INTELLECTUAL PROPERTY RIGHTS

1. PATENTS ACT, 1970

➔ Section 2 (m) “Patent”:​ A patent for any intention granted under this act. It refers to
grant of special privilege, property or authority made by the Government or the
Sovereign of the country to one or more individuals. The instrument by which such a
grant is made is known as ‘Patent’.
- Patent is granted by the Controller to the inventor for a period of 20 years.
- It is an exclusive right to make use of, exercise and sell his invention.
- The inventor gets substantive rights and receives something tangible.
- The person to whom a patent is granted is called ‘patentee’.

➔ Patent- A Form of Property:

- An invention is creation of intellect applied to capital and labour, to produce something
new and useful.
- Such creation becomes the exclusive property of the inventor on gant of patent.
- The patentee’s exclusive proprietary right over the invention is an IPR.
- The owner of the “patent”, i.e., patentee is entitled to deal with his such property in the
same manner as the owner of any other moveable property deals with his property.
Patentee Rights:
❖ Sell the whole or part of his property (patent).
❖ Grant licence to others to use the patented property.
❖ He can also assign such property to any other.

➔ Objective behind Patent Law: ​To encourage the inventors to invest their creative
faculties, knowing that their inventions would be protected by law. The object is to
encourage “scientific research, new technology and industrial progress”.

➔ Principles underlying the Patent Law:

★ Invention must be new, useful and mon-obvious- ​For getting a patent, there must be
an “invention” and the invention must be patentable.
- It must be novel
- It must involve an inventive step
- It must be capable of industrial application [section 2 (1) (ac)].

➔ Non Patentable Invention- ​Sections 3 & 4:-

- Injurious to public health or environment.
- New methods of agriculture or horticulture
 - A process of treatment of human beings, animals or plants
- Mere discovery of a new form of a known substance
- Any process process for the medicinal, surgical, curative or any persons or animals to
render them free of diseases
- Any invention in effect of traditional knowledge
- Invention related to atomic energy. [Section 4]
- Mathematical methods or computer algorithms
- Literary, dramatic, musical or artistic work including cinematographic works and
television productions
A patent can be granted to a new and useful:
(a) Product
(b) Process

➔ Procedure for obtaining Patent-

★ Persons entitled to apply for patents:- ​[Section 6] A patent application can be made-
- By any person claiming to be the true and first inventor of the invention
- By any person being the assignee of the person who is true and first inventor
- By the legal representative of any deceased person.
A person who is the first one to convert the ideas and scientific principles into working
invention.
The right to apply for a patent may be assigned by the true and first inventor on another.
Where an employee makes an invention during his employment, he would be entitled to apply
for a patent.

★ Form of application:-​ [Section 7(1)]

Only one application can be made for one invention and it has to be made in the prescribed form
and filed in the Patent Office.
Section 7 (1A)- Application for international patent under Patent Cooperation Treaty.

➔ Section 9:-
Where an application for a patent (an application filed under Patent Cooperation Treaty
designating India) is accompanied by a provisional specification, a complete specification shall
be filled, within 12 months from the filing of an application and if not so filed, then the
application shall be deemed to have been abandoned.

Where an application for a patent is accompanied by a specification purporting to be a complete

specification, and if the application requests within 12 months from the date of filing the
application, the Controller may direct that such specification shall be treated as provisional
specification and proceed with it.
 ➔ Section 11A:-
No application for patent shall be open to the public for a period of 18 months from the date of
filing of application or the date of priority of the application.

➔ Section 53:-
- Term of the patent shall be 20 years from the date of filling of the application for the
patent.
- Term of the patent in case of international applications filed under PCT designating India
shall be 20 years from international filing date accorded under PCT.

➔ KINDS OF SPECIFICATION
★ Provisional Specification:-
When an inventor is in the process of finalising his invention, he may file a specification known
as provisional specification, which is not a full and specific description.

★ Complete Specification:-
Is the full description of the invention containing all the claims over which the applicant seeks
monoply right.

➔ Section 47:- ​All the rights granted to a patentee are conditional. They are subject to the
conditions imposed under this section.

