Intellectual Property Rights

Unit-I  INTRODUCTION TO INTELLECTUAL PROPERTY

INTRODUCTION
Intellectual Property Law protects the results of human creative endeavor. Intellectual
Property is generally thought to comprise 4 separate fields of law. i.e.
1. Trade Marks:
A trademarks is a word, Name, Symbol, Devise is used to identify and
distinguish one’s good or services and to indicate their source.
2. Copyrights:
Copyright protects original works of authorship, including literary, musical,
dramatic, artistic, and other works. Just as trademarks are protected from the
moment of their first public use, copyrights exist from the moment of creation
of a work in fixed form.
3. Patents:
A patent is a grant from the US Government that permits its owner to exclude
others from making, selling, using, or importing an invention. Patents exist only
up on issuance by the US Patent and Trademark Office (USPTO).
4. Trade Secretes:
Trade Secrets consist of any valuable commercial information that, if known by a
competitor, would provide some benefit or advantage to the competitor. No
registration or other formalities are required to create a Trade Secret, and Trade
Secret endures as long as reasonable efforts are made to protect their secrecy.
Definition of Intellectual Property
There are three distinct types of property that individuals and companies can own
a) Real Property – It Refers to land or real estate
b) Personal Property – It refers to specific items and things that can be
identified, such as jewelry, cars, and art work.
c) Intellectual Property - It refers to the fruits and product of human creativity,
including literature, advertising slogans, new inventions. Thus, property that is
the result of thought, namely intellectual activity, is called Intellectual
Property. In some foreign countries, intellectual Property is referred as
Industrial Property.

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Protection of Intellectual Property:

Intellectual Property is a field of law that aims at protecting the knowledge created
through human effort in order to stimulate and promote further creativity. Authors
who write books and musicians who compose songs would be unlikely to engage in
further creative effort unless they could realize from their endeavors.

If their work could be misappropriated and sold by others, they would have no
incentive to create further works.

Example: Pharmaceutical companies could not invest millions of dollars in to

research and development of new drugs unless they could be assured that their
inventions would enable them to recover these costs and develop additional drugs.

Thus, not only the creators of intellectual property for the public as well as benefit
from protecting intellectual property. On the other hand, if the owner of the
intellectual property is given complete and perpetual rights to his/her invention or
work, the owner would have a monopoly and be able to charge excessive prices for the
invention or work, which would harm the public.

Intellectual property law attempts to resolve these conflicting goals so that owners right
to reap the rewards of their efforts are balance against the public need for competitive
place. Under federal law, a patent for a useful invention will last for only 20 years from
the date an application for the patent is filed with the USPTO. After the period of the time,
the patent expires, and any one is free to produce and sell the product.

USPTO  US Patent and Trademark Office

INTA  International Trademark Association

WIPO  World Intellectual Property Organization

WTO  World Trade Organization

NAFTA  North American Free Trade Agreement

GATT  General Agreement on Tariffs and Trade

TRIPS  Agreement on Trade-Related Aspects of Intellectual Property

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TYPES OF INTELLECTUAL PROPERTY

There are 4 types of Intellectual Property. They are
1. Trade Marks & Service Marks:
A trademarks or Service Mark is a word, Name, Symbol; Devise is used to
identify and distinguish one’s good or services and to indicate their source,
quality and ownership of a product or services.
What is protectable?
A Trademarks is used in the marketing of a product (Such as REEBOK for
shoes), while a service mark typically identifies a service (Such as STARBUCKS
for restaurant services). A Trademarks or Service mark identifies and
distinguishes the products or services of one person from those of another.
Federal registration of trademarks
 Interstate use of trademarks is governed by federal law, namely, the United
States Trade Marks Act (also called the Lanham Act.), found at 15USC.
 In the United States, Trademarks are generally protected from their date of
first public use. Registration of mark is not require to secure protection of a
mark, although it offers numerous advantages, such as allowing the
registrant to bring an action in federal court for infringement of the mark.
 Applications for federal registration of trademarks are made with the USPTO.
 Registration is a fairly lengthy process, generally taking anywhere from 12
to 24 months or even longer. The filing fee is $375 per mark per class of
goods or services covered by the mark, although applicants entitled a fee
reduction if they file applications electronically.
 A Trademark registration is valid for 10 years and may renewed for
additional 10 year periods their after as long as the mark is in use in
interstate commerce. Additionally, registrants are required to file and
affidavit with the USPTO between the 5th & 6th years after registration and
every 10 years to verify the mark is in continued use. Marks not in use are
then available to others.
 Trademarks are the among the most visible items of intellectual property,
and it has been estimated that the average resident of the united states

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encountered approximately 1500 different trademarks each day and 30,000

if one visits a supermarket.
2. Copyrights:
Copyright protects original works of authorship, including literary, musical,
dramatic, artistic, and other works. Just as trademarks are protected from the
moment of their first public use, copyrights exist from the moment of creation
of a work in fixed form.
What is protectable?
 Copyright protects is available for more than merely serious works of fiction
or art. Marketing materials, advertising copy and cartoons are also
protectable.
 Copyright is available for original works; no judgment is made about their
literary or artistic quality.
 Certain works are not protectable by copyright such as titles, names, short
phrases or lists of ingredients.
 Similarly Ideas, Methods, and Processes are protectable by copyright.
Copyright protection exists automatically from the time a work is created in
fixed form. Thus, similar to trade mark law, securing a registration for a work
(with US Copyright office) is not required for a work to be protected, although
registration dues provide significant advantages such as establishing a public
record of the copyright claim and providing a basis upon which an infringement
suit may be brought in federal court and in which statutory damages and
attorneys’ fees may be recovered.
The owner of a copyright has the right to reproduce the work, prepare
derivative works based on the original work (such as a sequel to the original),
and distribute copies of the work and to perform and display the work.
Federal registration of Copyrights
 Neither publication nor registration of a work is required for copyright
protection, in as much as works are protected under federal copyright law
from the time of their creation in fixed form. Registration however is
inexpensive, requiring only a $45 filing fee (for application file in paper
form), and the process is expeditious. In most cases the copyright office
processes application with in 4 to 5 months.

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 Generally, copyrighted works are automatically protected from the moment

of their creation for a team generally enduring for the author’s life plus an
additional 70 years after the author’s death. After that time, the work will
fall into the public domain and may be reproduced, distributed, or
performed by any one.
 The policy underlining the long period of copyright protection is that it may
takes several years for a painting, book or opera to achieve its true value.
3. Patents:
A patent is a grant from the US Government that permits its owner to exclude
others from making, selling, using, or importing an invention. Patents exist only
up on issuance by the US Patent and Trademark Office (USPTO).
There are three types of patents
 Utility Patent is the most common patents and which cover useful
inventions and discoveries (such as the type writer, the auto mobile, and
genetically altered mice).
 Design Patent is cover new, original and ornamental designs for articles
(such as furniture).
 Plant Patents are new and distinct asexually reproduced plant varieties
(Such as Hybrid flowers or trees).
What is Protectable?
Patent Protection is available only for useful, novel and nonobvious inventions.
Generally patent law prohibits the patenting of an invention that is merely an
insignificant addition to or minor alteration of something already known.
Moreover some items cannot be protected by patent, such as pure scientific
principles.
Federal registration of Patent
 Patents are governance excessively by federal law. To obtain patent, an
inventor must file an application with the USPTO that fully describe the
invention.
 Patent prosecution is expensive, time consuming and complex.
 Costs can run into the thousands of dollars and it generally takes over 2
years for the USPTO is issue a Patent.

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date of filing of an application for Utility Patent and Plant Patents and 14 years from the
date of grant for Design Patent. After this period of time, the invention falls in to the public
domain and may be used by any person without permission.
 After the Patent expires, any number of public is free to use, manufacture or
sell the invention. Thus, patent law strikes a balance between the need to
protect inventors and need to allow public access to important discoveries.
4. Trade Secretes:
Trade Secrets consist of any valuable commercial information that, if known by
a competitor, would provide some benefit or advantage to the competitor. No
registration or other formalities are required to create a Trade Secret, and
Trade Secret endures as long as reasonable efforts are made to protect their
secrecy, recipes, marketing planes, financial projections.
What is Protectable?
 Trademarks, copyrights and patents are all subjects to extensive statutory
scams for their protection, application and registration, these is federal law
relating to trade secrets and no formalities are required to obtain rights to
trade secrets.
 Trade Secrets are generally protectable under various state statutes and
cases and by contractual agreements between the parties.
 For example Employers often required employees to sign confidentiality
agreements in which employees agree not to disclose proprietary
information owned by the employer.
 If properly protected trade secrets may lost for a work. On the other hand, if
companies are fail to take reasonable measures to maintain the secrecy of
the information, trade secrets protection may be lost. Thus, discloser of the
information should be limited to those with a “need to know” it so as to
perform their duties, conventional information should be kept in secure or
restricted areas, and employees with access to proprietary information
should be sign nondisclosure agreements.

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INTERNATIONAL ORGANIZATIONS, AGENCIES, & TREATIES

There are a number of international organizations and agencies that promote the use
and protection of intellectual property. They are
• International Trademark Association (INTA) is a not-for-profit international
association composed chiefly of trademark owners and practitioners. More
than 5,500 trademark owners and professionals in more than 190 countries
belong to INTA, together with others interested in promoting trademarks. INTA
offers a wide variety of educational seminars and publications, including many
worthwhile materials available at no cost on the Internet.
• World Intellectual Property Organization (WIPO) was founded in 1883 and
is a specialized agency of the United Nations, whose purposes are to promote
intellectual property throughout the world and to administer 24 treaties
dealing with intellectual property, including the Paris Convention, Madrid
Protocol, the Trademark Law Treaty, the Patent Cooperation Treaty, and the
Berne Convention. More than 180 nations are members of WIPO. WIPO is
headquartered in Geneva, Switzerland.
• World Trade Organization (WTO) was organized in 1995 and deals with
rules of trade among its more than 150 member nations. It resolves trade
disputes and administers various agreements, including those relating to
Intellectual property. It is headquartered in Geneva, Switzerland.
There are also a number of international agreements and treaties that affect
intellectual property. Among them are the following:
• Berne Convention for the Protection of Literary and Artistic Works (the
Berne Convention). The Berne Convention was created in 1886 under the
leadership of Victor Hugo to protect literary and artistic works. It has more
than 160 member nations. The United States became a party to the Berne
Convention in 1989. The Berne Convention is administered by WIPO and is
based on the precept that each member nation must treat nationals of other
member countries like its own nationals for purposes of copyright (the
principle of “National Treatment”).
 Madrid Protocol. The Madrid Protocol came into existence in 1996 and allows
trademark protection for more than 70 countries, including all 27 countries of
the European Union, by means of a centralized, trademark filing procedure. The

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United States implemented the terms of the Protocol in late 2003. This treaty
facilitates a one-stop, low cost, efficient system for the international registration of
trademarks by permitting a U.S. trademark owner to file for international
registration in any number of member countries by filing a single, standardized
application form with the USPTO, in English, with a single set of fees.
 Paris Convention. One of the first treaties or “conventions” designed to
address trademark protection in foreign countries was the Paris Convention of
1883, adopted to facilitate international patent and trademark protection. The
Paris Convention is based on the principle of reciprocity, so that foreign
trademark and patent owners may obtain in a member country the same legal
protection for their marks and patents as can citizens of those member
countries. Perhaps the most significant benefit provided by the Paris
Convention is that of priority. An applicant for a trademark has six months after
filing an application in any of the more than 170 member nations to file a
corresponding application in any of the other member countries of the Paris
Convention and obtain the benefits of the first filing date. Similar priority is
afforded for utility patent applications, although the priority period is one year
rather than six months. The Paris Convention is administered by WIPO.
 North American Free Trade Agreement (NAFTA). The NAFTA came into
effect on January 1, 1994, and is adhered to by the United States, Canada, and
Mexico. The NAFTA resulted in some changes to U.S. trademark law, primarily
with regard to marks that include geographical terms.
 General Agreement on Tariffs and Trade (GATT) – The GATT concluded in 1994
and is adhered to by most of the major industrialized nations in the world. The
most significant changed to US intellectual Property law from GATT are that non
use of a trade mark for 3 years creates a presumption the mark as been abandoned
and that the duration of a utility patent is now 20 years from the filing date of the
application (Rater than 17 years from the date the patent issue,
as was previously the case).
• Agreement on Trade-Related Aspects of Intellectual Property (TRIPS).
Negotiated from 1986–1994, TRIPS is administered by the World Trade
Organization and establishes minimum levels of protection that member
countries must give to fellow WTO members. Computer programs must be

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protected as copyrightable literary works, and countries must prevent misuse

of geographical names such as Roquefort or Champagne.
IMPORTANCE OF INTELLECTUAL PROPERTY RIGHT
People have always realized the importance of protecting intellectual property rights,
the rapidly developing pace of technology has led to increased awareness of the
importance of intellectual property assets. Some individuals and companies offer only
knowledge. Thus, computer consultants, advertising agencies, Internet companies,
and software implementers sell only brainpower. Similarly, some forms of intellectual
property, such as domain names and moving images shown on a company’s Web page,
did not even exist until relatively recently.
The International Intellectual Property Alliance estimates that total copyright industries
accounted for 11 percent of the U.S. gross domestic product in 2007 and that more than
11 million workers are employed by these industries. Additionally, nearly $126 billion of
U.S. exports now depend on some form of intellectual property protection, including
pharmaceuticals, motor vehicles, and aircraft and associated equipment.
Moreover, the rapidity with which information can be communicated through the
Internet has led to increasing challenges in the field of intellectual property. Within
hours after the world premiere of the movie Episode III—Revenge of the Sith,
counterfeit copies were available on the streets of New York City for just a few dollars,
and the movie was also available on the website Bit Torrent for free downloading.
Books, movies, and songs can now be copied, infringed, and sold illegally with the
touch of a keystroke.
The Office of the United States Trade Representative has estimated that U.S. industries
lose between $200 billion and $250 billion annually from piracy, counterfeiting of
goods, and other intellectual property infringements.
In many cases, the most valuable assets a company owns are its intellectual property
assets.

For example, the value of the trademarks and service marks owned by the Coca-Cola
Company has been estimated at more than $70 billion, making it the world’s most
valuable brand. Thus, companies must act aggressively to protect these valuable
assets from infringement or misuse by others. The field of intellectual property law
aims to protect the value of such investments.

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Agencies Responsible for Intellectual Property Registration

United States Patent & Trademark Office (USPTO)
The United States Patent and Trademark Office (PTO or USPTO) is an agency in the
U.S. Department of Commerce that issues patents to inventors and businesses for their
inventions, and trademark registration for product and intellectual property
identification. The USPTO, founded more than 200 years ago. The USPTO is "unique
among federal agencies because it operates solely on fees collected by its users and
not on taxpayer dollars". Its "operating structure is like a business in that it receives
requests for services—applications for patents and trademark registrations—and
charges fees projected to cover the cost of performing the services [it] provide[s]".

United States Patent and Trademark Office

Seal of the U.S. Patent and Trademark Office

Agency overview

Headquarters Alexandria, Virginia, U.S.

Employees 9,716 (2009)
Agency Michelle K. Lee, Director
executives Russell Slifer, Deputy Director
Parent agency U.S. Department of Commerce
Website www.USPTO.gov

Patent:
On July 31, 1790, the first U.S. patent was issued to Samuel Hopkins for an
improvement "in the making of Pot ash and Pearl ash by a new Apparatus and
Process". This patent was signed by then President George Washington.
The X-Patents (the first 10,280 issued between 1790 and 1836) were destroyed by a
fire; fewer than 3,000 of those have been recovered and re-issued with numbers that

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include an "X". The X generally appears at the end of the numbers hand-written on
full-page patent images; however, in patent collections and for search purposes, the X
is considered to be the patent type – analogous to the "D" of design patents – and
appears at the beginning of the number. The X distinguishes the patents from those
issued after the fire, which began again with patent number 1.
Each year, the PTO issues over 150,000 patents to companies and individuals
worldwide. As of December 2011, the PTO has granted 8,743,423 patents and has
received 16,020,302 applications.

