IPR

About IPR

▪ IPR stands for Intellectual Property Rights

▪ Intellectual property rights, are intangible assets which deal
with information, knowledge and reputation
▪ The intellectual property receives legal protection either per
se for information such as patents, designs and copyright
or by commercial use for reputation rights such as trade
marks
▪ It is system of registered and unregistered legal rights, which
protect the products, processes and reputation of their
creators
▪ Intellectual property (IP) encompasses all the tangible and
intangible products of the human mind
 About WIPO

◼ The World Intellectual Property Organization (WIPO) is the

global forum for intellectual property policy, services, information
and cooperation.
◼ A specialized agency of the United Nations, WIPO assists
its 191 member states in developing a balanced international IP
legal framework to meet society's evolving needs.
◼ India, became a member of WIPO in 1975
◼ It provides business services for obtaining IP rights in multiple
countries and resolving disputes.
◼ It delivers capacity-building programs to help developing
countries benefit from using IP.
◼ It provides free access to unique knowledge banks of IP
information.
 Patents Act, 1970
◼ “Invention” means any new and useful—
➢ (i) art, process, method or manner of manufacture;
➢ (ii) machine, apparatus or other article;
➢ (iii) substance produced by manufacture,
➢ and includes any new and useful improvement of any of them, and an alleged
invention;
◼ The following are not inventions within the meaning of Patents Act, 1970
➢ (a) an invention which is frivolous or which claims anything obviously contrary to
well established natural laws;
➢ (b) an invention the primary or intended use of which would be contrary to law or
morality or injurious to public health;
➢ (c) the mere discovery of a scientific principle or the formulation of an abstract
theory;
➢ (d) 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 unless such
known process results in a new product or employs at least one new reactant;
➢ (e) a substance obtained by a mere admixture resulting only in the aggregation
of the properties of the components thereof or a process for producing such
substance;
 Patents Act, 1970
➢ (f) the mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
➢ (g) a method or process of testing applicable during the process of manufacture for
rendering the machine, apparatus or other equipment more efficient or for the improvement
or restoration of the existing machine, apparatus or other equipment or for the improvement
or control of manufacture;
➢ (h) a method of agriculture or horticulture;
➢ (i) any process for the medicinal, surgical, curative, prophylactic or other treatment of human
beings or any process for a similar treatment of animals or plants to render them free of
disease or to increase their economic value or that of their products

◼ Term (Period) of every patent granted under this Act shall—

➢ (a) in respect of an invention claiming the method or process of manufacture of a
substance, where the substance is intended for use, or is capable of being used, as food or
as a medicine or drug, be five years from the date of sealing of the patent, or seven years
from the date of the patent whichever period is shorter; and
➢ (b) in respect of any other invention, be fourteen years from the date of the patent.
➢ A patent shall cease to have effect notwithstanding anything therein or in this Act on the
expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid
within the prescribed period or within that period as extended under this section
 Computer Related Inventions
◼ The computer Related Inventions are defined as those that involve:
➢ The use of computers
➢ Computer networks
➢ Other programmable apparatus.
➢ Inventions with one or more features that are realized wholly or partially by
means of a computer programme.

◼ The requirements to determine the patentability of CRI’s

➢ Novelty – It means, the quality of being new, original, or unusual.

