UNIT-I

INTRODUCTION TO INTELLECTUAL PROPERTY LAW

Property: Any product/ item that has some financial value

Classification of property

 Movable property: In civil law systems, personal property is often called movable
property or movables – any property that can be moved from one location to another.
This term is in distinction with immovable property or immovable, such as land and
buildings.
 Immovable property: Immovable property is an immovable object, an item
of property that cannot be moved without destroying or altering it - property that is fixed
to the earth, such as land or a house. In the United States it is also commercially and
legally known as real estate and in Britain as property.
 Intellectual property: Intellectual property (IP) refers to creations of the mind, such as
inventions; literary and artistic works; designs; and symbols, names and images used in
commerce.

Definition of Intellectual property

 Knowledge, creative ideas, or expressions of human mind that have commercial value and are
protectable under copyright, patent, service mark, trademark, or trade imitation, infringement,
and dilution. Intellectual property includes brand names secret laws from discoveries ,
formulas, inventions, knowledge, registered designs, software, and works of artistic, literary, or
musical nature. It is one of the most readily tradable properties in the digital marketplace.

 In a simple way Intellectual property is a property that arises/ comes from the human
intellect.
 Simply it is product of human creation.

Features of Intellectual Property

 Documentation : (Need Documentation)

 Legal Authorization: (Need legal Acceptance)
 Description: (details of Intellectual property, whether it is a trade mark or patent, or copy
right )
 Ownership : (identify the original owner for registration)
 Time Duration: Intellectual properties have time duration based on the property
 Fee: the owners has to pay prescribed fee for protecting their intellectual property

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  Commercial value: intellectual properties have commercial value it means we can sell
and we can buy

Importance of intellectual property

 Enhancing profitability
 It is a business strategy
 It is crucial to Success in the market place
 More useful to the manufacturing sector
 Useful for compete with competitors
 Useful to the customers
 Economy development

EVOLUTION OF INTELLECTUAL PROPERTY

The World Intellectual Property Organization (WIPO) will hold its annual meeting beginning
Sept. 24, at which time representatives of its 184 member countries will likely endorse the so-
called WIPO Development Agenda. WIPO rejected the ideas expressed in the Development
Agenda just two years ago, but leading industrialized countries appear rather suddenly to have
changed their positions. As a result, this agenda will reflect a fundamental change in how
intellectual property rights (IPR) will be viewed globally in the coming decades.

For the past 40 years, the world's largest economies have enforced their position globally that
intellectual property rights are sacrosanct. The 1994 World Trade Organization (WTO)
agreement on Trade on Intellectual Property Rights (TRIPS) added some exclusion for
emergencies, but in general WIPO and TRIPS rules have been reflexively protective of patents
and copyrights.

In the past 10 years, however, this approach has come under increasing fire from governments in
developing countries (including WIPO members), human rights and humanitarian groups, relief
organizations and anti-capitalist groups. These entities argue that the system retards the
economic growth of developing countries and even results in deaths because citizens cannot
access medicines and other patented life-saving technologies. Most detractors of the current
regime argue that the absolute protection of intellectual property rights is doing far more harm
than good — economically and socially — and some of them are calling for a radical shift that
would essentially do away with recognition of IPR entirely.

As production of goods becomes more and more efficient, especially with modern industrial
processes reaching low-wage countries such as China, goods are becoming less expensive.
Intellectual property, on the other hand, is coming to be seen as expensive. Whether in drugs,
music, seeds or even designer handbags, the price gap between patented products and the raw
cost of the materials — that is, the price of the intellectual property — is growing. With that
growth, intellectual property rights are more frequently being abrogated. Any government tax
authority will attest that the amount of cheating is directly related to the perception that the cost
of a product is unfairly high.

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Though change is afoot, the world is nowhere near doing away with intellectual property
protection. Still, the tide has shifted the WIPO stance, as well as the outlook of a number of other
players. Most important, the fairly absolute approach to intellectual property protection looks
shaky. The coming regime will likely give corporations a rationale for protecting IPR in some
cases, but not others. In doing so, it will force changes in a number of industries and business
models.

