UNIT -3 4 & 5

Intellectual property (IP) is a term referring to creation of the intellect (the term used in studies of
the human mind) for which a monopoly (from greek word monos means single polein to sell) is
assigned to designated owners by law. S
Some
ome common types of intellectual property rights (IPR), in
some foreign countries intellectual property rights is referred to as industrial property,
property copyright,
patent and trademarks, trade secrets all these cover music, literature and other artistic works,
works
discoveries and inventions and words, phrases, symbols and designs. Intellectual Property Rights are
themselves a form of property called intangible property.

Although many of the legal principles governing IP and IPR have evolved over centuries, it was not
until the 19th century that the term intellectual property began to be used and not until the late 20th
century that it became commonplace in the majority of the world.

Types of Intellectual Property

The term intellectual property is usually thought of as comprising four separate legal fields:

1. Trademarks

2. Copyrights

3. Patents

4. Trade secrets

1. Trademarks and Service Marks: A trademark or service mark is a word, name, symbol, or
device used to indicate the source, quality and ownership of a product or service.
servic A trademark is
used in the marketing is recognizable sign, design or expression which identifies products or
service of a particular source from those of others. The trademark owner can be an individual,
business organization, or any legal entity. A tra
trademark
demark 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.

General Logos:

The Trademark Registration Logo

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In addition to words, trademarks can also consist of slogans, design, or sounds. Trademark provides
guarantee of quality and consistency of the product or service they identify. Companies expend a
great deal of time, effort and money/ in establishing consumer recognition of and confidence in their
marks.

Federal Registration of trademarks:

Interstate use of trademarks is governed by federal law, namely, the United States Trademark Act (also
called the Lanham Act), found at 15 U.S.C 1051et seq. In the United States, trademarks are generally
protected from their date of first public use. Registration of a mark is not required to secure
protection for 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 PTO. Registration is a fairly
lengthy process, generally taking anywhere from twelve to twenty-four months or even longer. The
filing fee is $335 per mark (Present $225 per class) per class of goods or services covered by the mark.

A trademark registration is valid for 10 years and may be renewed for additional ten year periods
thereafter as long as the mark is in used in interstate commerce. To maintain a mark the registrant is
required to file an affidavit with the PTO between the fifth and sixth year after registration and every
ten years to verify the mark is in continued use. Marks not in use are then available to others.

A properly selected, registered and protected mark can be of great value to a company or individual
desiring to establish and expand market share and better way to maintain a strong position in the
marketplace.

2. Copyrights: Copyright is a form of protection provided by U.S. law (17 U.S.C 101 et seq) to the
authors of "original works of authorship" fixed in any tangible medium of expression. The manner
and medium of fixation are virtually unlimited. Creative expression may be captured in words,
numbers, notes, sounds, pictures, or any other graphic or symbolic media. The subject matter of
copyright is extremely broad, including literary, dramatic, musical, artistic, audiovisual, and
architectural works. Copyright protection is available to both published and unpublished works.

Copyright protection 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
working protectable by copyright, such as titles, names, short phrases, or lists of ingredients.
Similarly, ideas methods and processes are not protectable by copyright, although the expression of
those ideas is.

Copyright protection exists automatically from the time a work is created in fixed form. The owner of
a copyright has the right to reproduce the work, prepare derivative works based on the original work

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 (such as a sequel to the original), distribute copies of the work, and to perform and display the work.
Violations of such rights are protectable by infringement actions. Nevertheless, some uses of
copyrighted works are considered “fair use” and do not constitute infringement, such as use of an
insignificant portion of a work for noncommercial purposes or parody of a copyrighted work.

Definition:

General Definition of copyright “Copyright owner”, with respect to any one of the exclusive rights
comprised in a copyright, refers to the owner of that particular right.

Federal Registration of Copyrights: The works are protected under federal copyright law from the
time of their creation in a fixed form. Registration, however, is inexpensive, requiring only a $30
(present

$85) filing fee, and the process is expeditious. In most cases, the Copyright Office processes
applications within four to five months.

Copyrighted works are automatically protected from the moment of their creation for a term
generally enduring for the author’s life plus an additional seventy years after the author’s death. The
policy underlying the long period of copyright protection is that it may take several year for a
painting, book, or opera to achieve its true value, and thus, authors should receive a length of
protection that will enable the work to appreciate to its greatest extent.

3. Patents: A patent for an invention is the grant of a property right to the inventor, issued by the
United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the
date on which the application for the patent was filed in the United States or, in special cases, from
the date an earlier related application was filed, subject to the payment of maintenance fees. U.S.
patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under
certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the
right to exclude others from making, using, offering for sale, or selling” the invention in the United
States or “importing” the invention into the United States. What is granted is not the right to make,
use, and offer for sale, sell or import, but the right to exclude others from making, using, offering for
sale, selling or importing the invention. Once a patent is issued, the patentee must enforce the patent
without aid of the USPTO.

There are three types of patents:

Utility patents may be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or composition of matter, or any new and useful improvement
thereof;
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Design patents may be granted to anyone who invents a new, original, and ornamental design for an
article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant.

Federal Registration of Copyrights: Patents are governed exclusively by federal law (35 U.S.C 100 et
seq). To obtain a patent, an inventor must file an application with the PTO (the same agency that
issues trademark registration) that fully describes the invention. Patent prosecution is expensive, time
consuming and complex. Costs can run into the thousands of dollars, and it generally takes over two
year for the PTO to issue a patent.

Patent protection exists for twenty years from the date of filing of an application for utility and
patents and fourteen years from the date of grant for design patents. After this period of time, the
invention fall into the public domain and may be used by any person without permission.

The inventor is granted an exclusive but limited period of time within which to exploit the invention.
After the patent expires, any member of the public is free to use, manufacture, or sell the invention.
Thus, patent law strikes a balance between the need to protect inventors and the need to allow public
access to important discoveries.

4. Trade Secrets: A trade secret consists of any valuable business information. The business secrets
are not to be known by the competitor. There is no limit to the type of information that can be
protected as trade secrets;

For Example: Recipes, Marketing plans, financial projections, and methods of conducting business
can all constitute trade secrets. There is no requirement that a trade secret be unique or complex;
thus, even something as simple and nontechnical as a list of customers can qualify as a trade secret as
long as it affords its owner a competitive advantage and is not common knowledge.

If trade secrets were not protectable, companies would no incentive to invest time, money and effort
in research and development that ultimately benefits the public. Trade secret law thus promotes the
development of new methods and processes for doing business in the marketplace.

Protection of Trade Secrets: Although trademarks, copyrights and patents are all subject to
extensive statutory scheme for their protection, application and registration, there is no federal law
relating to trade secrets and no formalities are required to obtain rights to trade secrets. Trade secrets
are protectable under various state statutes and cases and by contractual agreements between
parties.

For Example: Employers often require employees to sign confidentiality agreements in which employees
agree not to disclose proprietary information owned by the employer.
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If properly protected, trade secrets may last forever. On the other hand, if companies fail to take
reasonable measures to maintain the secrecy of the information, trade secret protection may be lost.
Thus, disclosure of the information should be limited to those with a “need to know” it so as to
perform their duties, confidential information should be kept in secure or restricted areas, and
employees with access to proprietary information should sign nondisclosure agreements. If such
measures are taken, a trade secret can be protected in perpetuity.

Another method by which companies protect valuable information is by requiring employee to sign
agreements promising not to compete with the employer after leaving the job. Such covenants are
strictly scrutinized by courts, but generally, if they are reasonable in regard to time, scope and subject
matter, they are enforceable.

