National - Legal Setting

IPR - NATIONAL LEGAL SETTINGS

PATENTS

Patent Legislation In India - THE PATENT ACT 1970

The history of patent law in India begins in 1911, with the enactment of the Indian Patents and Designs Act, 1911. The current Patents Act, 1970, went into effect in 1972, revising and combining the previous patent law in India. The Patents Act of 1970 was revised once again by the Patents (Amendment) Act of 2005, which expanded product patents to all sectors of technology, including food, pharmaceuticals, chemicals, and microorganisms. The laws pertaining to Exclusive Marketing Rights (EMRs) have been removed as a result of the modification, and a clause allowing the issue of compulsory licence has been inserted. Pre-grant and post-grant opposition provisions have also been added.

In India, an innovation pertaining to a new product or method comprising an innovative step and capable of industrial application might be patented. However, it must not fall into the category of non-patentable innovations as defined in sections 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be submitted by the true and original inventor or his assignee, either alone or jointly.

What is the definition of a patentee?

A patentee is just an individual who is generally recognized in the patent registry as the guarantee or patent proprietor. The patentee should have the same right to deal with his property as any other owner of moveable property deals with his property.

Patentee's Rights

The rights given to a patentee are discussed in Section 48 of the Act.

• In India, a patentee has the sole right to use, exercise, sell, or distribute the patented object or substance. or to use or practice the approach or procedure if the potent is for a certain individual. This privilege may be utilised by the patentee personally, as well as by his agent or licensees. The rights of the patentee are only exercisable during the period of the patent.

• A patentee has the option to transfer rights, give licenses, or enter into other arrangements for a fee. To be genuine and valid, a license or assignment must be in writing and registered with the Controller of Patents. The document assigning a potent is not admissible as proof of any person's title to a potent until registered, and this applies to the assignee rather than the assignor.

• A patentee has the right to surrender his potent; however, before accepting the offer of surrender, a notice of surrender is issued to all people whose names are listed in the register of persons having an interest in the powerful, and their objections, if any, are considered. The surrender application is also published in the Official Gazette so that interested parties can object.

• A patentee has the right to file a claim for infringement of the potent before a District Court with jurisdiction to hear the case.

Invention Qualification Requirements:

• The innovation must be new, i.e. it must be innovative, which means that it must not already exist:

• The innovation must be non-obvious, which means that it must be a considerable advance over the prior one: A simple change in technology does not grant the inventor the right to a patent:

• The innovation must be helpful in a legitimate manner, that is, it must not be mainly utilised in any unlawful work and must be valuable to the world in a legitimate manner.

• An innovative step is required for an innovation.

• The invention must be suitable for industrial use or utility.

• The innovation shall not fall under the category of non-patentable inventions as stated in Sections 3 and 4 of the Patent Act of 1970.

Patent Term/tenure in India

Each patent is valid for 20 years from the date of filing, regardless of whether it is submitted with a provisional or full specification. The 20-year term, however, commences on the international filing day for petitions made under the Patent Cooperative Treaty [PCT].

A patent can be qualified only if all three requirements, namely novelty, inventive step, and suitability for industrial application, are met. Failure to meet any of the three criteria will result in the patent being deemed unqualified, and the application for the same will be denied.

What is not patentable?

Section 3 discusses the exclusions to which subject topics are not covered by patents.

1. Frivolous inventions: These violate natural rules. For example, if any invention is based only on human blood. This would go against natural laws and would fall under the category of foolish creations. Something is constantly in opposition to the creation of natural rules.

2. Inventions that violate public order or morals, or that hurt the environment

3. Any discovery, whether scientific concepts or otherwise. For e.g., Eisenstein's theories or other concepts, if these theories are patentable, how will students be able to study them if they are not freely available in the public domain?

4. The mere discovery of a previously unknown material is not patentable.

Patent Registration In India

• Method for registering:

1. 1. Fill up the patent application and have it number.

   2. Fill out a form to request publishing. If no request is made, the patent specification will be published in the official journal 18 months following the date of application. On the other hand, by submitting a request, the patent specification can be published within one month after submitting the form.

   3. Request for inspection within 48 months of the patent application's filing date. An accelerated examination of a patent application can be requested by paying an additional cost.

   4. The initial examination report is given within 12 – 24 months following filing a request for examination. This report may raise substantive and procedural challenges to the patent.

   5. If objections are made, the patent applicant must respond to the statement of objections within six months of the report's publication date.

   6. If the formal objections are addressed within the time frame specified, the patent is issued and offered for opposition.

   7. The patent is open for third-party opposition, if any, for one year from the date of publication. Once granted, a patent is valid for 20 years and must be renewed every year beginning with the third year from the date of application.