In 1967, WIPO was formed to centralize the world's patent and copyright information. It
operates a database of patents and awards internationally recognized patents to inventors. More
than any other body, WIPO ensures an invention receives global patent protection the first time it
is patented anywhere in the world. In addition, WIPO promotes adherence to IPR among its
member countries, and thus has come to be seen as the global champion of intellectual property
protection.

WIPO's hand was strengthened by the 1994 TRIPS regime. In agreeing to TRIPS, countries
acknowledged that the protection of intellectual property rights is central to free trade, and each
agreed to combat piracy and respect patent and copyright protection.

The Coming Revolution

Intellectual property protection has entered the public's mind through three very different spheres
— pharmaceuticals, expensive consumer products and media (especially music). City dwellers
come into contact with intellectual property violations every time they pass a street vendor
selling knockoff Prada, Gucci or Louis Vuitton products for $20 or pirated new-release DVDs
for 75 cents or less. The designer bags look and feel very close to the "real" item, and the only
thing their manufacturer failed to do was invent the style. The materials used in a Prada handbag
cost a fraction of the bag's retail price.

Similarly, the music industry sells for around $16 a CD that is available for free on the Internet,
yet the actual material in the CD and its packaging cost pennies. The rest of the cost is in
intellectual property, marketing and distribution.

Though the music and movie industries and luxury brand name goods are besieged by IPR
problems, their global importance pales in comparison to that of the pharmaceutical industry. At
the center of the pharmaceutical industry's problem is compulsory licensing. Under the
compulsory licensing clause in TRIPS, member countries can break a patent and manufacture a
drug themselves in emergency situations, such as a malaria outbreak. Using this clause, however,
some governments have actively encouraged the copying and selling of patented drugs without
the payment of a royalty to the drug's inventor. As a result of increasing episodes of compulsory
licensing, the pharmaceutical industry's core business model is under attack.

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INTELLECTUAL PROPERTY LAW BASICS

Legal system provides certain rights and protections for owners of property.. Rights and
protections for owners of intellectual property are based on federal patent, trademark and
copyright laws and state trade secret laws. In general, patents protect inventions of
tangible things; copyrights protect various forms of written and artistic expression; and
trademarks protect a name or symbol that identifies the source of goods or services

Objectives of Intellectual property Law

 Absolute protection
 Financial incentive
 Economic growth
 Increase monetary value
 Morality

TYPES OF INTELLECTUAL PROPERTIES/ CLASSIFICATION OF INTELLECTUAL

PROPERTIES

 Patents ( for inventions)

 Copy rights ( for creative/ Artistic works/ Software works)
 Trade mark ( for marks used in business)
 Industrial design ( for external shape of the product)

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  Layout design of integrated circuits
 Geographical indicators ( for goods from a particular region Ex: Darjeeling- Tea)
 Plant varieties ( for new varieties of plant)
 Trade secrets ( for information of commercial importance)

The main types of intellectual property rights are

1. Trade Mark
2. Copy rights
3. Patents
4. Trade secrets

1. Trade Mark: When George Eastman came up with the name KODAK® for his camera in
1883, what he cam with was a trademark. Trademarks include brand names, logos, slogans
and even product shape colors and sounds.
Choosing a Trade Mark
The strength of a trademark varies according to
 Generic: name of product or service
 Descriptive: tells something about product or service directly
 Suggestive: suggest something about product or service indirectly
 Arbitrary: no relationship to product or service
2. Copy rights: When Ernest Hemingway wrote The Old Man and the Sea in 1952, what he wrote
was protected by copyright. Copyright protects creative works like software code, website
content, musical compositions, audio recordings, movies, books, articles, diagrams and photos.

How to obtain copy right protection

In U.S., copyright exists upon fixation of work in tangible medium; no registration necessary
Work must embody a threshold degree of originality.
Exclusive rights of copyright owner:
• Reproduce work
• Prepare derivative works
• Distribute work to the public
• Perform work in public
• Display work in public

Term: generally, 70 years after death of author corporate authorship, 95 years from
Publication years from creation, whichever expires first.
Benefits of copy right registration
 Registration required before a copyright owner bring suit for infringement
 Statutory damages and attorneys’ fees available infringement action if work registered
before infringement or within 3 months after publication

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  Registration may serve as presumptive evidence the copyright in the work is valid
 Registration may give actual or constructive no copyright claim
 Registration may be recorded with U.S. Customs Service to prevent importation of
infringing goods

