published.
    3. For broadcasting, the term is 25 years from the beginning of the calendar year following the year, in which the broadcast was made.
  • If an employee in a company develops a program, would this employee own the copyright?
  • No. In the case of a program made in the course of author's employment under a contract of service or apprenticeship, the employer shall, in the absence of any agreement to the contrary, be the first owner of the copyright.
  • If an independent third party develops a program for a company, who owns the copyright?
  • The copyright in works created by third parties on commission do not automatically belong to commissioning party. If the third party is an independent contractor, it is essential for the commissioning party to obtain the copyright through a written deed of assignment. It is a common misconception that the copyright automatically belongs to the commissioning party. Thus, it is only where the developer is an employee creating the work under a contract of service that the rights belong to the employer.
  • What are the Advantages/Functions that you derive of Copyright Registration?
    • Registration of Copyright establishes a public record of the copyright claim Copyright protection enables the holder of the copyright to take legal action against infringers in a court.
    • Permits the copyright owner to record the registration with Indian Customs to help in protection against the importation of infringing copies into India.
    • Copyright protection renders benefits in the form of economic rights which entitles the creators to exercise control over use of their literary and artistic material in various ways such as producing copies, performing in public, broadcasting, use on-line/on the internet, etc. and to avail an appropriate economic reward.
    • Copyright protection enables creators to consequently be rewarded for their originality and venture.
  • Who can apply for Copyright?
    • Author
    • Copyright Claimant
    • Authorized Agent
    • Employees/Employers
  • What does the term 'Design' mean according to the Designs Act, 2000?
  • "Design" means only the features of shape, configuration, pattern, ornament or composition of lines or colors 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; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device. Functional aspects of design are not covered in India.
  • What is protected under an ‘Industrial Design’?
  • As a rule, an industrial design consists of:
    • Three-dimensional features such as shape of the product.
    • Two-dimensional features such as ornamentation, patterns, lines or colours of a product.
    • A combination of one or more such features.
  • What are the essential requirements for the registration of design under the Designs Act, 2000?
    1. The design should be new or original, not previously published or used in any country before the date of application for registration. The novelty may reside in the application of a known shape or pattern to new subject matter. However, if the design for which application is made does not involve any real mental activity for conception, then registration may not be considered.
    2. The design should relate to features of shape, configuration, pattern or ornamentation applied to an article. Thus, designs of industrial plans, layouts and installations are not registrable under the Act.
    3. The design should be applied to any article by any industrial process. Normally, designs of artistic nature like painting, sculptures and the like which are not produced in bulk by any industrial process are excluded from registration under the Act. Paintings and sculptures are subject matter of copyright.
    4. The features of the designs in the finished article should appeal to and are judged solely by the eye. This implies that the design must appear and should be visible on the finished article, for which it is meant. Thus, any design in the inside arrangement of a box, money purse or almirah may not be considered for registration, as these are generally put in the market in the closed state.
    5. Any mode or principle of construction or operation or anything, which, in substance is a mere mechanical device, would not qualify for registrable design. For instance, a key having its novelty only in the shape of its corrugation or bend at the portion intended to engage with levers inside the lock associated with, cannot be registered as a design under the Act. However, when any design suggests any mode or principle of construction or mechanical or other action of a mechanism, a suitable disclaimer in respect thereof is required to be inserted on its representation, provided there are other registrable features in the design.
    6. The design should not include any trade mark or property mark or artistic work.
  • What are the types of designs not registrable under the Act?
  • A design which: -
    (a) is not new or original; or
    (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
    (c) is not significantly distinguishable from known designs or combination of known designs; or
    (d) comprises or contains scandalous or obscene matter, shall not be registered.
  • What is a Register of Designs?
  • The Register of Designs is a document maintained by the Patent Office, Kolkata as a statutory requirement. It contains the design number, date of filing and reciprocity date (if any), name and address of proprietor and such other matters as would affect the validity of proprietorship of the design and it is open for public inspection on payment of prescribed fee and extract from register may also be obtained on request with the prescribed fee.
  • What is the duration of the registration of a design? Can it be extended?
  • The term of a registered design is 15 years. Initially the right is granted for a period of 10 years, which can be extended, by another 5 years by making an application and paying a fee of Rs. 2000/- to the Controller before the expiry of initial 10 years period. The proprietor of design may make application for such extension as soon as the design is registered.
  • What is the cost of filing design application in India?
  • The fee for filing application for registration of design in India is Rs.1,000/-.
  • What are TRADE SECRETS?
  • Trade secrets, just as other intellectual property rights, can be extremely valuable to your company's growth and sometimes even critical for its survival. Businesses must ensure that they adequately protect their business processes, technical know-how and confidential information from competitors. A trade secret may refer to a practice, process, design, instrument or a compilation of data or information relating to the business which is not generally known to the public and which the owner reasonably attempts to keep secret and confidential. Such data or information may also involve an economic interest of the owner in obtaining an economic advantage over competitors.
  • What is protected under Trade secrets?