➢ Inventive Step – means a feature of an invention that involves technical advance as
compared to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.
➢ Industrial Applicability – means that the invention is capable of being made or used
in an industry.
➢ Sufficiency of Disclosure – The requirement of “What” (is the invention) and “How”
(to perform it) must be satisfied. The description made must be unambiguous, clear,
correct and accurate.
 Trade Marks Act, 1999….
◼ A trademark is a distinctive word, phrase, logo, graphic symbol, or
other device that is used to identify the source of a product or service
and to distinguish a manufacturer’s or merchant’s products from
anyone else’s
◼ In the trademark context, “distinctive” means unique enough to reasonably
serve as an identifier of a product in the marketplace.
◼ The overall purpose of Trademark Act is to prevent unfair competition by
protecting the use of a trademark
◼ Protects consumers by prohibiting companies from using trademarks
substantially similar to those of other companies that may have more "brand
equity" and customer loyalty
◼ “Trade mark” means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packaging and
combination of colours
◼ The registration of a trade mark, after the commencement of this Act, shall
be for a period of ten years, but may be renewed from time to time in
accordance with the provisions of this section
 Trade Marks Act, 1999…..
◼ Trademark is for protecting the name of the product or services rather the
product itself
◼ Trademark assures the customer about the source of a product, though the
quality of the product is not assured by the trademark
◼ Trademark can be assigned or transmitted
◼ Infringement of trademark is violation of the exclusive rights granted to the
registered proprietor of the trademark to use the same.
◼ The Indian trademark law protects the vested rights of a prior user against a
registered proprietor which is based on common law principles.
◼ Passing off is a common law tort used to enforce unregistered trademark
rights.
➢ Passing off essentially used to protect the goodwill attached with the
unregistered trademark.
➢ It occurs where the reputation in the trademark of party A is misappropriated by
party B, such that party B misrepresents as being the owner of the trademark or
having some affiliation/nexus with party A, thereby damaging the goodwill of
party A.
 Trade Marks Act, 1999
◼ Types of Trademark in India
➢ 1. Service mark: Service marks are trademarks that you are going to use to
represent the service provided to the customers For example: LIC, ICICI etc.
➢ 2. Certification mark: This mark is not a normal sort of trademark. It is a mark that
can by anything like a name, or a device that vouches for (represents quality) of the
product or services.
➢ 3. Collective mark: There are some marks that can either represent both the product
and services. These marks represent a lot more facets of trade than you might think.
For example, the TATA represents cars on one hand and also salt on the other.
➢ 4. Well known mark: This particular mark is the one that has gotten immense
popularity inside the public domain. This can either be a collective mark, a word mark,
logo mark etc. This type of trademark is more like a suggestion that the mark has
gotten immense popularity.
➢ 5. Series mark:This is a type of trademark that is extremely similar to other
trademark. A series mark can also be called a family mark as there are not many
discernible non-similar facets of the mark from the other. They belong to a single
organization who wants to keep the aesthetics of their mark the same.
➢ 6. Unconventional marks: There are 3 types of mark that fall under this type of
trademark.. This particular type of trademark is can be a shape mark, a sound mark,
a color mark and even a smell mark.
Grounds for Refusal of Trademark Registration
◼ Trademark is devoid of any distinctive character
◼ It depicts the general characteristics of the goods or service used in
trade practices
◼ It is of such nature as to deceive the public or cause confusion
◼ It contains or comprises of any matter likely to hurt the religious
feelings of any class or section of the citizens of India
◼ It contains or comprises of scandalous or obscene matter
◼ Its use is prohibited.
◼ The shape of goods which results from the nature of the goods
themselves
◼ It is similar to earlier registered trade mark or similar good or
services covered under a trademark
 Trade Secret
◼ A trade secret may consist of any formula, pattern, physical device,
idea, process, compilation of information, or other information that
both:
➢ provides the owner of the information with a competitive advantage in the
marketplace, and
➢ is treated in a way that can reasonably be expected to prevent the public or
competitors from learning about it.