3. Patents: When Thomas Edison ran electricity through an incandescent filament in 1879, he
invented the modern light bulb, and what he got for it was a patent. Patents protect inventions.
A patent is a property right given by the government to an inventor that gives the inventor the
right to exclude others from making, using, offering for sale or selling the invention. In return
for that exclusive right, the inventor must disclose the invention to the public so that others can
learn from it.
Types of patents

There are several different types of patents in the United States

Design Patent: Design patents cover the ornamental features (i.e., appearance) of a product.
Utility Patent: Utility patents are the most common, and they cover processes, machines,
articles of manufacture, and compositions of matter.
Plant Patent: Plant patents cover newly developed varieties of plants provided they can be
reproduced asexually.

Requirements for patentability

 Novelty: Must be “new” (i.e., not already know the general public or those skilled in
The field of invention).
 Utility: Must have a useful purpose and actual work. Must not be frivolous or immoral
 Non-Obviousness : Must not be obvious to a p with ordinary skill in the field of the
invention at time the invention was made
Term: typically 20 years, but actual term varies depending upon country issuing patent.

4. Trade Secrets: When Dr. John S. Pemberton mixed together sugar syrup and other ingredients
in 1886 to make a refreshing new beverage, he came up with the secret formula for COCA-
COLA®. He kept it secret and protected it as a trade secret. A trade secret is information that: (1)
provides a business with a competitive advantage; and (2) is treated in a way that can reasonably
be expected to prevent the public or competitors from learning about it, absent improper
acquisition or theft

Trade secrets examples: A formula for a soft drinks, Marketing strategies, Manufacturing
techniques, Computer algorithms, Customer lists

TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)

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The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an
international agreement administered by the World Trade Organization (WTO) that sets down
minimum standards for many forms of intellectual property (IP) regulation as applied to
nationals of other WTO Members.

The agreement covers five broad issues:

 how basic principles of the trading system and other international intellectual property
agreements should be applied
 how to give adequate protection to intellectual property rights
 how countries should enforce those rights adequately in their own territories
 how to settle disputes on intellectual property between members of the WTO
 Special transitional arrangements during the period when the new system is being
introduced.

The three main features of the Agreement are:

 Standards: In respect of each of the main areas of intellectual property covered by the
TRIPS Agreement, the Agreement sets out the minimum standards of protection to be
provided by each Member. Each of the main elements of protection is defined, namely
the subject-matter to be protected, the rights to be conferred and permissible exceptions
to those rights, and the minimum duration of protection. The Agreement sets these
standards by requiring, first, that the substantive obligations of the main conventions of
the WIPO, the Paris Convention for the Protection of Industrial Property (Paris
Convention) and the Berne Convention for the Protection of Literary and Artistic Works
(Berne Convention) in their most recent versions, must be complied with. With the
exception of the provisions of the Berne Convention on moral rights, all the main
substantive provisions of these conventions are incorporated by reference and thus
become obligations under the TRIPS Agreement between TRIPS Member countries. The
relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement,
which relate, respectively, to the Paris Convention and to the Berne Convention.
Secondly, the TRIPS Agreement adds a substantial number of additional obligations on
matters where the pre-existing conventions are silent or were seen as being inadequate.
The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus
agreement.

 Enforcement: The second main set of provisions deals with domestic procedures and
remedies for the enforcement of intellectual property rights. The Agreement lays down
certain general principles applicable to all IPR enforcement procedures. In addition, it
contains provisions on civil and administrative procedures and remedies, provisional
measures, special requirements related to border measures and criminal procedures,
which specify, in a certain amount of detail, the procedures and remedies that must be
available so that right holders can effectively enforce their rights.

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  Dispute settlement: The Agreement makes disputes between WTO Members about the
respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.

AGENCIES RESPONSIBLE FOR INTELLECTUAL PROPERTYREGISTRATION

1. World intellectual property organization (WIPO)

The World Intellectual Property Organization (WIPO) is one of the 17 specialized

agencies of the United Nations.WIPO was created in 1967 "to encourage creative
activity, to promote the protection of intellectual property throughout the world.

