ALL RIGHTS RESERVED BY PATHLEGAL. DO NOT COPY the contents of this webpage to another website or distribute it electronically.

Intellectual Property Rights

 

http://www.adamsaustinlegal.com/images/IP/BrainIdeaSmall2.jpg

 

Intellectual property law is emerging as the law of the 21st century. Its impact is very extensive and it affects broad spectrum of transactions ranging from education to entertainment, not to speak of industry alone

The concept of protecting human intellectual creativity resulted in crystallization of intellectual property rights. Developed countries have accepted and recognized some of these rights even during 17th century. It was much later that developing countries started exploiting IPR. The phenomenal development resulted from various international conventions and agreements signed by the developed ,developing and least developed countries of the world .The need arose as  a result of rapid growth of technological development of transport and communication which has resulted in globalization of trade and commerce 

 

PROPERTY

Any right which has an economic value is considered as his property .The law recognizes and protects ones right to property. Property can be defined as something which can be owned .It involves three elements –a thing, a person and well established law. The concept of property can be divided into two –corporal property and incorporeal property.

Corporeal property refers to the right of owner ship of any material thing .Thus ownership of car, land house are corporeal property .It can be again classified into two heads; Movable and immovable.

Incorporeal property refers to the right of ownership in immaterial thing .Thus proprietary right over immaterial things such as good will, patent right, copy right, right to trade mark, are incorporeal property. A person who has invented something new and useful.

Thus intellectual property forms incorporeal property .It refers to things which emanate from human brain .It involves the visible expressions of a mental conception, the work of both brain and hand.

 

Kinds of intellectual property

There are seven kinds of intellectual property rights

They are

  • Patent Rights
  • Trade Mark
  • Copy Right
  • Industrial Designs
  • Geographical Indications
  • Semiconductors
  • Plant Varieties

 

A person who has invented a new and useful article by applying his mental ability or intellectual capacity shall have an interest that the product invented by him should not be manufactured and sold by any other person other than himself .The law has thus recognized several rights resulting from intellectual activity and given exclusive rights to inventor ,writer ,composer and designer for its exploitation by way of sale ,assignment ,license ,etc.

 

Intellectual property laws in India

The following are the laws which recognize and protect the intellectual property rights in India.

1. The Patents Act 1970

2. The Copy Right Act1957

3. The trade Mark Act 1999

4 .The designs Act 2000

5. The Semiconductor Integrated circuits Lay out –Design Act, 2000

6. The geographical indications of Goods (Regulation and Protection) Act, 1999

7. The Protection of plant varieties and farmers rights act, 2001

 

Intellectual Property Rights under International law

  • The Paris convention for the protection of industrial property concluded in Paris in 1883 and ultimately revised in Stockholm in 1967
  • The Berne convention for the Protection of literary and Artistic works 1971
  • The Rome Convention for the protection of performers ,Producers of phonograms and broadcasting organizations 1961
  • The treaty on intellectual property in respect of integrated circuits done at Washing ton dc 1989
  • The World Intellectual property organization convention ,1967
  • The universal copy right convention 1952
  • The Geneva convention 1971
  • The Brussels convention 1974
  • The Geneva Treaty on international registration of audio –visual works 1992
  • WIPO Copy right treaty 1996
  • WIPO performers and phonograms treaty 1996
  • Madrid agreements concerning the international registration of marks 1979
  • Protocol relating to the Madrid agreement concerning the international registration of marks 1989
  • Common regulations under the Madrid agreement concerning the international; registration of marks and protocol relating that agreement
  • The nice agreement concerning the international classification of goods ,1957
  • The Vienna agreement established on international classification of the figurative elements of marks 1973
  • Agreement of Madrid for the repression of false or deceptive indications of source on goods 1967
  • Lisbon agreement for the protection of appellations of origin and their international registration ,1979
  • Hague Agreement of international deposit of industrial designs 1960
  • Lacarno agreement of establishing an international classification of industrial design 1968
  • Patent corporation treaty,1970
  • Budapest Treaty on the international recognition of the deposits of micro organism
  • Eurasian patent convention
  • Strasbourg agreement of international patent classification
  • European Patent convention 1973
  • UPOV international convention for the protection of new varieties of plants1991
  • Convention on biological diversity
  • Intercessional meeting on the operations of the convention on biological diversity at Montréal ,1999

 

Patent

Patent means a grant of some privilege or right by the government to one or more individuals who invented a new article or a new process for making an article .The instruments by which the grant is made is known as patent. A patent being a creation of statute is territorial in extent .A patent granted in one state cannot be enforced in another state unless the invention concerned is also patented in that state.