Register Mark Trade Mark Copy Rights Service Mark

Register Marks of Various Companies

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Register Mark Register Mark Register Mark

Trade Marks Trade Marks Trade Marks

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UNIT-II TRADE MARKS

What is the purpose of trademark law?
The overall purpose of trademark law is to prevent unfair competition by protecting the
use of a symbol, word, logo, slogan, design, domain name, etc. that uniquely
distinguishes the goods or services of a firm. This body of common-law principles
ultimately protects consumers by prohibiting companies from using trademarks
substantially similar to those of other companies that may have more "brand equity"
and customer loyalty. Trademark law is intended to avoid consumer confusion and
preventing companies from diluting the marks of other firms. Dilution occurs when a
similar mark adversely affects the reputation of a distinctive trademark regardless if it
leads to consumer confusion or not.
Introduction to Trade Mark
A trademark, trade mark, or trade-mark is a recognizable sign, design or expression
which identifies products or services of a particular source from those of others. The
trademark owner can be an individual, business organization, or any legal entity. A
trademark may be located on a package, a label, a voucher or on the product itself. For
the sake of corporate identity trademarks are also being displayed on company
buildings.
A trademark is designated by the following symbols:
 ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
 â,, (for an unregistered service mark, that is, a mark â,, superscript SM used
to promote or brand services)
 ® (for a registered trademark)
What is Trademark?
A trade mark (popularly known as brand name) in layman’s language is a visual symbol
which may be a word signature, name, device, label, numerals or combination of colors
used by one undertaking on goods or services or other articles of commerce to
distinguish it from other similar goods or services originating from a different
undertaking.
 The selected mark should be capable of being represented graphically
(that is in the paper form).
 It should be capable of distinguishing the goods or services of one

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undertaking from those of others.

 It should be used or proposed to be used mark in relation to goods or
services for the purpose of indicating or so as to indicate a connection in
the course of trade between the goods or services and some person have
the right to use the mark with or without identity of that person.
Trade Marks are distinctive symbols, signs, logos that help consumer to
distinguish between competing goods or services. A trade name is the name of an
enterprise which individualizes the enterprise in consumer’s mind. It is legally not
linked to quality, but linked in consumer’s mind to quality expectation.
Key Features of Trademark
 Trademark must be Distinctive
 Trademark must be used in Commerce
TYPES OF TRADEMARK
 Trade Mark - A trademarks is a word, Name, Symbol, and Devise is used to
identify and distinguish one’s good or services and to indicate their source.
 Service Mark – A Service Mark is refers to an intangible service, in common
service usage the term Trade Mark is often is used to refer to marks for
both goods and services.
 Collective Mark – A Collective Mark is one used by a collective membership
organization, such as a labour union, fraternity, professional society, to
identify that the person displaying the mark is a member of the organizations.
Ex: FUTURE FARMERS OF AMERICA and AMERICAN BAR ASSOCIATION
marks indicate member ship in certain organizations.
 Certification Mark – Certification Marks is a word, name, symbol, devise are
combination of, used by a person other than its owner to certify that goods or
services have certain features in regard to quality, material, mode of
manufacture or some other characteristic.
Ex: GOOD HOUSEKEEPING
DIFFERENCE
 The difference between Trade Marks and Service Marks is that Service marks
are used by a business house to distinguish their service from other services
provide in the same field. Trademark is used to distinguish competing products,

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not services. Trademarks are affixed to good by means of tag or label but service
marks are displayed through advertisement and promotions.
 The difference between the Certification Mark and the Collective Mark is that
the collective mark is used by a particular enterprise or members of the
association while a certification mark may be used by anybody who meets the
defined standards.
Types of Mark Example
Trade Mark COMET (For Cleanser)
Service Mark HYATT (For Lodging Services)
Collective Mark AMERICAN BAR ASSOCIATION
Certification Mark UNION MADE (For Clothing)

PURPOSE & FUNCTIONS OF TRADEMARK

PURPOSE OF TRADE MARK:
The overall purpose of trademark law is to prevent unfair competition by protecting the
use of a symbol, word, logo, slogan, design, domain name, etc. that uniquely
distinguishes the goods or services of a firm. This body of common-law principles
ultimately protects consumers by prohibiting companies from using trademarks
substantially similar to those of other companies that may have more "brand equity"
and customer loyalty. Trademark law is intended to avoid consumer confusion and
preventing companies from diluting the marks of other firms. Dilution occurs when a
similar mark adversely affects the reputation of a distinctive trademark regardless if it
leads to consumer confusion or not.
Given the increased importance of branding and the tangible economic value of the
brand (brand equity) in today's experience economy, trademark law is more important
than ever before. As consumers become loyal to a particular brand and make
purchasing decisions based on their ability to identify a product of service by use of a
logo, slogan, etc (i.e. trademark), these marks serve as a point of differentiation and
competitive advantage. Consequently, trademark law is important to enable the
trademark proprietor to develop goodwill for the product or service and prevent other
parties from exploiting the brand.

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FUNCTIONS OF TRADE MARK:

Trademark performs four functions –
 It identifies the goods / or services and its origin;
 It guarantees its unchanged quality;
 It advertises the goods/services;
 It creates an image for the goods/ services.
Trade Marks law of India
 The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the
law relating to Trade Marks in India.
 The Trade Marks Act, 1999 (TMA) protects the tradem arks and their
infringement can be challenged by a passing off or/and infringement
action. The Act protects a trade mark for goods or services, on the basis of
either use or registration or on basis of both elements.
Who can apply for Trademark?
Any person claiming to be the proprietor of a trade mark used or proposed to be
used by him may apply in writing in Form TM-1 for registration. The application
should contain the trade mark, the goods/services, name and address of applicant
and agent (if any) with power of attorney, period of use of the mark and signature.
The application should be in English or Hindi. It should be filed at the appropriate
office.
Marks Not Registerable

1. The use of which would be likely to deceive or cause confusion.

2. A mark the use of which would be contrary to any law for the time being in
force
3. A mark comprising or containing scandalous or obscene matter
4. A mark comprising or containing any matter likely to hurt the religious
susceptibilities of any class or section
5. A mark which would be disentitled to protection in court of law
6. A mark which is identical with or deceptively similar to a trademark already
registered in respect of the same goods or goods of the same description
7. A word which is the accepted name of any single chemical name or chemical
compound in respect of chemical substances.

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8. A geographical name or a surname or a personal name or any common

abbreviation thereof or the name of a sect, caste or tribe in India.
9. Besides others
ACQUISITION OF TRADEMARK RIGHTS
A trademark is any word, symbol, design, device, logo, or slogan that identifies and
distinguishes one product or service from another.
To obtain trademark protection it is necessary for a person or a business to sell a
product using the mark. Consequently, trademark rights are only acquired when the
trademark is used in commerce. Additionally, it is recommended to register the
trademark in order to obtain special rights in the event of infringement. Trademarks are
protected by federal and state law. Trademark owners can register the trademark with
the Patent & Trademark Office (PTO) (federal) or with the respective secretary of state.
Trademark rights are acquired by being the first to use the mark in commerce. The first
user of the mark on goods in commerce creates an association with consumers, and
trademark laws are intended to protect the consumer by avoiding confusion and
enabling companies to compete fairly.
Under the Trademark Law Revision Act of 1998 a trademark owner can apply for
registration prior to using the mark, based upon the owner's bona fide intent to use
(ITU) the mark. If the application is approved and published without opposition, the
trademark owner is required to submit evidence that the mark is in use within a period
of three years. Upon submitting this evidence the PTO will issue the trademark
registration. Currently, trademark registrations are protected for an initial 10-year
period. The registrant may renew the registration for subsequent 10-year periods as
long as the mark continues to be used in commerce.
The extend of trademark rights is affected by several factors. These include:
 Distinctiveness of the mark.
 The date of first use in commerce.
 The geographic area where the mark is used.
 The registration of the mark
 The goods or services associated with the mark

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PROTECTABLE MATTER
The definition of Trademark or Service mark is that it is a word, name, symbol, device,
or any combination thereof used to identify products or services.
Clearly, words such as BARNES & NOBEL and designs or symbols such as Mercedes
Benz’s segmented circle or the Mr. Peanut design can function as Trade Marks. There
are, however, a host of other items that can be protected as marks, generally because of
the flexibility in the language of the lanham act allowing for registration of a symbol or
device.
A symbol or device might include anything capable of conveying meaning to a person
such as Sounds, Shapes and Smells.
a) Slogans, Letters & Numbers:
 A slogan can constitute a Trade Mark if it is distinctive. Those, the slogan
HAVE IT YOUR WAY is protectable.
 Alphanumeric symbols (Letters & Numbers) may be protectable as long as
they are not merely descriptive. Those, broadcast station call letters such as
NBC or CNN are restorable. Similarly numbers can function as marks.
Ex: Ford motor company as registered ZX5 for Tucks & Vans. If the
numbers or letters described something about the product or service offered
under the mark, however they will not be Registerable unless proof of
secondary meaning is shown.
b) Logos & Symbols:
 Some of the most famous Trade Marks in existence consists solely of logos or
symbols.
Ex: Registrations exist for Nike’s famous “swoosh” mark, McDonald’s Golden
Arches.
c) Names of Performing Artists:
A Mark that merely serves to identify the artist or entertainer is nor restorable.
However, if the owner of the mark has controlled the quality of the goods and
services, and name of the artist are grouped has been used numbers times on
different records (thereby representing an assurance of quality to the public), the
name may be registered as a Trade Mark.
Ex: THE GOO GOO DOLLS and BOB DYLAN have been registered for
musical sound recordings.

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d) Domain Names:
 Domino Names are www.ibm.com, are restorable as trademarks or service
marks only if they function as an identification of the source of goods or
services.
 www.oakwood.com has been registered for real-estate leasing services.
e) Foreign Terms:
Foreign Terms are Registerable as long as they comply with the requirements of
the Lanham Act. Foreign wording will be translated in to English and then
examined by the USPTO for descriptiveness.
Ex:
a) The word we vino would not be allowed for wine in as much as its
immediate translation is “wine” the very product offered under the mark.
b) Similarly, the word optique, a French word meaning “optic” was refused
registration for eye glasses because it was merely descriptive.
f) Shapes & Containers:
Shapes are configurations can function as trademarks if they are distinctive
rather than functional.
Ex: The famous Coca Cola bottle shape is registered with the USPTO, and a
competitor who adopts a confusingly similar shape container for its product will
likely be enjoined from use. The shape is not functional because it is not essential
to the use or purpose of the product.
g) Trade Dress:
The total image of the product such as size, shape, color, texture, and packaging
among graphics may be protected though a trademark registration. This total
image is called Trade Dress.
Ex: Coca Cola – Font Style, Font Color, Font Size, Position,…etc.
h) Color:
A single color was not protectable as Trademark. This general rule was based on
the color Depletion Theory. There are only a limited number of colors in the
world, if business could appropriate a color and exclude others from using it,
competition would be impaired. The present rule is that a Trademark may
consists of color as long as the color is no functional and the color is shown to

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have acquired distinctiveness either through long use or a high level of consumer
recognition.
Ex: The color Yellow & Green used by John Deere and company. On its machines
were held Registerable because of the colors had become distinctive of John
Deere’s machines & equipments.
i) Fragrances, Sounds, and Moving Images:
Fragrance can function as a trademark if it as acquired distinctiveness and is not
functional.
A Fragrance is used in connection with products known for such features, such
as perfumes or air fresheners, however, would likely be held functional and
Registerable.
Similarly Sounds can function as Trade Marks. The famous three-note chime
used by NBC was the first registries sound Trade Mark.
Ex: The roar of the MGM lion, the quack of the AFLAC duck and woody wood
pecker’s distinctive laugh are also registered.
Finally Moving Images may register.
Ex: A Columbia picture has registered the moving images of the light rays
surrounding its “lady columbia” image that appears at the beginning of its
movies (US Reg. No. 1,975,999).
j) Designs and ornamentation:
A Design can function as Trade Mark as long as it is distinctive rather than merely
functional or ornamental. Some designs are protected on their own, such as
Nike’s famous “swoosh” design.
k) Serialized Literary & Movie Titles:
The tile of the single book or movie title is generally not protectable.
Ex: The tile of a serialized work such as DESPERATE HOUSE WIVES or NEWS
WEEK , However , can be protected as Trade Mark or Service Mark.
Exclusions from Trade Mark Protection
Not every word, design or slogan can function as Trade Mark.
 Disparaging or Falsely suggesting marks.
 Insignia
 Immoral or Scandalous Matter
 Names and Portraits of Living Persons

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 Deceptive Matter
 Mere Surnames
 Geographical Terms
 Descriptive and Confusingly similar Marks
 Functional Devises
 Statutorily Protected Marks
Protectable Matter Example
Words REAL TIME (for wearing apparel)
Letters WROC (for Radio Broadcasting Service)
Numbers 1054 (for Cleaning Products)
Foreign Terms CHAT ROUGE (for Computer Programmes)
Shapes Distinctive shape for Coffee Filters
Trade Dress Over all commercial impression of packaging, label, text and graphics.
Color BLUE (for Container for wine, so long as not functional)
Fragrance Floral Fragrance for book marks
Design CHECKERBOARD design (for food products)
Literary Title IN STYLE (for serialized magazine)

SELECTING & EVALUATING TRADEMARK

SELECTING A MARK:
Selection of mark occurs in variety of ways. Some companies hold contests and
encourage employee to create a mark to a new product line or service.
Other companies engage sophisticated research and branding firms that will conduct
surveys and create a mark and a logo or design for the company.
There are name creation software programs that help individuals and companies create
marks. Once the mark is selected it must be screened and evaluated for use and
registrability.
Failure to exercise this due diligence might result in the expenditure of time and money
in advertising, using and applying for a mark i.e. rejected for registration by the USPTO
or in the worst-case scenario, might subject the owner to damages for Trade Mark
infringement and unfair competition.

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Reviewing a Proposed Mark:

Once a Mark is selected, it should be carefully scrutinized to ensure that it will not be
excluded from protection under the lanham Act. Considerations include whether the
mark contains scandalous material, whether consent from a living person will be
required, whether the mark is generic, whether it is statutorily protected and whether
the mark is descriptive of some features of the goods and services offered under the
mark.
If the mark includes foreign terms, these should be translated to ensure they are not
scandals, deceptive, for merely descriptive.
Many law firms specializing in trade mark work use a questionnaire form or data sheet
to gather basic information from clients about their marks and to aid in determining
registrability.
Trademark Search – A TWO step process
A Trade Mark searching is TWO step processes –
1. The Preliminary Search
2. The Comprehensive Search
A Preliminary Search is conducted the records of the USPTO to make a quick
determination as to whether they mark may be available or whether there is a direct
conflict that would preclude use of the mark. The Preliminary Search is often is called “a
Knockout Search” because its primary purpose is to eliminate identical or nearly
identical marks. If the results of the preliminary or knockout search indicate a mark
may be available.
A Compressive Search of other sources (including State Trade Mark Records,
Telephone Directories, internet records, and Trade Journals) is then conducted.
 Step One: The Preliminary Search: There are variety of sources that can be used
to conduct an initial Trade Mark search, including on line subscription services, CD
ROMs, The Patent & Trade Mark depository libraries, and the USPTO web site search
services. Following are some resources commonly used for conducting a preliminary
search.
a) Electronic Databases & CD-ROMs:
 TRADEMARKSCAN - Online databases are owned by Thomson CompuMark, a
renowned Trade Mark search firm, which provides information on all active
registered Trade Marks and service mark and applications for registration

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filed at the USPTO. The TRADEMARKSCAN data bases are primarily used as a
quick screening tool to determine the availability of a new mark.
 DIALOG - It is a database offered by the publisher Thomson & Thomson. Its
database includes Trade Marks from the United States plus numerous foreign
countries as well as patent and Copy Right information. DIALOG offers free
online training and practice and free practice searching at the following website.
i.e. http://tarinning.dialog.com/onlinecourses/trademarks/
 SAEGIS TM – It is an entire suit of services provided by Thomson CompuMark
that allows online worldwide Trade Mark searching as well as searching of
domain name registries and websites to locate common law uses of proposed
marks.
 TRADEMARK.COM TM - It is an online search service offered by micro patent,
a Thomson business, offering a verity of searchable of databases including
Federal Marks, State Marks and common law uses of potentially conflicting
marks.
 LEXIS & WESTLAW – It is the computer assisted research systems, offer
access to vast Trade Mark databases that may disclose potentially conflicting
marks.
b) Patent and Trade Mark depository Libraries:
It is located near Washington, DC, The USPTO maintains a public search facility in
Alexandria, Virginia, that allows online searching of pending, registered and dead
trademarks using the trademark examining attorney automated system called
“X-search”.
A complete trademark collection since 1870 is available online and in bound
paper volumes or on microfilm. This search facility is open to the public every
weak-day. For information, call (571) 272-3275.
Additionally more than 80 libraries throughout the United States are designated
as Patent & Trademark Depository Libraries. These libraries receive a wealth
of information from the USPTO, and trademark searching can be done at these
libraries.
c) USPTO website
It perhaps the easiest and least expensive way to conduct a very preliminary search
is to review the records of the USPTO (http://www.uspto.gov). The USPTO