The following sections are related with the patent application: —

• Sections 6 and 7 were especially about the application. The application can be filed by three people: the true and first inventor, the assignee of the first inventor, and the legal representative of a deceased person who was ready to file the application.

• Sections 9 and 10 deal with preliminary and final specifications, respectively.

• Section 11 is concerned with the priority date. If a person files directly under the complete specification, the priority date is the date of filing of the complete specification, whereas if the person files a provisional specification and then the complete specification after 12 months, the priority date is the date of filing of the provisional specification.

• Section 11A discusses the publishing. The patent is protected from the date of publication. Rights such as infringement and power ownership are granted. Section 11B discusses the patent examination.

• Section 25 is concerned with opposition procedures, including pre-grant and post-grant opposition.

• Section 43 discusses patent granting.

• Section 45 discusses the patent's expiration date. The priority date will be the sole date on which the patent will be issued. However, the date of the patent is the filing of the application for determining the patent's duration of 20 years.

Patent infringement

Patent infringement is a felony involving the unauthorized use of another's subject matter or proprietary innovation to create, market, or offer for sale. There are numerous types of patents, including utility patents, design patents, and plant patents. The essential concept behind patent infringement is that unauthorized individuals are not permitted to utilize innovations without the proprietor's permission. Indirect or direct patent infringement happens.

• Direct patent infringement: The most prevalent type of infringement is direct infringement, in which the infringing invention is directly disclosed, or the infringing invention performs essentially the same function.

• Indirect patent infringement is classified into two types: - Infringement by enticement is defined as any conduct by a third party that induces another person to directly infringe the patent. This might include selling components that can only be used reasonably far from a patented innovation, selling an invention with instructions to use in a specific way that infringes on a method patent, or licensing an invention that is covered by another's patent. The inducer must facilitate willful infringement, but it is not necessary to have the intent to infringe on the patent.

• Contributory Infringement: The selling of material components manufactured for use in a patented invention and having no other commercial use is considered contributory infringement. There is a lot of overlap with indicators. Contributor infractions, on the other hand, need a significant amount of time. Seller violations must show direct infringement intent. To be a requirement for indirect breaches. A direct violation must be accompanied by indirect conduct.

Patent search

InPass (Indian Patent Advanced Search System) - http://ipindiaservices.gov.in/publicsearch/

WIPO (World Intellectual Property Organization) Patentscope - https://patentscope.wipo.int/search/en/structuredSearch.jsf

USPTO (United States Patent and Trademark Office) - https://www.uspto.gov/patents-application-process/search-patents

Espacenet (European Patent Office- Patent Search) - https://worldwide.espacenet.com/

Google Patents - https://patents.google.com/

IP India - https://ipindiaonline.gov.in/tmrpublicsearch/

TRADE MARK

Trademark Legislation in India - THE TRADEMARK ACT 1999

In India before the 1940’s, there really was no trademark legislation. A number of trademark infringement issues developed, which were addressed under Section 54 of the Specific Relief Act, 1877, and registration was adjudicated under the Indian Registration Act, 1908. To address these issues, the Indian Trademark Act was enacted in 1940. Following the implementation of the trademark legislation, there was a rise in demand for trademark protection due to significant development in trade and commerce.

The Trademark and Merchandise Act, 1958, superseded the Trademark Act. It improves trademark protection and inhibits the abuse or fraudulent use of marks on products. The Act provides for trademark registration so that the owner of the brand can have a legal right to use it exclusively.

The government of India updated the old Act with the Trademark Act, 1999 in order to meet with TRIPS (Trade-related aspects of intellectual property rights) obligations proposed by the World Trade Organization. The purpose of the Trademark Act is to provide trademark users with protection, to direct the conditions on property, and to offer legal remedies for the enforcement of trademark rights.

The Trademark Act of 1999 grants the police the authority to detain in situations of trademark infringement. The Act provides a comprehensive definition of the often-used term "infringement." The Trademark Act stipulates fines and penalties for violators. It also lengthens the time it takes to register a trademark, as well as the registration of a non-traditional trademark.

Types:

• Service Marks

One of the most significant features to the New Act is the provision for service mark registration. It is now feasible for businesses and individuals providing any type of service to register their mark. As a result, companies that provide services of any kind in connection with business, industrial, or commercial concerns can register their service marks.

• Collective Marks

A new notion is included within the Act that allows any "Association" to register its mark. A collective mark is a trademark or service mark that is used or intended to be used by members of an association to indicate their membership in that association.

• Certification Marks

A certificate mark verifies or confirms something by assuring that some act has been performed or some legal requirement has been met. A certification mark specifies specific attributes of products or services for which the mark is used, as specified in the Trademark Act of 1999.

Trademark holder

Trademarks protect the owner by granting them the exclusive right to use a trademark to identify products or services or to allow others to use it in exchange for money. It is a tool for the registered proprietor to employ to prevent others from using the trademark illegally. The rights given by registration are defined in Section 28.