➔ Grounds and modes of revocation of patent:-

- Section 66- ​When patent which is exercised is mischievous to the state or to public.
- Section 65- ​Where at any time after the grant of a patent, the Cental Government is
satisfied that a patent is for an invention relatingto atomic energy.
- Section 64(4)- ​The CG may petition the HC to revoke a patent on the ground that the
patentee has failed to comply with its request to use the patented invention for purpose of
Govt.
- Section 64(1)- ​A patent can be revoked by the HC on a petition of any intrested person or
of the CG r on a counter-claim in a suit for infringment of the patent.

➔ Section 104 (where a suit is to be instituted):-

- That a suit for infringment shall not be instituted in any court inferior to a District Court
having jurisdiction to try the suit.
- Where the HC has original jurisdiction to try the suit, the suit shall be instituted in the
HC.
 ➔ Section 104A:-
Provides for burden of proof in case of suits concerning infringement.

- Suit for infringement is governed by the provisions of CPC.

- A suit for infringement can be instituted only after the patent has been sealed.
- When a term of patent has expired and infringement occurred during the term of the
patent, a suit can be instituted during the term or even after the expiry of the term.
- In case a patent had lapsed and was restored, no suit or other proceeding can be brought
for infringement committed between the date on which the patent ceased to have effect
and date of publication of application for restoration.
- When a patent was obtained wrongfully by a person and later granted to the true and first
inventor, no suit for infringement can be instituted for any infringement occurring before
the period of such grant to the true and first inventor.
- The period of limitation for instituting a suit for infringement is 3 years from the date of
infringement.

➔ Who is Entitled To Sue:-

Persons who has a right in the patent can institute a suit for infringement.
- The Patentee
- The exclusive licensee if the license is registered
- A compulsory licensee when the patentee refuses or neglects to institute proceedings.
- A licensee other than the above 2 licensees can bring an action.
- An assignee.
- Co-owners of a patent.

➔ Persons who can be sued:-

- Person who infringes a patent that violates the monopoly right of the patentee.
- When two or more persons having jointly infringed the patent, both of them have to be
sued as co-defendants.
- Agents and servants of a principal who is responsible for the infringement can also be
sued either individually or collectively along with their employer/principal.
- The consignees of an infringing article can be made a party to the proceedings in an
infringement suit.

➔ Onus of Establishing Infringement:-

The onus is on the plaintiff to establish infringement.

➔ Acts not to be considered as infringement:-

 - Any act of making, constructing, using, selling or importing a patentee invention solely
for uses reasonably related to the development and submission of information required
under any law.
- Importation of patented products by any person from a person who is duty authorised
under the law to produce and sell or distribute the product.

➔ Defence which may set up by the defendant:-

- Plaintiff not entitled to sue
Can be excercised only by a registered proprietor of a patent or a registered assignee or an
exclusive licensee.
- Denial of infringement
The defendant can plead that there has been no infringment. Such a denial can be successfully set
only when no actual tangible evidence or process has been produced by the plaintiff.
- Estoppel or res judicata
● The principle of Estoppel means that an individual is barred from denying or alleging a
certain fact or state of act because of that indvidual’s previous conduct, allegation or
denial.
● The principle of res judicata also mean thata matter already judicially acted upon or
decided between the two parties cannot be reopened and re-adjudicated for the same
cause of action.

➔ Injunction
An injunction is an order of a court prohibiting someone from doing some specified act or
commanding someone to undo wrong or injury.

Injuctions are of two kinds-

- Temporary/interlocutory injunctions
These are the Court orders which are in force for a specified time or untilfurther orders of the
court. An interlocutory injunction may be granted at any time during the proceedings of the suit.
These principles are:
(i) Plaintiff must establish prima facie case inhis favour.
(ii) He must also establish that the balance of convenience lies in his favour.

- Final injuction
Such injunction is granted at the termination of the trial. The time for which the final injunction
is in force is the remaining term of the patent at the time of grant of the final injuncton.

➔ Patent Agents
- Every patent agent shall be entitled to practise before the Controller and prepare all
documents, transact all business and discharge such other functions as may be prescribed
by the Controller.
- Is authorised to sign all applications and communications to the Controller on behalf of
the person concerned, upon his being authorised in writing to do so by that person.