  • Generally, a trade secret is said to be any information, practice, process or design:
    • That is not generally known or readily accessible by people who normally deal with such type of information.
    • It must have a commercial value as a secret.
    • The lawful owner must take reasonable efforts to maintain its secrecy.
  • Why should you protect your Trade Secrets?
    • The biggest advantage of a trade secret is that it does not require registration in order to be protected, thus it is a cost-effective way to protect confidential information or invention.
    • Another advantage of trade secret is that there is no fixed term of protection. A trade secret lasts indefinitely until it is reverse-engineered.
    • A trade secret can be applied to potentially anything that is not covered under other Intellectual Properties. For example: Anything that is not eligible for patent protection can be protected through a trade secret or a secret recipe in making an eatery or beverage which is the selling point of the product.
  • How can Trade secrets be enforced?
  • There is no specific legislation in India to protect trade secrets and confidential information. Nevertheless, Indian courts have upheld trade secret protection on basis of principles of equity, and at times, upon a common law action of breach of confidence, which in effect amounts a breach of contractual obligation. In India, a person can be contractually bound not to disclose any information that is revealed to him/her in confidence. The Indian courts have upheld a restrictive clause in a technology transfer agreement, which imposes negative covenants on licensee not to disclose or use the information received under the agreement for any purpose other than that agreed in the said agreement.
  • What is the term of trade secret?
  • As mentioned before, a trade secret has no definitive term of protection. It remains protected until someone honestly and bonafidely reverse engineers the confidential product or process. In case of confidential information, it is protected until the confidential information is disclosed publicly (by the holder of the trade secret).
  • What does Semiconductor Integrated Circuits Layout-Design Act, 2000 cover?
  • The semiconductor integrated circuit is an integral part of every computer chip. Semiconductor integrated circuits or chips enables instantaneous exchange of information on a worldwide basis because it can store large amount of data so readily. Semiconductor Integrated Circuit means 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. or An integrated circuit or monolithic integrated circuit (also referred to as an IC, a chip, or a microchip) is a set of electronic circuits on one small flat piece (or "chip") of semiconductor material, normally silicon. The integration of large numbers of tiny transistors into a small chip resulted in circuits that are orders of magnitude smaller, cheaper, and faster than those constructed of discrete electronic components. The IC's mass production capability, reliability and building-block approach to circuit design ensured the rapid adoption of standardized ICs in place of designs using discrete transistors. ICs are now used in virtually all electronic equipment and have revolutionized the world of electronics. Computers, mobile phones, and other digital home appliances are now inextricable parts of the structure of modern societies, made possible by the small size and low cost of ICs. The simplest integrated circuit consists of three layers, one of which is made from semiconductor material. A wafer (i.e. a thin, highly polished silicon crystal disk) of semiconductor material is coated with a layer of silicon oxide (an insulator) and the electronic components (for example, transistors) are formed by a process of diffusion (chemically doping the semiconductor material with impurities through holes etched through the oxide). Finally, an aluminum coating is applied which is partly evaporated using a mask, leaving behind the interconnections between components formed in the semiconductor layer. It might thus be said that that the information highway is paved with silicon. The mask is transparent except for opaque patterns on the mask that correspond to the circuit patterns to be etched into the wafer. In a complex circuit, another layer of silicon is placed on top of the etched wafer, and the same etching process is repeated. A chip typically has eight to twelve layers, each layer having a unique mask creating the required circuits. These layers of masks, collectively called ‘mask work’ or ‘layout-design’, manifest the three-dimensional layout of the chip.
  • Who can file?
  • Application can be filed by
    • One who develops the chip with his technical inputs;
    • Legal representative; either in guidance of a patent agent or by own.
  • Protection:
  • A layout-design must be registered to receive protection under the Act.
  • What are the Eligibility criteria required for protection?
  • A Layout design that is:
    • Original
    • Not commercially exploited anywhere in India or convention /reciprocal country
    • Inherently distinctive
    • Inherently capable of being capable of being distinguishable from any other registered layout design.
    Is protectable under the law.
  • Rights:
  • The registered-proprietor has the exclusive right to reproduce by any means the registered layout-design or any substantial portion of it.
  • Term of Protection:
  • A layout-design is protected for a period of 10 years from the date of filing an application for registration or from the date of first commercial exploitation anywhere in the world.
  • What constitutes an infringement under the Act?
  • Reproducing, importing, selling and distributing the IC layout design for commercial purposes only constitutes infringement. A layout design created based on scientific evaluation of a registered layout design shall not constitute any infringement.
  • What is the cost of registering IC layout design application in India?
    On application to register a layout - design Rs.5000/-
    On request for certificate of the Registrar Rs.1000/-
  • Is there any Act for protecting a new plant variety in India?