◼ Factors to be consider to qualify as a trade secret:

➢ the extent to which the information is known outside of the particular
business entity
➢ the extent to which the information is known by employees and others
involved in the business
➢ the extent to which measures have been taken to guard the secrecy of the
information
➢ the value of the information to the business, and
➢ the difficulty with which the information could be properly acquired or
independently duplicated by others.
 Copyright Act, 1957….
◼ “Copyright” means the exclusive right subject to the provisions of
this Act, to do or authorize the doing of any of the following acts in
respect of a work or any substantial part thereof, namely in the case
of a computer programme,—
➢ (i) to reproduce the work in any material form including the
storing of it in any medium by electronic means;
➢ (ii) to issue copies of the work to the public not being copies
already in circulation;
➢ (iii) to perform the work in public, or communicate it to the
public;
➢ (iv) to make any cinematograph film or sound recording in
respect of the work;
➢ (v) to make any translation of the work;
➢ (vi) to make any adaptation of the work;
➢ (vii) to do, in relation to a translation or an adaptation of the
work, any of the acts specified in relation to the work in sub-
clauses (i) to (vi);
 Copyright Act, 1957…..
◼ Subject to the provisions of this Act, the author of a work shall be the
first owner of the copyright
◼ Copyright shall not subsist under this Act in any design which is
registered under the Designs Act, 1911
◼ If the period of assignment is not stated, it shall be deemed to be
five years from the date of assignment
◼ If the territorial extent of assignment of the rights is not specified, it
shall be presumed to extend within India.
◼ In the case of a literary, dramatic, musical or artistic work (other than
a photograph), which is published anonymously or pseudonymously,
copyright shall subsist until sixty years from the beginning of the
calendar year next following the year in which the work is first
published
 Copyright Act, 1957…..
◼ There are three types of remedies available against copyright
infringement:
➢ Civil, Criminal and Administrative.
◼ Sections 54 to 62 of the Copyright Act, 1957, deals with civil
remedies for infringement of copyright.
◼ Civil remedies include injunction, damages and account of profit,
delivery of infringing copies and damages for conversion.
➢ The Court is empowered to visit the premises of the infringers and
conduct a search of the infringers' premises and cease infringing
material from the infringers' premises.
➢ The seized material can be used at a later point of time to establish
infringement
 Design Act, 2000…..
◼ “Design” means only the features of shape, configuration, pattern,
ornament or composition of lines or colours 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;
➢ does not include any mode or principle of construction or anything which
is in substance a mere mechanical device,
➢ does not include any trade mark as defined in clause (v) of sub-section
(1) of section 2 of the Trade and Merchandise Marks Act, 1958 or
property mark as defined in section 479 of the Indian Penal Code
➢ Any artistic work as defined in clause (c) of section 2 of the Copyright
Act, 1957
 Licensing….
◼ Licensing is essentially a contractual process in which the owner of
the rights/assests, transfers them for specific purposes and for due
consideration to a third party in whose hands profitable
commercial exploitation is judged to be more likely than by
using any other route, from the acts of outright sale or distribution.
◼ These assets consist of intellectual property rights involving
knowledge and information
◼ Licensing invoves transferring the title of ownership i.e. the
owner retains control over the asset.
◼ Licensing monopoly rights for commercial gain has to contend
with the equally strong but opposing requirement that
competition should be free and fair. (Anti-competative Law)
◼ The crucial feature of licensing is that without the owner’s
permission any act by a third party which involves the sale of
goods or services based on the asset would be illegal.
 Licensing Feature
◼ Basic principle of having valid access rights to potentially valuable
intellectual property is probably just as important as ownership rights,
◼ Another feature of licensing is the frequent practice of assembling a number
of rights into a single package so that there is synergy between them.
◼ A patent and related know-how may be underpinned by a design,
supported by copyright and associated with a trade mark, the whole forming
a complex but strong variety of rights with considerable licensing potential.
◼ A software license gives legal right to install, use, access, display, run, or
otherwise interact with a specific software program.
◼ Customers may require a software license for each computer or device on
which the software is installed.
◼ A license covers things like if there are downgrade rights, and specifies if a
license is perpetual (everlasting) or non perpetual (temporary with a specific
end date).
 IP License Agreement….
◼ An IP license agreement is a contract by which the owner of the IP
(licensor) allows a third party (licensee) to exploit certain IP assets within
the limits set out by the provisions of the contract.
◼ In exchange of the rights granted (Right to Use)under the contract, the
licensee usually pays a price, which may be a lump sum, royalties and/or
other types of payment
◼ An IP license is usually comparable to a rental; it does not imply the
permanent transfer of the IP in question
◼ It is best practice to conclude an NDA before engaging in negotiations for
license agreements or R&D projects, as well as whenever it is necessary to
discuss innovative ideas, products or technologies with potential business
partners
◼ It must be clarified in the contract whether the licence is
➢ exclusive, - the owner of the IP is not allowed to use the IP either
➢ sole - the license is only granted to one licensee and excludes the
licensor from granting licenses to any other personor
➢ non-exclusive - the licensor can grant licenses to as many licensees as
desired, while retaining the right to use the licensed IP.
 Types of Licensing….
◼ A Unlimited License Agreements (ULA)- is a time-based (2-3
year) unlimited use right license for a subset of technology or
applications
◼ Processor License - Pay per Processor on which the software runs
◼ Licensing to a specific individual (End User Licensing)
◼ Concurrent Device License - Concurrent Device (CD) licenses are
defined as the 'Maximum amount of input devices connecting to the
designated system at any given point in time
◼ OEM (original equipment manufacturer)/Licensing to a specific
hardware (Node Licensing) : These licenses cover software for
stand-alone PC's and notebooks and MUST stay bundled with the
computer system and NOT distributed as a separate (or stand-
alone) product.
◼ Educational or Academic Liccenses: Software marked for
distribution to educational institutions and students at reduced
prices.
 Software licenses and Copyright law