A patent is granted to encourage and develop new technology and industry .An inventor may disclose the new invention only if he is rewarded .In consideration of the disclosure the patentee will be granted with the monopoly right for a limited period .After the expiry of the period for which exclusive right is granted to the inventor, the invention can be put to use by any person other than the one to whom a patent is granted .The person to whom a patent is granted is called patentee.

Patent gives exclusive rights given to the inventor by the government to make, use, sell, offer to sale, to import for a fixed period of time.

General conditions to be satisfied for conferring patent right

The fundamental principle of patent law is that a patent is granted only for the invention which is new, non-obvious and useful .In order to patent a product or process the following essential conditions are to be satisfied

 

  • There should be an invention
  • The invention must be new
  • The invention must be useful
  • The invention must be non obvious
  • The invention must be disclosed fully

 

Procedure for obtaining patent

http://www.jpo.go.jp/tetuzuki_e/t_gaiyo_e/images/pa_right.gif

 

The inventor of a new article or process of manufacturing is entitled to get his product or process patented if he satisfies the controller that the product or process is patentable.

In order to obtain patent for an invention the following are the procedures

 

SUBMISSION OF APPLICATION

In order to obtain patent for an invention only one application can be made .It is to be made in the prescribed form and field in the patent office .The following persons can apply for patent

  • A person who claims to be the true and first inventor of the invention
  • An assignee of a person claiming to be the true and first inventor
  • A legal representative of any deceased person

 

PROVISIONAL AND COMPLETE SPECIFICATION

 An application made by a citizen of India should be accompanied with a provisional or complete specification .If the application is accompanied by a provisional specification; the complete specification has to be filed within twelve months from the date of filing of the application.

If the complete specification is not filed the application shall be deemed to have been abandoned .The time period of twelve months may be extended to fifteen months, if such request for extension is accepted.

A patent specification is a technical document describing the invention.

The complete specification shall contain the following

·         Title

·         A full and particular description of the invention and its operation and use and the method of performing the invention and its operation or use and the method by which it is to be performed

·         A disclosure of the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection

·         Claim or claims defining the scope of the invention .The claim must relate to one invention only .The claim must be clear and precise

·         The drawings if any required

·         A declaration as to the inventor ship of the invention.

 

 

PUBLICATION OF APPLICATION

An application for patent shall not be open to the public for eighteen months from the date of filing of application .After the expiry of 18 months the application for a patent shall be published.

 

OPPOSITION BY REPRESENTATION

If an application for a patent has been published but the patent has not been granted any person may in writing represent by way of opposition to the controller against the grant of patent on the following grounds

  • Patentability including novelty ,inventive step, and industrial application
  • Non disclosure or wrongful mentioning in complete specification

 

EXAMINATION OF APPLICATION

A request to examine the application should be made within 36 months from the date of application .If no request is made within 36 months from the date of filing of the application; the application shall be treated as withdrawn by the applicant.

 

COMMUNICATION TO THE APPLICANT

An objection if any is found during examination is communicated to the applicant.

 

GRANTS OF PATENT

If an application is found to be in the order for the grant of patent, the patent shall be granted to the applicant with the seal of the patent office and the date on which the patent is granted shall be entered in the register.

 

OPPOSITION

After the grant of patent but before the expiry of a period of one year from the date of publication for the grant of a patent, any person interested may give notice of opposition to the controller on the following grounds

 

  • The patentee wrongfully obtained the complete invention or a part thereof from a person under or through whom he claims
  • The invention is already published in an Indian specification
  • The invention is the subject matter of a prior claim
  • The specification is obvious and does not involve an inventive step
  • The subject matter is not an invention
  • The complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed
  • The failure to disclose the information relating to applications filed in foreign countries
  • The application was not made with in twelve months from the date of  first application

 

 

TERM OF PATENT

The term of patent is twenty years from the date of filing of first application. a patent shall cease to take effect on the expiration of the period prescribed for the payment of renewal fee (usually the period is 2 years and if the fees is not paid within the said period the patent will cease to have take effect) and within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.