WIPO is the global forum for intellectual property services, policy, information and
cooperation. We are a self-funding agency of the United Nations, with 188 member
states. Our mission is to lead the development of a balanced and effective international
intellectual property (IP) system that enables innovation and creativity for the benefit of
all. Our mandate, governing bodies and procedures are set out in the WIPO Convention,
which established WIPO in 1967.

Objectives

 The objectives of the system are two-fold. Firstly, it facilitates the obtaining of protection
for marks (trademarks and service marks).

 Secondly, since an international registration is equivalent to a bundle of national

registrations, the subsequent management of that protection is made much easier.

2. International trade mark association (INTA)

The International Trademark Association (INTA) is a worldwide not-for

profit association of trademark owners and professionals dedicated to
supporting trademarks and intellectual property in order to protect consumers and to
promote fair and effective global commerce. INTA’s members are more than 6,500
organizations from 190 countries. INTA members collectively contribute almost US $12
trillion / €8.8 trillion / ¥73 trillion to global GDP annually. For comparison, the 2013
annual GDP of the top three markets was $9.2 trillion (China), $17.9 trillion (European
Union) and $16.7 trillion (United States).
The Association's member organizations represent some 30,000 trademark professionals
and include brand owners from major corporations as well as small- and medium-sized
enterprises, law firms and nonprofits. There are also government agency members as well
as individual professor and student members.
3. Berne Convention

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 The Berne Convention for the Protection of Literary and Artistic Works, usually
known as the Berne Convention, is an international agreement governing copyright,
which was first accepted in Berne, Switzerland, in 1886.
The Berne Convention formally mandated several aspects of modern copyright law; it
introduced the concept that a copyright exists the moment a work is "fixed", rather than
requiring registration. It also enforces a requirement that countries recognize copyrights
held by the citizens of all other signatory countries.
4. Madrid protocol
The Madrid system (officially the Madrid system for the international registration of
marks) is the primary international system for facilitating the registration
of trademarks in multiple jurisdictions around the world. Its legal basis is the
multilateral treaty Madrid Agreement Concerning the International Registration of
Marks of 1891, as well as the Protocol Relating to the Madrid Agreement (1989).
The Madrid system provides a centrally administered system of obtaining a bundle of
trademark registrations in separate jurisdictions. Registration through the Madrid system
does not create an 'international' registration, as in the case of the European Community
Trade Mark system; rather, it creates a bundle of national rights able to be administered
centrally. Madrid provides a mechanism for obtaining trademark protection in many
countries around the world which is more effective than seeking protection separately in
each individual country or jurisdiction of interest.
The Madrid Protocol system provides for the international registration of trade marks by
way of one application that can cover more than one country. The opportunity of having a
single registration to cover a wide range of countries gives advantages, both in terms of
portfolio management and cost savings, as opposed to a portfolio of independent national
registrations.
Madrid now permits the filing, registration and maintenance of trade mark rights in more
than one jurisdiction, provided that the target jurisdiction is a party to the system. The
Madrid system is administered by the International Bureau of the World Intellectual
Property Organization (WIPO) in Geneva, Switzerland. There are 90 countries registered
with the Madrid System.
5. Paris convention
The Paris Convention for the Protection of Industrial Property, signed
in Paris, France, on 20 March 1883, was one of the first intellectual property treaties. It
established a Union for the protection of industrial property. The Convention is currently
still in force. The substantive provisions of the Convention fall into three main categories:
national treatment, priority right and common rules.
6. North American Free Trade Agreements (NAFTA)

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 The North American Free Trade Agreement (NAFTA) is an agreement signed by
Canada, Mexico, and the United States, creating a trilateral rules-based trade bloc
in North America.

7. General Agreement on Tariffs and Trade (GATT)

General Agreement on Tariffs and Trade (GATT) was a multilateral agreement

regulating international trade. According to its preamble, its purpose was the "substantial
reduction of tariffs and other trade barriers and the elimination of preferences, on a
reciprocal and mutually advantageous basis." It was negotiated during the United Nations
Conference on Trade and Employment and was the outcome of the failure of negotiating
governments to create the International Trade Organization (ITO). GATT was signed by
23 nations in Geneva on October 30, 1947 and took effect on January 1, 1948. It lasted
until the signature by 123 nations in Marrakesh on April 14, 1994 of the Uruguay Round
Agreements, which established the World Trade Organization (WTO) on January 1,
1995.