◼ Two common categories for software under copyright law

➢ Proprietary software
➢ Free and open-source software (FOSS)

◼ FOSS software licenses grants rights to modify and re-use a software

product to the customer and therefore bundles the modifiable source
code with the software ("open-source"),
◼ Proprietary software typically does not license these rights and therefore
keeps the source code hidden ("closed source").

◼ Essential criteria for Free and Open Source Software

➢ Freedom to run the program
➢ Freedom to study and change
➢ Freedom to redistribute – unmodified copies
➢ Freedom to distribute - modified copies (known as derivative or larger works)
 Employee/Employer Invention
◼ The exact position of an employee inventor must be
defined in respect of patent rights
◼ In the case of a work made in the course of the author’s
employment under a contract of service or
apprenticeship, employer shall, in the absence of any
agreement to the contrary, be the first owner of the
copyright therein;
◼ To avoid argument and disputes employers should
ensure
✓ The invention has been made during the normal
duties of the employee
✓ Is protected by the well defined employment contract
 Cybersquatting

◼ Cybersquatting is the practice of registering an Internet domain

name that is likely to be wanted by another person, business, or
organization in the hope that it can be sold to them for a profit.
◼ It involves the registration of trademarks and trade names as
domain names by third parties, who do not possess rights in such
names.
◼ The common motive of trading on the reputation and goodwill of
such third parties by either confusing customers or potential
customers, and at times, to even sell the domain name to the rightful
owner at a profit.
◼ Mark Zuckerberg buys domain name maxchanzuckerberg.org
from engineering student in Kochi for $700
 Anti-Cybersquatting & Cybperpiracy
◼ Anti-cybersquatting Consumer Protection Act (ACPA) - creates civil
liabilities for anyone who attempts in bad faith to profit from an existing
famous or distinctive trademark by registering an Internet domain name that
is identical or confusingly similar to, or “dilutive” of, that trademark.(US
only)
◼ Cyberpiracy - involves the same behavior as cybersquatting, but with
the intent of diverting traffic from the legitimate site to an infringing
site.
◼ Typosquatting is a form of cyberpiracy in which a domain name contains a
common misspelling of another site’s name. These domains are sometimes
referred to as “doppelganger” domains. Often the user ends up at a site
very different from one they intended to visit.
➢ In July 2011, Facebook filed a lawsuit against 25 typosquatters who
established Web sites with such domain names as Faceboook, Facemook,
Faceboik, and Facebooki. In 2013, Facebook was awarded $2.8 milion in
damages.
 Piracy
◼ Piracy is Copyright infringement of works protected by copyright
law without permission, infringing certain exclusive rights granted to
the copyright holder, such as
✓ the right to reproduce,
✓ distribute,
✓ display
✓ perform the protected work,
✓ to make derivative works.
◼ Piracy is one of the major cyber theft of IP faced by India
◼ The unauthorized copying, distribution or the use of software without
obtaining a proper license from the software company, also termed
as software piracy
◼ The piracy results in a huge loss of revenue to the copyright holder.
◼ Telangana Intellectual Property Crime Unit (TIPCU) is one of the