  • The Protection of Plant Varieties and Farmers’ Rights Act 2001 was enacted in India to protect the new plant varieties. Rules for the same were notified in 2003. The Act has now come into force. The Protection of Plant Varieties and Farmers’ Rights Authority has been set up and is responsible to administer the Act. The office of the Registrar has started receiving applications for registration of twelve notified crops viz. rice, lentil, maize, green gram, kidney bean, black gram, chickpea, pearl millet, pigeon pea, sorghum, field pea, bread wheat. Under the TRIPS agreement it is obligatory on part of a Member to provide protection to new plant variety either through patent or an effective sui generis system or a combination of these two systems. India was therefore under an obligation to introduce a system for protecting new plant variety. India opted for sui generis system and enacted The Protection of Plant Varieties and Farmers’ Rights Act 2001. However, in many countries such plants can be protected through Breeders’ Rights, patents and UPOV Convention.
  • What kind of varieties are registerable under the plant variety Act?
    1. A new variety if it conforms to the criteria of novelty, distinctiveness, uniformity and stability.
    2. An extant variety if it conforms to criteria of distinctiveness, uniformity and stability.
  • What is the meaning of Farmers’ Variety as per PPVFR Act, 2001?
  • “Farmers’ Variety” means a variety which-
    (i) has been traditionally cultivated and evolved by the farmers in their fields; or
    (ii) is a wild relative or land race of a variety about which the farmers possess the common knowledge;
    where farmer means any person who (i) cultivates crops by cultivating the land himself; or (ii) cultivates crop by directly supervising the cultivation of land through any other person; or (iii) conserves and preserves, severely or jointly, with any person any wild species or traditional varieties or adds value to such wild species or traditional varieties through selection and identification of their useful properties.
  • How novelty, distinctiveness, uniformity & stability have been defined in the Protection of Plant Varieties and Farmers’ Rights Act?
    1. A) Novelty – Plant variety is novel if at the date of filing of the application for registration for protection, the propagating or harvested material of such variety has not been sold or otherwise disposed of by or with the consent of breeder or his successor for the purpose of exploitation of such variety-
    (i) in India earlier than one year or
    (ii) outside India, in the case of trees or vines earlier than six years or in any other case, earlier than four years, before the date of filing such application: Provided that a trial of a new variety which has not been sold otherwise disposed of shall not affect the right to protection. Provided further that the fact that on the date of filing the application for registration, propagating or harvested material of such variety has become a matter of common knowledge other than through the aforesaid manner shall not affect the criteria of novelty for such variety.
    1. B) Distinctiveness – New plant variety will be considered distinct if it is clearly distinguishable by at least one essential characteristic from any other variety whose existence is a matter of common knowledge in any country at the time of filing of the application.
    2. C) Uniformity – New plant variety will pass uniformity test, if subject to the variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its essential characteristics.
    3. D) Stability – New plant variety will be considered stable if its essential characteristics remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each such cycle. Compulsory Plant Variety denomination: After satisfying the above four essential criteria every applicant shall assign a single and distinct denomination to a variety with respect to which he is seeking registration.
  • What are farmers’ rights?
  • The farmers’ rights as defined in the Act are:
    • a farmer who has bred or developed a new variety shall be entitled for registration and other protection in like manner as a breeder of a variety under this Act;
    • (ii) the farmers’ variety shall be entitled for registration if the application contains declaration as specified in clause (h) or sub-section (1) of section 18;
    • (iii) a farmer who is engaged in the conservation of genetic resources of land races and wild relatives of economic plants and their improvement through selection and preservation shall be entitled in the prescribed manner for recognition and reward from the Gene Fund. Provided that material so selected and preserved has been used as donors of genes in varieties registrable under this Act;
    • (iv) a farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act.
  • Which plant varieties cannot be protected under this Act?
  • A plant variety which is: -
    • not capable of identifying such variety; or
    • consists solely of figures; or
    • is liable to mislead or to cause confusion concerning the characteristics, value, identify of such variety, or the identity of breeder of such variety;
    • is likely to deceive the public or cause confusion in the public regarding the identity of such variety;
    • is comprised of nay matter likely to hurt the religious sentiments respectively of any class or section of the citizens of India;
    • is prohibited for use as a name or emblem for any of the purposes;
    • is comprised of solely or partly of geographical name.
  • What is the term of plant variety protection?
    • in the case of trees and vines, eighteen years from the date of registration of the variety;
    • in the case of extant varieties, fifteen years from the date of the notification of that variety by the Central Government under section 5 of the Seeds Act,1966
    • in the other cases, fifteen years from the date of registration of the variety. Initially the certificate of registration shall be valid for nine years in the case of trees and vines and six years in the case of other crops and may be revived and renewed for the remaining period on payment of fees as may be fixed by the rules.
  • What is the cost of registering a plant variety?
  • Some important fees are given below:
    Action Official fee
    Conducting tests Dependent on the nature and type of test subject to a maximum of Rs. 50,000 per entry
    Fees for registration of essentially derived varieties Individual Rs. 5,000/- Educational – Rs. 7,000/- Commercial –Rs. 10,000/-
    Renewal fee per year Individual Rs. 5,000/- Educational – Rs. 7,000/- Commercial – Rs. 10,000/-
    Application for benefit sharing Rs. 5,000/-