Intellectual Property Rights

Saravanan A
IIM Indore
HOW TO DETERMINE WEALTH OF A NATION?
100 years back
 Wealth of the Country and individual possesses – tangibles
Today
 Primary focus of property is now shifted from tangibles to intangibles
Intangibles**
 Certain things we can't see
 Important driver of service and product more valuable than anything
 More than USD 57 trillion in 2018

How to protect Intangibles?

 Trademarks
Various Forms
Biodiversity
and Plant
of IPR
Varieties Patents
Protection

Intellectual
Property
Trade secrets Copyright
& know how

Geographical
Designs Indications
IP AND BUSINESS OBJECTIVES
Why IP is important for business?
IP- all around us in daily lives
Incentives
Prevents others from copying
EMR
Strong brand identity
Territorial protection
 IP EARNINGS

•Example: Ring-pull cans. The inventor licensed the

system to Coca-Cola at 1/10 of a penny per can.
During the period of validity of the patent the inventor
obtained GBP 148,000 pounds a day on royalties.

Source: Prof. Gaurav Sharma 2012 &

https://patentimages.storage.googleapis.com/cb/16/ef/
e6595f3529ce87/US3349949.pdf
SIGNIFICANCE OF INTELLECTUAL PROPERTY

Source: Prof. Gaurav Sharma, 2013

SUCCESS OF SMARTPHONE INDUSTRY
Based on their intangibles

US is the biggest destination for smartphone patent filings

Upto 35% all patents filed worldwide since 1990

 Related to smartphones

 Designs, Trade Mark and Copyright

HOW IP REVOLUTION BEGAN IN US?
Early 1990s IBM struggling and lost up to $15 billion
Vast patent portfolio
It began licensing its IP assets for royalty
Which helps in reviving from financial crisis
Other companies
Xerox, Dell, Dow Chemicals etc.
IP management now becomes core competence
IP AND BUSINESS
Does registration mandatory to protect IP?
How does IP affect your Business?
Shield and Sword
Kodak v Polaroid Case
Fonar Corpn v GE Company
 POLAROID V. EASTMAN KODAK
Infringement of patents related to instant cameras
1990 Polaroid won over $900 mn as compensation from
Kodak
Disastrous impact on one infringement suit

Fonar Corporation V. General Electric Company

Fonar got a patent for magnetic resonance imaging (MRI)
Infringement suit against GE
 GE paid $128.7 mn as a compensation
 Fonar's annual revenue was only $17 mn
Source: https://hips.hearstapps.com/vader-prod.s3.amazonaws.com/1539875325-polaroid-originals-onestep-1539875317.jpg
WHY MANAGERS SHOULD LEARN IP?
Business depend on how its managers approach the IP function
 Business Models
 Market
 Type of IP used- mostly utilize more than one type of IP
IP Strategy- become integral part of business strategy of an enterprise
IP as Collateral- Use of IP assets to gain access to credit
IP- Untapped Asset
 Most important asset in business
 Most underutilized asset
 Lack of awareness & expertise
 Concern on costs
SIGNIFICANT INTERNATIONAL LEGAL INSTRUMENTS
Paris Convention, 1883
Berne Convention, 1886
WIPO Convention,1970
Patent Cooperation Treaty, 1977
TRIPs Agreement, 1995

 Harmonization
 Minimum rights
 Ratification and Reservation in domestic law
GLOBAL PROTECTION SYSTEM

Is there any concept of global patent or TM ??

Filing one application,
PCT System- Patents applicants can
Madrid System- TM simultaneously seek
protection in its
Lisbon System- AOI member nations
Hague System- Industrial Designs
Regional System- EPO, ARIPO
 NATIONAL PERSPECTIVES
Trade Marks Act, 1999
Patents Act, 1970 (Subsequent Amendment)
Copyright Act, 1957 (Subsequent Amendment)
Designs Act, 2000
Geographical Indications of Goods (Registration and Protection) Act, 1999
Semiconductor Integrated Circuits Layout-Design Act, 2000
Protection of Plant Varieties and Farmers’ Rights Act, 2001
Biological Diversity Act, 2002
 WHAT IS A TRADE MARK?
Sec 2(1)(zb) "trade mark” means
 A mark capable of being represented graphically and which
is capable of distinguishing the goods or services of one
person from those of others
■Device, brand, heading, label, ticket, name, signature
■Word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof
Includes certification trade mark or collective mark, WTM

Non-conventional marks
Term- 10 + continuous renewal
Source: http://www.ipbrief.net/2011/11/22/find-another-color-nestle-purple-belongs-to-cadbury/
LEGAL REQUIREMENTS FOR REGISTRATION

Distinctiveness- Capable of distinguish one from others

Mark should be capable of being represented graphically
(represent in paper form)
Used in a course of trade between goods or services

How to choose a good trademark?