first unit that has been launched to deal with the IP crime.
 Plagiarism
◼ Plagiarism is the "wrongful appropriation" and "stealing and
publication" of another author's "language, thoughts, ideas, or
expressions" and the representation of them as one's own original
work
◼ To "plagiarize" means:
✓ to steal and pass off (the ideas or words of another) as one's own
✓ to use (another's production) without crediting the source
✓ to commit literary theft
✓ to present as new and original an idea or product derived from an
existing source
◼ Plagiarism Act in India, it is governed by the section 57,63 and 63
(a) of the Copyright Act.
◼ Plagiarism can attract imprisonment from 6months to 3 years.
 Plagiarism
◼ Up to 10% similarity is acceptable and terms it as minor or Level 0.
The drawback is, this minor similarity could be a significant
plagiarism if taken from a single source.
◼ Level 1: Similarities above 10% to 40%,
◼ Level 2: Similarities above 40% to 60%,
◼ Level 3: Similarities above 60%.
 Protection of IP from Cyber Theft

◼ Frequently updating the list of IPs’ that need to be secured.

◼ The company can increase the security to access its trade secrets.
◼ It can reduce the number of people who can access their trade
secrets.
◼ Company needs to be up to date with software systems.
◼ Constantly checking for some unusual cyber activities.
◼ Constantly educate their employees about cyber security.
◼ Constructing some threat mitigating programmes.
◼ Installing up-to date anti-virus software.
◼ Allowing employees to reach only some classified data.
 Types of Infringement……
◼ Metatagging – (Meta tags are essentially little content descriptors
that help tell search engines what a web page is about. )The use of
trademarks in metatags is permitted if the use does not mislead or
confuse consumers. Usually this depends on the content of the site.
A car dealer would be permitted to use a famous automobile
trademark in its metatags if the dealer sold this brand of
automobiles, but a a dealer for a rival manufacturer could not use
the same trademark,
◼ Keywording - The permissibility of using trademarks as keywords
on search engines is also subtle and depends (1) on the extent to
which such use is considered to be a “use in commerce” and causes
“initial customer confusion” and (2) on the content of the search
results.
◼ Framing involves displaying the content of another Web site inside
your own Web site within a frame or window. The user never leaves
the framer’s site and can be exposed to advertising while the target
site’s advertising is distorted or eliminated. Framers may or may not
acknowledge the source of the content.
 Types of Infringement
◼ Linking refers to building hypertext links from one site to another
site. This is a major design feature and benefit of the Web.
◼ Deep linking involves bypassing the target site’s home page and
going directly to a content page.
➢ In Ticketmaster Corp. v. Tickets.com, Tickets.com—owned by
Microsoft—competed directly against Ticketmaster in the events ticket
market.
➢ When Tickets.com did not have tickets for an event, it would direct
users to Ticketmaster’s internal pages, bypassing the Ticketmaster
home page.
➢ Even though its logo was displayed on the internal pages, Ticketmaster
objected on the grounds that such “deep linking” violated the terms and
conditionsof use for its site constituted false advertising, as well as the
violation of copyright.