The registration of a trademark is valid if the right is granted to the certified owner of the trademark, the owner has the exclusive right to use the trademark in relation to the goods or services for which the trademark is registered, and the holder of the trademark has the right to claim maintenance in the event of trademark infringement.

Where more than two people are certified owners of trademarks that are identical or substantially similar to each other. The exclusive right to use each of those trademarks shall not be expected to be taken by one of those persons as against other persons only by registration of the trademark, except if their own rights are related to any conditions or limitations entered on the register, but each of those persons has the same rights as against other persons.

Trademark registration

To file for a trademark, an individual must follow the rules outlined in Section 18 of the Act. The Provision demands anybody filing for a trademark to do so in writing and in the method required for registration. The application must include the name of the mark, the products and services, the class into which the goods and services belong, the term of use of the mark, and the applicant's personal information such as name and address.

• Registration requirements

The government appoints a person to be recognized as the controller, general of patents, designs, and trademarks, who will be the registrant of the trademark, by announcing it in the official gazette. The government may designate additional officials if they believe they are relevant to the purpose of discharging, and the registrar may permit them to discharge under the supervision and control of the registrar.

The registrar has the authority to transfer or remove cases in writing, with justification. Section 6 of the Act addresses the upkeep of a trademarked name. Except for notice of the trust, particulars of registered trademarks and other specified particulars should be recorded at the head office. Each branch office must keep a copy of the register. It allows for the storage of records on computers, diskettes, or other electronic medium.

Trademark Classification

Section 7 of the Trademark Act of 1999 requires trademarks to be classified in accordance with the international categorization of products and services. A total of 45 types of products and services can be classified in this manner. The Nice Classification (NCL) is the worldwide classification system utilised, and it was created in 1957 as part of the Nice Agreement. According to the NCL, commodities and services are classified into 45 categories. Classifications 1–34 are for commodities, whereas classes 35–45 are for services.

• Absolute grounds for registration denial

Section 9 of the Act defines absolute reasons for registration denial. Trademarks that do not have any distinguishing features or are only made up of markings or signals that can be utilised in commerce to identify the kind, fine, amount, alleged reasons, values, or geographical origin.

And also a time of manufacturing of products or rendering of offers or various features of goods or offerings that comprises simply of markings or indicators that have become common in the current language. That mark is not eligible for registration. Unless it is proven that the mark has acquired a new character as a consequence of usage prior to the date of application.

It states that a mark may not be registered as a trademark if it: deceives the public or creates confusion; there is everything that can harm religious sensibility; there is a scandalous or filthy matter; its usage is forbidden. It states that a mark may not be registered as a trademark if it consists only of (a) the shape of products that form the nature of goods, (b) the shape of goods that is required to produce a technical result, or (c) the shape of goods that contributes considerable value to goods.

Trademark infringement

Infringement refers to the violation of someone's rights. As a result, trademark infringement entails a breach of trademark rights. When an illegal use of a trademark or a substantially similar mark on goods or services of a comparable kind occurs, a trademark is said to be infringed. In such a situation, the court will consider whether the use of the trademark would lead to consumer misunderstanding about the real brand they are purchasing.

As a result, under the Act, a trademark is infringed if: -

a. The trademark is a copy of a registered trademark with a few modifications or adjustments.

b. If the allegedly infringing mark is printed or utilised in ads.

c. If the allegedly infringing mark is utilised in the course of business

d. If the mark used is sufficiently close to a registered mark that a customer is likely to be confused or deceived when selecting a product category.

In the event of violation of a registered trademark, the individual may sue for monetary damages. The following requirements must be satisfied in order to file such a suit:

a. The plaintiff (the person who files the claim) must be the registered owner of the trademark.

b. The infringer (defendant) must employ a mark that is similar to the plaintiff's in such a way that they may readily be mistaken.

c. Such use by the defendant is not unintentional.

d. The defendant's use of the mark must be in the course of providing similar products or services to those for which the trademark is registered.

COPYRIGHT

Copyright is a kind of intellectual property that provides exclusive publication, distribution, and usage rights for the author. The idea of Copyright protection only began to emerge with the invention of printing, which made it for literary works to be duplicated by mechanical processes instead of being copied by hand. This led to the grant of privileges, by authorities and kings, entitling beneficiaries exclusive rights of reproduction and distribution, for a limited period, with remedies in the form of fines, seizure, confiscation of infringing copies, and possibly damages. In India, law related to copyright is governed by the Copyright Act which aims to assure authors, composers, artists, designers, and other creative people, who risk their capital in putting their works before the public, the right of their original expression, and second to encourage others to build freely upon the ideas and information conveyed by a work.

