IPR lecture 06-Oct-2023 11:40AM

Faculty Ms.Divyashree Dacha [Induction lecture Scribbling]

Copyright – Right to reproduce
Intellectual – creation of human mind
Property – Tangible or Intangible
Owner of the property has right to lease, reproduce, destroy, license,
Similarly, creator of process has ownership rights
IPR lecture 07-Oct-2023 11:40AM

Jure In Re Aliena Jura In Re Propria

Encumbrances Nonmaterial things
Liability Can not be perceived through human key
senses
Material
jura in re aliena, or encumbrances, which jura in re propria, refers to the ownership of
include incorporeal rights over corporeal intangible property. This type of right
things. Such rights can include leases, includes trademarks, copyrights, patents,
easements, rights-of-way, mortgages, and and other types of intellectual property
servitudes.

Kinds of IPR – can only be applied to an idea of commercial value

Copyright Industrial Property

Right to copy a creation Patent
Expression of an idea creator Prior art search, discovery (Finder) ,
Invention (Inventor)
What?  Right to copy
Who? Creator
 Economic right
 Moral right to claim, change
What?(can be copied) Subject matter, text

Collective management Organisation (CMO)

What is collective management?
By authorizing or mandating professional Collective Management Organizations (CMOs) to
manage their rights, authors, performers, producers and other right holders can simplify the
management of those rights.
Exclusive rights and collective bargaining can provide an alternative solution to collective
management.
What are CMOs?
Collective Management Organizations (CMOs) are, in most cases, not-for-profit entities; their
legal form can be either private or public. Depending on the repertoire they represent, they
can also be called Music Licensing Companies (MLCs), Mechanical Rights Organizations
(MROs), Performers’ Collective Management Organizations (PMOs) or Reproduction Rights
Organizations (RROs).
Various types of collective management approaches exist, including statutory/mandatory
collective management, as well as contractual/voluntary collective management.
CMO example : GEMA (Germany) / ASCRL/ ASCAP (USA)
What do CMOs do?
 monitors when, where and what works are used;
 negotiates tariffs and other conditions with users;
 licenses the use of protected works on behalf of its members and of other rights
holders it represents; and
 collects the fees from users and distributes these to the rights holders.
For more details about CMO refer https://www.wipo.int/copyright/en/management/

IPR lecture 09-Oct-2023 11:40AM

Copyright – Any literary material can be copyrighted

Trademark: Industrial Property - distinctive sign which indicates that specific goods
produced by specific group or a person or business
Trademark may take many forms including combination of words, letters, numeral, drawings
or symbols
Function of trademark is to suggest that purchaser about manufacturer or quality of product
- HUL earlier did not have Trademark
TRADE MARKS ACT, 1999 : Trade Marks Act, 1999 (in force since 15th Sept. 2003) which has replaced
the earlier Trade & Merchandise Marks Act, 1958 (now repealed) includes the following:

a) It has enlarged the definition of trade mark. It now includes shape of goods, packaging and
combination of colours which can adopted as a trade mark.
b) The Act provides for registration of trade mark for services in addition to goods
c) It provides for a single Register of Trade Marks with simplified procedures for registration.
d) The Act has simplified the procedure for registration of registered user (licensing of
registered trade mark)
e) Provides for registration of collective marks owned by association of persons.
 f) Provides for establishment of an Intellectual Property Appellate Board for speedy disposal of
appeal from Registrar orders and decision
g) Transferred the final authority for registration of certification of trade marks to the Registrar.
h) Provides for enhanced punishment for the offences relating to trade marks on par with the
Copyright Act, 1957 to prevent the sale of spurious goods.
i) Prohibits use of some one else’s trade marks as part of corporate names or name of business
concern.
j) Provides for filing of a single application for goods or services falling in more than one class
(multi class filing)
k) Increased the period of registration and renewal from 7 yrs to10 yrs
l) Has made some trade mark offences cognizable
m) The Act has amplified the powers of the court to grant ex parte injunction in certain cases
n) There are other related amendments to simplify and streamline the administration of the
trademarks law and procedures in the country.