INTERNATIONAL ORGANIZATIONS, AGENCIES AND TREATIES

There are a number of International organizations and agencies that promote the use and protection
of intellectual property. Although these organizations are discussed in more detail in the chapters to
follow, a brief introduction may be helpful:

International Trademark Association (INTA) is a not-for-profit international association composed

chiefly of trademark owners and practitioners. It is a global association. Trademark owners and
professionals dedicated in supporting trademarks and related IP in order to protect consumers and to
promote fair and effective commerce. More than 4000 (Present 6500 member) companies and law
firms more than 150 (Present 190 countries) 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 (see INTA’s
home page at http://www.inta.org). INTA members have collectively contributes almost US $ 12
trillion to global GDP annually. INTA undertakes advocacy [active support] work throughout the world
to advance trademarks and offers educational programs and informational and legal resources of
global interest. Its head quarter in New York City, INTA also has offices in Brussels, Shanghai and
Washington DC and representative in Geneva and Mumbai. This association was founded in 1878 by
17 merchants and manufacturers who saw a need for an organization. The INTA is formed to protect
and promote the rights of trademark owners, to secure useful legislation (the process of making laws),
and to give aid and encouragement to all efforts for the advancement and observance of trademark
rights.

World Intellectual Property Organization (WIPO) was founded in 1883 and is specialized agency of
the United Nations whose purposes are to promote intellectual property throughout the world and to
administer 23 treaties (Present 26 treaties) dealing with intellectual property. WIPO is one of the 17

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specialized agencies of the United Nations. It was created in 1967, to encourage creative activity, to
promote the protection of Intellectual Property throughout the world. More than 175 (Present 188)
nations are members of WIPO. Its headquarters in Geneva, Switzerland, current Director General of
WIPO is Francis Gurry took charge on October 1, 2008. The predecessor to WIPO was the BIRPI
[Bureaux for the Protection of Intellectual Property] it was established in 1893. WIPO was formally
created by the convention (meeting) establishing the world intellectual Property organization which
entered into force on April 26 1970.

LAW OF PATENTS

 The work Patent is a shorthand expression for “letters patent”

 A Patent is a grant from the U.S. government to exclude others from making, using, orselling
another person’s new, nonobvious, and useful invention in the United States forthe term of
patent protection.
 It is protected for 20 years
 Under patent law, inventors can enjoin the making, using or selling of an infringinginvention
even if it was independently created.
 A Patent allows its owner to exclude others from using the owner’s invention; it does
notprovide any guarantee that the owner can sell the invention.
 To obtain a patent, an inventor must file an application with the PTO, same agency of
theDepartment of Commerce that issues trademark registration.
 The application must describe the invention with specificity.
 The application will be reviewed by a PTO examiner, and, if approved, the patent will issue.
 The U.S. Constitution provides that Congress shall have the power “to promote the progress of
science and useful arts, by securing for limited times to authors and inventors the exclusive
rights to their respective writing and discoveries”.
 Patent promote the public good in that patent protection incentivizes inventors.

Advantages of Patents

 Patents promote the public good in that patent protection incentivizes inventors
 The introduction of new products and processes benefits society.
 In return for the full disclosure to the public of specifies of the invention, thus advancing
science and technology, the inventor is given a limited period of time within which to exploit
his or her invention and excluded others from doing so.
 Inventors are thus incentivized to create new products, and the public benefits from inventions
that ultimately will fall into the public domain.

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Rights under Federal Law

 Patent law derives from the Constitution.

 In 1790, pursuant to the direction provided in the Constitution, Congress passed the first
patent, which in large part relied upon English Law.
 Three years later, the statute was replaced with a new act authored by Thomas Jefferson.
 These early acts provided the structural framework for U.S patent law and specified the four
basic conditions, still existing, that an invention must satisfy to secure patent protection:
 The invention must be a utility, design, or plant patent
 It must be useful (or ornamental in the case of a design patent or distinctive in the case of a
plant patent);
 It must be novel in relation to the prior art in the field; and
 It must not be obvious to a person of ordinary skill in the field.
 Revision of federal patent statutes occurred in 1836 when the Patent Office was created and
again in 1870 and 1897.
 Thereafter, in 1952, Congress enacted a new patent act, codified in title 35 of the United States
Code (U.S.C), it is last major revision to federal patent statutes
 Development of patent law has evolved primarily through federal court decisions rather that
the legislature
 In 1982, Congress created a new court, the Court of Appeals for the Federal Circuit (CAFC), the
exercise exclusive jurisdiction over all cases involving patent issues and to promote uniform
interpretation of the U.S. patent statutes, which until then had been interpreted in often
inconsistent ways by the various federal courts of appeals throughout the nation.
 Moreover, some inventions such as computer programs, are protectable under copyrightlaw as
well as patent law.

Patent Searching Process

The Need for a Search:

 Patentability requires novelty and non obviousness.

 The patentability search, sometimes called a novelty search
 A search is recommended to determine the feasibility of obtaining a patent.
 A novelty search is somewhat limited in scope and is designed to disclose whether an
application will be rejected on the basis of lack of novelty or obviousness.
 A novelty search can usually be completed for less than $1,000.
 If an invention is intended for immediate commercial use or sale, an additional search, call an
infringement search or investigation, is often conducted concurrently with the novelty search.
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  This novelty search is thus more expensive

Searching Methods:

 The PTO provides public search facilities for patent searching.

 Searching is free and the PTO allows searchers to review issued patents, completewith
drawings.
 Searching can be done either in the main public search room or in the examiners’search areas
where examiners will assist in searching. (The patent search roomcontains copies of all U.S.
issued patents from 1790 to present as well as manyforeign patents).
 The PTO employs a classification system that provides for the storage andretrieval of patent
documents
 The patent examiners in the course of examining patent applications, the system isalso used by
searchers, and classification files are divided into subclasses.
 Most classes have approximately three hundred sub classes

Patent Application Process

Overview of the Application Process

 The process of preparing, filing, and shepherding a patent application through the PTO
towards issuance is called “prosecution”.
 An application may be filed by the inventor himself or herself or, as is more usual, by a patent
attorney.
 Only 20% of all applications are filed by inventors without the assistance of attorneys.
 The application is filled with PTO, it will be assigned to one of more than 3500 patent
examiners having experience in the area of technology related to the invention who will review
the application and conduct a search of patent records to ensure the application complies with
the statutory requirements for patents.
 The process may continue for several rounds.
 A Notice of Allowance will be sent to the applicant, which specifies an issue fee that must be
paid to the PTO in order for the patent to be granted.
 Until 2000 all patent application were maintained in confidence, but after November 2000 they
were published
 It takes one to three years to prosecute a patent, and costs and fees can range from $5000 to
more than $30000 with fee generally ranging for $10000 to $12000

Patent Practice

 While preparing trademark and copyright applications is relatively straightforward, preparing a

patent application requires skillful drafting as well as knowledge in the relevant fields, whether
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 that is biotechnology, chemistry, mechanical engineering, physics, computers, pharmacology,
electrical engineering, and so forth.
 They are divided into different groups, such as a mechanical group, a biotech group, and an
electrical group.
 Many patent attorneys possess both a law degree and an advanced degree in engineering,
physics, chemistry, or the like.
 To represent patent applicants before the PTO, an attorney must be registered to practice with
the PTO.
 An attorney must pass the Patent Bar, which requires the attorney to demonstrate background
in science or engineering.
 The examination is very difficult it is a multiple choice questions, and the pass rate tends to
hover around one-third.
 A list of attorneys and agents registered to practice before the PTO is available from the
Government Printing Office located in Washington, DC, Alternatively, the PTO web site
(http://www.uspto.gov/web/ofices/dcom/olia/oed/roster/) provides an index to the more than
18000 attorneys and agents who are licensed to practice before the PTO.