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offers free public searching of its trademark database through its service called
“Trademark Electronic Search System (TESS)”, which allows searching of more
than 4 million pending, registered, abandoned, canceled or expired trademark
records. TESS offers 4 search strategies. They are
1. New User form search (Basic)
2. Structured form search (Boolean)
3. Free form search (Advanced)
4. Browse Dictionary (View indexes)
Once a mark is displayed on your computer screen, you will be given 4 separate
options to obtain additional information i.e.
1. TARR Status – The Trademark Application & Registration Retrieval system
(TARR). It provides additional information about an application or
registration, including a list of various actions taken by the USPTO and
information on the mark’s current status, such as wither it has expired
because it was not renewed.
2. Assignment Status – If the mark has been assigned, you will be given the
names of the assignor and assignee and the date the assignment was
recorded with the USPTO.
3. Trademark Document Retrieval (TDR) – It is allows views of actual images of
documents in the USPTO’s files, such as the drawing of the marks images of
specimens of the mark, notice of publication and certificate of registration.
This “electronic file wrapper” provides invaluable information. TDR is not at
available for older records.
4. TTAB Status – Trademark Trial and Appeal Board – If the mark is involved in
proceedings at the TTAB, you will be linked to documents pertaining to these
proceedings.
 Step Two: The Comprehensive Search: It is most complete analysis of potentially
conflicting marks is provided by professional trademark search firms.
These companies review the records of the USPTO for existing registrations and
pending applications, review state trademark office records for state trademark
registrations and they perform a “common law” search of various journals,
directories, press releases, domain names and internet references to locate

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unregistered names & marks. Such a search is called a “Comprehensive or Full

Search”.
a) International Searching
A client interested in protecting his/her mark in foreign countries should
conduct a search of records of each country in which an application will be filed.
The foreign associate then files the trademark applications and prosecutes it,
while the US attorney generally supervises the process and communicates the
progress of the application to the client.
The International Trademark Association (INTA) offers direct linking to the
databases of trademark offices for Australia, Canada, European Union, Japan and the
United Kingdome (among other countries) though its website at
http://www.inta.org. The USPTO’s website also offers linking to foreign IP offices.
b) Professional search firms
Some of the better-known search firms included the following.
 Thomson CompuMark, 500 Victory Road, North Quincy, MA 021771-3145;
(800)692-8833 (http://www.thomson-thomson.com) - Thomson & Thomson
is a well known trademark service firm, offering a full line of service, from
trademark searching to monitoring of trademarks to protect them from
infringement to investigations to retrieving documents at the USPTO.
 Micro patent 250 Dodge Avenue, East Haven, CT 06512; (800)648-6787
(http://www.micropat.com) - Micro patent offers full professional searching
as well as access to its TRADEMARK.COM database.
 Government Liaison services, Inc., 200 North Glebe Road, Suite 321, Arlington,
VA 22203, (800) 642-6564 (http;?/www.trademarkinfo.com) – It offers full
professional searching as well as document preparation and retrieval services.
 CT Corsearch, 345 Hudson street, New Yark, NY 10014; (800) 732-7241
(http://www.ctcorsearch.com) – It offers a full suite of trademark searching
services, including professional searching, document retrieval and
monitoring services to ensure a Clint’s trademark is not infringed.
EVALUATING A TRADE MARK:
Once the results of the search have been obtained, they must be evaluated so that the
fundamental questions whether the mark is available for use and registration can be
answered.

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The evaluation begins with an analysis of each mark or name provided in the report and
a comparison of it to proposed mark to determine whether they are confusingly similar.
This analysis requires one to take in to account the overall commercial impressions
presented by the marks; there similarity in regard to sight, sound, and meaning; the
relative strength or weakness of the marks based on their descriptiveness or
suggestiveness; and the goods are services are offered under each mark.
Reporting the results to the client
A formal written report will then be prepared for client. The letter, often called an
“availability or clearance report”, typically includes the following elements
 A description of the mark that was the subject of the search.
 A description of the method of the search, the databases that were checked, and
the dates applicable to the search parameters.
 A section describing limitations on the search report, such as a disclaimer or
statement that the results of the search cannot be guaranteed and that, due to
errors in cataloging records and files and time delays in entering marks in to
databases, some marks might not be disclosed in the search.
 A discussion of potentially conflicting marks.
 The opinion in regard to availability of the mark for use and registration and
recommendations for further action or investigation, if needed.
Investigating and Resolving Conflicts
The report of the trademark search results may disclose several potential conflicts, and
the IP team may seek the client’s permission to investigate these conflicts further.
Alternatively, some investigations may be done before the report is provided to the
client. If the client is wedded to a mark that may be barred by another mark, several
options can be explored
 Investigation & Research
 Consent to Use
 License & Assignment
 Revising the Mark

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TRADE MARK REGISTRATION PROCESSES

Who Can Apply
Any person who claims to be a proprietor of a trademark and is desirous of registration
of the mark can apply. The application may be made in the name of an individual,
partners of a firm, a Corporation, any Government Department, a trust or joint
applicants.
Application
1. After completing all specifications on the prescribed application form, an
application shall be filed in the office of the trademark Registrar "within whose
territorial limits the principle place of business in India of the applicant or in the
case of the joint applicants the principal place of business in India of the
applicant whose name is the first mentioned in the application, as having the
place of business is situated.
2. Every application for registration of a trademark shall contain a representation
of the mark in the place provided in the form for the purpose. Ten additional
representations of the mark have to be supplied with the application.
3. Upon submission of an application for registration of a trademark, there can be
four outcomes:
 The application is accepted as it is.
 The application is accepted subject to certain amendment.
 The application is accepted but latter it is found to have been accepted in
error.
 The application stands rejected.
 The application is thus either accepted completely or is accepted subject to
amendments.
Advertisement
1. Soon after acceptance of the application, the application is advertised in the
Trademarks Journal.
2. Any person may, within three months from the date of the advertisement or re-
advertisement of the application for registration or within such further period
not exceeding one month, give notice in writing to the Registrar of opposition to
the registration. If such an opposition does not arise then the mark is deemed to
be registered.

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Particulars to be filed with application for registration

The application should be filed in triplicate with the following particulars – Graphic
representation of the trademark. Five Additional representations are to be provided
corresponding exactly with one another. In the case of three dimensional mark, the
reproduction of the mark should consist of a two dimensional or photographic
reproduction.
Where the trade mark contains a word or words in scripts other than Hindi or English, a
transliteration and translation of each word in English or in Hindi should be given
indicating the language to which the word belongs, at the time of filing the application to
facilitate completion of data entry at the initial stage itself.
The application may contain a declaration claiming priority as per the Paris
Convention. Procedure for series registration
Section 15 (3) makes provision for registration of trade mark as series in respect of the
same or similar goods /services where the marks, while resembling each other in the
material particulars thereof and yet differ in respect of –
1. Statement of goods or services in relation to which they are respectively used or
proposed to be used; or
2. Statement of number, price, quality or names of places; or
3. Other matter of a non-distinctive character which does not substantially affect the
identity of the trade mark; or
4. Colour
Application for registration of series marks is to be on form TM-8 or TM-37 as the case
may be. Though it is permissible to file a single application for registration of trade mark
in more than one class, it is to be noted that each series marks must be in respect of the
same goods or services or description of goods/services. Where a group of marks are
applied for registration as series in one registration and the Registrar does not consider
them eligible for registration of series marks under section 15 the applicant will be
required to delete any of the mark which is under objection. It is also open to the
applicant to apply on form TM-53 for division of the application to conform to the
provision of section 22. All trademarks registered as series in one registration are
deemed to be registered as associated trade mark.

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Registration of Collective Marks

Special provisions have been made for registration of collective marks in section 61 to
68 of the Act. “Collective mark” is defined to mean a trade mark distinguishing the
goods or services of members of an association of persons (not being a partnership
within the meaning of Indian
Partnership Act, 1932) which is the proprietor of the mark from those of others”-section
2(1)(g). To be Registerable, the collective mark must be capable of being represented
graphically and meet other requirements as are applicable to registration of trade
marks in general. The following points should be noted for registering collective marks -

 The collective mark is owned by an association of persons not being a partnership.

 The collective marks belong to a group and its use thereof is reserved for members
of the group.
 The association may not use itself the collective mark but it ensures compliance of
certain quality standards by its members who may use the collective mark.
 The primary function of a collective mark is to indicate a trade connection with
the association or organization who is the proprietor of the mark.
Application for registration as collective mark should be made on form TM-3. Where
appropriate form TM-66 , 64 or TM-67 can be used.
Administrative procedure of registration of trademarks
An application for registration of trademarks is received at the Head office of
Trademark Registry, Mumbai and its branches according to territorial jurisdiction.
Applications are then examined mainly with regard to the distinctiveness, possibility of
deceptiveness and conflicting trademarks. The registrar on consideration of the
application and any evidence of use or distinctiveness decides whether the application
should be accepted for registration or not, and if accepted, publishes the same in the
official gazette i.e. Trade Marks Journal (published in CD-Rom). Within a prescribed
period any person can file an opposition, a copy of which is served to the applicants who
is required to file a counterstatement within two months failing which the application
shall be treated as abandoned.
Thereafter, the opponent leads evidence in support of his case by way of affidavit
followed by the applicant’s evidence also by way of affidavit in support of the

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application. After that the opponent files evidence by way of rebuttal. On completion of
evidence, the matter is set down for a hearing and the case is decided by a Hearing
officer. The registrar’s decision is appealable to the Intellectual Property Appellate
Board Almost all functions of the Registry have now been decentralized and executed by
respective offices except publication of journal, issuance of Registration Certificate and
post registration activities including renewal which is done at TMR, Mumbai (Head
Office).
Correction and amendment of registration application
An applicant for registration of a trade mark can before the registration of the mark,
apply in Form TM-16 for correction of any error in connection with his application. But
the correction should not alter the trade mark that has been applied for or substitute a
new specification of goods or services not included in the application.
Renewal of Registration
The period of registration which was 7 years until recently under 1958 Act, has been
increased to 10 years under the present Act. The 10 year period of registration is
reckoned from the date of making of the application which is deemed to be the date of
registration.
Registrations can be renewed by payment of prescribed renewal fees in all cases
(trademark / collective marks/certification marks) on form TM-12. The application is
filed by the proprietor of the registered trade mark or his agent. If there is any change in
the proprietorship of the mark, and it has not been brought on record, proof of title
should be filed in the first instance.
Offences & Penalties
There are mainly two classes of Offences relating to Trademarks –
a) Falsification of Trademark
b) Falsely applying the trademark to goods or services
The punishment for the above offences shall not be less than 6 months imprisonment
which may extend to three years and a fine which shall not be less 50,000/-, but may
extend to Rupees Two Lakh. Wherever the court proposes a lower punishment than the
minimum, it has to record, adequate and special reasons for the same.
However second and subsequent offences shall be more severely punished. There shall
be an Imprisonment of not less than one year which may extend to three years and a
fine which shall not be less Rupees One lakh, but may extend to Rupees Two

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Lakhs. The court can propose a lower punishment than the minimum, only after
recording adequate and special reasons for the same.
E-filing of Trademark application
E-filing is the service provided by the Trademark Registry in order to enable customers
to apply for a Trade Mark on-line allowing from the applicant’s browser to:
 Complete an electronic application form;
 Provide the associated attachments;
 Complete the necessary payment details
Procedure for e-filing
In order to submit an electronic application form, following steps should be followed -
1. Acquire Class 3 Digital Signatures from (n) Code Solutions or Tata Consultancy
Services (TCS) or Safe Script from Sify. The Procedure for getting the Digital
Signature and the location of their Offices is available at their website.
2. For users (Proprietors/Agents or Attorneys), already registered with TMR
(Trademark Registry) Office India can complete online registration by providing a
desired User ID, their User Type (Proprietor/Agent/Attorney) and User Code.
3. For Users who are not registered as Proprietor / Attorney with TMR Office, they can
search and fill online form to obtain User code (Party Code).
4. Secure Login into the system with created User Id and the Digital Signatures.
5. Obtain a New Reference Number for New Application. Use this option when the
applicant wants to apply for a new Trademarks Application.
6. Update Application Details: Use this option to edit / update the application details
along with relevant images and attached documents. Final Submission to TMR-India
with Digital Signature is included in this option after which application cannot be
edited.
7. The Cases which are Digitally Submitted to TMR, India are available for online
payment. The applicant can pay for more than one application in a single
transaction. Once the payment is realized as confirmed by the Payment Gateway, an
acknowledgement receipt for the fees paid is generated by the system indicating the
Receipt Number, Application Number and Date of Filing.
8. An applicant can also view online History and status of the applications filed by
him / her by clicking Status of Filed Application.
9. An applicant can also view the online status of e-Payments.

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TRADE MARK REGISTRATION FLOW CHART

Location & Jurisdiction of Trademarks

Office Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M. Road , Antop Hill,
Mumbai 400037 Tel: 022-2410 1144, 24101177, 24148251, 24112211 Fax: 24120808,
24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa.
Trade Marks Registry, Delhi
Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka,
Delhi Tel. 011-28082915/ 16/17 Fax:
Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal
Pradesh, Union Territory of Delhi and Chandigarh
Trade Marks Registry, Kolkata,
CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake, Kolkata-700091(Telfax. 033-23677311)

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Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur,
Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar &
Nicobar Island.
Trade Marks Registry, Ahmedabad, 15/27 National Chambers, 1st floor, shram road,
Ahmedabad - 380 009. Tel: 079-26580567
Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu,
Dadra and Nagar Haveli
Trade Marks Registry, Chennai IP building, GST Road, Guindy Chennai-600032
Tele: 044-22502041, Fax: 044-22502042
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union
Territory of Pondicherry and Lakshadweep Island.
TRADE MARK PRESENTATION FLOWCHART
Use-Based Applications Intent-to-Use Applications

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Intent-to-Use Applications

Trade Mark Application Checklist

An application for trademark registration must include the following

 Written application with the following elements

o Applicant Name
o Applicant’s legal entity (individual, corporation, and so forth) and
identification of country of which applicant is citizen or Country or State
of Business organization.
o Applicant’s Address
o Basis for use of mark, namely, a statement that applicant has used the
mark or statement that applicant has bona fide intent to use the mark in
the future.
o Identification of goods and services offered under the mark.
o Identification of international class (if known by applicant)
 Declaration by applicant & Signature
 One specimen for each international class
 Drawing of mark
 Appropriate filing fee

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Intellectual Property Rights
35
 UNIT-III LAW OF COPY RIGHTS & PATENTS
LAW OF COPY RIGHTS
FUNDAMENTAL OF COPY RIGHT LAW
COPYRIGHT
Copyright is the set of exclusive rights granted to the author or creator of an original
work, including the right to copy, distribute and adopt the work. Copyright lasts for a
certain time period after which the work is said to enter the public domain. Copyright
gives protection for the expression of an idea and not for the idea itself. For example,
many authors write textbooks on physics covering various aspects like mechanics, heat,
optics etc. Even though these topics are covered in several books by different authors,
each author will have a copyright on the book written by him / her, provided the book is
not a copy of some other book published earlier.
What does copyright protect?
Copyright protects the written expression of an idea or concept - it does not protect the
actual idea or concept itself. Copyright doesn’t give the author of a work a monopoly
over the ideas or information expressed in that work – anyone can use the ideas
contained in a work provided they do not use the exact words used by the author to
describe the idea or concept.

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Intellectual Property Rights

The Copyright Act protects eight different categories of "works" and "subject matter
other than works":

Works

Literary works books, letters, articles in periodicals, newspapers and magazines,

poems, assignments, theses

Dramatic works plays, film and television scripts

Musical works notated music, i.e. scores and lyrics to a song

Artistic works photos, paintings, drawings, maps, charts, diagrams

Subject matter other than works

Films DVDs, videos, TV programs, TV advertisements, short films, full

length theatrical releases

Sound recordings Aggregate of the sounds embodied in a record or CD

Broadcasts Communication to the public delivered by a broadcasting service

Performances Dance, circus act, puppet theatre, poetry reading, music concert
Copyright also exists in the published edition of a book and protects the typographical
layout and font of a book
Note: Works in the category of ‘subject matter other than works’ are aggregations of a
number of separate works. Copyright usually exists independently in each of the
underlying works as well as the combined work itself, e.g., in the case of a sound
recording or CD there may be separate copyright owners in the music, the arrangement
the lyrics, the performance and the production of the sound recording itself.
Generally, copyright doesn’t protect the following:
 Names, titles and slogans as these are not usually considered to be substantial
works which are the result of sufficient skill and labour. However, other forms of
legislation such as trademark and trade practices may be relevant.
 Ideas or concepts: copyright just protects the expression of the idea or concept.
 Basic facts such as names and addresses are usually not protected by copyright
although the methodology used to arrange them in a database may be protected.

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Intellectual Property Rights

COPYRIGHT LAW IN INDIA

The Copyright Act of 1957, The Copyright Rules, 1958 and the International Copyright
Order, 1999 governs the copyright protection in India. It came into effect from January
1958. The Act has been amended in 1983, 1984, 1992, 1994 and 1999. Before the Act of
1957, copyright protection was governed by the Copyright Act of 1914 which was the
extension of British Copyright Act, 1911.
The Copyright Act, 1957 consists of 79 sections under15 chapters while the Copyright
Rules, 1958 consists of 28 rules under 9 chapters and 2 schedules.
MEANING OF COPYRIGHT
According to Section 14 of the Act, “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:-
1. in the case of a literary, dramatic or musical work, not being a computer
programme
o To reproduce the work in any material form including the storing of it in any
medium by electronic means;
o To issue copies of the work to the public not being copies already in
circulation;
o To perform the work in public, or communicate it to the public;
o To make any cinematograph film or sound recording in respect of the work;
o To make any translation of the work;
o To make any adaptation of the work;
o 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);
2. in the case of a computer programme,-
o To do any of the acts specified in clause (a);
o To sell or give on commercial rental or offer for sale or for commercial rental
any copy of the computer programme:
o Provided that such commercial rental does not apply in respect of computer
programmes where the programme itself is not the essential object of the
rental.

