INTELLECTUAL PROPERTY

INTELLECTUAL PROPERTY - Transcript

INTELLECTUAL PROPERTY
The only thing that is keeping us alive is our brilliance The only way to protect our brilliance is patents
Edwin Land April 27 1976

Dr Subhash Gupta

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Intellectual property
Intellectual property refers to creations of the mind inventions literary and artistic works and symbols names images and designs used in commerce Intellectual property is divided into two categories Industrial property which includes inventions patents trademarks industrial designs and geographic indications of source and Copyright which includes literary and artistic works such as novels poems and plays films musical works artistic works such as drawings paintings photographs and sculptures and architectural designs Rights related to copyright include those of performing artists in their performances producers of phonograms in their recordings and those of broadcasters in their radio and television programs Dr Subhash Gupta 2

Specific areas of intellectual property
Patents Trademarks Copyright Industrial Designs Geographical Indications Utility Models Trade Secrets
Dr Subhash Gupta 3

Intellectual Property Rights
Industrial Property Rights Copy Rights CONFIDENTIAL INFORMATION

Dr Subhash Gupta

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Expanding domain of IPR

Patents Industrial Designs Trade Marks Copy Rights Geographical Indications Integrated Circuits Trade Secrets Utility Models Know how Confidential Information Plant Varieties Protection IT Protection Bio diversity protection Traditional knowledge protection Dr Subhash Gupta

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IP Laws in force in India
1 The Patents Act 1970 and The Patents Amendment Act 2002 2 The Patents Rules 2003 3 The Designs Act 2000 4 The Trade Marks Act 1999 5 The Trade Marks Rules 2002 6 The Copy Rights Act 1957 and Amendments upto 1999 7 Geographical Indications of Goods Registration Protection Act 1999 8 The Information Technology IT Act 2000 9 Semi conductors IC Layout Designs Act 2000 10 The Biological Diversity Act 2000 11 The Protection of Plant Varieties and Farmer s Rights Act 2001 Dr Subhash Gupta 6

Public Laws Policy Statements Complementary to IPR
1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 The Constitution of India 1950 Industrial Policy Resolution 1956 Scientific Policy Resolution 1958 Technology Policy Statement 1983 New Industrial Policy Statement 1991 Science Technology Policy Statement 2003 The Drugs Cosmetics Act 1940 and Amendments The prevention of Food Adulteration Act 1954 and Amendments MRTP Act 1969 and Amendments The Consumer Protection Act 1986 Amendments The Drug Price Control Order 1995 The Drugs Policy 1994 The Pharmaceutical Policy 2002 The Income Tax Act 1961 R D Cess Act 1986 Industrial Development Regulation Act 1950

Dr Subhash Gupta

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IPR Related International Treaties
1 Paris Convention 1883 as Amended upto 1979 2 Patent Cooperation Treaty PCT 1972 3 UPOV 1978 and UPOV 1991 4 UN CBD 1992 5 WTO TRIPS 1994 6 WTO TRIMS 1994 7 WTO GATS 1994 8 Universal Copy Rights Convention 9 Washington Treaty on Copy Rights 10 Budapest Treaty for Micro Organisms Deposits India is admitted as Member of Budapest Treaty on 7th Dec 2001 Lab like MTCC IMTech is accorded International Recognition as IDA on the Deposit of Micro Organisms for the purpose of Patents Procedure in respect of BioTechnological Micro biological processes products There is a need for more such IDA centres in India NCIM NCL could emerge as one such centres

Dr Subhash Gupta

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PATENTS
What kind of protection does a patent offer What rights does a patent owner have Why are patents necessary What role do patents play in everyday life How is a patent granted What kinds of inventions can be protected Who grants patents
Dr Subhash Gupta 9