Confidentiality of Application Process and Publication of Patent Application

 More than 200 years, all patent applications filed with the PTO were m aintained in strict confidence
throughout the entire application process.

 Only when the patent issued was the file wrapper open to public inspection.

 Under the American Inventors Protection Act (AIPA) of 1999, however, which took effect in
November of 2000, the PTO now publishes utility and plant applications eighteen months after their
filing

If the applicant later decides to apply for a patent in a foreign country, the applicant must provide
notice of this foreign filing to the PTO within forty-five days or the application will be regarded as
abandoned.

The intent of the new law is to harmonize U.S. patent procedures with those of other countries,
almost all of which publish patent applications after an initial period of confidentiality.

The new act protects inventors from having their inventions infringed by providing that patentees
can obtain reasonable royalties if others make, used, or sell the invention during the period between
publication and actual grant of the patent.

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Types of Application

1.Provisional Application

2.Utility Application

3.Design Application

4.Plant Application

5.Continuation Application

6.PCT (Patent Cooperation Treaty) Application

7.Divisional Application

Preparing the Application

Title

Cross-references to related applications

Background

Summary of invention

Brief description of drawing

Detailed description of the invention

Claims

Patent Prosecution Flowchart

Ownership Rights

 Patents are items of personal property and thus may be owned, sold, licensed, or devisedby
will.
 Applications for patent must be filed by the actual inventor of the article, process, design,or
plant.
 If there is more than one inventor, the application must be signed by all inventors.
 In many instance, employees are required to sign agreements with their employerswhereby
they agree that any invention or discovery invented by them while on the jobwill belong to the
employer and that they will agree to assist and cooperate in any manner, including signing
applications for patents, to ensure the employer’s rights are protected

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Steps and Procedure for getting Patent in India

To understand the Steps and Procedure for getting a Patent in India in a clearer way let’s assume 3
illustrations as below,

1. who has an innovative idea to patent

2. Patent professional (Patent agent or attorney)

3. Patent office (controller, examiner and other staff)

We would be seeing what is the involvement of each one of them at every step while getting patent.
along the way, we would also be seeing relevant forms and costs involved at each stage. So, let’s get
started…

Step 1: Idea incubation phase

Every invention has its beginning in an Idea. In this phase, you capture your idea properly, get clarity
on each element of the innovative idea, do fill in the blanks with appropriate research and
experimentation.

Include drawings, diagrams, or sketches explaining the working of the invention. the drawings and
diagrams should be designed so as to explain the working of the invention in a better way with visual
illustrations. they play an important role in understanding your invention.

Once you have your innovative idea completely captured with all technical details, then you perform a
preliminary search. This search is for finding answers to questions that build a working disclosure of
the invention.

Some of the questions in the invention disclosure form would be:

 What is my idea/invention? How does it work?

 What problem my innovative idea is solving

 What is the field of my invention

 What are the advantages of my innovative idea

 What are the elements or components of my innovative idea

 Can I draw a block diagram or device or flowchart or sketch that explains my invention in a
better way

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  What are the advantages of my invention over existing knowledge that is prior arts

 Who are the competitors with what product or service.. etc..

This is most important phase for inventor where an idea is taken from ideation phase to a working
invention disclosure that can be discussed with a patent agent or attorney. The Outcome of this step:

Step 2 : Patentability search (optional step)

In this step, the patent agent or attorney who is working on your invention helps you in finding out
whether your invention meets all patentability criteria which are :

 Novelty

 Non-obviousness

 Industrial application [/su_list]

The patentability search is aimed towards finding out the novelty and non-obviousness of the
invention, the search identifies the closes possible prior arts (known to public) relating to your
invention and based on the results obtained an opinion about the patentability of your invention may
be provided by patent professional.

Based on the results found and reviewed in a patentability search report, the patentability opinion
may be positive, negative or neutral. A positive patentability opinion indicates, you stand a good
chance to get your patent granted for your invention.

The patentability report and opinion helps you decide whether to go ahead with the patent or not,
chances are what you thought as novel might already been patented or know to public in some form
of information. Hence this reports saves lots of time, efforts and cost of the inventor by helping him
decide whether to go ahead with the patent filing process or not.

Step 3 : Patent drafting/writing

Patent drafting is the stage where your invention disclosure and patentability search report is used to
create the patent application.

Patent drafting / writing is a specialized job, it requires years of practice and experience with patent
law to draft a good patent application.

This is one of the most important step in life cycle of a patent and a good patent application written
by an experienced patent agent/attorney should survive not only through the examination phase till
the grant of patent but also it should survive the commercialization phase where actual money is
made by licensing or selling patent rights, where competitors should not be able to work around your
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patent. Writing such patent application is a skill and that’s what explained in detail in our section on
“Preparing patent application (patent drafting)” in “working with patent agent or attorney”

Step 4 : Filing patent application

Filing patent application into patent office:

Based on the readiness of your invention, the decision has to be made whether to go for a provisional
patent application or complete patent application. If you are not quite ready with complete invention
and requires further research and development yet you don’t want to lose on priority date for filing
patent application then going for provisional patent application is recommended.

There are many advantages for filing provisional patent application which are discussed in detail in a
separate chapter about “filing patent application”

Provisional patent application:

 When to go for provisional patent application

 advantages

 costs

 elements of provisional patent application

 mistakes to avoid

The patents are territorial in nature, so if you file patent in India, you are getting protection in India
only. You cannot stop use of invention outside India then. Therefore, if you desire that your invention
should be protected in multiple countries, depending on your preference of countries Different
options, paths and strategies for filing patent application is to be adopted with the guidance of a
patent agent/attorney.

International patent application:

 different options and routes available

 strategies to go about international patent filing

 Patent Cooperation Treaty (PCT) application

 Paris convention and other routes

The outcome of this step:

The outcome of this filing patent application is :

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  You receive a receipt for filing patent application in government patent office with invention
title, your name along with time and date of filing.

 Now, your invention is safe and you have secured a priority date for your invention, which
makes you less worried about confidentiality and safety of your invention.

 The patent application will be taken to subsequent steps as per forms, requests and fees
submitted as per standards.

Step 5: Publication of application

Generally, the application is automatically published after 18 months from the filing date. No fees or
action is required by inventor. If you don’t want to wait till the expiry of 18 months, An early
publication request can be made along with prescribed fees.

Step 6: Request for examination (RFE)

The patent application is examined only after receiving a request for examination that is RFE. The
inventor/applicant needs to file a request for examination (RFE) within 48 months of the filing date or
priority date. This RFE is made with form 18 and the government fees for the same is mentioned in
table below.

The first examination report submitted to controller by examiner generally contains prior arts (existing
documents before the date of filing) which are similar to the claimed invention, and any objections
raised regarding patentability requirements for the invention. Same examination report (with
objections) is communicated to you (inventor) / patent applicant.

Step 7: Response to objections

Majority of patent applicants (inventors) will receive some type of objections based on the
examination report. The best thing to do it analyze the examination report with patent agent /
attorney and creating a response to the objections raised in the examination report. This is a chance
for an inventor to communicate his novelty and non obviousness of the invention based on the kind
of objections received.