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Intellectual Property Rights

3. In the case of an artistic work,-

o To reproduce the work in any material form including depiction in three
dimensions of a two dimensional work or in two dimensions of a three
dimensional work;
o To communicate the work to the public;
o To issue copies of the work to the public not being copies already in
circulation;
o To include the work in any cinematograph film;
o To make any adaptation of the work;
o To do in relation to an adaptation of the work any of the acts specified in
relation to the work in sub-clauses (i) to (iv);
4. In the case of cinematograph film, -
o To make a copy of the film, including a photograph of any image forming part
thereof;
o To sell or give on hire, or offer for sale or hire, any copy of the film, regardless
of whether such copy has been sold or given on hire on earlier occasions;
o To communicate the film to the public;
5. In the case of sound recording, -
o To make any other sound recording embodying it;
o To sell or give on hire, or offer for sale or hire, any copy of the sound
recording regardless of whether such copy has been sold or given on hire on
earlier occasions;
o To communicate the sound recording to the public.
Explanation: For the purposes of this section, a copy which has been sold once shall be
deemed to be a copy already in circulation.
ORIGINALITY OF MATERIAL
To be eligible for copyright protection, material must be original, meaning that it must
have been independently created and must possess a modicum of creativity.
The requirement of the originality should not be confused with novelty, worthiness. The
requirement is rather that the material must be an independent product of the author
and not merely some copy or minimal variation of an existing work.
A work can be original even if it is strikingly similar or identical to that of another. The
Copy Right act only requires originality, meaning independent creation by the author.

39
Intellectual Property Rights

Ex:
 If two photographers each take photographs of the Washington memorial, each will
have copyright protection for the work (as long as one did not copy another).
 Similarly if two authors independently write novels that are strikingly similar,
each will have copy right protection (again, assuming there was no copying)
“Originality” thus does not mean “first”, it merely means independently created in
regard to the level of creativity required for copy right protection, the threshold is quite
low.
Even a slight amount of “creative spark” will suffice. In order to be protected by copy
right, however, a work must contain at least certain minimum amount of original
expression. Thus, copy right does not extent to blank forms, Column headings, names,
titles or list of ingredients.
WORKS OF AUTHORSHIP
Indian Copyright Act affords separate and exclusive copyright protection to the
following 7 clauses of work:
1. Original Literary Work: It is one expressed in words, numbers, or other verbal or
numerical symbols, regardless of the nature of the material objects, such as
books, periodicals, manuscripts, phonorecords, film, tapes, discs in which they
are embedded. This broad category includes work of fiction and the notification,
poetry, catalogs, reports, speeches, pamphlets, and manuscripts.
2. Original Dramatic Work (Including accompanying Music): It is usually a
theoretical performance r play performed for stage, movie, television, or radio.
Dramatic works usually include spoken text, plot, and directions for action. This
music accompanying a dramatic work is protected as a dramatic work rather
than as an independent musical work.
Ex: Dramatic works include the well-known plays phantom of the Opera, Cats
and death of salesman.
3. Original Musical Work (Including accompanying Words): A Music work or
composition may be in the form of a notated copy (Such as sheet music) or in the
form of phonorecord such as a record, a cassette tape or a CD. The author of the
musical work is usually the composer and the lyricist if any.

40
Intellectual Property Rights

The Lyrics or words to a musical composition are not protected as a literary

work, but rather as a musical work. Both elements of a composition are
separately protected.
4. Pictorial, Graphic and sculptural work or Original Artistic Work
 A painting,
 A sculpture,
 A drawing including a diagram, map, chart or plan,
 An engraving or a photograph, whether or not any such work possesses
artistic quality;
 An architectural work of art; and any other work of artistic craftsmanship.
 The work need not possess any artistic quality but he author must have
bestowed skill, judgment and effort upon the work.
 A poster used in advertisement is an artistic work. But advertisement slogans
consisting of a few words only are not copyright matter.
5. Choreographic Works or Cinematograph Films: Choreography is the composition
and arrangement of dance movements and patterns. The 1976 act was the first
statute to include Choreography as copyrightable work.
6. Sound recording: A Sound recording is a work that results from the fixation of a
series of musical, spoken, or other sounds, regardless of the nature of the
material objects, such as discs, tapes, or other phone records in which they are
embodied.

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Intellectual Property Rights
RIGHTS OF REPRODUCTION
Owners' rights
The Copyright Act gives the copyright owner a number of exclusive rights in relation to
their works including:
 The right to control the reproduction of their work
 Moral rights in their work
 Performers’ rights in their work
Section 106 of the Copyright Act provides that, subject to certain exceptions, the owner
of a copyright has the exclusive rights to do and to authorize any of the following.
 To reproduce the Copyrighted work in copies or phone records.
 To prepare derivative works based on the Copyrighted work.
 To distribute copies or phone records of the copyrighted work to the public.
 To perform the Copyrighted work publicly.
 To display the Copyrighted work publicly.
 To perform the Copyrighted work publicly by means of a digital audio
transmission (in the case of sound recordings).
Rights of Reproduction
This group of rights allows a copyright owner to control the reproduction of their work.
Copyright owners have the right to:
Usually you need the copyright owner’s permission before you can reproduce their
work without infringing their copyright. However, the Copyright Act contains some
exceptions which permit copying of limited amounts of material without the permission
of the copyright owner. See the following sections of the website for a discussion of
these exceptions.
Copyright owners can exercise these rights themselves or they may give someone else
permission to exercise those rights. This permission is usually referred to as assigning
rights or granting a license. Copyright owners often grant a license to permit use of their
work in return for the payment of fees or royalties. The license will usually set out the
conditions such as the purposes for which the work can be used and the duration of the
license.
 To publish their work
 To make copies of their work

42
Intellectual Property Rights

 To make their work available online by placing it on a website

 To perform their work in public
 To make adaptations of their work including translations of literary works,
arrangements of musical works and sampling parts of musical works
Moral rights
The Copyright Act grants individual copyright owners three main moral rights:
 The right of attribution – the right to be identified as the author of the work
 The right against false attribution - the right to take action against false
attribution
 The right of integrity – the right to object to derogatory treatment of their work
which prejudicially affects their reputation or honor
Moral rights recognize that a work can be an extension of the creator’s personality and
that the relationship between the creator and their work should be respected.
What types of works have moral rights?
Moral rights apply to most types of material protected by copyright such as literary,
dramatic, artistic and musical works. From 26 July 2007 performers have moral rights
in their live and recorded performances.
Moral rights do NOT apply to:
 Broadcasts
 Published editions
Who owns moral rights?
 Moral rights are only granted to individual authors and creators. Organizations,
corporate bodies and companies are not granted moral rights.
 Moral rights remain with the creator even though that person may have assigned
their copyright to another party and may no longer be the copyright owner.
 Creators cannot sell their moral rights but they can consent to others carrying
out actions which would otherwise infringe their moral rights
Performers’ rights
Under the Copyright Act performers have three main categories of rights:
 The right to control recording and communication of their performances
 Ownership of copyright in sound recordings of their performances
 Moral rights in their live performances

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Intellectual Property Rights

You may infringe a performer’s rights if you carry out the following activities without
their permission:
 Record their performance,
 Copy an unauthorized recording of their performance,
 Place an unauthorized recording of their performance online
RIGHTS TO PERFORM THE WORK PUBLICLY
Section 106(4) of the Copyright Act provides that in the case of literary, musical,
dramatic, choreographic works, and motion pictures and other audio visual works, the
Copyright owner has the exclusive right to perform the Copyrighted work publicly.
The word perform means to recite, render, play, dance, or act a work, either directly or
by means of a device or process to show its images in any sequence or to make the
sounds accompanying it audible.
The copy right owner’s right to perform is limited to public performances. To Performa
a work publicly means to perform the work at a place open to public or at any place
where a substantial number of persons outside of a normal circle of a family and its
social acquaintances is gathered or to transmit or communicate the work to the public
or to a place open to the public where the performance is live or recorded.
Performances at places such as clubs, lodges, schools, and summer camps are “public
performances” subject to copyright protection.
Exceptions for sound recordings:
Other Exceptions:
According to section 110 of the copyright act the following performances, many of which relates
to nonprofit educational or charitable activates, don’t violate a copyright owners exclusive right
to perform his or her work publicly.
 Face to Face teaching: The Copyright Act protects performances or displays of a work
by instructors in the course of face to face teaching activities of a nonprofit educational
instructions and certain instructional or educational broadcasting by governmental
bodies or nonprofit educational institutions engaged in systematic instructional
activities.
 Religious Services: Performances of a non-dramatic literary or musical work in the
course of services at a place of worship or other religious assembly are permissible.

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Intellectual Property Rights

 Promotion of Records: The Copyright Act allows performance of non-dramatic musical

works (namely, the playing of recorded music) at retail stores, such as record stores and
stores that sell CD’s and CD players, to promote sales.
 Non-Profit Performances: Live performances of Non-dramatic literary or musical
works for noncommercial purposes are permissible if there are no admission charges or
if there are charges, the net provides are use for charitable purposes and the author is
notified so he/she can object prior to the performance (this exception promotes befit
and fund rising concerts for educational, religious or other charitable purposes).
 Agricultural and Horticultural fairs: Performance of a Non-dramatic musical work by
a governmental body or nonprofit agricultural or horticultural association in the course
of an annual agricultural or Horticultural fair or exhibition are permissible.
 Small commercial establishments: The Copyright act allows transmissions of radio
and Television broadcasts in small business, restaurants this allowing such
establishments to play radios and televisions for the enjoyment of their customers
without obtaining licenses, as long as no direct fee is charged and there is further
retransmission.
 Transmissions for Handicapped persons: The Copyright act allows certain
transmissions for the benefit of blind and deaf persons, if the performance is nonprofit.

COPY RIGHTS OWNERSHIP ISSUES

One of the most important concerns in copyright law is the determination of copyright
ownership. The general rule is that the creator of the work is the owner of all copyright
interests in the work. However, where two or more parties create a work together,
copyright ownership becomes a more difficult issue. In addition, copyright ownership is
more difficult to determine when the creator of a work is being paid by a third-party to
create the work.
1. Joint Works: When several people work together to create a single work, a joint
work may be created under the Copyright Act.
A joint work is defined by the Copyright Act as a work prepared by two or more
authors with the intention that their contributions be merged into inseparable or
interdependent parts of a unitary whole.
2. Ownership in derivative or collective works:
If a work such as a book is created by one person who intended it to be complete at
the time and illustration are later added to it but another, a work cannot be a joint
work because there was no intention of the parties to create a unitary whole at the
time of their creation.
3. Works made for Hire

45
 In a work made for hire situation, the "author" of the work is no longer the
individual who created the work. Instead, the "author" is considered to be the entity
which hired the actual creators of the work (such as a corporation for whom the
author works as an employee).

4. Transfers of copyright
a. Divisibility of ownership
Copyright Act of 1976, ownership of a copyright was a single and indivisible
right that could not be divided and sold. Therefore, an author could not
transfer publishing rights to a publisher and distributorship rights to a
distributor, where the publisher and distributor were two different
people/entities.
5. Termination of transfers of Copyright: In the case of any work other
than a work made for hire, the exclusive or nonexclusive grant of a transfer or
license of copyright or of any right under a copyright, executed by the author on
or after January 1, 1978.
6. Duration of Copyright

a. Duration under the 1909 Copyright Act: Under the 1909 Act, the copyright
in a work lasted for a first term of 28 Years from the date it was secured.
During the last year of the term, the copyright right was eligible for renewal
either by the author or specified heirs. If renewed, the copyright was
extended for the second term of 28 years. If not renewed, the copyright
expired at the end of the first 28 years term. The maximum allowable length
of copyright protection under the 1909 act was 56 years.

COPY RIGHT REGISTRATION

The purpose of copyright registration is to place on record a verifiable account of the
date and content of the work in question, so that in the event of a legal claim, or case of
infringement or plagiarism, the copyright owner can produce a copy of the work from
an official government source.
Before 1978, in the United States, federal copyright was generally secured by the act of
publication with notice of copyright or by registration of an unpublished work.[1]This
has now been largely superseded by international conventions, principally the Berne
Convention, which provide rights harmonized at an international level without a
requirement for national registration. However, the U.S. still provides legal advantages
for registering works of U.S. origin.
The application for copyright registration

46
 Parties who may file applications: The following persons are entitled to submit
an application for registration of copyright.
o The Author
o The Copyright Claimant
o The owner of exclusive rights
 Application forms
o Form TX (Text): It is used for registration of published or unpublished non
dramatic literary works, excluding periodicals or serial issues. This class includes
a wide variety of works like essays, poetry, textbooks, reference works, catalogs,
advertising copy, and computer programs.
o Form PA (Performing Arts): It is used for works of the performing arts (those to
be performed before an audience) like plays, choreographic works, motion
pictures and other audio visual works, musical compositions, and songs.
o Form VA (Visual Arts): It is used for registration of Published or unpublished
works of Visual Arts like two & three dimensional works of graphic and applied
art such as cartoons, dolls, toys, fabric and wall covering designs, games, and
puzzles, greeting cards, maps, original prints, photographs, posters and
technical drawings including architectural plans and blue prints.
o Form SR (Sound Recordings): It is used for Sound Recordings.
o Form SE (Serial): It is used for register each individual issue of a Serial, such as
periodicals, news papers, magazines, newsletters, annuals and journals.
o

COPYRIGHT NOTICE

Copyright is a form of protection provided by U.S. law to authors of “original works of

authorship.” When a work is published under the authority of the copyright owner, a
notice of copyright may be placed on all publicly distributed copies or phonorecords.
The use of the notice is the responsibility of the copyright owner and does not require
permission from, or registration with, the Copyright Office.
For works first published on or after March 1, 1989, use of the copyright notice is
optional. Before March 1, 1989, the use of the notice was mandatory on all published
works. Omitting the notice on any work first published from January 1, 1978 to
February 28, 1989 could have resulted in the loss of copyright protection if corrective
steps were not taken within a certain amount of time. Works published before January
1, 1978, are governed by the 1909 Copyright Act. Under that law, if a work was
published under the copyright owner’s authority without a proper notice of copyright,
all copyright protection for that work was permanently lost in the United States.
1. The symbol ℗ (the letter P in a circle).
47
 2. The year of first publication of the sound recording.
3. The name of the copyright owner of the sound recording, an abbreviation by
which the name can be recognized, or a generally known alternative designation
of the owner. If the producer of the sound recording is named on the
phonorecord label or container and if no other name appears in conjunction with
the notice, the producer’s name will be considered a part of the notice.
 Special notice requirements:
o Contributions to collective works: A single copyright notice applicable to the
collective work as a whole serves to indicate protection for all the contributions
in the collective work, except for advertisements, regardless of who owns
copyright in the individual contributions or whether they were published
previously
A “collective work” is one in which contributions that are separate and
independent works in themselves are assembled into a collective whole.
Examples of collective works include periodicals (such as magazines and
journals), encyclopedias, and anthologies.
o Publications incorporating US Govt. works: Copies of works published before
March 1, 1989, that consists primarily of one or more works of the U.S.
government should have a notice and the identifying statement.
o
o Unpublished works: There has never been a requirement for use of a copyright
notice for unpublished works, although a notice may be used.
 LOCATION OF NOTICE: The Copyright Office has issued regulations concerning the
position of the notice and methods of affixation. Generally, the copyright notice
should be placed on copies or Phonorecords in such a way that it gives reasonable
notice of the claim of copyright. The notice should be permanently legible to an
ordinary user of the work under normal conditions of use and should not be
concealed from view upon reasonable examination.
INTERNATIONAL COPYRIGHT LAW
NEW DEVELOPMENTS IN COPYRIGHT LAW
INTRODUCTION
The Digital Millennium Copyright Act (DMCA) was signed into law by 1 President
Clinton on October 28, 1998. The legislation implements two 1996 World Intellectual
Property Organization (WIPO) treaties: the WIPO Copyright Treaty and the WIPO
Performances and Phonograms Treaty. The DMCA also addresses a number of other
significant copyright-related issues.