PATENTS
Patent is an exclusive right granted for an invention which is a product or a process that provides a new way of doing something or offers a new technical solution to a problem Provides protection for the invention to the owner of the patent The protection is granted for a limited period generally 20 years
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PATENTS
Patent protection means that the invention cannot be commercially made used distributed or sold without the patent owner s consent A patent owner has the right to decide who may or may not use the patented invention for the period in which the invention is protected The patent owner may give permission to or license other parties to use the invention on mutually agreed terms The owner may also sell the right to the invention to someone else who will then become the new owner of the patent Once a patent expires the protection ends and an invention enters the public domain that is the owner no longer holds exclusive rights to the invention which becomes available to commercial exploitation by others Dr Subhash Gupta 11

PATENTS
All patent owners are obliged in return for patent protection to publicly disclose information on their invention in order to enrich the total body of technical knowledge in the world Such an ever increasing body of public knowledge promotes further creativity and innovation in others In this way patents provide not only protection for the owner but valuable information and inspiration for future generations ofDresearchers and inventors r Subhash Gupta 12

How is a patent granted
The first step in securing a patent is the filing of a patent application It generally contains
the title of the invention indication of its technical field it must include the background and a description of the invention in clear language and enough detail that an individual with an average understanding of the field could use or reproduce the invention descriptions are usually accompanied by visual materials such as drawings plans or diagrams to better describe the invention The application also contains various claims that is information which determines the extent of protection granted by the patent Dr Subhash Gupta 13

What kinds of inventions can be Protected
An invention must in general fulfill the following conditions for grant of patent It must be of practical use It must show an element of novelty that is some new characteristic which is not known in the body of existing knowledge in its technical field This body of existing knowledge is called prior art The invention must show an inventive step which could not be deduced by a person with average knowledge of the technical field Finally its subject matter must be accepted as patentable under law
In many countries scientific theories mathematical methods plant or animal varieties discoveries of natural substances commercial methods or methods for medical treatment as opposed to medical products are generally not patentable

Dr Subhash Gupta

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National patent office Regional office that does the work for a number of countries such as the European Patent Office African Regional Industrial Property Organization Under such regional systems an applicant requests protection for the invention in one or more countries and each country decides as to whether to offer patent protection within its borders The WIPO administered Patent Cooperation Treaty PCT provides for the filing of a single international patent application which has the same effect as national applications filed in the designated countries Through WIPO an applicant seeking protection may file one application and request protection in as many signatory states as needed Dr Subhash Gupta 15

Who grants patents

Should We Patent
Questions that must be asked and answered before a discovery can be taken beyond the invention disclosure phase Significant costs in dollars and time are required by both the intellectual property technology transfer office and the inventor to get an invention patented Pursuing only patents that will be beneficial to all requires difficult decisions Some inventions are never sent for patents some are delayed until the invention is more complete or the market is ready and some are processed quickly
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Steps in Patents filing grant
Filing of Patent Application Examination Prosecution of Patent Application for Novelty Non obviousness and utility of the invention Compliance of other Legal requirements Acceptance and publication in the Gazette No opposition proceedings Opposition proceedings if any to Establish the Novelty NonObviousness utility of the invention and Other Legal Compliance

GRANT SEAL OF LETTER PATENT

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TRADEMARKS
What is a trademark What does a trademark do What kinds of trademarks can be registered How is a trademark registered How extensive is trademark protection
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TRADEMARKS
A trademark is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise It may be one or a combination of words letters and numerals They may consist of drawings symbols three dimensional signs such as the shape and packaging of goods audible signs such as music or vocal sounds fragrances or colors used as distinguishing features Helps consumers identify and purchase a product or service because its nature and quality indicated by its unique trademark meets their needs
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TRADEMARKS
Provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services or to authorize another to use it in return for payment The period of protection varies but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees Trademarks enables people with skill and enterprise to produce and market goods and services in the fairest possible conditions thereby facilitating international trade
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How is a trademark registered
First an application for registration of a trademark must be filed with the appropriate national or regional trademark office The application must contain a clear reproduction of the sign filed for registration including any colors forms or three dimensional features The application must also contain a list of goods or services to which the sign would apply