Historical development in India

In India, the earliest law of copyright was enacted by the British during the realm of East India Company that is the Indian Copyright Act, 1847 which was passed for the enforcement of rules of English copyright in India. After it, by Copyright Act 1911, this law was repealed, replaced and applied to all British colonies including India. Further, it was again modified in 1914 by the Indian Copyright Act,1914 which remained applicable in India until replaced by the Copyright Act, 1957 by the parliament of sovereign India.

The Copyright Act, 1957 contains fourteen chapters, nine chapters of rules, 79 sections, 28 rules, and 2 schedules.

The Subject matter under Copyright

Section 13 of the Copyright Act provides that copyright shall subsist throughout India in certain classes of works that are enumerated in the section. Copyright subsists throughout India in the following classes of works:

i. Original literary, dramatic, musical, and artistic works;

ii. Cinematographic films

iii. Sound recordings

iv. Computer programmes

THE RIGHTS CONFERRED

The Act provides exclusive rights to the copyrights holder under Section 14. The Act provides different kinds of rights with respect to different kinds of work.

i. Literary, dramatic or musical work (except computer programme):

(i) reproducing the work in any material form which includes storing of it in any medium by electronic means;

(ii) issuing copies of the work to the public which are not already in circulation;

(iii) performing the work in public or communicating it to the public;

(iv) making any nematographic film or sound recording in respect of the work;

(v) making any translation or adaptation of the work;

ii. Computer programme:

(i) to do any of the acts specified in respect of a literary, dramatic or musical work;

(ii) to sell or give on commercial rental or offer for sale or for commercial rental any copy of the computer programme.

iii. Artistic work:

(i) reproducing the work in any material form including depiction in three dimensions of a two-dimensional work or vice versa;

(ii) communicating the work to the public;

(iii) issuing copies of work to the public which are not already in existence;

(iv) including work in any cinematographic film;

(v) making a copy of the film including a photograph of any image or making any other sound recording embodying it;

(vi) selling or giving on hire or offer for sale or hire any copy of the film/sound recording even if such copy has been sold or given on hire on earlier occasions;

iv. Sound recording:

(i) To make any other sound recording embodying it

(ii) To sell or give on hire, or offer for sale or hire, any copy of the sound recording

(iii) To communicate the sound recording to the public

TERMS OF COPYRIGHT

Sections 22 to 29 deals with the term of copyright in respect of published literary, dramatic, musical and artistic works; anonymous and pseudonymous; posthumous, photographs, cinematographic films, sound recording, Government works, works of PSUs and works of international organisations. Literary, dramatic, musical or artistic works enjoy copyright protection for the lifetime of the author plus 60 years beyond i.e. 60 years after his death. In the case of joint authorship which implies the collaboration of two or more authors in the production of the work, the term of copyright is to be construed as a reference to the author who dies last. In the case of copyright in posthumous, anonymous and pseudonymous works, photographs, cinematographic films, sound recordings, works of Government, public undertaking and international organisations, the term of protection is 60 years from the beginning of the calendar year next following the year in which the work has been first published.

The copyright (Amendment) Act, i1994 has given special right to every broadcasting organisation known as broadcast reproduction right in respect of its broadcasts. This right is to be enjoyed by every broadcasting organisation for a period of twenty-five years from the beginning of the calendar year next following the year in which the broadcast is made. In terms of Copyright (Amendment) Act, 1999 if any performer appears or engages in any performance, he has a special right in relation to such performance called performers right to be enjoyed for a period of fifty years.

GEOGRAPHICAL INDICATION

A geographical indicator (GI) is a designation or symbol used on items that have a specific geographical origin and contain attributes or a reputation that are related to the location of origin. Geographical indications are important rights that, if not effectively protected, can be used by unscrupulous business operators to the harm of both customers and legal users.

TRIPS establishes basic standards of protection for geographical indications (GIs) as well as extra protection for wines and spirits. Part II Section III of the TRIPS prescribes minimal standards of protection for geographical indicators that WTO members must provide in Articles 22 to 24. In order to meet its TRIPS obligations, India enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999, which went into effect on September 15, 2003, and the Geographical Indications of Goods (Registration and Protection) Rules, 2002.

According to the Geographical Indications of Goods (Registration and Protection) Act of 1999, a "Geographical Indication" in relation to goods is an indication that identifies such goods as agricultural goods, natural goods, or manufactured goods as originating, or manufactured, in the territory of a country, or a region or locality within that territory, where a given quality, reputation, or other characterises such goods. GIs have been utilised in a broad range of goods in India, including Silao Khaja, Darjeeling Tea, Alphonso Mango, Kangra Tea, Basmati Rice, Coorg Cardamom, Feni, Alleppey Green Cardamom, Kanchipuram Silk Saree, Rasgulla, Kohlapuri Chappal, and others.