48
The DMCA is divided into five titles:
• Title I, the “WIPO Copyright and Performances and Phonograms Treaties
Implementation Act of 1998,” implements the WIPO treaties.
• Title II, the “Online Copyright Infringement Liability Limitation Act,” creates
limitations on the liability of online service providers for copyright infringement
when engaging in certain types of activities.
• Title III, the “Computer Maintenance Competition Assurance Act,” creates an
exemption for making a copy of a computer program by activating a computer for
purposes of maintenance or repair.
• Title IV contains six miscellaneous provisions, relating to the functions of the
Copyright Office, distance education, the exceptions in the Copyright Act for libraries
and for making ephemeral recordings, “webcasting” of sound recordings on the
Internet, and the applicability of collective bargaining agreement obligations in the
case of transfers of rights in motion pictures.
• Title V, the “Vessel Hull Design Protection Act,” creates a new form of protection for
the design of vessel hulls.

PATENTS
FOUNDATION OF PATENT LAW
Patents: A patent is a grant from the US Government that permits its owner to exclude
others from making, selling, using, or importing an invention. Patents exist only up on
issuance by the US Patent and Trademark Office (USPTO). There are three types of
patents
 Utility Patent is the most common patents and which cover useful inventions and
discoveries (such as the type writer, the auto mobile and genetically altered mice).
 Design Patent is cover new, original and ornamental designs for articles (such as
furniture).
 Plant Patents are new and distinct asexually reproduced plant varieties (Such as
Hybrid flowers or trees).
PATENT SEARCHING PROCESS
THE NEED FOR SEARCH:

Patentability requires novelty and non-obviousness. The only predictable methods of

determining whether an invention is new and non-obvious to conduct a search for the

49
Intellectual Property Rights

prior art including patent records and printed publications. The patentability search,
sometimes called a novelty search or prior search. It will help determine whether the
differences in the subject matter sought to be patented and the prior art are search that
the subject matter as a whole would have been obvious to person having ordinary skill
in the ar.

PATENT SEARCH RESOURCES

USPTO Patent Search Rooms: The USPTO maintains a Patent Search Room at its
Alexandria Virginia office. The search rooms are open to the public and hoses all US
patents granted since 1970. Searching is usually accomplished by using state-of-the-art
computer database. The USPTO also offers a Scientific and Technical Information Cener
at its office, which offers more than 120000 volumes of scientific and technical books as
well as numerous journals and foreign patents.
Patent and Trademark Depository Library (PTDL): For many decades, the Patent
and Trademark Depository Library Program has done an admirable job of educating the
public on patent and trademark resources and search tools and in communicating
important information regarding USPTO initiatives. In the early years, much effort was
devoted toward distributing print and later CDs containing patent and trademark
documents. Over the past decade, the technology landscape has shifted profoundly with
the availability of a number of free patent databases on the Internet. The USPTO website
features a number of search tools and resources and the PTDL's now provide access to
examiner search tools like PubWEST. The PTDL program emphasis has shifted from
providing patent and trademark information in print or CD formats, to focusing on
outreach and training. Here are some potential new or expanded directions for the
PTDL program, which build on services that have been traditionally provided:
 Virtual training - Using webinars and other virtual training can magnify the
impact of the PTDL training efforts. While personal visits to individual PTDLs can
be an excellent way to connect with librarians and their clientele in the field, it is
not a scalable model for a nationwide training network.
 Train the Trainer - The PTDL program has relied on an annual training seminar
at USPTO as a primary method of training librarians in PTDL libraries.
 A Nationwide Network of Potential Spokespeople - The USPTO is extremely
fortunate to have a nationwide group of informed and interested

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Intellectual Property Rights

representatives--the librarians in the PTDLs. In the past, the librarians have

served as an important outreach group for various agency projects.
 A Focus for Outreach Efforts - The PTDL Program can also serve as a focus for
outreach to various groups in the patent and trademark community like PIUG
(Patent Information Users Group) and AIPLA (American Intellectual Property
Law Association).
USPTO online Database: The USPTO online database includes all patents issued science
1790 and applications published science March 2001. The database more than seven
million patents includes information about US patents, offering the full text of patent
granted science 1976, and the patent number and current US classification for all
patents granted from 1790 through 1975. Copies of patents may easily be ordered
through the USPTO web site or via telephone upon payment of moderate fee.
USPTO Search Assistance: The USPTO public search facility staff conducts minimal
searching for a fee. Specially, the staff will conduct an inventor search and then provide
a list of the patent numbers related to that inventor for $40 per hour.
PATENT SEARCH METHODS
There are two primary methods that can be used t search for prior art i.e.
1. The Keyword Search Methods and
2. The Classification Search Method.
1. The Keyword Search Methods:
The main pitfall of keyword searching is the English Language as it is used and
abused. However, here in detail are the specific problems:
 Poor Translations: Probably 40% of US patents are filed from abroad, by people
who may not use your favorite set of buzzwords for describing their technology.
A great many Japanese translations are execrable, on the level of blind Martians
describing an elephant. Machine translations are not always the worst source of
garbage.
 Different Spin: One man’s plant fungicide is another man’s crop growth
promoter. Patent agents are hired to make the humdrum sound novel.
 Too Many Synonyms: In the realm of chemistry, a compound may have twenty
names, depending on the country or field of use. Use Chemical Abstracts to
search with the CA registry number.
 Generic VS Specific: There is always a chance that a patent out there dominates
because it claims whole genera of applications or substances. Who has not
cringed at the dreaded words "Alkali metals or salts thereof" or "Group VII
51
 elements" or "Lanthanide complexes". Search for general terms as well as
specific details.
 No Spelling Standards: Some people assume all databases are cast in American
English. The World Patent Index, one of the best international databases, is
created in the UK and full of "tyres", "lorries", "lifts", "bitumen" and many other
British terms.
THE PATENT APPLICATION PROCESS
The patent process actually starts well before you file a patent application or seek
assistance from a patent attorney. Every patent application starts with an invention, and
every invention starts with an idea. While ideas are not patentable, there will be a point
in time when the idea you are working on comes into vision with enough detail to cross
what I call the idea / invention boundary. To have a protectable invention you have to
be able to describe it with enough detail so that someone of skill in the relevant
technical field can understand how to both make and use the invention. Once you can do
that, or once the patent attorney or patent agent you hire can, you are ready to file a
patent application.
Patent Practice: While preparing Trademark and Copyright applications is relatively
straight forward, preparing a patent application requires skillful drafting as well as
knowledge in the relevant field, whether i.e. biotechnology, chemistry, mechanical
engineering, physics, computes, pharmacology, electrical engineering and so on.
Because of patent practice are highly technical, law firms that provide patent services to
clients generally have a member of attorneys with different skill sets and the patent
department itself may be divided in to different groups such as mechanical group and a
electrical group.
Most patent attorney’s posses both a law degree and an advance degree in engineering
physics, chemistry and so on.
To represent patent applicant before the USPTO and attorney must be registered to
practice with the USPTO. An attorney must pass a registration examination, which
requires the attorney to demonstrate a he /she posse the legal, scientific and technical
qualifications to represents patent applications.
Confidentiality of Application Process and Publication of Patent Application: For
more than 200 years, all patent applications filed with the USPTO were maintained in
strict confidence through the entire application process. Only when the patent issued
was the file wrapper open to public inspection. Under the American Investors
Protection Act (AIPA) of 199, however it effect in November 2000, the USPTO now

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Intellectual Property Rights

publishes utility and plant applications 18 months after their filing unless the applicant
requests otherwise upon filing and certifies that the invention has not and will not be
the subject of an application filed in foreign country. Applicant may request earlier
publication. A fee of $300 is charged by the USPTO for publication. If the applicant latter
decides to apply for a patent in foreign country, the applicant must provide notice of this
foreign filing to the USPTO within 45 days or the application will be regarded as
abandoned.
Types of Applications
Patent office’s may define a number of types of applications, each offering different
benefits and being useful in different situations. Each office utilizes different names for
the types of applications, but the general groups are detailed below. Within each group
there are specific type of applications, such as utility patents, plant patents, and design
patents, each of which can have their own substantive and procedural rules.
 Standard application: A standard patent application is a patent application
containing all of the necessary parts (e.g. a written description of the invention
and claims) that are required for the grant of a patent. A standard patent may or
may not result in the grant of a patent depending upon the outcome of an
examination by the patent office it is filed in. In the U.S., a standard patent
application is referred to as a "non-provisional" application.
 Provisional application: Provisional patent applications can be filed at many
patent offices, such as the USPTO in the U.S. A provisional application provides an
opportunity to place an application on file to obtain a filing date (thereby
securing a priority date), but without the expense and complexity of a standard
patent application. The disclosure in a provisional application may, within a
limited time (one year in the U.S.), be incorporated into a standard patent
application if a patent is to be pursued. Otherwise, the provisional application
expires. No enforceable rights can be obtained solely through the filing of a
provisional application.
 Continuation application: In certain offices a patent application can be filed as
a continuation of a previous application. Such an application is a convenient
method of including material from a previous application in a new application
when the priority year has expired and further refinement is needed. Various

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Intellectual Property Rights

types of continuation application are possible, such as continuation and

continuation-in-part.
 Divisional application: A divisional application is one which has been "divided"
from an existing application. A divisional application can only contain subject
matter in the application from which it is divided (its parent), but retains the
filing and priority date of that parent. A divisional application is useful if a unity
of invention objection is issued, in which case the second (and third, fourth, etc.)
inventions can be protected in divisional applications.

PATENT PROSECUTION FLOW CHART

Patentability search conducted Invention is not novel or

is obvious; close file

Invention satisfies patentability

requirements; file application

Prepare and file invention

disclosure statement with
application or within 3 months of
filing date

Application is examined by
USPTO; office action likely Application is rejected;
received and responded to close file

Notice of allowance issued by

USPTO; which includes publication
fees (unless no foreign filing)

Application pays issue fee and

publication fee (if required)
within three months

Patent is issued

54
 OWNERSHIP PATENT RIGHTS & TRANSFER
Ownership: The ultimate and exclusive right conferred by a lawful claim or title, and
subject to certain restrictions to enjoy, occupy, possess, rent, sell, use, give away, or
even destroy an item of property.
Ownership may be corporeal (title to a tangible object such as a house) or incorporeal
(title to an intangible object, such as a copyright, or a right to recover debt). Possession
(as in tenancy) does not necessarily mean ownership because it does not automatically
transfer title.

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A patent is a grant of protection for an invention. It's granted by the U.S. Patent and
Trademark Office (PTO) and has a term of 14 to 20 years. Owning a patent gives you the
right to stop someone else from making, using or selling your invention without your
permission.
Patent Ownership
Ownership of a patent is important because the owner of the patent enjoys all of the
rights, title and interest granted by the patent. Normally patent rights are held by the
inventors until those rights are assigned in a written Patent Assignment agreement,
even if the employee created the invention within the scope of employment (with a few
exceptions such as the "hired-to-invent doctrine"). It is important to establish
ownership of a patent before filing a patent application to avoid future problems. He
owner of a patent can do the following with their patent rights:
 License the patent rights to one or more third-parties to collect royalties;
 Sell the patent rights;
 Sue a patent infringer; or
 Manufacture, offer for sale, sell or use a product covered by the patent without
infringing the patent.
If an inventor is not the owner of the patent, the inventor will have none of these
rights. Patent Inventorship vs. Patent Ownership
Many people get confused between patent Inventorship and patent ownership. An
individual can be an inventor but not an owner of the patent rights (e.g. where they
assigned their patent rights to a third-party). In addition, an individual or company may
be an owner of the patent rights but not an inventor where they were assigned the
patent rights by the inventor. It should be noted that a company can never be an
inventor.
Sole & Joint Inventors
Sole Inventors:
An invention may be the product of one person or more than one person. If one person
conceives of the invention, he/she is the “solo inventor”.
A directive given by an employer to solve a problem or invent an article doesn’t make
the employer an inventor.

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It is finding a solution to a problem rather than articulating it that determines whether

one is an inventor. Similarly, giving suggestions, making minor contributions or helping
to build a model or embodiment of the invention do not make a person an inventor.
Joint Inventors (or) Joint Inventorship (or) Joint Ownership
If two or more inventors are named on a patent application, the patent rights most likely
are jointly owned by the joint inventors unless a written Patent Assignment agreement
has been executed by the joint inventors assigning their ownership rights to another
individual or company. If the joint inventors are part of unrelated entities (e.g. a
consultant working for a company), the patent rights will be jointly owned unless there
is a written agreement indicating otherwise.
Problems with Joint Ownership
Patent ownership by more than one individual or entity is typically not recommended
because of the following potential problems:
 Co-Owner Independently Licenses: A co-owner could license the patent rights to a
third-party without paying any of the other co-owners any of the monies received.
 Co-Owner Starts Competing Company: A co-owner could form a competing
company and sell a competing product without infringing upon the patent because
they are a co-owner of the patent.
 All Co-Owners Must Sue Infringer: If a patent is jointly owned by two or more
individuals/entities, then a patent infringement lawsuit against an infringer can only
be filed if all of the co-owners jointly file the infringement lawsuit.
Solutions to Joint Inventorship
Below are some potential solutions to joint Inventorship to avoid the above indicated
problems of co-ownership:
 Form a Company. The most common solution to resolving the ownership problems
with joint Inventorship is to form a new company owned by the joint inventors (and
possibly any investors) and then have a Patent Assignment signed by the joint
inventors assigning their ownership rights in the patent to the company. You can do
this after filing a patent application, but it is recommended that you for your
company before filing the patent application if possible to efficiently handle the
patent application filing. Forming a company has the following benefits:

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o Patent Infringement: The Company will then be the sole owner of the patent
resulting in the ability to bring a patent infringement lawsuit without including any
other co-owners.
o Licensing Royalties: The Company will also be able to license the patent rights to a
third-party and all of the revenues received will be distributed to the owners of the
company (i.e. joint inventors) pursuant to the rules set by the company.
o Problems: If there are problems in the future between the owners of the
company, the rules of the company typically have standard buy out provisions to
compensate a co-owner that decides to leave (or that is forced out by the other co-
owner).
 Contract between Joint Inventors: If forming a company is not desirable, another
possible solution is to have a contract signed by all of the joint inventors indicating their
respective rights. For example, the parties could agree that none of the co-owners are
able to license the patent rights. The contract could also specify that if a license by one
of the joint inventors occurs that the other joint inventors would receive a percentage
of the royalties paid under the license. Please keep in mind that this is not
recommended because of the difficulties associated with drafting such an agreement. If
you decide to use a contract instead of a company, you should retain a qualified
corporate attorney to assist you in the preparation of the contract to cover your future
relationship.
 Consulting Agreements: If you are a company hiring an independent contractor to
consult on a new project and the consultant could potentially develop inventive subject
matter resulting in them becoming a joint inventor, a provision should be added to the
consulting agreement identifying who will be the owner of the inventive subject matter
developed by the consultant and the company. It is typical to have a provision in the
consulting agreement that specifies that the company
hiring the consultant will be the sole owner of the patent rights regardless of who
invents the same and that the consultant agrees to execute a patent assignment
agreement officially transferring any patent rights they jointly invented.
Intellectual Property Rights

UNIT-IV TRADE SECRETS & UNFAIR COMPETITION

TRADE SECRETE LAW

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TRADE SECREAT:
Broadly speaking, any confidential business information which provides an enterprise a
competitive edge may be considered a trade secret. Trade secrets encompass
manufacturing or industrial secrets and commercial secrets. The unauthorized use of such
information by persons other than the holder is regarded as an unfair practice and a
violation of the trade secret. Depending on the legal system, the protection of trade secrets
forms part of the general concept of protection against unfair competition or is based on
specific provisions or case law on the protection of confidential information.
The subject matter of trade secrets is usually defined in broad terms and includes sales
methods, distribution methods, consumer profiles, and advertising strategies, lists of
suppliers and clients, and manufacturing processes. While a final determination of what
information constitutes a trade secret will depend on the circumstances of each individual
case, clearly unfair practices in respect of secret information include industrial or
commercial espionage, breach of contract and breach of confidence.
How are Trade Secrets Protected
Contrary to patents, trade secrets are protected without registration, that is, trade secrets
are protected without any procedural formalities. Consequently, a trade secret can be
protected for an unlimited period of time. For these reasons, the protection of trade secrets
may appear to be particularly attractive for SMEs. There are, however, some conditions for
the information to be considered a trade secret. Compliance with such conditions may turn
out to be more difficult and costly than it would appear at first glance. While 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.