INFRINGEMENT

An intellectual property infringement is the infringement or violation of an intellectual

property right. There are several types of intellectual property rights, such as copyrights, patents,
and trademarks. Therefore, an intellectual property infringement may for instance be a

 Copyright infringement: Copyright infringement is the use of works protected

by copyright law without permission, infringing certain exclusive rights granted to
the copyright holder, such as the right to reproduce, distribute, display or perform the
protected work, or to make derivative works.

Examples: Using someone else’s material on YouTube without permission, using a popular
song as background to your own video, publishing a translation of someone’s foreign work

Prevention of copy right infringement

 Know what copyrights protect

 Know what isn't protected
 Don't confuse copyrights, trademarks, and other forms of "intellectual property
 Learn about the public domain laws for your jurisdiction

Penalties of copy right infringement

1. Infringer pays the actual dollar amount of damages and profits.

2. The law provides a range from $200 to $150,000 for each work infringed.

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 3. Infringer pays for all attorneys’ fees and court costs.
4. The Court can issue an injunction to stop the infringing acts.
5. The Court can impound the illegal works.
6. The infringer can go to jail.

 Patent infringement : Patent infringement is the commission of a prohibited act with respect
to a patented invention without permission from the patent holder. Permission may typically
be granted in the form of a license

Examples:

Prevention of patent infringement

 Start Early and Keep Your Diligence

 Keep Your Head above the Sand
 Find Patent(s) You May Be Infringing Upon ( by contact with competitor, search in
internet etc)
 Preliminary Patent Infringement "Screening" of Patents by You
 Infringement Review by Your Patent Attorney

 Trademark infringement : Trademark infringement is a violation of the exclusive rights

attached to a trademark without the authorization of the trademark owner or any licensees
(provided that such authorization was within the scope of the license).

Prevention of Trade Mark Infringement

 Comparison of the marks
 Comparison of the goods or services
 Channels of trade, purchaser and pricing
 Strength of the mark
 Actual confusion

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  Additional thoughts

Penalties of Trade Mark infringement

If the trademark owner is able to prove infringement, available remedies may include the
following:
 a court order (injunction) that the defendant stop using the accused mark;
 an order requiring the destruction or forfeiture of infringing articles;
 monetary relief, including defendant's profits, any damages sustained by the plaintiff, and the
costs of the action; and
 An order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

Example:

Implications/ Consequences of Infringement

 Business Risk
 Resource Implications
 Legal liability
 Security risk
 Reputational risk

MISUSE/ OVERUSE/ABUSE OF INTELLECTUAL PROPERTY RIGHTS

If an Intellectual Property owner improperly uses the Intellectual Properties beyond its lawful
scope, the Intellectual property is consider to be improperly used or misused.

Example: patent misuse includes illegal tying of products and services to the patented
invention, price fixing and the like.
Ways to Misuse/Overuse/Abuse IPR
 Monopoly pricing

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  Restrictions on end users
 Territorial restraint
 Exclusive dealings

Reasons to Prevent Abuse/ Misuse of IPR

. Article 31 of TRIPs provides for the grant of compulsory licenses, under a variety of situations,
such as:
 The interest of public health
 National emergencies
 Nil or inadequate exploitation of the patent in the country
 Anti-competitive practices by the patentees or their assignees
 Overall national interest
 Prevention of monopoly
Methods to prevent misuse of IPR
There are generally two approaches that have been adopted to prevent IPR abuse: compulsory
licensing (an involuntary contract between a willing buyer and an unwilling seller imposed and
enforced by the state) and parallel imports (goods brought into a country without the
authorization of the patent, trademark or copyright holders after those goods were placed
legitimately into the market elsewhere)
 Compulsory Licensing: (no one has the ownership rights) Compulsory licensing is when
a government allows someone else to produce the patented product or process without the
consent of the patent owner.
 IP Law enforcement:
 Imposing huge penalties:
 Cancelation of licensing:
 Imprisonment:
 Banned from the doing business:
 Parallel Imports: The term “parallel imports” (also known as “gray market goods”)
refers to genuine branded goods obtained from one market (i.e., a country or economic
area) that are subsequently imported into another market and sold there without the
consent of the owner of the trademark.

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