By registering a geographical indicator in India, the rights holder can prohibit others from using the registered geographical indication without permission by filing a civil suit or a criminal complaint. Registration of GIs is not required in India, as an unregistered GI can also be enforced by filing a passing off case against the infringement. It is, nevertheless, preferable to register the GI since the certificate of registration serves as prima facie evidence of its validity and no other proof is necessary.

Non-Registrable subjects under geographical indication?

The indications must come under the ambit of Section 2(1) of the Geographical Indication Act, 1999 in order to be registered. When this occurs, it must also comply with Section 9, which prevents the registration of a geographical indication.

· Which would cause confusion or confusion; or

· Which would be contrary to the time of enactment of any law; or

· Which includes or is libelous or indecent matter; or

· Which is likely to involve or cause force injury at any time; Religious sensitivity of any class or class of citizens of India; or

· That otherwise would have been destroyed for legal protection; or

· Those chosen to denote popular names or items and therefore to be retained in their place of origin, or those not in use in that nation; or

· Nevertheless, its is true as the area or location where the products originate, but it misleads the folks that the items originally come from another location, zone, or place, as the case would be.

Rights issued to the Holders:

Suitability: The person who is protected by the geographical indication act has been awarded exclusive rights, which can be inherited, bequeathed, sold, licenced, entrusted, or mortgaged. The possessor of a geographical indication has a form of property that he can use under specific conditions and take legal action against anybody who exploits his innovation without his permission. Does and is able to get remuneration for real estate.

The right to issue licences to others: The holder has the option to transfer a licence, grant licences, or engage into any agreement in exchange for compensation for their goods. To be legal and genuine, a licence or assignment must be provided in writing and recorded with the Registrar of Geographic Indications.

Right to exploit: Grant the user an exclusive right to utilise the geographic indication on geographical products for which the geographic indication is registered.

Right to seek redress: Registered owners and authorised users or users have the right to seek redress in the event that a geographical indication is violated.

Who is eligible to apply for geographical indication registration?

Any individual, producer, organisation, or body formed by or under the legislation may file for the recognition of their product's Geographical Indication.

· The Applicant shall serve the interests of the producers.

· The proposal must be written in the required format and include all detail regarding the product.

· The Proposal should be sent to the Registrar of Geographical Indicators, together with the product registration fee.

Whom to submit application?

The application must be filed to the Registrar under the Act, and the Registrar of Geographical Indications must be the Controller of Patents, Designs, and Trademarks designated under sub-section (1) of Section 3 of the Trademarks Act 1999. He will be aided by the appropriate number of officers chosen by the central government as they see suitable.

In Chennai, there is a fully functional contemporary patent office as well as the nation's first geographical indication (G.I.) register, which is a significant step forward in this sector. The Registry will complement this by complying with the Act's obligations. Every application must be lodged at the Office Registry of Geographical Indications within the territorial limits of the country, region, or locality in which the geographical indication is located.

Geographical Indications Registration

A GI registration application must be filed to the Registrar of Geographical Indications in the form provided by the Geographical Indications of Goods (Registration and Protection) Act, read with the Geographical Indications (Registration and Protection) Rules, 2002.

Step 1: Submit an application

The association of persons or producers, or any association or body, should represent the producers of the products in question and provide an affidavit outlining how the Applicant claims to represent their particular interests.

· Applications must be submitted in three copies.

· The Application must be signed by the Applicant or his representative and include a case summary.

· Describe the unique features and how those requirements are upheld.

· Four verified copies of GI-related field maps

· A description of the inspection structure, if one exists, whether there is a section for controlling the usage of G.I.

· Provide contact information for all candidates, as well as their addresses. If there are a significant number of manufacturers, then collective reference applications for all items and G.I. producers should be submitted. If it is registered, it should be noted in the registry. The application must be submitted to a specific address in India.

Steps 2 & 3: Preliminary and Final Examinations

· The examiner will look for any flaws in the Application.

· Within one month after receiving communication, the Applicant should execute the necessary steps.

· An advisory panel of subject-matter specialists evaluates the substance of the case description.

· Furnished will verify the accuracy of the description.

· Following that, a report on the examination will be provided.

Step 4: Display the reason notification

· If the Registrar has any objections to the Application, he must file them.

· The applicant must respond within 2 months or request a hearing.

· The verdict will be informed as soon as possible. If the Applicant wishes to appeal, he must do so within one month.

· The Registrar does have the authority to withdraw an application that has been wrongly approved after it has been presented at a hearing.

Step 5: Journal of Geographical Indications publication

Within 3 months after approval, each Application will be published in the Geographical Indications Journal.

Step 6: Resist Registration

· Anyone who objects to the G.I. application, which was published in the journal, has three months to file a notice of objection (another month upon request which is to be filed before three months).