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How extensive is trademark protection
Almost all countries in the world register and protect trademarks The effects of such a registration are however limited to the country or in the case of a regional registration countries concerned In order to avoid the need to register separately with each national or regional office WIPO administers a system of international registration of marks
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How extensive is trademark protection
WIPO system is governed by two treaties The Madrid Agreement Concerning the International Registration of Marks and The Madrid Protocol By these treaties one can register trademarks in one or several or all of the countries that are party to Madrid Union At present more than 60 countries are party to one or both of the agreements

Dr Subhash Gupta

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COPYRIGHT
What is copyright What is covered by copyright What rights does copyright provide Are ideas methods or concepts protected by copyright What are rights related to copyright Why protect copyright How has copyright kept up with advances in technology How is copyright regulated Do you need to register to be protected
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WHAT IS A COPYRIGHT
Copyright is a legal term describing rights given to creators for their literary and artistic works The kinds of works covered by copyright include literary works such as novels poems plays reference works newspapers and computer programs databases films musical compositions and choreography artistic works such as paintings drawings photographs and sculpture architecture and advertisements maps and technical drawings

Dr Subhash Gupta

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What rights does copyright provide
The original creators of works protected by copyright and their heirs have certain basic rights They hold the exclusive right to use or authorize others to use the work on agreed terms The creator of a work can prohibit or authorize its reproduction in various forms such as printed publication or sound recording its public performance as in a play or musical work recordings of it for example in the form of compact discs cassettes or videotapes its broadcasting by radio cable or satellite its translation into other languages or its adaptation such as a novelDr Subhash Gupta into a screenplay 26

What rights does copyright provide
Creators often sell the rights to their works to individuals or companies best able to market the works in return for payment These payments are often made dependent on the actual use of the work and are then referred to as royalties These economic rights have a time limit according to the relevant WIPO treaties of 50 years after the creator s death
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Are ideas methods or concepts protected by copyright
According to the WIPO Copyright Treaty copyright protection extends only to expressions and not to ideas procedures methods of operation or mathematical concepts as such

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Why protect copyright
Copyright and its related rights are essential to human creativity by giving creators incentives in the form of recognition and fair economic rewards Under this system of rights creators are assured that their works can be disseminated without fear of unauthorized copying or piracy This in turn helps increase access to and enhances the enjoyment of culture knowledge and entertainment all over the world
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How is copyright regulated Do you need to register to be protected

A created work is considered protected by copyright as soon as it exists According to the Berne Convention for the Protection of Literary and A literary and artistic works are protected without any formalities in the countries party to that Convention Thus WIPO does not offer any kind of copyright registration system However many countries have a national copyright office
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Industrial Designs
What is an industrial design Is an ornamental or aesthetic aspect of an article The design may consist of threedimensional features such as the shape or surface of an article or of two dimensional features such as patterns lines or color Applied to a wide variety of products of industry and handicraft from technical and medical instruments to watches jewelry and other luxury items from housewares and electrical appliances to vehicles and architectural structures from textile designs to leisure goods
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To be protected under most national laws an industrial design must appeal to the eye This means that an industrial design is primarily of an aesthetic nature and does not protect any technical features of the article to which it is applied Industrial designs are what make an article attractive and appealing hence they add to the commercial value of a product and increase its marketability
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Generally industrial design protection is limited to the country in which protection is granted Under the Hague Agreement Concerning the International D a WIPO administered treaty a procedure for an international registration is offered An applicant can file a single international deposit either with WIPO or the national office of a country which is party to the treaty The design will then be protected in as many member countries of the treaty as the applicant wishes
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Geographical Indications
What is a geographical indication Sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin Geographical indication consists of the name of the place of origin of the goods Agricultural products typically have qualities that derive from their place of production and are influenced by specific local factors such as climate and soil They may also highlight specific qualities of a product which are due to human factors that can be found in the place of origin of the products such as specific manufacturing skills and traditions That place of origin may be a village or town a region or a country

Dr Subhash Gupta

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GEOGRAPHICAL INDICATIONS
TIFAC INITIATED PREPARING LIST OF ITEMS WHICH MAY QUALIFY FOR GI STATES
UTTAR PRADESH MADHYA PRADESH RAJASTHAN PUNJAB HIMACHAL PRADESH WEST BENGAL 44 1 14 9 6 13 Banarasi Saree Brassware Chanderi Saree Bikaneri Bhujia Bandhej Phulkari Patialvi Juti Kullu Shawls Kangra Tea Darjeeling Tea Rosogola 35 Many More