Patent
- granted for certain period of time (upto 20 years)
- Compulsory licensing
- Monopoly rights – owner of patent enjoys Monopoly rights
- Granting inventor to control output of patented products or processes
- Nonexclusive rights
- Patent can be renewed
- Patent of industrial design, shape, colour, finish (of outer surface) of the product can
form separate form of IP which can be protected as industrial design (industrial
design act 2000)
- Semiconductor design

IPR lecture 10-Oct-2023 11:40AM

Semiconductor integrated circuits layout design Act 2000

An Act to provide for the protection of semiconductor integrated circuits layout-designs and for
matters connected therewith or incidental thereto.

“layout-design” means a layout of transistors and other circuitry elements and includes lead wires
connecting such elements and expressed in any manner in a semiconductor integrated circuit;

GI (Geographical Indication)
Geographical Indication IPR serves to identify a product that originates from specific geographical
area. The product having particular quality, reputation and other characteristics that are essentially
attributable to its geographic origin.

Trade Secret

Confidential information that can be used in the operation of business that is sufficiently valuable
and capable of offering economic advantage

Key words – confidential information, Operation of business, economic advantage of others

 IPR lecture 11-Oct-2023 11:40AM

Utilitarianism Theory
John Stuart Mill – English jurist developed Utilitarianism Theory in 19th Century (1861). The theory
states that an action is valid or permissible if it produces greatest happiness amongst a vast majority
of population and ensure absence of pain. Thus Mill’s utilitarianism is taken on something which
maximises welfare of the people

IPR works mainly on incentive system and belief that providing protection to the innovation or new
creation would encourage people to overtly disclose their innovation that others would unjustly use
their creativity. As per utilitarianism theory, avoiding property right to innovator is merely mean to an
end because ultimate welfare of the society is when the creation or innovation is openly disclosed.

John Stuart Mill agreed that patent monopoly are appropriate compared to earlier protections of
rewards and privileges granted by monarchies or monarchs. Mill agreed that granting rewards or
privileges by monarch involve discretion on part of authority who may not recognise certain matters
as against that under the current IP regime, creations and innovations enjoy protection not because
they are validated under the discretionary power of the government but because they fulfil statutory
legal requirements under various patent laws and therefore they are legally recognised.

Utilitarianism Theory would agree that monopoly for a short duration would encourage more people
to disseminate their work which would enable public to read, enjoy and appreciate creative work.

Utilitarianism justifies the exitance of modern Trade Mark law on 3 grounds

a. Prevent passing off goods i.e. harmful on the grounds that

i. It confuses the consumer
ii. Harms the business
iii. It will also increase search cost, time, efforts etc. of consumer

Trade Mark ensures consumer welfare and quality by weeding out counterfeit products from the
market

IPR lecture 12-Oct-2023 11:40AM

IPR criticism

- IPR regime impedes innovations based on patents

- Patent regime based on incentive system restricts the people, other than inventor, freely
using that idea
- Though there is a system of disclosure under the patent law, it still provides exclusive
ownership for a certain period to patent owner (for 20 years)
- Thus idea as such does not allow free flow of idea and the restrictions on the diffusion of
technology in a way it impedes innovation based on patents
- The negative effect of it is permission of monopolistic practices in democracy
- Patent protection for 20 years under the law invariably does is elimination of competitors in
the market. This is in a way leaves to patent holder controlling the price of product.
 IPR lecture 13-Oct-2023 11:40AM

Labour theory aka Natural Rights theory by John Locke

One of the powerful basis for justifying IPR lies in the belief that a person derives the fruits of his
labour. It would mean the IPR would belong to the creator because he involves his labour and he
rightfully deserves the fruits of his labour. John Locke the english philosopher in his book “Second
Treatise on Government” (1689) all that in the nature provided by god & it is available to all men as it
is held in for the common benefit for all. So, no individual can have prior claim over substances that
are available in the nature as it is meant for entire humanity. Law profounded this theory because
when individua exerts pressure over natural resources then he can claim it as his property because
he has added value to it. Law of Locke’s version is based on justification that each individual has prior
property right in one’s body and also because labour exerted by individual in his property and he is
owner if his own body. Therefore, as per law, it is impossible to separate labour & its product.