· The RegistrarRegistrar will send the Applicant a copy of the notification.

· The Applicant will send a copy of the rebuttal statement within two months.

· If he does not, it is assumed that he has withdrawn his Application. If a counter-claim is submitted, the Registrar

. Registrar will serve a copy on the individual who gave notice of the objection.

· Following that, both sides will present their respective evidence via affidavits and supporting papers.

· Following that, the date of the case's hearing will be set.

Step 7: Application Registration

When a Geographical Indication application is accepted, the RegistrarRegistrar will register the Geographical Indication. If the application is filed after it has been registered, the date of filing will be deemed the date of registration.

The Registrar shall provide the Applicant a certificate bearing the Geographical Indicators Registry seal.

Step 8: Application Renewal

A registered G.I. will be valid for ten years and can be renewed for a charge.

Step 9: Increased Security for Notified Goods

In Form GI-9, an application can be submitted to the Registrar. Registrar for respective products notified by the Central Government for extra protection for the registration of geographical indications. There will be three copies of the case information and three copies of the issued notice.

The Application shall be made jointly by the registered owner of Geographical Indication in India and all Geographical Indication manufacturers.

Step 10: Make an appeal.

Anyone who is dissatisfied with an order or judgement may file an appeal with the Intellectual Property Appellate Board (IPAB) within three months.

Geographical Indications Infringement

The remedies for infringement of Geographical Indications are identical to the remedies for violation of Trademarks. Similarly, under the (Indian) Geographical Indications of Goods (Registration and Protection) Act, 1999, falsification of a Geographical Indication carries a penalty of imprisonment for a term not less than six months but not less than three years and a fine not less than Rs 50,000 but not less than Rs 2,00,000.

TRADITIONAL KNOWLEDGE

INDUSTRIAL DESIGNS

Industrial Design (ID) is the professional practice of designing products, devices, objects, and services used by millions of people around the world every day. Industrial designers typically focus on the physical appearance, functionality, and manufacturability of a product, though they are often involved in far more during a development cycle. All of this ultimately extends to the overall lasting value and experience a product or service provides for end-users. Every object that you interact with on a daily basis in your home, office, school, or public setting is the result of a design process. During this process, myriad decisions are made by an industrial designer (and their team) that are aimed at improving your life through well-executed design.

Design Process

Although the process of design may be considered 'creative,' many analytical processes also take place. In fact, many industrial designers often use various design methodologies in their creative process. Some of the processes that are commonly used are user research, sketching, comparative product research, model making, prototyping and testing. These processes are best defined by the industrial designers and/or other team members. Industrial designers often utilize 3D software, computer-aided industrial design and CAD programs to move from concept to production. They may also build a prototype or scaled down sketch models through a 3D printing process or using balsa wood for modeling. They may then use industrial CT scanning to test for interior defects and generate a CAD model. From this the manufacturing process may be modified to improve the product.

Product characteristics specified by industrial designers may include the overall form of the object, the location of details with respect to one another, colors, texture, form, and aspects concerning the use of the product. Additionally, they may specify aspects concerning the production process, choice of materials and the way the product is presented to the consumer at the point of sale. The inclusion of industrial designers in a product development process may lead to added value by improving usability, lowering production costs, and developing more appealing products.

Industrial design may also focus on technical concepts, products, and processes. In addition to aesthetics, usability, and ergonomics, it can also encompass engineering, usefulness, market placement, and other concerns—such as psychology, desire, and the emotional attachment of the user. These values and accompanying aspects that form the basis of industrial design can vary—between different schools of thought, and among practicing designers.

TRADE SECRETS

What is a trade secret?

North American Free Trade Agreement (NAFTA) defines a trade secret as “information having commercial value, which is not in the public domain, and for which reasonable steps have been taken to maintain its secrecy.”

The Trade Related Aspects of Intellectual Property Rights (TRIPS) lays down three essential conditions which are to be fulfilled by any information before it can be considered undisclosed information (trade secret), they are:-

• Such information must be secret, i.e., not generally known or readily accessible to "persons within the circles that normally deal with the kinds of information in question."

• the information must have commercial value because it is secret and,

• the information must be the subject of reasonable steps by its owners to keep it secret.

Infringement of Trade Secrets

A company has a right to protect its confidential information or trade secret and keep others away from misappropriating and using his trade secrets. However, most often infringement is done by former employees by misappropriating confidential information sometimes result in corporate espionage, using such information for new businesses or for new employers. Trade secret protection continues as long as requirement of protection serve some value to the company or the owner. Owner of the trade secret need to take few reasonable steps to protect it from infringement or breach, the protection is lost if failed to do keep the information secret.