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 It must have been subject to reasonable steps by the rightful holder of the
information to keep it secret (e.g., through confidentiality agreements).
Example
An SME develops a process for the manufacturing of its products that allows it to produce
its goods in a more cost-effective manner. Such a process provides the enterprise a
competitive edge over its competitors. The enterprise in question may therefore value its
know-how as a trade secret and would not want competitors to learn about it. It makes
sure that only a limited number of people know the secret, and those who know it are made
well aware that it is confidential. When dealing with third parties or licensing its know-
how, the enterprise signs confidentiality agreements to ensure that all parties know that
the information is a secret. In such circumstances, the misappropriation of the information
by a competitor or by any third party would be considered a violation of the enterprise's
trade secrets.
In fact, many SMEs rely almost exclusively on trade secrets for the protection of their IP
(although in many cases they may not even be aware that trade secrets are legally
protected). It is important, therefore, to make sure that enterprises take all necessary
measures to protect their trade secrets effectively. This includes:
 Firstly, considering whether the secret is patentable and, if so, whether it would not be
better protected by a patent.
 Secondly, making sure that a limited number of people know the secret and that all
those who do are well aware that it is confidential information.
 Thirdly, including confidentiality agreements within employees' contracts. Under the
law of many countries, however, employees owe confidentiality to their employer even
without such agreements. The duty to maintain confidentiality on the employer's
secrets generally remains, at least for a certain period of time, even after the employee
has left the employment.
 Fourthly, signing confidentiality agreements with business partners whenever
disclosing confidential information.

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TRADE SECRET LAW

A trade secret is defined as any valuable business information that is not generally known
and is subject to reasonable efforts to preserve confidentiality. (OR)
A trade secret is a formula, practice, process, design, instrument, pattern, commercial
method, or compilation of information which is not generally known or reasonably
ascertainable by others, and by which a business can obtain an economic advantage over
competitors or customers. In some jurisdictions, such secrets are referred to as
"confidential information", but are generally not referred to as "classified information" in
the United States, since that refers to government secrets protected by a different set of
laws and practices.

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"confidential information", but are generally not referred to as "classified information" in

the United States, since that refers to government secrets protected by a different set of
laws and practices.
DETERMINATION OF TRADE SECRET STATUS
There are several factors to be considered in determining whether information qualifies as
a trade secret. Courts following the restatement provisions relating to trade secrets
routinely examine these factors to determine whether a company’s information constitutes
a trade secret. None of the factors alone is determinative courts balance these factors and
weigh them against each other in determining whether information qualifies as a
protectable trade secret.

 The extent to which the information is known outside the company: Although
information may be known to others outside the company and still qualify as a trade
secret, the grater the number of people who know the information, the less likely it is to
qualify as a trade secret. Secrecy need not be absolute. The owner of a trade secret may,
without losing protection, disclose it to a licensee or a stranger if the discloser is made
in confidence. Publication of information on the internet will cause a loss of trade secret
status.
 The extent to which the information is known within the company: An employer or
company is permitted to disclose confidential information to those with a demonstrated
“need to know” the information, if the information is widely known within the
company, epically among those who have no business need to know the information. It
may not qualify as trade secret. Companies should implement policies to prevent the in
inadvertent disclosure of trade secret information and limit dissemination of the
material to those who need it to do their work.
 The extent of the measures taken by the company to maintain the secrecy of the
information: One claiming trade secret protection must take reasonable precautions to
protect the information. Courts are unlikely to protect information a company has not
bothered to protect. A company is not obligated to undertake extreme efforts to protect
information, but reasonable precautions are required. Thus, companies that required
employees to sign non disclosure agreements, keep confidential information in locked

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desks or rooms, restrict access to the information and mark information with legends
relating to its confidentiality are more likely to demonstrate successfully that
information is a trade secret than those that fail to take such ordinary and reasonable
precautions against inadvertent disclosure.
 The extent of the value of the information to the company and its competitors: If
information has little value either to its owner or to owner’s competitors, it is less likely
to qualify as a trade secret. Information that is valuable to a company, such as the recipe
for its key menu product and that would be great value to the company’s competitors is
more likely to be a protectable trade secret.
 The extent of the expenditure of time, effort and money by the company in
developing the information: The grater the amount of time, effort and money the
company has expended in developing or acquiring the information, the more likely it is
to be held to be a protectable trade secret.
 The extent of the ease or difficulty with which the information could be acquired
or duplicated by others: It information is easy to acquire or duplicate, it is less likely
to qualify as a trade secret. Similarly, if the information is readily ascertainable from
observation or can be easily reproduced, it is less likely to be a trade secret.
LIABILITY FOR MISAPPROPRIATION OF TRADE SECRETES
Misappropriation of a trade secrete occurs when a person possesses, discloses or uses a
trade secrete owned by another without express or implied consent and when the person
 Used improper means to gain knowledge of the trade secrets.
 Knew or should have known that the trade secrete was acquired by improper means.
 Knew or should have known that the trade secrete was acquired under circumstances
giving rise to a duty to maintain its secrecy.
Absence of written agreement: While a return agreement prohibit in misappropriation
of trade secret can be enforced through an action for breach of contract, a companies’ trade
secret can be protected against misappropriation even in the absence of any return
agreement between the parties.
A party owning trade secret can bring an action in tort from misappropriation or for breach
of the duty of confidentiality, which duty can arise even without an express agreement.

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Courts will impose a duty of confidentiality when parties stand in a special relationship
with each other, such as an agent-principal relationship (which includes employer –
employee relationships).
Misappropriation by the third parties: A number of other parties may also have liability
for misappropriation of trade secrets if they knew or should have known they were the
recipients of protected information.
PROTECTION FOR SUBMISSION
Submission to Private Parties: In many instances individual wish to submit an idea for an
invention, process, game or entertainment show to a company or business in the hope that
the company will market and develop the idea and the individual will be compensated for
the idea.
The solution through such a dilemma is for the inventor to submit the idea form pursuant
to an evaluation agreement or submission agreement where why the other party agrees to
evaluate the idea only for the purpose of considering a feature transaction between the
parties and further agrees not to circumvent the submitter or to disclose the ideas to
others.
Submission to government agencies: Private companies that present bids to government
agencies in the hope of obtaining a government contact are often required to disclose
confidential or trades create information to the agency. Under freedom of information acts
the proposal might later be released to any member of the public requesting the document,
thus resulting in loss of confidential information to possible competitors. To protect
companies against such discloser, many freedoms of information acts contain exceptions so
that parties can designate certain information as trade secrets and thus prevent its release.
TRADE SECRET LITIGATIONS
Clients turn to Fish every day for help protecting their intellectual property, including their
trade secrets. But the reality is, as headlines routinely attest, employees too often hand
these assets over to a competitor, creating an untenable position in the marketplace.
Because so many of our clients operate in the high-tech and other sectors, where technical
and sensitive business information is at the heart of their operations and where employee
mobility can pose a real and immediate competitive threat, the protection of trade secrets

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is a fundamental part of our practice. We assist clients in the development of procedures

for protecting their pivotal business secrets and act at times when enforcing that
protection requires taking an aggressive stance. We have an extensive track record of
successful litigation in these situations, including the use of temporary restraining orders
and injunctions to keep trade secrets and other confidential business information from
being misappropriated. Conversely, we also successfully defend companies when they are
accused of improper use of another’s trade secrets.
The nationally recognized technical knowledge and educational backgrounds of our
attorneys aids us in identifying and explaining which trade secrets are at risk, and in
developing strategies to keep them from being lost. Our trade secrets team includes a mix
of attorneys who successfully navigate trade secrets disputes arising from complex
licensing arrangements, counsel employees and employers in connection with asserting or
defending against nondisclosure and non-compete agreements, handle injunction hearings
on behalf of and against trade secrets owners, and litigate trade-secrets cases throughout
the country.
Fish has a great deal of experience and depth in this area. Our team can successfully
navigate these waters for you, whatever the factual circumstances involved. Winning
complex litigation is what Fish does, and our trade secrets practice is no exception.
Commercial Litigations
Many companies, from start-ups to the nation’s largest corporations, rely on Fish to resolve
their business disputes. The reason is simple. Clients know that the formidable prowess of
Fish’s commercial litigation group goes hand in hand with the firm’s stellar intellectual
property litigation practice. The two are related, in that the knowledge and experience that
come from a long history of IP work give us an undeniable advantage in trying intricate,
complex, high-profile, and high-stakes commercial cases.
Our litigators bring to those cases a mind-set to make the complex understandable, a legacy
of the extremely technical patent trials for which the firm is so famous. It is, therefore, no
coincidence that we have been significantly involved in the three largest litigations—in
terms of amount in controversy—in U.S. history: Enron, WorldCom, and the 9/11 litigation.
We have a deep bench of distinguished trial lawyers, most of whom have been taking cases
to verdict since the earliest stages of their careers. They are highly adept at all stages of
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complex litigation—from pretrial through appeal—and are not afraid to bring bold or
previously untried strategies to bear on difficult matters. Their credentials are
outstanding—three are former federal prosecutors, and 19 held federal judicial clerkships:
six in Courts of Appeals and 13 in U.S. District Courts.
Fish solves problems, whether our client is bringing the fight or having the fight brought to
them. We have a compelling record of obtaining litigation results in federal and state courts
across the country. We can deliver the benefits of our nationwide experience and
familiarity with local courts and practice. We are proud of our record of success and our
strong commitment to our clients and their business goals.
Fish stands out among firms for its rare combination of trial experience and subject matter
expertise. Many firms have trademark, copyright, and media practitioners, but very few
have a national team of trial lawyers who practice in these areas exclusively. Our team is
devoted to helping our clients prosecute or defend any type of dispute involving claims of:
 Trademark and trade dress infringement
 Copyright infringement
 False advertising
 Domain name disputes
 Unfair competition
Trademark Litigation: Fish protects some of the most famous brands in the world in
federal courts and before the USPTO Trademark Trial and Appeal Board (TTAB). While
many firms have appeared in TTAB actions, few have tried cases to completion and
successfully defended the result before the Federal Circuit. Fish has and does. Our clients
range from start-ups to Fortune 500 companies in a wide range of industries, including
luxury, good and beverage, software, sports, industrial products, finance, and
entertainment among others.
Copyright Litigation: Our copyright litigation practice is unparalleled. We understand
complex and emerging issues related to the use of new technologies in conjunction with
copyrighted works. Our attorneys are skilled at learning new and different technologies
and distilling their operation into easy to comprehend narratives for both judges and juries.
Clients range from some of the largest media companies in the world to the most disruptive

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start-ups challenging the ways in which content is distributed. Fish has represented clients
successfully in some of the most-watched cases, establishing new law in areas such as the
first sale doctrine, reproduction and content distribution rights, and fair use.
False Advertising Litigation: Clients turn to Fish to defend and challenge claims of false
and misleading advertising, right of publicity violations and unfair competition. We
understand the importance of these disputes and the impact they can have on a company’s
brand and reputation. We have successfully represented clients before the National
Advertising Division of the Better Business Bureau (NAD) and its National Advertising
Review Board (NARB), and have experience with both individual and class actions in state
and federal district courts. Our team often wins early victories for clients through
temporary restraining order or preliminary injunctions, or arbitration and settlement
negotiations.
Domain Name Disputes: Fish has a depth of experience in policing and enforcing brands
on the Internet. We have an excellent track record handling Cybersquatting disputes under
the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and other country-specific
proceedings. We often are able to resolve these disputes quickly and favorably through
cease-and-desist letters and domain name assignment agreements. When necessary, we
have represented clients in federal court litigation under the Anti-Cybersquatting
Consumer Protection Act (ACPA).

TRADE SECRET PROTECTION PROGRAMS

Because trade secrets are legally fragile and may be lost by inadvertent disclosure or
failure to responsibly protect them, companies should implement trade secret protection
programs to safeguard valuable information. While it is common for business to assume
that only scientific and technical data constituted trade secrets, such as customer lists,
marketing plans, hiring tactics, and other information that would be valuable to a
competitor and that are common to many companies, not merely those engaged in
scientific endeavors.
Physical Protection: There are variety of tangible measures a company can implement to
protect trade secretes is as follows
 Safeguarding information under lock and key.

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 Protecting the information from unauthorized accesses.

 Conducting background checks of employees who will have access to key
information.
 Forbidding removal of protected information from the company premises or certain
rooms.
 Retaining adequate security during evenings and weekends either through alarm
systems or security services.
 Ensuring tours of the company premises do not expose outsiders to valuable
processes or information.
 Marking materials with legends or stamps such as ‘’Confidential –Trade Secret
Information.
 Using checkout lists when valuable equipment or information is removed from its
normal location.
 Monitoring activities of former employees who had access to confidential
information and monitoring trade journals for articles that may show a competitor
has gained access to company trade secrets.
 Ensuring no one person has access to critical information but rather that several
people ‘’share’’ parts of the information.
 Implementing inventory control systems (such as numbering copy of valuable
written materials and retaining a log showing which employee received which
document).
 Securing computers with password or encryption protection.
 Requiring use of paper shredders for disposal of sensitive documents.
 Designating a person to be responsible for trade secret information and release to
others, and for reviewing bids, proposals, marketing materials, and plans by
employees to publish articles or speak at conferences.
 Implementing photocopying policies and maintaining logbooks or electronic
monitoring of copying.
 Monitoring employees’ use of e-mail and the internet to ensure confidential
information is not being disseminated.

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 Conducting exit interviews with employees to remind them of their obligations not
to use or disclose proprietary company information.
 Including notices on facsimile coversheets and e-mail communications that the
communications is intended only for the designated recipient, and if it is received in
error, the party who mistakenly received it must return it to the sender.
 Using encryption technology and antivirus protection programs to protect
information stored on computers.
 Making sure computers and handheld devices such as Black Berrys are ‘’wiped’’
before they are disposed of.
 Educating employees on trade secrets and protection of trade secrets.
 Requiring visitors to the premises to sign in and wear badges.
 Ensuring information retained on computers is available on computers is available
only on company networks so that access can be easily tracked.
Contractual Protection: Another method of protecting trade secrete is by contact, namely,
requiring those with access to the information to agree in writing not to disclose the
information to others or use it to the owner’s detriment. Similar, in licensing arrangement,
trade secrete owners should ensure the license agreement contain sufficient information
for trade secret information.
Employer should use non competition agreements to ensure former employees don’t use
material gained on the job to later compete against the employer. Even without formal
contracts, a company should include protection policy in its employee handbook, routinely
publish reminders about confidentiality in company new letters and through e-mail
messages and remind employees of their duties during their initial orientations and during
exist interviews conducted when the individuals leave the companies employment.
Intellectual Property Protection:
Companies can also rely on the other complementary methods of protection to safe guard
trade secrets. Any material that qualifies for copyright protection may be protected by
registration or by ensuring a copyright notice is placed on the material or document to
afford notice to others of the owner’s right and interest in the material.

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UNFAIR COMPETITION
Unfair Competition in a sense means that the competitors compete on unequal terms,
because favorable or disadvantageous conditions are applied to some competitors but not
to others; or that the actions of some competitors actively harm the position of others with
respect to their ability to compete on equal and fair terms. It contrasts with fair
competition, in which the same rules and conditions are applied to all participants, and the
competitive action of some does not harm the ability of others to compete. Often, unfair
competition means that the gains of some participants are conditional on the losses of
others, when the gains are made in ways which are illegitimate or unjust.
Unfair Competition Laws are designed to protect consumers and businesses alike against
deceptive business practices. Some common examples of unfair competitive practices in
commercial law include: trademark infringements, trade defamation, and misappropriation
of business trade secrets. As pertains to consumers, unfair competition laws usually
prevent unfair pricing strategies, like gouging, and false or misleading representations.
One common form of unfair competition is a violation of the exclusive rights attached to a
trademark without the permission of the trademark owner. Infringement may take place
when one party, the "infringer," uses a trademark which is indistinguishable or
astonishingly similar to a trademark owned by another party, in relation to products or
services which are identical or similar to the products or services which the registration
covers. The owner of the trademark may launch civil legal proceedings against the
infringing party and, pursuant to the Trademark Counterfeiting Act of 1984, some acts of
trademark infringement may even be punished as a crime. Common examples of trademark
infringements include counterfeit products, like knock-off handbags, watches, and
bootlegged movies.
Science 43 of the Lanham Act provides a federal cause of action to protect the consumer
against unfair competitive business practice. It is effectively a national unfair competition
statute prohibiting a broad range of wrongful business activities and providing a wide
array of remedies to plaintiffs.
The most common types of unfair competitions are
i) Passing off or palming off

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l) Misappropriation
m) Right of publicity
n) False Advertising
o) Product disparagement
p) Dilation
q) Infringement of trade dress
PASSING OFF
Passing off or palming off: Making some false representation likely to induce a person to
believe that the goods or services are those of another.
It occurs when one party attempts to pass off or sell his or her goods or services as those of
another.
Passing off may exist when a one party affixes another’s trademarks to its goods, adopts a
trademark or trade name that are similar to that of another that consumers are deceived
about the source of the product or service or copies features of another goods so that its
goods are similar to those of other.
Ex:
Passing off claim for federal unfair competition are:
 An association of origin by the consumer between the mark and the first user, and
 A likelihood of consumer confusion when the mark is applied to the second user's good.
Unlike a common law cause of action for passing off which requires either fraud or a
distinctive mark or trade name, a federal claim for passing off encompasses a broader area
of unfair competition which may be generally described as a misappropriation of the skill,
expenditures, and labor of another. Therefore, when most courts speak of "passing off" as a
species of federal unfair competition they are referring to passing off without the element
of fraud.
Passing off is the oldest of all the unfair competition theories. Basically, passing off occurs
when a defendant is making a form of false representation that causes consumers to
believe that the defendant's goods or services come from the plaintiff. To prove passing off
a plaintiff must first show that a defendant is duplicating or simulating the plaintiff's
distinctive mark. This mark must be inherently distinctive or have acquired secondary