Dr PFC TIFAC Gupta Subhash
PFC TIFAC

A geographical indication points to a specific place or region of production that determines the characteristic qualities of the product that originates therein It is important that the product derives its qualities and reputation from that place What is the difference between a geographical indication and a trademark A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises It gives its owner the right to exclude others from using the trademark A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production Dr Subhash Gupta 36

How is a geographical indication protected Geographical indications are protected in accordance with national laws and under a wide range of concepts such as laws against unfair competition consumer protection laws laws for the protection of certification marks or special laws for the protection of geographical indications or appellations of origin In essence unauthorized parties may not use geographical indications if such use is likely to mislead the public as to the true origin of the product
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How are geographical indications protected on the international level
A number of treaties administered by the World Intellectual Property Organization WIPO provide for the protection of geographical indications most notably The Paris Convention for the Protection of Industrial Property of 1883 The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration Articles 22 to 24 of the Agreement on Trade Related Aspects of Intellectual Property Rights TRIPS deal with the international protection of geographical indications within the framework of the World Trade Organization WTO Dr Subhash Gupta 38

Protecting Innovations by Utility Models
In some countries inventions may also be protected by utility models which are also known as petty patents or utility innovations A utility model is an exclusive right granted for an invention which allows the right holder to prevent others from commercially using the protected invention without his authorization for a limited period of time The requirements for acquiring a utility model are less stringent than for patents While the requirement of novelty is always to be met that of inventive step or non obviousness may be much lower or absent altogether The term of protection for utility models is shorter than for patents Utility models are much cheaper to obtain and to maintain Mostly obtained for certain fields of technology and only for products but not for processes Utility models are considered particularly suited for SMEs Dr Subhash Gupta 39

Where can Utility Models be Acquired
Currently a small but significant number 47 of countries provide utility model protection These include Australia Argentina Armenia Austria Belarus Belgium Brazil Bulgaria China Colombia Costa Rica Czech Republic Denmark Estonia Ethiopia Finland France Georgia Germany Greece Guatemala Hungary Ireland Italy Japan Kazakhstan Kenya Kyrgyzstan Malaysia Mexico Netherlands OAPI Peru Philippines Poland Portugal Republic of Korea Republic of Moldova Russian Federation Slovakia Spain Tajikistan Trinidad Tobago Turkey Ukraine Uruguay and Uzbekistan In countries where the national legislation does not provide for utility model protection SMEs may either apply for a patent or keep the invention as a trade secret

Dr Subhash Gupta

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Trade Secrets
Confidential business information which provides an enterprise a competitive edge may be considered a trade secret Usually these are manufacturing or industrial secrets and commercial secrets Include sales methods distribution methods consumer profiles advertising strategies lists of suppliers and clients and manufacturing processes

Dr Subhash Gupta

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How are Trade Secrets Protected
Contrary to patents trade secrets are protected without registration A trade secret can be protected for an unlimited period of time There are however some conditions for the information to be considered a trade secret These conditions vary from country to country some general standards exist which are referred to in Art 39 of the Agreement on Trade Related Aspects of Intellectual Property Rights TRIPS Agreement The information must be secret i e it is not generally known among or readily accessible to circles that normally deal with the kind of information in question It must have commercial value because it is a secret It must have been subject to reasonable steps by the rightful holder of the information to keep it secret e g through confidentiality agreements