Proposed Legislation in India for the Protection of Trade Secret

In the year of 2008, second term of UPA regime, the Department of Science and Technology, as the part of the Ministry of Science and Technology, published draft legislation titled “The National Innovation Act of 2008” to facilitate public, private or public- private partnership initiatives for building an innovation support to encourage innovation and to codify and consolidate the law of confidentiality in aid of protecting Confidential information, trade secrets and Innovation. Trade secrets would have been regulated under Chapter VI, titled “Confidentiality and Confidential Information and Remedies and Offences.” the current status of this Act is still unclear.

What India needs is to enact a law similar type of law as in U.S. where The Uniform Trade Secret Act, 1979, and The Economic Espionage Act, 1996 enacted in an effort to provide proper legal framework to protect trade secrets.

How trade secret can be protected?

Contrary to patent and trademark, no registration procedures are involved for the protection of a trade secret, that means trade secrets are protected without any procedural formalities and there is no specified time limit within which the secret may be protected. Subsequently, a trade secret can be protected for an unlimited period of time. When a trade secret is leaked out, this can be taken to the court as an action of breach of confidence because this leak of the secret is unfair to the business and may have harmful consequences to the enterprise.

Not all information can be considered a trade secret. There are certain conditions for the information to be considered a trade secret which varies from country to country. The Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) recognizes trade secret as confidential information but doesn’t provide any mechanism for its enforcement. However, Article 39 of the TRIPS agreement tries to ensure protection against unfair competition. TRIPS makes it obligatory on member states to ensure protection of undisclosed information under article 39 of the agreement (India is a member state of TRIPS agreement).

Article 39: Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information

• is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;

• has commercial value because it is secret; and

• has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret.

Present Scenario of protection of trade Secret in India

Protection of trade secret in India has not been a subject of much discussion in the past but currently, trade secrets a recognized form of Intellectual Property Rights, although there is no specific dedicated legislation in India to protect trade secrets and confidential information. Indian courts continue to enforce these under contractually or under common law action of breach of confidence, which in effect amounts a breach of contractual obligation also protects trade secrets on the basis of principles of equity. Giving emphasizes on this, the Calcutta High Court in the fairfest Media Ltd V. ITE group Plc and Ors, stated that “the essence of this branch of law whatever the origin it may be,, a person who has obtained information in confidence is not allowed to use it as springboard for activities detrimental to the person who made the confidential communications. In Niranjan Shankar Golikari v. The Century Spinning & Mfg. Co. Ltd. Supreme court upheld that an injunction to enforce negative contract, which is restricted as to time, can be issued in order to protect the employer’s interest.

In India, a person can be contractually bound not to disclose any information that is revealed to him in confidence otherwise it would be breach of confidence. The Indian courts have upheld a restrictive clause in a technology transfer agreement, which imposes negative contract on licensee not to disclose or use the confidential information received under the agreement for any other purpose than the agreed in the said agreement. John Richard Brady and Ors. V. Chemical Process equipments P. Ltd. and Anr. Process equipments P. Ltd. and Anr. In which the defendants had got the drawings if the fodder production unit from the plaintiff for a limited purpose of providing a certain part required in the plant. In this Delhi High Court invoked a wider equitable jurisdiction and awarded injunction even in the absence of the contract. That means the situation of protection of trade secret is still unclear in India. In the matter of Gopal Paper Mills Ltd v. Surendra K Ganeshdas Malhotra, the Calcutta High Court upheld the restrictive clause in an employment contract, imposing constraints on the employee preventing him from misusing or revealing the confidential information and trade secrets acquired during the tenure of his employment. The Legislation thus provided a remedy to organizations from third party disclosure of confidential information and trade secrets in the form of injunction against the employee.

Basically, a remedy available to the owner of trade secrets is to obtain an injunction preventing the licensee from disclosing the confidential information and return all confidential or proprietary information compensation for any losses suffered due to disclosure of trade secrets. The Indian case laws have tried to address various features of trade secret protection whether it is defining trade secret/confidential information or the basis under which trade secrets can be protected or the scope of remedies can be provided. Indian courts have drawn extensively from English case laws, they are now increasingly relying upon the growing body of domestic jurisprudence on trade secret protection.

NEW PLANT VARIETY

What is a New Plant Variety?

A new plant variety refers to a previously known group of plants that can be consistently distinguished from any other similar group of plants, generation after generation. These new plants are not discovered in the wild, but are the result of human plant breeding efforts.

How can a new variety be protected?

A new variety can be protected by giving the plant breeder the legal right to exclude anyone who does not have his permission from producing for the purpose of marketing, offering for sale or marketing his new variety. This legal right is often called a plant breeder’s right. In Trinidad and Tobago this right is given under the Protection of New Varieties of Plants Act (Act No. 10 of 1997). To qualify for protection a variety must be new, distinct, uniform, stable and have an original variety denomination.