If the controller is satisfied with the response to the objections or the amended patent application. Up
on finding the patent application in order of grant, The patent is granted to you (inventor) / applicant
as early as possible !!! with a seal of patent office and the date of grant is registered in register of
patents.

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Step 8: Grant of patent :The application would be placed in order for grant once it is found to be
meeting all patentability requirements. The patent is granted to you (inventor) / applicant as soon as
possible with the seal form patent office and The grant of patent is notified in the patent journal
which is published time to

Patenting under PCT:

The Patent Cooperation Treaty (PCT) is an international IP agreement that provides patent protection
in several countries through the filing of a single common application. The treaty, governed by the
World Intellectual Property Organization (WIPO), has more than 150 nations as signatories, who are
also known as PCT Contracting States.

Filing patent applications under PCT implies securing legal protection for an invention under patent
law in more than 150 countries at once. Major global corporations, research institutes and universities
seek patent protection via PCT. It safeguards applicants against accidental errors which are far more
likely to occur if a separate application is filed in every country of interest.

Advantages of the Patent Cooperation Treaty (PCT)

Emerging as the cornerstone of the international patent system, PCT simplifies the managing and
processing of patent applications. The benefits of the treaty include:

 Parallel Patent Protection

When an applicant files for patent in the US, it’s likely to preclude the chances of obtaining
patent protection in other countries. That’s where the role of PCT comes in. The treaty allows
businesses to have simultaneous protection under patent law in the PCT contracting States,
including the US.

 Comprehensive International Patent Search

When one files a patent application with WIPO under PCT, the organization conducts a global patent
search that enables applicants to find out whether the invention can be patented across the world.
This knowledge can significantly affect the very decision of patenting the invention itself.

For instance, if a patent is found to be unpatentable after disclosure in a PCT application, it can
prompt a decision to withdraw the application, preventing the cost of national phase filing. Hence, it
is also an efficient method of managing risk.

 Time-effective Application Process

Filing separate patent applications in all the PCT Contracting States would require amending the
application according to the rules and regulations of each member country. The process will not only
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be daunting but also time-consuming. The treaty accelerates all your patent applications globally.
Some of the PCT Contracting States also have PCT-Patent Prosecution Highway Agreements that
enable even faster processing.

 Strong Grounds for Patenting Decision

Once an applicant files a patent application under PCT, WIPO sends a global patent search report and
an opinion on the patentability of the product – both make obtaining grant of a patent in selected
countries considerably easier. The information also plays a critical role in assessing the prospects of
acquiring a patent.

 Opportunity to amend applications

Applicants get an opportunity to amend a PCT application before entering national phase countries.
Amendments can be made on a voluntary basis or in order to address the search and examination
report which is issued by PCT.

Disadvantages of Patent Cooperation Treaty (PCT)

On the other side of the coin, PCT has certain disadvantages too. However, its benefits surpass the
negligible limitations. Some of the drawbacks of the treaty are:

 Limited Patent Coverage

You can obtain only utility patents through patent applications under the PCT. You can’t patent a
design through this process. The process also creates examination delays and it takes more time to
acquire patent via PCT route. But PCT gives you additional 18/19 months to select the countries of
interest.

 Costlier Patent Process

The PCT also makes the patent process a bit costlier as it requires an applicant to prosecute the
application separately in each country. It also costs attorney fees in international phase. However, the
process can provide favorable and cost-effective solutions such as streamlined prosecutions.
However, PCT fee reductions are available when the PCT application is filed electronically or the
applicants belonging to developing countries get 90% reduction in the official filing fee.

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 UNIT – 4

Scope of Intellectual Property Rights

Intellectual property rights include copyright, patent, trademark, geographic indication of origin,
industrial design, trade secrets, database protection laws, publicity rights laws, laws for the protection
of plant varieties, laws for the protection of semi-conductor chips (which store information for later
retrieval), etc.

There is a conventional mode of classification of intellectual property as industrial property and

copyrights. Industrial properties include inventions (patent), property interest on minor invention
(Utility model certificate) and commercial interests (Trade Marks, trade names, geographical
indications, and industrial design), plant breeder rights, biodiversity, etc.

Patents

A patent is a type of intellectual property right which allows the holder of the right to exclusively
make use of and sale an invention when one develops an invention. Invention is a new process,
machine, manufacture, composition of matter. It is not an obvious derivation of the prior art (It should
involve an inventive step). A person who has got a patent right has an exclusive right. The exclusive
right is a true monopoly but its grant involves an administrative process.

Copyright

It is an intellectual property which does not essentially grant an exclusive right over an idea but the
expressions of ideas which makes if different from patent law. Patent is related with invention -
technical solution to technical problems. Copyright is a field which has gone with artistic, literary
creativity- creativity in scientific works, audio-visual works, musical works, software and others. There
are neighboring rights. These are different from copyright but related with it – performers in a theatre,
dancers, actors, broadcasters, producers of sound recorders, etc. It protects not ideas but expressions
of ideas as opposed to patent.

Copyright protects original expression of ideas, the ways the works are done; the language used, etc.
It applies for all copyrightable works. Copyright lasts for a longer period of time. The practice is life of
author plus 50 years after his/her life. Administrative procedures are not required, unlike patent laws,
in most laws but in America depositing the work was necessary and was certified thereon but now it is
abolished.

Industrial Design Law

Some call this design right (European) and some call it patentable design, industrial design (WIPO and
other international organization). A design is a kind of intellectual property which gives an exclusive
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right to a person who has created a novel appearance of a product. It deals with appearance: how
they look like. Appearance is important because consumers are interested in the outer appearance of
a product. It is exclusively concerned with appearance, not quality.

The principles which have been utilized in developing industrial design law are from experiences of
patent and copyright laws. It shares copyright laws because the design is artistic. It shares patent law
because there are scientific considerations. Design law subsists in a work upon registration and
communication. It makes them close to patent law since they are also founded in patent law. Duration
is most of the time 20 years like the patent law trademark Rights law.

Trademarks Rights Law

It is a regime of the law giving protection to graphic representation to words or logos or depending
on the jurisdiction question such as sound or smells which are distinctive in nature and serve as
source identification. There is also a recent phenomenon which is representing goods in their smell
and sound. It is to be found on the goods associated with them. It enables the customer to identify
the goods from others. They serve as a source identifier. Trademarks perform communication
function. Once there is a valid representation, it gives the mark owner an exclusive right. It begins with
registration and publication of the mark. But there are exceptions which serve what trademarks
registered serve which are not registered. It means they deserve protection even though they are not
registered. They exist forever so long as the good with which they are associated continue to be sold.
But they require renewal.

Licensing and transfer of technology:

Technology Transfer Agreement is required by organizations/companies when technology is

transferred to another organization or companies. This agreement specifies the process of transfer of
intellectual property, whether the license given to the licensee is an exclusive license or non -exclusive
the validity along with terms and condition of the agreement.

Licensing Agreement is required when intellectual property for instance business concept, software,
application is taken from another organization/company by entering into a licensing agreement. It is
necessary when a company gives access to another for allowing its business but for a limited period
of time.

Difference between Technology Transfer Agreement & Licensing Agreement

 Technology Transfer Agreement is wide-ranging in concept as compared to Licensing

Agreement as the former focuses on organizations, companies to up-skill, upgrade, improve
their technology whereas the latter grants these organizations, companies for the usage of
these technology which remain secured through the protection of Intellectual property rights,
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 including patents, though the latter can have an up-skilling purpose yet it is subordinate to the
licensing of the rights.

 Technology Transfer Agreements comprises a technology license which includes patents but its
primary objective is organizations, companies as a whole in technology to either generate or
market or generate industry or for educational impetus.