Word- easy to speak, spell and remember
TO AVOID
Suggesting geographical origin
Adopting laudatory words
Best, perfect, super etc..
Chemical names
Not belong to prohibited class of marks
To conduct prior search
 https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
 https://ipindiaonline.gov.in/tmrpublicsearch/classfication_goods_service.htm#:~:text=Medi
cal%20services%2C%20veterinary%20services%2C%20hygienic,meet%20the%20needs
%20of%20individuals.
Source: https://www.ssrana.in/Intellectual%20Property/Trademarks/Trademark_Flowchart.aspx
INFRINGEMENT
One person uses ® of another for same
goods/services
 Used in the course of trade
Deceptive Similarity
 Likely to deceive or cause confusion
 BATA- BALA
 NESCAFE- NESCAPE
 FEVICOL- FIXACOL
 SIFY- SIFFY

Source: https://theipsite.wordpress.com/trademarkswhatis/
REMEDIES AGAINST INFRINGEMENT
Civil Remedies
 Not lower than District Court- for injunction
Criminal Proceedings
Administrative Remedies- TM Registry to remove marks

Period of Limitation- within 3 years from the date of infringement

Continuing one
 New course of action every time
PASSING OFF
Reliefs- same as in infringement
PATENTS
Inventions in all fields of technology, whether products or processes,
if they meet the criteria of
Novelty: Invention not known to public prior to claim by inventor
Inventive Step: Invention would not be obvious to a person with
ordinary skill in the art
Industrial Application: Invention can be made or used in any useful
Term- 20 Years (from date of filing)
PATENTS
Inventions in all fields of technology, whether products or processes,
if they meet the criteria of
Novelty: Invention not known to public prior to claim by inventor
Inventive Step: Invention would not be obvious to a person with
ordinary skill in the art
Industrial Application: Invention can be made or used in any useful
Term- 20 Years (from date of filing)
 INVENTIONS NOT PATENTABLE (SEC 3)
Frivolous and contrary to natural laws
 Eg. Perpetual motion machine

Causes serious harm to human, animal or plant life

 Eg. Gambling machine; Fake currency machine

Mere discovery of a scientific principle or living things

or non-living things occur in nature
 Eg. Natural Gas
Source: https://www.cgtrader.com/3d-models/science/laboratory/perpetual-motion-machine-c8212a65-c21d-4769-8a75-85ebcc7f853d
INVENTIONS NOT PATENTABLE (SEC 3)
Evergreening of Patents
Mere discovery of new form of known substance
Novartis v Union of India
Not enhances the known efficacy GLIVEC Patent

Substance obtained by a mere admixture

Duplication of known devices each function independently
Surgical methods
INVENTIONS NOT PATENTABLE (SEC 3)

Traditional Knowledge Method of agriculture or horticulture

Das & Cohly- Turmeric Plants and animals in whole
(USPTO); WR Grace- Neem
Business methods
(EPO);
Ricetec- Basmati Computer programme per se
TKDL- http://www.tkdl.res.in Inventions relating to atomic energy
 PATENT FILING REQUIREMENTS
Who can file Patent?
 Form 1- Inventor’s particulars

FTF or FTI??

Specification (Form 2)
 Technical document describing the invention
Complete Specification
Provisional Specification Within 12 months
 General description
 Anticipated results Full description of invention
 Priority date All claims which applicant seeks monopoly
Source: Altacit Global
COMPULSORY LICENSING (SEC 84)
Use without authorization of the Right Holder
General Rule (sec 84)
 Non-availability (accessibility), not satisfied (affordability) & not worked

Conditions
Natco v Bayer
After 3 years of Grant • Drug- Sorafenib (Nexavar)
However, govt can by-pass • Kidney Cancer drug
 National Emergency or Urgency • Rs 2.8 L to Rs 9000
 Case of anti-competitive practices • Royalty- 6%