 

RIGHTS OF THE PATENTEE

The purpose of granting patent is to confer monopoly rights to the inventor for the commercial exploitation of the patented product or the process for the term of patent. The rights of patentee can be studied under the following heads.

  • Right to exploit the patent

The period for exploitation of the patent is the term of the patent .The rights granted would be elapsed, if the renewal fees prescribed form time to time is not paid .Non payment of renewal fees results in automatic lapse of patent

  • Right to transfer the patent

The patentee has the right to transfer the patent right by assignment or license .A patent right is heritable.

  • Right to surrender the patent

A patentee can at any time surrender the patent. When a patentee proposes to surrender, the controller has to advertise the offer in India to give an opportunity to the parties having interest to oppose the offer for surrender. After hearing the opposition the Controller may accept or reject the offer of surrender.

  • Right before sealing but after acceptance of the specification

From the date of publication of the application for grant of the patent the applicant shall have the rights of a patentee. However he cannot institute a proceeding for infringement of patent until the patent is sealed.

  • Right to sue for infringement

The patentee, his assignee, licensee or-agent has the right to institute a proceeding for infringement of patent until the patent is sale

 

Limitations of Patent Act

  • Government use of patents

The Government can use the invention for its purposes. It can import any patented invention for the purpose of the Government’s own use.

  • Acquisition of invention and patent by the Central Government

The Central Government can acquire for public purpose an invention mentioned in the application for patent or an invention, the Government should publish a notification to that effect in the official Gazette. Upon such publication the invention or the patent and all rights in respect of the same shall stand transferred and be vested in the Central Government.

  • Compulsory Licenses and Licenses of Right

At any time after the expiration of 3 years from the date of grant of patent any person interested may make an application to the Controller alleging that reasonable requirements of public with respect to the patented invention have not been satisfied or requirements of public at reasonable price. The applicant may seek the grant of a compulsory license to work the patented invention.

  • Use of invention for Defense purposes

If the controller finds that an application made for patent of an invention is relevant for defense purposes, he may give direction prohibiting or restricting the publication of such information. Thereafter if the Central Government also formulates the opinion that the invention in question is relevant for defense purposes it will notify to the Controller accordingly. There upon the direction prohibiting or restricting publication of invention would continue to be in force.

The Government may purchase the invention and pay the applicant a solacium. The orders passed by the Controller or the government regarding the secrecy of the information shall be final and shall not be called in question in any court

 

REVOCATION OF PATENT

The patent may be revoked by the high court on a petition of any interested or of the central government on the following grounds.

  • If the invention claimed in the complete specification was already claimed in a claim of earlier date and a patent is granted in India
  • If a patent was granted on an application of the person not entitled to apply to the patent
  • The patent was obtained wrongfully in contravention of the rights of the petitioner
  • The claim of complete specification is not an invention within the meaning of the act
  • The invention is not new and it is publically known or used in India before the date of application  for patent
  • The invention is obvious or does not involve any inventive step
  • The invention is not useful
  • The complete specification does not sufficiently describe the invention and the method by which it is to be performed
  • The patent was obtained on a false suggestion or representation.
  • The subject matter of claim is not patentable under the act
  • The invention claimed was secretly used in India
  • The claimed invention failed to disclose the requisite information regarding the foreign application 
  • The revocation is necessary in the interest of security of India

 

Infringement of patents

Whenever the monopoly right is violated, his rights can be secured by instituting a suit for infringement .A suit for infringement shall be instituted in any court not inferior to a district court having jurisdiction to try the suit .If an action for the infringement is instituted in the district court and the defendant make a counter claim for the revocation

Of the patent the suit is to be transferred to the High court for decision because High court only has jurisdiction to try cases of revocation.

The procedure to be followed in conducting a suit for infringement is governed by the CPC

The suit is to be instituted for infringement of patent within 3 years from the date of infringement.