Pros & Cons of Technology Transfer Agreement and Licensing Agreement

While the said two agreements are parallel in nature and are used by various organizations and
companies in a systematic order, they have their equal share of pros and cons:

Technology Transfer Agreement

Pros:

 To procure Organizations & Companies with admission towards new technology or offset
filibustering technology through the process of cross licensing.

 Provide access for enhancement of technology without any development and examination
expenditures.

 Boost company’s brand acknowledgement in markets.

 Handing over business control for technical standards raised by national and international
organizations throughout the globe.

 Conversion of infringement or competition in a collaboration by avoidance of Intellectual

Property Litigation.

 Solidification and Establishing Company’s relations with its present and future customers.

Cons:

 Exploitation of Technology transfer through the said agreement by the Licensee in any manner
whatsoever.

 Decrease in the performance of the licensed technology by the Licensee thereby leading to
damage of the technology’s goodwill resulting in Diminution of technology’s value.

 Increase of litigation risk after transfer of technology thereby forcing the Licensor to liability
suits.

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Licensing Agreement

Pros:

 Utilization of the Licensed technology thereby entering into new geographical, technological
dimensions, areas and various markets around the globe.

 Generation of revenue due to the usage of the licensed technology.

 Acquiring access to the developed technology.

 Licensor’s ability to acquire revenues through royalty.

 Forming a unique business approach.

Cons:

 Loss of control of the licensed technology.

 Increasing chances of Technology theft.

 Acceptance of higher risk by the licensee at the time of entering into a licensing agreement
thereby resulting to over reliance over the licensor.

 Control over technology for a limited time.

 Royalty Litigation.

 Deferral in royalty fee.

Patent information and databases.

Patent information is an important resource for researchers and inventors, entrepreneurs and
commercial enterprises, and patent professionals.

Patent information can assist users to:

• Avoid duplicating research and development effort;

• Determine the patentability of their inventions;

• Avoid infringing other inventors’ patents;

• Estimate the value of their or other inventors’ patents;

• Exploit technology from patent applications that have never been granted, are not valid in certain
countries, or from patents that are no longer in force;
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• Gain intelligence on the innovative activities and future direction of business competitors;

• Improve planning for business decisions such as licensing, technology partnerships, and mergers
and acquisitions;

• Identify key trends in specific technical fields of public interest such as those relating to health or to
the environment and provide a foundation for policy planning.

Databases

Patent information is made available to the public through a variety of databases. Each database
covers a particular set of patent documents. At present no database has complete coverage of all
patent documents ever published worldwide. Thus it may be necessary to consult multiple databases
in order to find and then access patent documents relevant to your interests.

Many national and regional patent offices provide free online access to their own patent collections as
well as to selected patent documents from other offices. An extensive list of national patent databases
can be found at: www.wipo.int/patentscope/en/national_databases.html

WIPO offers free online access to all international patent applications within the framework of the
PCT2 and their related documents and patent collections from National and Regional Offices through
its PATENTSCOPE search service: https://patentscope.wipo.int

A number of commercial and non-profit providers also offer free patent information databases
online. Certain commercial providers have established value-added services for access on a fee-
paying basis including translations of patent information and additional systematic classification, for
instance by chemical structures and reactions or biological sequences.

Moreover, professional search services exist that can perform prior art searches on behalf of potential
patent applicants and may be useful if an initial search does not produce desired results.

An extensive list of patent service providers can be found at: www.piug.org/vendors.ph

What is a geographical indication?

A geographical indication (GI) is a sign used on products that have a specific geographical origin and
possess qualities or a reputation that are due to that origin. In order to function as a GI, a sign must
identify a product as originating in a given place. In addition, the qualities, characteristics or
reputation of the product should be essentially due to the place of origin. Since the qualities depend
on the geographical place of production, there is a clear link between the product and its original
place of production.

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What rights does a geographical indication provide?

A geographical indication right enables those who have the right to use the indication to prevent its
use by a third party whose product does not conform to the applicable standards. For example, in the
jurisdictions in which the Darjeeling geographical indication is protected, producers of Darjeeling tea
can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced
according to the standards set out in the code of practice for the geographical indication.

However, a protected geographical indication does not enable the holder to prevent someone from
making a product using the same techniques as those set out in the standards for that indication.
Protection for a geographical indication is usually obtained by acquiring a right over the sign that
constitutes the indication.

For what type of products can geographical indications be used?

Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit drinks,
handicrafts, and industrial products.

How are geographical indications protected?

There are three main ways to protect a geographical indication:

 so-called sui generis systems (i.e. special regimes of protection);

 using collective or certification marks; and

 methods focusing on business practices, including administrative product approval schemes.

These approaches involve differences with respect to important questions, such as the conditions for
protection or the scope of protection. On the other hand, two of the modes of protection —
namely sui generis systems and collective or certification mark systems — share some common
features, such as the fact that they set up rights for collective use by those who comply with defined
standards.

Broadly speaking geographical indications are protected in different countries and regional systems
through a wide variety of approaches and often using a combination of two or more of the
approaches outlined above. These approaches have been developed in accordance with different
legal traditions and within a framework of individual historical and economic conditions.

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Patent Administration and Management

Once a patent is granted, it should be administered and exploited. Patent administration deals
primarily with the monitoring and execution of all actions that are necessary for the maintenance of
the patent, including, in particular, the payment of any annual renewal fees.

In the context of patent management, all opportunities should be used to profitably exploit a granted
patent, by the patent owner himself or by third parties (licenses, patent sale etc.).

Besides the actual patent administration, the protection of technology and patent positions play an
important role in the IP management of a company. The own R&D activities of a company constitute
one of the most essential sources for the own patent portfolio as well as for the evaluation of the own
technology position compared to competitors, whereby such evaluation should be reasonably
conducted corresponding to the different business units.

Professional patent administration requires also that a company, alongside its own patents, knows the
other intellectual property rights in the respective business segment (especially of its most important
competitors). The necessary information there to may be obtained on the basis of the monitoring of
the legal status of the patents concerned.

The national IP office carries out the administration and management of intellectual property rights
(IPRs) in that country. It has both the physical and legal infrastructure and the human resources
required to administer and manage IP-related issues. Based on the experiences of most developed
countries and least developed countries, the following are some of the challenges that frequently
face IP offices :

a. Autonomy – Many IP offices which are departments within government ministries are striving to
gain autonomy in order to enhance their performance and visibility.

b. Regional presence – Most IP offices are located in capital cities, and have little presence outside the
capital. This means that people who are located in the regions, and who are seeking IP services, must
travel from the regions to the capital in order to secure such services. This drawback affects both the
quality and the efficiency of service delivery.

c. Backlog of IP applications – Whereas most countries have made significant progress in the area of
automation and modernization of IP registration processes, some countries still have manual IP
registration processes ; this leads to long processing times and backlogs.

d. Weak outreach programs – Very few countries have put in place effective outreach programs to
educate the public on the importance of IP.

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e. Focus on protection – In the past, most offices have focused on the protection of IPRs, and have
paid little attention to the economic utilization of IP assets.

f. Inadequate human resources – national IP offices which function as divisions within government
departments consistently cite human resources as an area that poses a major challenge. In addition to
offering IP-related services, national IP offices provide other legal services in the government
departments with which they are associated. From time to time, staff members with good IP
experience may be transferred to another division within a government department – a division which
deals in matters unrelated to IP services.

g. Combining protection with enforcement – In certain cases, IP offices also undertake the
enforcement of IPRs. Due to limited human resources, the provision of this service is inadequate.

h. Lack of capacity to carry out substantive examination Most national IP offices lack the technical
skills required to carry out substantive examination of patent applications and therefore they are
overly reliant on other regional IP offices to provide this service ; as a consequence, the time required
to grant / reject patent applications increases.