➔ Patent in Computer Programmes

- The computer programmes are protected by grant of copyright for such programmes.
- Patent Act, 1970 does not recognise patent protection for computer programmes. The
only mechanism of protection for computer programmes and computer data is under
section 2(o) of Copyright Act of 1957, which recognises computer programmes and
computer data as creative work entitled to copyright protection.

​ 2. COPYRIGHT ACT, 1957

➔ Characteristics of Copyright
- No copyright can exist in any work except as provided in section 16 of the Act.
- It is a form of intellectual property since the product over which the right is granted, e.g.,
a literary work, is result of utilisation and investment of intellect.
- It is a monoploy right restraining the others from exercising that right which has been
conferred on the owner of copy right under the provisions of the act.
- It is a negative right, it prevent others from copying or reproducing the work.
- The object of copyright law is to encourage authors, composers and artists to create
original works by rewarding them with the exclusive right for a specified period to
reproduce the works for publishing and selling them to public. Thus protecting,
recognising and encouraging the labour, skill and capital of anotheris the object of
copyright.
- It is not a single right. Consists of a bundle of different rights in the same work.
★ Neighbouring Rights:-​ Copyright consists not merely of the right to reproduction. It also
consists of the right to works derived from the original works; rights like the right of
public performance, the recording right and the broadcasting right which are as important
or even more than the right of reproduction.

➔ Basic Principles of Copyright & Indian Contract Act

- There are two time-honoured principles.
- First, ​ex turpi causa non oritur actio,​ ‘no right of action arises out of shameful cause’.
- Secondly,​ in pari delicto potior est conditio defendantis,​ ‘where both are gulity of
wrongdoing, the position of the defendant is stronger’.
 - The maxim “​in pari delicto potior est conditio posindentis”​ is a maxim of law
established not for the benefit of plaintiffs or defendants, but is founded on the principles
of public policy; that the court will not assist an illegal transaction in any respect.
- It is more intimately connected with the more comprehensive rule of law ‘​ex turpi causa
non oritur actio’​ meaning thereby no Court shall allow by itself to make the instrument
of enforcing to obligation alleged to arise out of a contract or transaction which is illegal.
- An exception to the principle of the above maxim can be seen from Section 65 of ICA,
1972 (Obligation of person who has recieved advantage under void agreement or contract
that becomes void).

➔ Reqirements of Copyright
- In order to secure copyright protection what is required is that the author must have
bestowed upon the work “sufficient judgement, skill and labour or capital”.
- It is immaterial whether the work is wise or foolish, accurate or inaccurate, or whether it
has or has not any iterary merit. Copyright protects the skill and labour employed by the
author in the production of his work.
- The owner of a copyright has no monopoly in the subject-matter. Others are at liberty to
produce the same result (from the common source) provided they do so independently
and their work is ‘original’. Another person may create another work in the same general
form provided he does so from his own resources and makes the work he so originates a
work of his own by his own labour and industry bestowed upon it.
- The owner of a copyright has no monopoly in the subject-matter. Others are at liberty to
produce the same result provided that they do so independently and though they are not
the first in the field, their work is nonetheless ‘original’ in the sense in which that worked
is used in the Copyright Act.

➔ Copyright is Protection in Form and Not in Idea

- Copyright is a right given to or derived from works and it is not a right in novelty only of
ideas. It is based on the right of an author, artists, or composer to prevent another person
from copying his original work, whether it is a book, a tune or a picture, which he created
himself. There is nothing of copyright if a preson providing identical result provided it is
arrived at through an independent process.
- There is no copyright in ideas. Copyright subsists only in material form to which the
ideas are translated.

➔ Works in which Copyright subsists

Section 13: Classes of works-
- Original literary, dramatic, musical and artistic works
- Cinematograph films
- Sound recording

​ opyright in Original Literary Work

C
- The act is not concerned with the origin of ideas but with the expression of thought, and
in case of “Literary work” with the expression of thought in printing or writing.
- The originality which is required relates to the expression of the thought, it does not
require expression must be in an original or novel form, but the work must not be copied
from another work i.e, it should originate from the author.
- Section 2(0) of the Act lays down that "literary work" includes "tables and compilations
and computer programme, that is to say, programmes recorded on any disc, tape,
perforated media or other information storage device, which, if fed into or located in a
computer or computer based equipment is capable of reproducing any information".