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The Jeevani and the Kani Tribes
The Kani tribals belong to a traditionally nomadic community who now lead a primarily settled life in the forests of the Agasthyamalai hills of the Western Ghats a mountain range along south western India in the Thiruvananthapuram district of Kerala The Kanis numbering around 16 000 live in several tribal hamlets each consisting of 10 to 20 families dispersed in and around the forest areas of Thiruvananthapuram district These Kanis do not constitute a cohesive unit although they do share certain common characteristics and practices Kanis are the traditional collectors of non timber forest products from the forest Living close to nature the Kanis have acquired unique knowledge about the use of the resources particularly the biological resources around them
In December 1987 a team of Scientists working on the All India Co ordinated Research Project on Ethnobiology AICRPE led by Dr P Pushpangadan was trekking through the tropical forests of Agasthyar hills They were surveying the Kani tribal settlements and got exhausted after a while This team was accompanied by a few Kani tribesmen as guides who surprisingly remained energetic and agile They occasionally would munch some small blackish fruits One of them offered a few of these fruits to the team pointing out that if they ate those they could go on trekking without fatigue And that is what happened to the AICRPE team after they had followed their advice It was later that the Kani tribesmen introduced the magical plant which was subsequently identified as Trichopus zeylanicus ssp travancoricus



Dr Subhash Gupta

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Jeevani Detailed chemical and pharmacological investigations showed that the leaf of the plant contained various glycolipids and some other non steroidal compounds with profound adaptogenic and immuno enhancing properties The fruits showed mainly anti fatigue properties Tropical Botanical Garden Research Institute TBGRI was successful in developing a scientifically validated and standardized herbal drug based on the tribal lead The drug was named as Jeevani and it was released for commercial production in 1995 in Arya Vaidya Pharmacy While transferring the technology for production of the drug to the pharmaceutical firm TBGRI agreed to share the license fee and royalty with the tribal community on a fifty fifty basis
The prime concern of the tribals in the beginning was to evolve a viable mechanism for receiving such funds With the help of TBGRI some government officials and NGOs the tribals formed a registered trust About 60 of the Kani families of Kerala are members of this trust From February 99 the amount due to them has been transferred to this Trust with an understanding that the interest accrued from this amount alone can be used for the welfare activities of the Kani tribe TBGRI has trained 25 tribal families to cultivate the plant in around their dwellings in the forest In the first year itself each family earned about Rs 8 000 on sale of leaves from cultivation of T zeylanicus in half hectare area by each family But unfortunately the forest department objected to the cultivation with the plea that the tribals may remove the plants from the natural population of this species in the forests and thereby make it endangered It is understood that this problem has now been resolved and the Forest department has recently approved the cultivation of this plant It is significant to note that while the issue of material transfer and benefit sharing was discussed and debated after convention of Biological Diversity CBD India has already pioneered one of the first models



Dr Subhash Gupta

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Turmeric Patent The Chronology and Lessons
Two US based Indians Suman K Das and Hari Har P Cohly were granted a US Patent 5 40 504 on March 28 1995 on Use of Turmeric in wound healing The patent was assigned to University of Mississippi Medical Center USA This patent claimed the administration of an effective amount of turmeric through local and oral route to enhance the wound healing process as a novel finding Any patent before it is granted has to fulfil the basic requirements of novelty non obviousness and utility Thus if the claims have been covered by relevant published art then the patent becomes invalid CSIR could locate 32 references some of them being more than one hundred years old and in Sanskrit Urdu and Hindi which showed that this finding was well known in India prior to filing of this patent The formal request for re examination of the patent was filed by CSIR at USPTO on 28th October 1996 Dr Subhash Gupta 45

Termeric The first office action in the re examination was issued by USPTO on 28th March 1997 which rejected all the six claims based on the references submitted by CSIR as being anticipated by the submitted references and therefore considered invalid under 35 U S C 102 and 103 After receiving the first action the University of Mississippi Medical Centre to whom the turmeric patent was assigned decided not to pursue the case and transferred the rights to the inventors who however decided to file a response The inventors argued that the powder and paste had different physical properties i e bioavailability and absorbability and therefore one of ordinary skill in the art would not expect with any reasonable degree of certainty that a powdered material would be useful in the same application as a paste of the same material The inventors further mentioned that oral administration was available only with honey and honey itself was considered to have wound healing properties Dr Subhash Gupta 46