What is covered by the copy right designs and patents Act?

 Copyright is a form of protection provided by U.S. law (17 U.S.C 101 et seq) to the authors of
"original works of authorship" fixed in any tangible medium of expression. The manner and
medium of fixation are virtually unlimited. Creative expression may be captured in words,
numbers, notes, sounds, pictures, or any other graphic or symbolic media. The subject matter
of copyright is extremely broad, including literary, dramatic, musical, artistic, audiovisual, and
architectural works. Copyright protection is available to both published and unpublished works.
 Copyright protection 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 working protectable by copyright, such as titles, names, short phrases, or lists of
ingredients. Similarly, ideas methods and processes are not protectable by copyright, although
the expression of those ideas is.
 Copyright protection exists automatically from the time a work is created in fixed form. 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), distribute copies of the work, and to
perform and display the work. Violations of such rights are protectable by infringement actions.
Nevertheless, some uses of copyrighted works are considered “fair use” and do not constitute
infringement, such as use of an insignificant portion of a work for noncommercial purposes or
parody of a copyrighted work.

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A registered design protects the visual appearance of a product or item and gives you exclusive rights
for that appearance to the extent that, if necessary, there is a legal right to stop an unauthorised party
from producing or using your design.

Registered Design Rights

Design rights protect the way a product looks. If the design has a technical function or the
appearance of the product comes naturally as a result of the function that it performs, then a design
right may not be suitable.

In order for a registered design to be valid, it must:

- Be new (no similar or identical designs registered in the Bailiwick of Guernsey)

- Have individual character (the appearance of the design is different to any existing designs)

- Be already registered in an approved overseas jurisdiction (see regulations - link below)

A design is not registrable if it:

- Does not have individual character

- Is offensive

- Is solely dictated by the product's function

Patents: A patent for an invention is the grant of a property right to the inventor, issued by the
United States Patent and Trademark Office. Generally, the term of a new patent is 20 years from the
date on which the application for the patent was filed in the United States or, in special cases, from
the date an earlier related application was filed, subject to the payment of maintenance fees. U.S.
patent grants are effective only within the United States, U.S. territories, and U.S. possessions. Under
certain circumstances, patent term extensions or adjustments may be available.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the
right to exclude others from making, using, offering for sale, or selling” the invention in the United
States or “importing” the invention into the United States. What is granted is not the right to make,
use, offer for s ale, sell or import, but the right to exclude others from making, using, offering for sale,
selling or importing the invention. Once a patent is issued, the patentee must enforce the patent
without aid of the USPTO.

There are three types of patents:

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Utility patents may be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or composition of matter, or any new and useful improvement
thereof;

Design patents may be granted to anyone who invents a new, original, and ornamental design for an
article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant.

LAW OF PATENTS

The work Patent is a shorthand expression for “letters patent”

 A Patent is a grant from the U.S. government to exclude others from making, using,
or
 selling another person’s new, nonobvious, and useful invention in the United States
for the term of patent protection. It is protected for 20 years
 Under patent law, inventors can enjoin the making, using or selling of an infringing
 invention even if it was independently created. A Patent allows its owner to exclude
others from using the owner’s invention; it does not
 provide any guarantee that the owner can sell the invention. To obtain a patent, an
inventor must file an application with the PTO, same agency of the
 Department of Commerce that issues trademark registration. The application must
describe the invention with specificity

4. Explain about new development and IPR?

NEW DEVELOPMENT IN TRADE MARKS LAW:

The Internet: Trademark owners throughout the world are struggling with new issues presented
by increased electronic communication, primarily that occurring through the Internet.

 The Internet derives from a network set up in the 1970s by the Department of Defense to 
connect military and research sites that could continue to communicate even in the event of
nuclear attract.
 In the 1980s, the National Science Foundation expanded on the system, and its first 
significant users were government agencies and universities.
 In the early1990s, however, it became apparent that the system could provide a global 
communication network, allowing people from all over the world to talk with each other; send
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 written messages, pictures, and text to each other; and establish web pages to advertise their
ware and provide information to their customers.

Assignment of Domain Names:

A company’s presence on the internet begins with its address or domain name not only serves as a
locator for a company but also functions as a designation of origin and a symbol of goodwill---a
trademark.

There are two portions to a domain name: the generic top-level domain, which is the portion of the
name to the right of a period (such as .gov or .com) and the secondary level domain, which is the
portion of the name to the left of a period (such as “kraft” in Kraft.com”).

Disputes frequently arise between owners of registered mark and owners of domain names whose
domain names similar or identical to the registered marks.

NEW DEVELOPMENT IN COPYRIGHT LAW:

While acknowledging that clothing is a useful article and thus not subject to copyright protection, a
New York Federal court ruled that lace design, copyrighted as writing and incorporated into wedding
dresses, were protectable and enjoined another maker of wedding dresses from making or marketing
copies. Similarly, detailed embroiders or some other two dimensional drawing or graphic work affixed
to a portion of a garment may be copyrightable.

 A federal court in California recently held that while type fonts themselves are not  protectable
under copyright law, a software program that generated and created the typefaces was
protectable.
 As soon as Stephen King sold his book riding the Bullet exclusively in an Internet format,  an
individual cracked the copyright protection software and posted free copies of the book on the
Internet. The publishers responded by adopting stronger encryption technology. Similarly, in
2000, Mr. King suspended online publication of a serial novel because too many individuals
were downloading the work without paying it.
 It late 1997 President Clinton signed into law the No Electronic Theft [NET] Act  [amending 18
U.S.C §2319] to enhance criminal penalties for copyright infringement, even if the infringer
does not profit from the transaction. The act also extends the statutes of limitations for criminal
copyright infringement from three to five years, and allows law enforcement officers to use
federal copyright law against online copyright violation, thereby extending the same copyright
protection to the Internet that is provided to other media.
 In September 1999, the Clinton administration relaxed government restrictions on the  export
of encryption products and simultaneously introduced new legislation to give law enforcement

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 agencies greater authority to combat the use of computers by terrorists and criminals and to
create a new code cracking unit within the FBI [Foreign Bureau of Investigation] .
 In mid-2000, president Clinton signed the Electronic signatures in Global and National 
Commerce Act, making digital execution, called e-signatures, as legally binding as their paper
counterparts.
 In 2000, federal prosecutors in Chicago indicted seventeen people who called themselves 
“Pirates with Attitude” for pirating thousands of software program. The case was brought
under the NET Act. Some of the individuals were former employees of Intel and Microsoft.
 The copyright office has recommended that congress amend section 110 of the copyright  Act
to grant educators the right to transmit copyrighted works for distance learning if certain
conditions are met.

NEW DEVELOPMENT IN PATENT LAW:

The patent Act has proven remarkably flexible in accommodating changes and development in
technology. Thus advisement in technology generally has not necessitated changes in the stately
governing patent protection.

Business method and software patent:

Many of the cutting-edge issues in patent law related to patents for computer software. For several
years, the conventional wisdom has been that unless a computer program had significant commercial
value and application patent protection was often counterproductive or ineffective in that the PTO
often took two years to issue a patent, roughly the same time it took for the software program to
become absolute.