➔ Illustrations of Copyright in Literary Work

➢ Compilations :
By exercise of sufficient labour and skill in selecting and arranging existing subject
matter, a person can secure a copyright for protection of his works or compilation
composed from common sources or from matters available in the public domain.
➢ Selections :
Selections of poems or prose compositions may also be protected, and selections of
incidents from real life.
➢ Annotations and Book Guides :
Annotations to text books or to books of great authors or on legal points involve learning,
labour and exercise of intellect, and so, where they are composed by the exercise of
thinking, labour etc., the author of the annotations or composer of these annotations
possesses the copyright in such compilations.
➢ Advertisements :
Advertisements are entitled to copyright protection either as literary works or as artistic
works or as a combination of both. However, there can be no copyright in an
advertisement without original features, or which is a "merely dry list of names or
goods".
➢ Lectures :
Copyright, however, can only subsist in lecture if it is a literary work, i.e. a work
expressed in print or writing", and it would appear, therefore, that there is still no
copyright in a mere extempore speech. It is submitted, however, that where a speech is
made fi-om notes, it might be held that anyone copying the speech was infringing the
copyright in the notes.
➢ Examination Papers :
 An essential feature of copyright legislation, as seen above, is that the work must be
original. The quality of being original has nothing to do with literary or artisti merit of the
work.
➢ Reports of Judicial Proceedings
- Section 2 (k) “government work”:​ ​work which is made or published by or under the
direction or control of, amongst others any court, tribunal or other judicial authority in
India. The judgements delivered by the Supreme Court would be a Government work.
- Section 17 (d): ​the Govt shall, in the absence of any agreement., be the first owner of the
copyright in the judgements of the Supreme Court.
- Section 52 (1) of Copyright Act, 1957:-​ certain acts shall not constitute an infringement
of copyright:
(i) a fair dealing with any work, not being a computer programme, for the purposes of—
(ii) private or personal use, including research;
(iii) criticism or review, whether of that work or of any other work;
(iv) the reporting of current events and current affairs, including the reporting of a lecture
delivered in public.

COPYRIGHT IN DRAMATIC WORKS

Section 2(h) “dramatic work”​ includes any piece of recitation, choreographic work or
entertainment in dumb show, the scenic arrangement or acting, form of which is fixed in writing
or otherwise but does not include a cinematograph film.

Choreography & Scenic Arrangement or Acting

Choreography is the art of arranging or designing of ballet or stage dance in symbolic language
but in order to quaify for copyright protection it mustbe reduced to writing since arrangements to
qualify for copyright protection must be reduced to some permanent form (dramatic incidents
created in the work). The use of such incidents by another would amount to infringement.

Film based on Newspaper Article

The article published contained an autobiographical account of the part actually played by the
author in the affair. The stage play on the movie was not an infringement of the copyright in the
article.

COPYRIGHT IN MUSICAL WORKS

Copyright is recognised in original musical work under the provisions of section 13 (1) (a).
Section 2 (p) “Musical Work” as a work consisting of music and includes any graphical rotation
of such work but does not include any words or action, intended to be sung, spoken or performed
with music. Adaptation of a musical work means any arrangement or transcription of the work.
 COPYRIGHT IN MUSICAL WORKS
Section 2 (c) “Artistic Work”​ means-
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
photograph, whether or not any such work possesses artistic quality;
(ii) a work of architecture
(iii) any other work of artistic craftsmanship;

COPYRIGHT IN WORK OF ARCHITECTURE

Section 2(b) ‘‘work of architecture’’ means any building or structure having artistic character or
design, or any model for such building or structure.
In order to qualify for copyright protection, the work besides being original must also possess
artistic quality, like paintaing, drawing, etc. which does not require artistic quality for copyright
protection.