When is a variety considered to be new?

A variety is considered new if it has not been sold or marketed in Trinidad and Tobago for more than a year before the date of the application for protection is made or outside of Trinidad and Tobago for more than four years before this date.

When is a variety considered to be distinct?

A variety is considered distinct from other similar varieties when a specific feature or characteristic differs sufficiently from the varieties most similar to it in that characteristic. Because this is measured statistically, different plants of the same variety should be reasonably uniform.

When is a variety considered to be uniform?

A variety is considered uniform or homogeneous when the specific characteristic of the new variety occurs within a sufficiently consistent range so that a representative number of plants of the new variety can be distinguished by that characteristic from a similar number of plants of the closest similar varieties.

When is a variety considered to be stable?

A new variety is considered stable if its relevant characteristics remain essentially the same after repeated propagation. It has been found that uniformity is a good indicator of stability, so if a variety is found to be fairly uniform, chances are that it will also be reasonably stable.

How to apply for protection for a New Plant Variety?

Five things are usually needed to apply for protection of a new plant variety:

• A completed application form;

• A completed technical questionnaire;

• The application fee;

• A variety denomination; and

• A sample of propagating material for the new variety;

The application form, the technical questionnaire and the application fee are described in the Protection of New Plant Varieties Regulations, 2000.

LAYOUT DESIGN FOR INTEGRATED CIRCUITS

Integrated Circuits

Integrated circuits are also known as “chips” or “micro-chips”. WIPO defines Integrated circuits as electronic circuits in which all the components such as transistors, diodes, and resistors are assembled in a certain order on the surface of a thin semiconductor material which is usually silicon.

The creation of new and innovative layout designs requires a huge financial investment, but to copy these layout designs requires no huge amount. To prevent unauthorized copying, the layout designs are protected under a unique intellectual property system. Through the Semiconductor Chip Protection Act (SCPA), protection to the semiconductors was given for the first time in the US in 1984. In India, for protection of the layout designs of integrated circuits, The Semiconductor Integrated Circuits Layout-Designs Act, 2000 has been enacted in compliance with the TRIPS Agreement. The Act defines ‘layout-design’ as a layout of transistors and other circuitry elements that includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit.

Registrability of Layout-Design

To claim protection, registration of the layout design is mandated by the Act. There are certain layout-designs that are prohibited from registration under the Act. The Act states that a layout-design which isn’t original; or which has been commercially exploited anywhere in India or in a convention country; or which is inherently distinctive; or which is not inherently capable of being distinguishable from any other registered layout-design, shall not be registered as a layout-design. The Act also states that no person shall be entitled to institute any proceeding to prevent or to recover damages for infringement of an unregistered layout-design.

Duration of registration

Per the Act, registration of a layout-design is valid for a period of ten years from the date of filing of the application for registration or from the date of first commercial exploitation anywhere in India or in any country, whichever is earlier.

Registered Proprietor

In relation to a layout-design, a person entered in the register as proprietor of the layout-design is called a registered proprietor. It is only the registered proprietor who is legally permitted to make use of the layout-design. Per the provisions of the Act, anybody who infringes the layout-design is liable to pay to the registered proprietor, the royalty that is determined by negotiations between them or by the Appellate Board.

Registered User

A person other than the registered proprietor of a layout-design may be registered as a registered user thereof. The registered proprietor and the person proposed to be registered user is required to make a joint application to the Registrar, in writing, in the prescribed manner.

Rights conferred by Registration

A registered proprietor has the exclusive right as to the use of the layout-design and also to obtain relief in respect of infringements. A registered proprietor is entitled to immunity from infringements under the Act, and also has the exclusive right to reproduce the layout-design or any substantial part of it. For the enforcement of the rights, the Act expressly provides for criminal remedies, but not the civil remedies as in case of other IP laws, although it does not bar them.

Registry &Registrar

There is a provision under the Act for establishing a registry for the purpose of registration of layout-design. A person, to be known as the Registrar of Semiconductor Integrated Circuits Layout-Design, may be appointed by the Central Government by notification in the Official Gazette.

Useful Links

IPR India - http://www.ipindia.nic.in/

IP services India - http://ipindiaservices.gov.in/

Patent Facilitating Centre - http://www.pfc.org.in/

Rajiv Gandhi National Institute of Intellectual Property - http://www.ipindia.nic.in/

WIPO- World Intellectual Property Organization - https://www.wipo.int/portal/en/index.html

USPTO- United States Patent and Trademark Office - https://www.uspto.gov

Intellectual Property India - https://ipindia.gov.in/

Indian Patent Advance Search System - https://ipindiaservices.gov.in/publicsearch

National Biodiversity Authority - http://nbaindia.org/

PCT – The International Patent System - https://www.wipo.int/pct/en/