Biotechnology patent:

Medicines, Science, agricultural and pharmacology present the other cutting-edge issues in patent
law. Research into genes may hold the key to curing disease throughout the world. Agricultural
research may hold the key to providing sufficient food for the world’s everincreasing population.

The development of strains of plants and crops that are resistant to brought and disease has also led
to an increasing number of patents issued, and attendant litigation. In the field of “agbiotech”.

American Investors Protection Act of 1999 [AIPA]:

The AIPA was signed into law in 1999 and represents the most significant changes to patent law in
twenty years. Although some of the provisions of AIPA have been discussed earlier, its key subtitles
are as follows:

 Inventors’ Right Act of 1999

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  The First Inventor Defense Act of 1999
 The patent term guarantee act of 1999
 The domestic publication of Foreign filed patent application act of 1999 
 The optional Inter parts reexamination procedure Act of 1999 

Introduction of International Patent protection:

The rights granted by a U.S Patent extend only throughout the U.S and have no effect in a foreign
country. Therefore, an inventor who desires patent protection in other countries must apply for a
patent in each of the other countries or in regional patent office.

 The Paris convention (already it is in previous units) 

 The European patent organization
 Agreement on Trade-Related Aspects of IPR (already it is in previous units) 
 The patent Law Treaty
 Foreign Filling Licenses
 Applications for United States Patents by Foreign applicants 

The European patent organization: The European Patent Organization (EPO) was founded in 1973
to provide a uniform patent system in Europe. A European patent can be obtained by filing a single
application with the EPO headquartered in Munich (or its subbranches in The Hague or Berlin or with
the national offices in the contracting nations). Once granted, the patent in valid in any of the EPO
countries designated in the application and has the same force as patent granted in any one of the
contracting nations.

IPR of Computer Software:

This is the genesis of all intellectual property rights (IPRs). These rights refer to the property that is a
creation of the mind: inventions, literary and artistic works, symbols, names, images, and designs used
in commerce.

Agreement on Trade related aspect of Intellectual Property Rights (TRIPS)―part of the World Trade
Organisation (WTO) Charter―talks about the following seven kinds of IPRs:

1. Copyright and Related Rights

2. Trademarks

3. Geographical Indications

4. Industrial designs
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 5. Patents

6. Layout - designs (Topographies) of Integrated Circuits

7. Protection of Undisclosed Information (Trade Secret)

This list of IPRs is enumerative and not exhaustive; there can be other IPRs.

IPR Protection in India

In our country, IPRs are protected under the following Acts.

1. The Biological Diversity Act, 2002

2. The Copyright Act, 1957.

3. The Design Act, 2000.

4. The Geographical Indications of Goods (Registration and Protection) Act, 1999.

5. The Patents Act, 1970.

6. The Protection of Plant Varieties and Farmers' Rights Act, 2001.

7. The semiconductor Integrated circuits Layout design Act, 2000.

8. The Trade Marks Act, 1999.

IPRs in the Computer Industry

IPRs in the computer industry are affected by the following areas:

1. Contract/License

2. Copyright and Related Rights

3. Undisclosed Information (Trade Secret)

4. Patents

5. Trademarks

6. Layout - designs (Topographies) of Integrated Circuits

COPYRIGHT, TRADE SECRET AND CONTRACT/LICENSES

For sake of convenience, let's take the first three IPRs together—we will discuss patents
afterwords.

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  'Contract/ license' is general law that governs conditions in any transactions. It is equally
applicable to the computer software.

 'Copyright' lies in the description; it is the form of expression of ideas: this expression may be
by artistic, or dramatic, or literary, or musical work; it may be, by films, pictures and sound
recordings too. It is governed by the Copyright Act, 1957.

 ‘Undisclosed information/ trade secret’ is a secret. It must not be of public or general

knowledge in the trade. It may consist of any formula, pattern, device or compilation of
information which gives an advantage over competitors who do not know or use it. It implies
some novelty though not of the same degree as in the patent law, as that does not possess
novelty is usually known.

Protecting Software Through Copyrights

Copyright law defines copyright as: "original works of authorship fixed in any tangible medium of
expression." You can find this quotation and a longer definition in section 102 of U.S. Copyright Law.
So the way you express an idea, like a work of fiction or software in code, falls under Copyright law.

The Copyright Act, 17 U.S.C. § 101 calls computer programs "literary works."

What Copyright Protects

 Against word-for-word copying

 Internationally, as soon as you create it

Registering your copyright with the Copyright Office is a good idea for legal purposes.

Rights Granted by a Copyright

A copyright grants you specific rights in terms of your software. When you hold the copyright to
software code, you can:

 Make copies of your software code

 Sell or give away the code

 Make a "derivative work," which is a second software that uses a lot of the original code

 Post the code somewhere, or otherwise display it

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An official copyright registration is easy to get and doesn't cost you much. It can cost as little as $35
and only takes about four months.

Copyrights last for the lifetime of the person who created the work, plus 70 years after that person's
death. If you're copyrighting something you bought from a person you hired to create it, the
copyright lasts for 95 years after you first publish that work, or 120 years after the work is created,
whichever comes first.

Stealing from the software is more complicated than just plagiarizing because the software is more
than just code. Software is an invention or an idea. Copyright law only protects how that idea is
written down. Because a software program does something specific, protecting against copying might
not be enough. Someone could use different code but still steal your invention.

Protecting Software With a Patent

To protect a process, like the function of software, you need a patent. A patent will protect things like:

 Systems

 Functions

 Solutions to computer problems

You can use two types of patents to protect software: utility and design.

Utility protects what the software does.

Design protects any decorative part of your software.

Unlike copyright law, patent law protects the invention itself. That way, someone can't create a
software program with different code that does the exact same thing your software does. But the
patent doesn't protect your specific lines of code against plagiarism the way copyright does.

If you include information in your published patent application, that information is no longer a trade
secret.

Things to Consider Before Applying for a Patent

 Patents last for 20 years after the day you receive the patent. Then the work goes into Public
Domain.

 If you patent solving a specific problem, you might block other programmers from solving the
problem in a different way.

 Getting a patent can take as long as two years.

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  Filing with the U.S. Patent and Trademark Office (USPTO) can cost $1,000 to $3,000.

Getting a software patent has been the subject of lots of legislation, including Supreme Court cases.
The precedence for software patents isn't always clear, making getting a software patent even more
difficult.

Protecting Software as a Trade Secret

A trade secret is information you or your company has that other people don't have. You use this
information in business, and it gives you a leg-up over your competition.

You don't file any documents or apply with an office to get a trade secret. Instead, the way you treat
your software can make it a trade secret. You have to take "reasonable measures" to keep the
software a secret:

 Keep the software away from the public.

 Have employees sign non-disclosure agreements.

 Have employees sign non-compete agreements.

 Do exit interviews with employees who are leaving to make sure they aren't bringing IP with
them.

 As soon as an employee quits or is fired, take away all their file and data access.

 Investigate any suspicious employee activity.

 Keep IP data stored in compartments, and only give access to employees who need it.

You can maintain a trade secret for as long as you want. Unless someone discovers your secret by
what the law calls "fair means," your trade secret will last forever. If someone else discovers, on their
own, a trade secret similar to yours, you can't take legal action. Sometimes companies and individuals
don't see trade secrets as secure enough protection for valuable software inventions.

Copyright and Hiring Software Developers

One difficulty with copyright and software comes from companies who hire software developers.
Usually, copyright law says that whoever creates the work owns the copyright. However, the law also
contains language to cover work-for-hire.