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meaning for this cause of action to be supported. Secondly, the plaintiff must demonstrate
that the duplication or simulation which is performed by the defendant's goods or services
caused a likelihood of consumer confusion about the source of the goods or services of the
plaintiff.
Additionally, in an action for unfair competition due to passing off, wrongful intent to
confuse is not required. In fact, the only time wrongful intent may be required is if the
plaintiff cannot prove that he or she has an inherently distinctive mark or that the mark has
acquired secondary meaning.
MISAPPROPRIATION
Misappropriation is a common law form of unfair competition created by courts. In a
misappropriation claim, a defendant is accused of copying or appropriating a plaintiff's
creation that is not protected by trademark, copyright or patent law. For a typical
misappropriation claim to be successful, a plaintiff must prove three different factors:

 That the plaintiff has made a substantial investment of time, effort, and money in
creating the thing misappropriated, such that the court can characterize that "thing" as
a kind of property right;

 The defendant has appropriated the "thing" at little or no cost, such that the court can
characterize the defendant's actions as "reaping where it has not sown;" and

 The defendant's acts have injured the plaintiff, such as by a direct diversion of profits
from the plaintiff to the defendant or a loss of royalties that the plaintiff charges to
others to use the thing misappropriated.
Since the misappropriation cause of action is broadly tailored, plaintiffs commonly
incorporate this cause of action into their infringement claims. This is particularly due to
the fact that misappropriation claims are not restrictive in nature, unlike trademark
infringement claims wherein courts are continuously adding restrictions. However, certain
applications of a misappropriation cause of action fail in light of federal preemption
challenges.
"A misrepresentation made by a trader in the course of trade to prospective customers of
his or ultimate consumers of goods or services supplied by him, which is calculated to

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injure the business or goodwill of another trader (in the sense that this is a reasonably
foreseeable consequence) and which causes actual damage to a business or goodwill of the
trader by whom the action is brought or will probably do so."
 Making of some false representation to the public, or to third persons, likely to induce
them to believe that the goods or services of another are those of the plaintiff. This may
be done, for example, by counterfeiting or imitating the plaintiff's trade mark or trade
name, his wrappers, labels or containers, his vehicles, the badges or uniforms of his
employees, or the appearance of his place of business.
 The test laid down in such cases has been whether the resemblance is so great as to
deceive the ordinary customer acting with the caution usually exercised in such
transactions, so that he may mistake one for the other.
 In an action for passing off, it would have been necessary for the appellant to show that
the respondent restaurateur intentionally or negligently misled consumers into
believing its restaurant services originated with the appellant and that the appellant
thereby suffered damage.
 The law of passing off can be summarised in one short general proposition - no man
may pass off his goods as those of another.
 More specifically, it may be expressed in terms of the elements which the plaintiff in
such an action has to prove in order to succeed. These are three in number.
o First, he must establish a goodwill or reputation attached to the goods or services
which he supplies in the mind of the purchasing public by association with the
identifying "get-up" (whether it consists simply of a brand name or a trade
description, or the individual features of labelling or packaging) under which his
particular goods or services are offered to the public, such that the get-up is
recognised by the public as distinctive specifically of the plaintiff's goods or services.
o Secondly, he must demonstrate a misrepresentation by the defendant to the public
(whether or not intentional) leading or likely to lead the public to believe that goods
or services offered by him are the goods or services of the plaintiff. Whether the
public is aware of the plaintiff's identity as the manufacturer or supplier of the
goods or services is immaterial, as long as they are identified with a particular

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source which is in fact the plaintiff. For example, if the public is accustomed to rely
upon a particular brand name in purchasing goods of a particular description, it
matters not at all that there is little or no public awareness of the identity of the
proprietor of the brand name.
 Thirdly, he must demonstrate that he suffers or that he is likely to suffer, damage by
reason of the erroneous belief engendered by the defendant's misrepresentation
that the source of the defendant's goods or services is the same as the source of
those offered by the plaintiff.

 make a false or misleading statement tending to discredit the business, wares or

services of a competitor;
 direct public attention to his wares, services or business in such a way as to cause or
be likely to cause confusion in Canada, at the time he commenced so to direct
attention to them, between his wares, services or business and the wares, services
or business of another;
 pass off other wares or services as and for those ordered or requested;
 make use, in association with wares or services, of any description that is false in a
material respect and likely to mislead the public as to
The character, quality, quantity or composition
The geographical origin, or
The mode of the manufacture, production or performance of the wares or
services; or
 Do any other act or adopt any other business practice contrary to honest industrial
or commercial usage in Canada."
RIGHT OF PUBLICITY
The right of publicity, often called personality rights, is the right of an individual to control
the commercial use of his or her name, image, likeness, or other unequivocal aspects of
one's identity.
Personality rights are generally considered to consist of two types of rights: the right of
publicity, or to keep one's image and likeness from being commercially exploited without

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permission or contractual compensation, which is similar to the use of a trademark; and

the right to privacy, or the right to be left alone and not have one's personality represented
publicly without permission. In common law jurisdictions, publicity rights fall into the
realm of the tort of passing off. United States jurisprudence has substantially extended this
right.
A commonly cited justification for this doctrine, from a policy standpoint, is the notion of
natural rights and the idea that every individual should have a right to control how, if at all,
his or her "persona" is commercialized by third parties. Usually, the motivation to engage
in such commercialization is to help propel sales or visibility for a product or service, which
usually amounts to some form of commercial speech.
FALSE ADVERTISING
False advertising or deceptive advertising is the use of false or misleading statements in
advertising, and misrepresentation of the product at hand, which may negatively affect
many stakeholders, especially consumers. As advertising has the potential to persuade
people into commercial transactions that they might otherwise avoid, many governments
around the world use regulations to control false, deceptive or misleading advertising.
Truth refers to essentially the same concept, that customers have the right to know what
they are buying, and that all necessary information should be on the label.
 In 1943, the federal trademark law, the Lanham Act, was passed. This act prohibited
false designation of origin, namely description or representation of trading falsely to
describe or represent goods or services.
 Until the passage of the Lanham actions involving unfair competition tends to allege
passing or trade disparagement. Passing off was limited to instances in which a party
misrepresented the source of goods or services.
 The individual states enacted statutes prohibiting false advertising , these statutes
varied from state to state and were often ineffective to prohibit false advertising that
was national in scope.
Examples:
 A failure to disclose that advertised prices did not include additional charges.
 A false claim that automobile antifreeze met an automobile manufacturer’s standard.

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 A statement that a pregnancy test would disclose result in “as fast as 10 minutes” when
a positive result will appear in 10 minutes but a negative result might take 30 minutes.
 A claim that certain motor oil provided longer life and better engine protection than a
competitor’s product when that claims could not be substantiated.
 A claim that orange juice was pure, pasteurized juice as it came from the orange and
showing a celebrity squeezing an orange and pouring the juice directly into the certain
when the juice was heated and sometimes frozen prior to packing.
 Godrej Consumer Products Ltd (Goodknight): Consider this advertisement from
Godrej for promoting their mosquito repellent product: Goodknight. In the heavily
promoted advertisement, we see a child standing near the mosquito vaporizer;
meanwhile the product’s leaflet clearly mentions that this electrical device should be
kept away from children.
 Dr. Batra’s Health Clinic: In the case of Dr. Batra’s Homeopathy Clinic, ASCI has
upheld the complaint that a doctor cannot openly promote his business, as it violates
the Code of Medical Ethics for Homeopathy practitioners. There are total of 3
complaints only against Dr. Batra’s advertisement campaigns including hair gain and
weight loss offers.
 Hindustan Unilever Ltd (Lifebuoy): Many advertisements also make unsubstantiated
claims, like Lifebuoy soap ad from HUL. It says, that the sops provide “10X germ
protection” and “10X more skin care” than any other soap. There is no study that
shows this!
(Last 3 examples taken from
http://trak.in/tags/business/2015/01/06/healthcare-education-ads-
deceptive-misleading/)
DILUTION
Dilation is another form of unfair competition. Dilation occurs when a famous trademark
loses or is likely to lose its distinctive quality due to tranishment or blurring. The Federal

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Trademark Dilution Act (FTDA) and its 2006 revisions provide remedies for the dilution of
famous marks. Under the act, the owner of a famous mark i.e. distinctive is entitled to an
injunction against one who uses a mark or trade name in commerce i.e. likely to cause
dilution of the famous mark, regardless of the presence or absence or actual or likely
confusion, of competition, or of actual economic injury.
The FTDA is intended to provide a remedy for the owners of famous marks when the
owners of those marks would not otherwise be able to establish likelihood of confusion and
thus avail themselves of the many avenues available to protect marks from confusingly
similar uses.
Dilution can occur in two ways i.e.
 Blurring occurs when a mark is distinctive quality is eroded through use and
dissimilar products, both inherently distinctive marks and those that have acquired
distinctiveness or protected.
 Tarnishment occurs when a mark is linked to products of inferior quality or when
the mark is portrayed in an unsavory manner, such as a poster reading “enjoy
cocaine” in the distinctive colors and script used in the famous “enjoy coca-cola”
advertisements.
Dilution by tranishment “harms the reputation of the famous mark”.
Under the FTDA, some uses of famous marks are not actionable, such as fair use of a famous
mark in comparative advertising, noncommercial use of a famous mark, parody, and use of
a famous mark in news reporting and commentary.
INFRINGEMENT OF TRADE DRESS
Trade dress is a legal term of art that generally refers to characteristics of the visual
appearance of a product or its packaging (or even the design of a building) that signify the
source of the product to consumers. Trade dress is a form of intellectual property.
 Trade dress encompasses the total image and overall impression created by a product.
It embraces both the look of a product and its packaging, in addition to the design,
shape, and color of the product.

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 “Trade dress' involves the total image of a product and may include features such as
size, shape, color or color combinations, texture, graphics, or even particular sales
techniques."
 Trade Dress referred to the product packaging and labeling, but the courts have
expanded the term to include the total appearance of a product. However, trade dress
does not grant exclusive rights to a vague image or a product marketing theme, such as
linking Scandinavia to premium ice cream.
 Product packaging, containers, configurations, and shapes are proper subjects for
trademarks, provided that they have acquired secondary meaning and are non-
functional.
In the U.S., like trademarks, a product’s trade dress is legally protected by the Lanham Act,
the federal statute which regulates trademarks and trade dress. Trade dress protection is
intended to protect consumers from packaging or appearance of products that are
designed to imitate other products; to prevent a consumer from buying one product under
the belief that it is another.
For example, the shape, color, and arrangement of the materials of a children's line of
clothing can be protectable trade dress (though, the design of the garments themselves is
not protected), as can the design of a magazine cover, the appearance and décor of a chain
of Mexican-style restaurants, and a method of displaying wine bottles in a wine shop
INTERNATIONAL PROTECTION AGAINST UNFAIR COMPETATION
The United States has assumed certain obligations under international agreements in the
arena of unfair competition, chiefly under the Paris convention.
The Paris Convention seeks to afford citizens of each of them more than 170 member
nations protection against unfair competition and trademark infringement and requires
that member nations provide the same level of protection against unfair competition to
citizens of other member nations as they do for their own citizens.
The Paris Convention expressly prohibits acts that create confusion by any means with a
competitor, false allegations that this credits a competitor, and indications that mislead the
public in regard to the nature or characteristics of goods.

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Section 44 of the Lanham Act implements the Paris Convention and expressly provides
that any person whose country of origin is a party to any convention or treaty relating
to the repression of unfair competition, to which the United States is also a party, is
entitled to effective protection against unfair competition, thus affording citizens of
Paris Convention member nations the wide variety of protection afforded under section
43 of the Lanham Act.

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Unit V: GEOGRAPHICAL INDICATION:

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 A Geographical indication (GI) is a name or sign used on products which
corresponds to a specific geographical location or origin (e.g. a town, region, or country). The
use of a geographical indication may act as a certification that the product possesses certain
qualities, is made according to traditional methods, or enjoys a certain reputation, due to its
geographical origin.
Geographical Indications of Goods are defined as that aspect of industrial property which
refer to the geographical indication referring to a country or to a place situated therein as
being the country or place of origin of that product. Typically, such a name conveys an
assurance of quality and distinctiveness which is essentially attributable to the fact of its
origin in that defined geographical locality, region or country. Under Articles 1 (2) and 10 of
the Paris Convention for the Protection of Industrial Property, geographical indications are
covered as an element of IPRs. They are also covered under Articles 22 to 24 of the Trade
Related Aspects of Intellectual Property Rights (TRIPS) Agreement, which was part of the
Agreements concluding the Uruguay Round of GATT negotiations.

India, as a member of the World Trade Organization (WTO), enacted the Geographical
Indications of Goods (Registration & Protection)Act, 1999 has come into force with effect
from 15th September 2003.

The Protection of Geographical Indication in India:

INTRODUCTION
Protection of Geographical Indication (GI) has, over the years, emerged as one of the most
contentious IPR (Intellectual Property Rights) issues in the realm of the WTO’s Agreement
on Trade Related Aspects of Intellectual Property Rights (TRIPS). TRIPS defines GI as
any indication that identifies a product as originating from a particular place, where a
given quality, reputation or other characteristics of the product are essentially attributable
to its geographical origin. Also a geographical indication (GI) gives exclusive right to a
region (town, province or country) to use a name for a product with certain characteristics
that corresponds to their specific location.
The Geographical Indications of Goods (Registration and Protection) Act, 1999 protect the
GI’s in India. Registration of GI is not compulsory in India. If registered, it will afford
better legal protection to facilitate an action for infringement.
NEED FOR LEGAL PROTECTION OF GI
Given its commercial potential, legal protection of GI assumes enormous significance.
Without suitable legal protection, the competitors who do not have any legitimate rights on
the GI might ride free on its reputation. Such unfair business practices result in loss of
revenue for the genuine right-holders of the GI and also misleads consumers. Moreover,
such practices may eventually hamper the goodwill and reputation associated with the GI.
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INTERNATIONAL PROTECTION FOR GI UNDER TRIPS

At the international level, TRIPS sets out minimum standards of protection that WTO
members are bound to comply with in their respective national legislations. However, as
far as the scope of protection of GI under TRIPS is concerned, there is a problem of
hierarchy. This is because, although TRIPS contains a single, identical definition for all
GI, irrespective of product categories, it mandates a two-level system of protection: (i) the
basic protection applicable to all GI in general (under Article 22), and (ii) additional
protection applicable only to the GI denominating wines and spirits (under Article 23).

This kind of protection is challenging, if Article 22 fails to provide sufficient intellectual

property protection for the benefit of the genuine right-holders of a GI. A producer not
belonging to the geographical region indicated by a GI may use the indication as long as
the product’s true origin is indicated on the label, thereby free-riding on its reputation and
goodwill.

THE INDIAN GI ACT

India has put in place a sui generis system of protection for GI with enactment of a law
exclusively dealing with protection of GIs. The legislations which deals with protection of
GI’s in India are ‘The Geographical Indications of Goods (Registration & Protection) Act,
1999’ (GI Act), and the ‘Geographical Indications of Goods (Registration and Protection)
Rules, 2002 (GI Rules). India enacted its GI legislations for the country to put in place
national intellectual property laws in compliance with India’s obligations under TRIPS.
Under the purview of the GI Act, which came into force, along with the GI Rules, with
effect from 15 September 2003, the central government has established the Geographical
Indications Registry with all-India jurisdiction, at Chennai, where right-holders can
register their GI.
Unlike TRIPS, in the GI Act does not restrict itself to wines and spirits. Rather, it has been
left to the discretion of the central government to decide which products should be
accorded higher levels of protection. This approach has deliberately been taken by the
drafters of the Indian Act with the aim of providing stringent protection as guaranteed
under the TRIPS Agreement to GI of Indian origin. However, other WTO members are not
obligated to ensure Article 23-type protection to all Indian GI, thereby leaving room for
their misappropriation in the international arena.
The definition of GI included in Section 1(3) (e) of the Indian GI Act clarifies that for the
purposes of this clause, any name which is not the name of a country, region or locality of
that country “shall” also be considered as a GI if it relates to a specific geographical area

82
and is used upon or in relation to particular goods originating from that country, region or
locality, as the case may be. This provision enables the providing protection to symbols
other than geographical names, such as ‘Basmati’.
STATUS OF GI REGISTRATIONS IN INDIA
Around 65 GI’s of Indian origin have already been registered with the GI Registry. These
include GI like Darjeeling (tea), Pochampalli, Ikat (textiles), Chanderi (sarees),
Kancheepuram silk (textiles), Kashmir Pashmina (shawls), Kondapalli (toys), and Mysore
(agarbattis).
GI’s registered during 2007-08 include ‘Muga Silk’ from Assam, ‘Madhubani paintings’
from Bihar, ‘Malabar pepper’ and ‘Alleppey Green Cardamom’ from Kerala, ‘Cora
Cotton’ from Tamil Nadu, ‘Allahabad Surkha’ from Uttar Pradesh, ‘Nakshi Kantha’ from
West Bengal, ‘Monsooned Malabar Coffees’ from Karnataka and Kerala. There is many
more Indian GI in the pipeline for registration under the GI Act.