Termeric In the second Office Action the examiner rejected all the claims once again and made his action final He made it clear that the paste and the powder forms were equivalent for healing wounds in view of the cited art Subsequent to the second rejection the inventors had an interview with the examiner and deleted claims 5 6 and also restricted the invention to a non healing surgical wound as supported by the two case histories mentioned in the patent stating that there was no disclosure or suggestion of using turmeric in surgically inflicted nonhealing wounds and requested the examiner to allow the amended claims On 20th November 1997 the examiner rejected all the claims once again as being anticipated and obvious The re examination certificate was issued on this case on April 21 1998 bringing the re examination proceedings to a close Dr Subhash Gupta 47

Termeric The following points are interesting to note 1 The turmeric case was a landmark case in that this was the first time that a patent based on the traditional knowledge of a developing country was challenged successfully and USPTO revoked the patent This eventually opened up the path to the creation of Traditional Knowledge Digital Library Traditional Knowledge Resource Clarification and finally inclusion of traditional knowledge in the International Patent Clarification System 2 Amidst the loud protests against biopiracy and theft of India s biodiversity and traditional knowledge by foreign nationals it is interesting to note here that the patentees were Indians Das and Cohly the re examination in USPTO was done by an Indian Kumar and the re examination was sought by an Indian institution CSIR Dr Subhash Gupta 48

RE EXAMINATION OF US PATENT ON BASMATI
Background Rice Tec Inc had applied for registration of a mark TEXMATI before the UK Trade Mark Registry It was successfully opposed by Agricultural and Processed Food Exports Authority APEDA One of the documents relied upon by Rice Tec as evidence in support of the registration of the said mark was the U S Patent 5 663 484 hereafter referred to as 484 patent granted by US Patent Office to Rice Tec on September 2 1997 and that is how this patent became an issue for contest This US utility patent 484 was in a unique way to claim a rice plant having characteristics similar to the traditional Indian Basmati Rice lines and with the geographical delimitation covering North Central or South America or Caribbean Islands The patent was granted to Rice Tec by the U S Patent Office on September 2 1997 The said patent covered 20 claims covering not only a novel rice plant but also various rice lines resulting plants and grains seed deposit claims method for selecting a rice plant for breeding and propagation Its claims 15 17 were for a rice grain having characteristics similar to those from Indian Basmati rice lines The said claims 15 17 would have come in the way of Indian exports to US if legally enforced The grant of this patent created a stir in the public government business circles and academics

Dr Subhash Gupta

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Basmati In the wake of this controversy the Government of India set up a Task Force under the Chairmanship of Secretary Ministry of Industrial Development to examine the possibilities of filing a re examination request against the above mentioned US Patent The Task Force in turn set up a Technical Committee comprising primarily the ICAR CSIR scientists to examine the Patent specification in detail and to collect necessary documentary evidence that may be required to file the re examination request against the US Patent Evidence from the IARI Bulletin was used against claims 15 17 The evidence was backed up by the germplasm collection of Directorate of Rice Research Hyderabad since 1978 The various grain characteristics were evaluated by CFTRI scientists and accordingly the claims 15 17 were attacked on the basis of the declarations submitted by CFTRI scientists on grain characteristics Dr Subhash Gupta 50

Basmati Eventually a request for re examination of this patent was filed on April 28 2000 Soon after filling the re examination request Rice Tec chose to withdraw claims 15 to 17 along with claim 4 Although RiceTec did withdraw these claims the US Patent Office on its own judged that a substantial question of patentability has been raised in respect of the remaining claims Based the exhaustive office action Ricetec has now surrendered the claims 1 to 3 5 to 7 10 14 and 18 to 20 As such the claims that Ricetec now intends to protect are 8 9 11 12 13 These claims pertain to specific rice lines and the progeny and the grains of the specific crosses This means that as against the Indian attack on 3 claims Ricetec is withdrawing 15 claims Dr Subhash Gupta 51

Basmati In summary Ricetec having withdrawn claims 15 17 the threat of infringement by the export of Basmati grains to US has been averted And now with the surrender of all the other broad claims even the alleged threat to the export of grains of insensitive rice lines from India has been averted In short the objective for which India had filed the re examination case has been fulfilled
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