 

WHO IS ENTITLED TO SUE

The following persons are entitled to sue

  • The patentee
  • The exclusive license
  • A compulsory license
  • An assignee
  • Co owners of patent

 

PERSONS WHO CAN BE SUED

The persons who infringes the patent

DEFENCES

The defendant may set up the following defenses

·         The plaintiff is not entitled to sue for infringement

·         There is no infringement

·         There is license to use the invention

·         There exits any grounds for revocation

 

RELIEFS

In an action for infringement of patent the following remedies are available to the plaintiff

Injunction

An interlocutory or temporary injunction may be granted at any time after the institution of the suit and before the final decision

Damages

A successful plaintiff in a suit for infringement is entitled to relief of compensation on accounts of profit

A patentee makes his own bargain by demanding what he thinks to be just measure of his contribution .Novelty is the prime concern of invention and accordingly novelty or more precisely the unique arrangement or combination of novel structure  i.e. the invention must be articulated in the claim .The omission of a structural element essential to the proper operation of a devise reenters the claim invalid .Every claim must be drawn to a single statutory class .Claim must be drawn for a single invention  .A claims body can be divided into three parts

1. Preamble

 This part can be started by a statement of intended use or the overall or ultimate object or purpose or motivation for the invention or its salient properties or characteristics

2. Transitional phase

This part joins the preamble of the claim with the body of the claim .This frame indicates whether the recitations or structure which follow it are left open or are closed to additional structural elements

3. Body of the claim.

The body of the claim states the structural elements which make up and form the nucleus of the invention  where the invention involves cooperation among elements such must also be recited in body of claim .The function operation ,purpose ,or relevant properties of an element may also be included to explain or further characterize and qualify such elements

Patent infringement

Literal infringement and doctrine of excellence

In literal infringement the court looks into word by word analysis of claim body ,transitional part and find out the infringement .In doctrine of equivalence the ultimate product is looked into whether the ultimate product of another is equallent to patented product .This method is more resorted to in modern times .

Patent mining /search

  • Find out the latest work in R and D technology in your area to avoid duplication
  • Ascertain whether the creation is novel
  • World wide applications
  • To get ideas for solving the technological programme

This is a process of discovering meaningful new information patterns and trends by moving through large amount of data stored in depositions using statistical data analyze and mathematical techniques.

 

Patent land scape mapping

Means analyze the companies or technologies who, what, where and when .Find new opportunities   or new openings and existing technologies and enhance discovery

Patent port folio management

An effective patent portfolio may comprise five components

  • IP audit
    1. What patents do I have in my port folio
    2. what technologies are there with me
    3. identify the strength of my technology
    4. whether there is any obvious weakness for my technology
  • Gap analysis
    1. what do I need
    2. identify my competitors
    3. patent portfolio of my competitor
    4. what are the technological strengths of my competitor
    5. the strength and weakness of my competitor
  • Investment strategy
    1. acquire what I need
    2. where can the company increase R and D investment to built on strength
    3. which technologies should the company promote
    4. on which areas can the company enter into licensing agreements
    5. where do competitors strength lie
    6. do this pose a threat
    7. is there an opportunity  to create alliance
  • Divest strategy

You have to divest what you don’t need

  • Ongoing maintenance and monitoring for effective development of the patent overtime
    1. patent clearance

it is the whole efforts devoted for ensuring that our companies patent is not infringing with the patent of another .It is analyzed through patent proof reading .It is the final stage of patent presentation

PATENT PROSECUTION

It is the interaction between an applicant or his representative and a patent office with regard to a patent or an application for a patent

Pre grant prosecution -

Negotiation with the patent office for the grant of patent

Post grant prosecution -

Issues such as post grant amendment and opposition.

Patent claim

A claim is a statutory requirement prescribed for the very purpose of making the patentee define precisely what his invention is and abundance to the public the rest.

Question and Answer

Have a doubt on this chapter?

Do you need more information?

Do you like to talk to our LPO experts?

Do you want to get a professional training?

Are you looking for a practical section?

Are you looking for LPO Certification from PathLegal?

Write to pathlegal@gmail.com

 

 

F

r

e

e


A

d

v

i

c

e