Independent Contractors

If you work as an independent contractor, you own the copyright to your work even if you create it for
a company. You and the company have to sign a contract stating they own the copyright to change
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that, or you can license your software to the company instead of handing over the copyright. Whether
you're a business or an independent contractor, it's best to get these details out of the way before
work starts.

Who owns the copyright of software matters because of what copyright allows you to do with the
code:

 Reproduce it

 Give it away or sell copies

 Post the code somewhere (like on a website)

 Make what the law calls "derivative works"

A license allows another party, like a business, to use the software you developed. Handing over the
copyright, or assigning the copyright, gives them legal ownership of the copyright. No matter which
side you're on, your contract needs to be specific.

Using Contracts and Licensing to Protect Software IP

Copyright and patents both have limits as far as how they protect software IP. To fill the holes, many
people use contracts and license agreements.

 Instead of selling software, you can license it.

 A license protects your software from someone who might want to reverse-engineer, copy, or
hand it out.

 Have a legal professional draft your license to make sure it covers everything.

 Some people challenge licenses in court, but courts usually rule to uphold licenses.

One problem with licenses is getting people to agree to them. If someone uses your software who did
not agree to the license (like by using software someone else purchased) then they aren't bound by it.
You can go after the person who violated the license by letting a third-party use the software. Using
the license to protect your software against someone who didn't agree to it, however, is very difficult.

Difficulties With Patenting Software

The difficulties around software patents stem from the definition of what is patentable.

The United States does not consider three things to be patentable:

 Abstract ideas

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  Natural phenomena

 Laws of nature

When you patent software, it has to meet lots of USPTO and legal criteria. That's why not all
software qualifies for a patent. The most important include:

 Your software has to be useful or have a specific application.

 It has to be new.

 It has to have an "inventive step" that is not obvious to people in the field.

What About Agile Software Development?

Agile software development doesn't follow a sequence like traditional software development. Instead,
developers work together on different parts of the project, communicate as the software evolves, and
solve problems as they appear. The developers do this in bursts of work called "sprints." Clients or
customers also see the partly finished software.

In a traditional software development environment, IP is easier to figure out. Defining who worked on
which piece of code — and therefore owns it as IP — is relatively straight-forward.

IP Problems in Agile Development

Agile development happens more quickly than traditional software development. The fast pace,
combined with the teams of people working very quickly, makes it difficult to figure out where IP
belongs. Plus, the pieces of software that professionals develop during agile development might only
be parts of code and might not function on their own without the rest of the software.

Common issues add to the difficulties in identifying IP during agile development:

 A short development cycle

 Less time to think about or document possible IP created during the cycle

 Lots of people working on pieces of the same code

 Difficulty seeing how small innovations during different work cycles fit together to create IP

 Less communication between the developers and company lawyers who could advise about IP

IP Solutions and Techniques in Agile Development

An agile development cycle still produces IP that you or your company can protect. However, people
using agile development have to adjust the techniques they use for finding and detailing IP.
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  Have employees and contractors sign nondisclosure agreements.

 Make sure employee and freelancer contracts include clauses about who any IP produced
belongs to.

 Create security measures around every project, like document management and data backups.

 Encourage your employees to be inventive by recognizing their innovation with awards or

bonuses.

 Mark in-development projects with copyright notices to add extra protection.

 Treat your projects like trade secrets by adding trade secret protocols around developing
projects.

 Store in-development projects away from non-secret projects.

 Teach your employees about trade secret practices.

Role of IPR in biotechnology industry:

Biotechnology is an innovation that uses natural frameworks, living creatures or parts of this to create
or make various items.

With the improvement of a hereditary building during the 1970s, inquire about in biotechnology (and
other related zones, for example, medication, science and so forth.) grew quickly on account of the
new probability to make changes in the life forms’ hereditary material (DNA).

Today, biotechnology covers a wide range of controls (eg. hereditary qualities, natural chemistry,
atomic science, and so forth). New innovations and items are built up each year inside the regions of
medication (advancement of new meds and treatments), farming (improvement of hereditarily
adjusted plants, biofuels, organic treatment) or modern biotechnology (generation of synthetic
compounds, paper, materials, and nourishment).

Biotechnology helps living beings to fight against the illness. At present, there are in excess of 250
biotechnology human services items and antibodies accessible to patients, numerous for already
untreatable maladies. More than 13.3 million ranchers around the globe utilize rural biotechnology to
build yields, keep harm from creepy crawlies and bothers and lessen cultivating effect on the earth.

Licensing Biotechnology Inventions in India

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The IPO considers biotechnological developments to be identified with living elements of
characteristic starting point, for example, creatures, people including parts thereof, living elements of
the fake starting point, for example, small scale life forms, immunizations, transgenic creatures and
plants, organic materials, for example, DNA, plasmids, qualities, vector, tissues, cells, replicons, forms
identifying with living elements, forms relating to organic material, strategies for treatment of human
or creature body, natural forms or basically organic procedures. The accompanying biotechnological
developments are not considered patentable under Section 3 of the Indian Patent (Amendment) Act
2005.

1. Living elements of the characteristic root, for example, creatures, plants, in entire or any parts
thereof, plant assortments, seeds, species, qualities also, smaller scale living beings.

2. Any procedure of assembling or generation identifying with such living substances.

3. Any strategy for treatment, for example, therapeutic, careful, therapeutic, prophylactic
indicative also, remedial, of people or creatures or on the other hand different medications of
comparable nature.

4. Any living substance of fake beginning, for example, transgenic creatures and plants, or any
part thereof.

5. Natural materials, for example, organs, tissues, cells, infections and all the way toward getting
them ready. Basically natural procedures for the creation of plants and creatures, for example, a
technique for intersection or reproducing.

Biotechnology is one of the best examples for a field which is a combination of various different
disciplines. Biotechnology revolves around biology, chemistry, physics .. etc.,. You name the discipline
and biotechnology is connected with it. An area where the limit for innovation has no bounds, a form
of protection is required to keep the knowledge safe and preserved. Intellectual property rights
provides that shield and the barrier to protect it.

Aspects of IPR involved in Biotechnology :

 Patents

 Plant Breeder’s Rights and Farmer’s Variety Act

 Trademark

 Copyrights

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  Trade Secrets

Role of IPR in biotechnology industry:

 Patent Protection :

Inventions are majorly protected under patents. Any new product or process can be patented. A
patent helps in gaining that pivotal edge in the market. Suppose you have designed a new drug and
want to launch it in the market but there is a possibility that someone else might steal it. The concern
that arises here is to keep it safe and patent helps in providing this security for your invention. Any
use of it has to be authorised.

 Revenue Generation :

License is awarding of a body the permission to use your patent. This license can be awarded in
exchange for royalty or any form of compensation ( usually monetary compensation). These royalties
are a source of revenue and can help providing an extra source of income for the organization.

 Investment Cycle :

IPR helps in maintaining the investment cycle for the organization. The investment cycle has to be
maintained because constant influx of money in Research and Development is vital for the
organization. It helps them always stay on the front foot.

 Reward :

IPR helps in rewarding those people who have done the hard work and who have put in a shift. It is
very important to always reward the workers and IPR helps in doing that. It protects the innovator
from being robbed and provides him a platform to portray his skill.

 Protection with no restrictions :

It is very important that protection to any form intellectual property has to be awarded and IPR no
matter what provides that. In India, plants cannot be patented but a different IPR has been designed
to protect it. Plant Breeder’s Rights has been designed to protect the plant varieties.

Similarly, softwares are not patentable in India, and Bioinformatics comprises of these drug designing
softwares. Copyright helps in providing protection for this.

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