COPYRIGHT IN WORK OF ARTISTIC CRAFTSMANSHIP

Section 13 (1) confers copyright on the works of aristic craftsmanship. Works which do not
qualify the clause of aristic craftsmanship:-
- Prototype furniture, commercial furniture.
- The work of a cobbler does not qualify to be called artistic craftsmanship.
- Some of the work of carpenters, painters, book-binders, weavers may be considered as
work of aristic craftsmanship but most of their products would not be protected to entitle
their work to copyright protection.
Works which woul qualify the clausr of artistic craftsmanship-
- Hand painted tiles
- Stained glass windows
The makers of the such items would qualify for a copyright and their work can be described as
work of artistic craftsmanship.

COPYRIGHT IN CINEMATOGRAPH FILM

Section 13 (1) (b) “cinematographic film”- any work of visual recording on any medium
produced through a process from which a moving imagemay be produced by any means &
includes a sound recording accompanying such visual recording and cinematograph shall be
construed as including any work produced by any process analogous to cinematograph including
video films.
For the purpose of copyright, the produceris considered to be authorof cinematograph film.

​COPYRIGHT IN SOUND RECORDING

Copyright subsists in a sound recording. According to section 2 (xx) “sound recording” means a
recording of sounds from which such sounds may be produced regardless of the medium on
which such recording is made or the method by which the sounds are reproduced.
Copyright in the music vests in the computer and the copyright in the music recorded vests in the
producer of the sound recording.

AUTHOR & OWNERSHIP OF COPYRIGHT

According to provisions of section 17 the author of the work is the first owner of the copyright in
the work. Section 2 (d) “Author” in relation to various categories of works as follows:-
- Literary or dramatic work, the author of the work.
- Musical work, the composer in relation to a musical work means the person who
composes the music regardless of whether he records itin any form of graphical notation.
According to section 2 (p) “musical work” a work consisting of music and includes any
graphical notation of such work but does not include any words or any action intended to be
sung, spoken or performed with music.

➔ Ownership of Copyright
Section 17 recognises the author of the work to be the first owner of the copyright.

REMEDIES AGAINST INFRINGEMENT OF COPYRIGHT

➔ Kinds of Remedies
Three kinds of remedies against infringement of copyright:-
★ Civil Remedies
Injunction, damages or account of profit, delivery of infringing copies and damages for
conversion.
★ Criminal Remedies
Imprisonment of the accused or imposition of fine or both. Seizure of infringing copies.
★ Administrative Remedies
Consists of moving the Registrar of Copyrights to ban the import of infringing copies into India.

Besides the infringeent of copyright, which is actionable, the moral rights of the author known as
“special right” are also protectable.

➔ Jurisdiction of Courts (Section 62)

Every suit or civil proceeding in respect of infringement if copyright. Special rights to
broadcasting organization or performance shall be instituted in the District Court having
jurisdiction.
 ➔ Kinds of civil remedies to which a plaintiff is entitled
★ Anton Pillar Order
An application by the plaintiff, pass an ex-parte order requiring the defendant to allow the
plaintiff accompained by attorney to enter his premises and make an inspetion of releavant
documents and articles and take copies or remove them for safe custody. Such an order is called
Anton Pillar Order.

★ Interlocutory Injunction
Secures the immediate protection of copyright from an existent infringemnet or from the
continuance of infringement or an anticipated infringement. A plaintiff may pray for an
interlocutory injunction pending trial or further orders.
For obtaining an interlocutory injunction the plaintiff has to establish :
- A prima facie
- Balance of convenience in his favour
- Refusal to grant interlocutory injunction would cause irreparable injury to the plaintiff.

★ Damages on account of profits

The plaintiff is entitled to two tyopes of damages;
- One for infringement of his copyright
- The other for conversion of his copyrighted work into another form.

➔ Criminal Proceedings Against Infringement

The plaintiff can initiate criminal proceedings against an infringer. These two remedies are
distinct and can be invoked.
The infringement of copyright has been declared as an offence, punishable with imprisonment
which may extend from a minimum period of six months to a maximum of three years and with a
fine of Rs. 50,000 to Rs. two lakhs.