INTELLECTUAL PROPERTY RIGHTS FOR BIOTECHNOLOGY

Intellectual Property is the term used to describe the branch of law which protects the
application of thoughts, ideas and information which are of commercial value. It thus covers
the law relating to patents, copyrights, trademarks, trade secrets and other similar rights
(Cornish, 1989).

The development of the genetic resources of biodiversity is known as biotechnology. Broadly

defined, biotechnology includes any technique that uses living organisms or parts of
organisms to make or modify products, to improve plants or animals, or to develop
microorganisms for specific uses (Congress of the United States, Office of Technology
Assessment, 1990). Mankind has used forms of biotechnology since the dawn of civilization.
However, it has been the recent development of new biological techniques (e.g., recombinant
DNA, cell fusion, and monoclonal antibody technology) which has raised fundamental social
and moral questions and created problems in intellectual property rights.

Intellectual property protection for biotechnology is currently in a state of flux. Whilst it used
to be the case that living organisms were largely excluded from protection, attitudes are now
changing and increasingly biotechnology is receiving some form of protection. These changes
have largely taken place in the USA and other industrialized countries, but as other countries
wish to compete in the new biotechnological markets, they are likely to change their national
laws in order to protect and encourage investment in biotechnology.

There is at the moment no clear international consensus on how biotechnology should be

treated. Although bodies such as the World Intellectual Property Organization (WIPO, the
United Nations permanent body primarily responsible for international cooperation in

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intellectual property), and the Organization for Economic Cooperation and Development
(OECD) have conducted separate studies and produced various reports, these have only
sought to make governments more aware of the potential problems and to offer some
suggested solutions. In view of the highly controversial nature of providing intellectual
property protection for biotechnology, it is likely that in the short term developments will be
at a national and regional level.

Patents for biotechnology

A patent is a grant of exclusive rights for a limited time in respect of a new and useful
invention. The exact requirements for grant of a patent, the scope of protection it provides
and its duration differs depending on national legislation. However, generally the invention
must be of patentable subject matter, novel (new), non-obvious (inventive), of industrial
application and sufficiently disclosed. A patent will provide a wide range of legal rights,
including the right to possess, use, transfer by sale or gift, and to exclude others from similar
rights. Duration will be for around 20 years (although for only 17 years in the USA). These
rights are generally restricted to the territorial jurisdiction of the country granting the patent
and thus an inventor wishing to protect his/her invention in a number of countries will need to
seek separate patents in each of those countries. Whilst the majority of countries provide
some form of patent protection, only a few provide patent protection for biotechnology (these
include: Australia, Bulgaria, Canada, Czechoslovakia, Hungary, Romania, Japan, the Soviet
Union and the parties to the European Patent Convention). The reasons for this may differ,
but generally it has been because biotechnology has been thought inappropriate for patent
protection, either because the system was originally designed for mechanical inventions, or
for technical or practical reasons, or for one or more ethical, religious or social concerns. In
all the National Patent Offices where patents are granted for biotechnology there is a
considerable backlog of pending applications. Even in those countries where patent protection
is provided, the type and extent of that protection is different in nearly every national system.
It has largely been the USA which has broken new ground in providing the possibility of
patent protection for "anything under the sun that is made by man". Patents have been granted
for plants since 1930 in the USA, under The Plant Patent Act. However, prior to 1980, the US
Patent Office would not grant utility patents (separate from The Plant Patent Act) living
matter because it deemed products of nature not to be within the terms of the utility patent
statute. That was until the landmark decision of the US Supreme Court in Diamond v
Chakrabarty (from which the above quote is taken), which held that a particular genetically
engineered bacterium was statutory subject matter for a utility patent. This decision has been
the basis upon which patents have been granted for higher life forms. Subsequently it has
been held that a utility patent may be granted for plants and a patent has been granted for an
animal. Polyploidy oysters, not naturally occurring, were held to be patentable subject matter

84
and US Patent No.3,736,866, was issued in respect of a "transgenic nonhuman mammal all of
whose germ cells and somatic cells contain a recombinant activated ontogeny sequence
introduced into the said mammal, or an ancestor of said animal, at an embryonic stage" -
popularly known as the 'onco-mouse '.
Elsewhere, the treatment of applications for patents for living matter is far from certain.
Whilst patents are granted in many countries for plants and microorganisms, it has been the
issue of patents for animals which has been most controversial. Whilst it is not possible to
summarize succinctly the position in the rest of the world, it is possible to describe the
present approach of those countries which are party to the European Patent Convention The
EPC is a regional arrangement entered into by 14 European countries for the purpose of
making multiple applications for any of the member countries a great deal easier and to
introduce a common system for patent protection. An application under the EPC is for a
European patent, or Euro patent, for short. If a Euro patent is granted by the European Patent
Office (EPO) it has the same effect, and is subject to the same conditions, as a national patent
in each of the member countries designated in the application. In other words, through a
single application a bundle of national patents can be obtained.
The EPC provides that "plant or animal varieties or essentially biological processes for the
production of plants or animals" are excluded from patent protection (although the exclusion
is expressly stated not to apply to microbiological processes and products). These exclusions
would appear to place unequivocal prohibition on Euro patents for macro biotechnology.
However, the EPO has been taking an increasingly narrow view of these exclusions, and has
held that they do not exclude all plants and animals per se, but only claims for varieties of
plants or animals and that a process is not "essentially biological" if there has been substantial
interference by man.
It is also important to note that there is currently before the European Parliament of the
European Community (EC) a proposal for a Council Directive for harmonization of the legal
protection provided for biotechnology in the EC. This does not propose to amend the EPC,
but the present draft proposal would make even more opportunities available for patenting
biotechnology and thus make the EC more attractive in terms of investment in biotechnology
research.

INTELLECTUAL PROPERTY (IP) AUDIT

INTRODUCTION

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An enterprises’ value is primarily determined by the economic worth of its assets and what
the various stakeholders – shareholders, creditors, government, consumers, etc. perceive the
importance of the enterprises and its assets to be.
The assets owned by an enterprise may be broadly divided into two categories:
 Tangible or physical assets – such as land, building, machinery, infrastructure; and
 Intangible assets – such as brand, skilled employee-base, organizational knowledge and
processes, intellectual property and the rights therein including patents, copyrights,
trademarks, designs, know-how
Conventionally, physical assets have been responsible for the bulk of the value of an
enterprise, and were also considered to be largely responsible for determining the
competitiveness of an enterprise. The situation is however changing today as intangible assets
increasingly form part of a business’s intrinsic value. Even in commercial transaction, such as
joint ventures, mergers, acquisitions, manufacturing, purchase or distribution arrangements,
etc. intellectual properties play a major role in decision making. This prompts the need of an
effective IP protection and portfolio management system, which can be achieved through the
process of an IP Audit.
Meaning of Intellectual Property
According to the World Intellectual Property Organization (“WIPO”), Intellectual Property
(IP) refers to the 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, artistic, dramatic and musical works such as novels,
poems, lyrics, plays, films, drawings, paintings, photographs, etc. 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.
IP is not equivalent to the term Intellectual Property Rights (“IPR”), though the two are often
used interchangeably. IPR refers to the rights related to IP. For e.g. an idea or an

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Intellectual Property Rights

invention is regarded as IP whereas the right associated with such IP (i.e. a patent) is
considered as IPR.
Meaning of Audit
‘Audit’ in normal parlance, refers to a detailed, formal examination and verification of the
accounts and processes of an enterprise, which is undertaken to understand the overall picture
of its financial position and good standing in the market. An audit is followed by a report on
the findings of the diligence, which can be used by the enterprise for planning the future
growth of business.
What is IP Audit?
Every entity’s business strategy is to achieve ‘X+Y’ position from its current ‘X’ situation
and thereby gain increased market share; earn high profitability; and high perceived value in
the eyes of various stakeholders. In order to achieve this objective, it is important to
determine the IP owned by an enterprise and the best way to utilize the IP. This can be
achieved by the process of an IP Audit.
When to conduct an IP Audit?
An IP audit may be undertaken by an enterprise in a number of instances such as:
 When an enterprise is acquiring an IP centric company;
 When an enterprise is making a sale of its IP;
 For the purposes of IP asset valuation;
 To identify procedures followed by the enterprise with respect to its IP and to frame
systematic guidelines for its better protection and management;
 To check whether any third party rights, including IP rights, are being violated;
 To check whether any third party is violating IP rights of the enterprise;
 To keep itself updated with changes in the legal environment;
 As part of an ongoing IP management program;
 For enforcing or defending IP rights.
TYPES OF IP AUDIT
Depending on the purpose of the audit, the scope and extent of audit would diverge.
An IP audit may be a:
General Purpose Audit - which is done as a part of the routine process of an enterprise; e.g.
an audit may be conducted by an enterprise on its own to ascertain the validity of its IP and to
check the effectiveness of its IP management system. Another example can be where there is
a change in the law (like the recent amendments to the

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copyright laws or in the data protection laws in India) occur, the enterprise conducts an IP
audit to ensure that its documents and processes are up–to-date and in compliance with
applicable laws; or
Special Purpose Audit - which is done to identify particular issues, e.g. a production house
interested in acquiring the rights in a book for the purpose of adapting the book in the form of
a cinematographic film may conduct a limited diligence to ascertain the validity of the title of
the one granting the rights. Likewise, a company interested in acquiring a patented invention
may conduct a diligence on the owner of the patent to ensure that they have the rights to the
patent and can validly assign the same. Further, depending on the circumstances, an IP audit
can be either:
 An Internal Audit: which is conducted by the internal resources;
 An External Audit: Which is conducted by third party resources in association with
internal resources.

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Intellectual Property Rights

INTELLECTUAL PROPERTY AUDIT PROCESS

Define
Audit Informati Identify Interaction
Objective
& Internal IP Appointment on Internal with
Scope Identification of Audit Team Gathering People employees

Issue IP Conducting Reviewing Reviewing

IP Chart Filing Audit Interviews of Internal
Report Documents Procedures

Conduct
Development Periodic IP
Policies, Etc Audit

1. Audit Objective & Scope: The objective and scope of an IP audit depends on the type
of audit that is required to be conducted by an enterprise.
2. Internal Identification of IP: Before appointing the audit team, the concerned
company’s business team must first internally identify IP that is the subject matter of
the IP Audit. The audit team should identify the IP into IP created, owned and/or
acquired by the enterprise as this will help in determining and verifying the ownership
of the IP and the extent to which is it be put to commercial use.
3. Identification & Appointment of the Audit Team: The composition of an audit team
would depend on the nature and scope of the audit. The team may consist of legal as
well as technical members, especially when techno-legal issues are involved. The team
conducting the audit should have sufficient time, knowledge and understanding of the
facts and issues involved to perform the audit. Further, it is recommended to include
managerial persons also in the team as they understand the business best and can work
together with the legal team as well as technical members to explore new streams of
revenue generation from utilization of the IP.
4. Information Gathering: Once the audit team has been appointed, substantial
information will need to be gathered and presented before the audit team can efficiently
commence their detailed audit investigation. Such information may include the
following:

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 Nature of IP assets;
 Relevant material pertaining to the IP assets;
 Various contracts and agreements such as license agreements, vendor and customer
contracts, R&D agreements, government contracts, etc. entered into in relation to
the IP;
 All global intellectual property filings and registrations;
 Litigation history of the IP in respect of which the audit is being conducted.
5. Interactions with Company Employees: The IP audit process usually starts with
interactions with the employees and senior executives / management of the enterprise
including various stakeholders of the IP development and management team. The
interaction and the responses to the questionnaires developed for this purpose play a
significant role in guiding the IP audit team to obtain a clear understanding of
 The scope and extent of the business of the enterprise;
 The nature of the products and services offered;
 Connection of the products and services with IP;
 Internal procedures followed with respect to generation/ creation, protection and
management of IP; and
 Reasons and rationale behind certain decisions and actions of the enterprise in
connection with the IP.
Such interactions bring out important facts, which play a crucial role in identifying
potential of IP and the IP related risks within the enterprise.
6. Review of Internal Procedures: For the purpose of identifying, documenting,
evidencing, registering, protecting and defending IP, it is very important to develop
elaborate and strong internal policies and procedures. Lack of these may result in
irreparable damage at a later stage.
a. Procedure for Protection of Confidential Information: An enterprise generating
IP has a substantial amount of information in the nature of confidential information
and trade secrets. Any inadvertent disclosure of IP could jeopardize the IP owner’s
claim to originality and other related rights.
b. Procedure for Exit Interview, If Any: It is also desirable for an enterprise to
conduct exit interviews with their outgoing employees during which the

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employees should be reminded of their obligation(s) with respect to the

confidentiality of the IP of the enterprise and that they will not try and enforce any
rights in the IP created by them for the enterprise.
Procedure for Maintenance of Security: The security procedures and technology
of an enterprise have an important role to play in as far as protection of IP is
concerned. Policies should be framed so that employees should have access only to
information relevant to them and not to all the know-how of the enterprise, as this
helps in maintaining confidentiality of information.
Procedure for Finalization of Agreements: An enterprise may enter into various
types of agreements for the purpose of commercially exploiting its IP, such as joint
ventures, licensing arrangements, franchise arrangements etc. It is most important
that such agreements are examined by legal counsels / heads of legal departments
(along with the technical head, if necessary) before they are finalized, to ensure that
the rights of the enterprise are adequately protected.
3. Review of Documents
Review of Agreements: The audit team has to review various contracts and
agreements to which the enterprise is, or has been, party to. This will assist in
establishing whether any IP has been created under any agreement, and if yes, who
owns the rights to the IP, how is the IP exploited, etc. Documents to be reviewed
typically include contracts / agreements with consultants, contractors, freelancers,
employees, joint development agreements, research & development agreements, IP
licensing and IP assignment agreements, transfer of technology agreements,
distribution agreements, marketing or co-marketing agreements, franchise
agreements and other business arrangements.
Reviewing Litigation Documents: Review of litigation documents helps in
ascertaining and examining IP disputes pending with courts in India or abroad. IP
litigation and claims often involve important aspects of the business and the
outcome of such disputes can have a significant impact on the viability of an
enterprise.

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Review of Documents Recording Registration of IP: These documents are

examined to ascertain the correctness of the information recorded on various IP
registers. For example, in the case of a trade mark the correctness of the name of the
owner, correctness of description of goods and services and classes would be
examined and in the case of copyright correctness of the name of the author and the
holder of various rights in the copyrighted work would be examined.
 Issuance of an IP Audit Report: Just like a due diligence report is issued post due
diligence exercise, in case of an IP audit, an IP Audit Report is issued once the audit is
completed. The report states the objective of the audit, the audit plan and how it was
executed and the results of the analysis. The report identifies each IP asset owned by the
enterprise and specifies the date of acquisition of each IP asset, its developer, any
license, assignment, or transfer, and whether it has been registered. It describes and
evaluates defects uncovered in the audit, proposes and describes specific remedial
action that needs to be taken or that has been taken and responds to any other specific
need for information the parties commissioning the audit may have.
 Action Items Post IP Audit
Filings: If the Audit Report suggests that filings are to be undertaken then the
filings must be immediately taken care of so as to avoid any issues at a later date,
e.g. the audit report may suggest the filing of copyright and trade mark registration
applications or affidavits for better protection. Sometimes errors in copyright and
trade mark applications or registrations may need to be corrected.
Develop Policies, Guidelines and Procedures: If the enterprise does not have any
existing policies, guidelines and procedures with respect to identification,
development, protection and management of IP, then such policies may be
developed in accordance with the recommendations of the IP audit report.
IP and Tax: An IP audit may be combined with the assessment of effectiveness of
the structuring of the IP within the group companies and with third parties from the
tax perspective. For instance, an enterprise with

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operations at a global level should house its IP in tax efficient jurisdictions so as to

ensure maximum profitability.
4. Conduct Periodic IP Audits: An enterprise must revisit the audit report and ensure
that the enterprise and all its employees are adhering to the recommendations outlined
in the audit report as well as complying with the policies, guidelines and procedures of
the enterprise. Further, conducting periodic IP audits is recommended as that helps the
enterprise to keep its IP portfolio up-to-date.
Typical Issues Identified in IP Audits
7. Ownership Issues
8. Source Code Related Issues
9. Issues in Relation to IP and Freelance Contractors
10. Issues in the Media Industry
11. Infringement Issues
12. Human Resource Issues
13. Issues in the Pharma Industry

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