Abundance of natural resources

Non-Rivalrous – Non- Rivalrous means that consumption of a good by one person does not reduce
the amount available for others. Non-rivalry is one of the key characteristics of a pure public good.
Ex. Broadcast television is an example of a non-rival good; when a consumer turns on a TV set, this
does not prevent the TV in another consumer's house from working.

John Locke justification to property protection rights in labour is subject to a condition that the
exercise of that right should not deny others of resources existing in nature. e.g. Agriculture and
Horticulture products.

This theory was criticised by two authors Robert Nozick and Edwin Hettinger – Labour theory by John
Locke fails to take into account the value added to the product, contribution made by others in the
evolution of product and labour they take into account only the value added by the recent
contributor.

The question of owning IPR at the exclusion of others and the right to receive royalty is not a natural
right as this can be attributed to the society which is creating a system of protecting a labour i.e.
product invented. Hence IPR in a way is dependent on larger public interest.

IPR lecture 16-Oct-2023 11:40AM

No lecture

IPR lecture 17-Oct-2023 11:40AM

Robert Nozick criticises labour law on point :

Ethics and reward theory:

Only rewarding the person wouldn’t be enough

You should have certain moral aspects while rewarding the owner
Ethic and reward theory developed to justify IPR on an extensive understanding of the labour theory.
The creator is rewarded for contributing to the welfare of society by producing his work and when an
ethical or moral perspective if evolved while rewarding, it fall under the ethic and reward theory for
justifying IPR.

The concept of this theory is to grant exclusive rights for original work as an expression of gratitude
to an inventor or author for doing more than the society expects that they are obliged to do and
therefore other than profit or remuneration for his production the individual should be granted
exclusive legal rights over the property so produced, since he contributed for the betterment of
community.

Another theory which justifies IPR is Social Contract Theory

The concept of social contract is that often agreement between the citizens and its
government as opposed to the feudal concept of the divine rights of the king. This theory
corresponds with the theory of natural rights.
Information published in patents would not otherwise be disclosed in absence of patent
grant and the inventor would maintain secrecy. There is always a risk of losing secrecy if a
patent is not granted as the inventor would not be able to recover the value of lost patent.
Grant of patent is considered as a social contract between the society and the inventor,
wherein an inventor shares the invention with the society and the society offers monopoly in
return.
Personality Theory (Tomorrow)

IPR lecture 18-Oct-2023 11:40AM

Personality Theory

If I have created a work part of personality to the work created

George Wilhelm Freidrich Hegel – in his book, “Elements of philosophy rights” laid down a
personality theory. It was also developed by Emanual Kant. As per the theory any work or invention
would belong to its author or inventor because it is the manifestation of the creator on inventor’s
personality. Hegel says, that individual’s will should be given more importance compared to other
elements that make an individual. Further society as such external manifestation of an individual’s
personality as property and therefore when an individual expresses himself through his work it is
nothing but an external manifestation of his personality. Labour is the means by which the will
occupies the object Hegel’s personality theory can be used to justify claims by authors, musicians,
artists etc. for instance Harry Potter was external manifestation of his personality, Kautilya
Arthashastra was Kautilya, Manusmruti reflects personality of Brigu Rishi.

Criticism

- Absence of personality stake

- Copied or borrowed work, cannot be external manifestation of internal will. Hegel does not
consider this aspect
 IPR lecture 19-Oct-2023 11:40AM

Theoretical basis of evolution of IP

Earliest IP records date back to 600 BCE

Livestock branding depicting modern Trade Mark and patent laws

Letters patent – evolve from word of rulers. Exclusive rights of land and some other resources were
granted by a letter from ruler

IPR lecture 20-Oct-2023 11:40AM

Statute of Anne 1710 – aka copywright act 1709 or 1710 was an act of the parliament of Great
Britain, passed in 1710.

IPR lecture 25-Oct-2023 11:40AM

3 principles

(1) The three basic principles are the following:

(a) principle of "national treatment : Works originating in one of the
Contracting States (that is, works the author of which is a national of such a
State or works first published in such a State) must be given the same
protection in each of the other Contracting States as the latter grants to the
works of its own nationals (principle of "national treatment") [1].
(b) principle of "automatic" protection Protection must not be conditional
upon compliance with any formality (principle of "automatic" protection) [2].
(c) principle of "independence" of protection Protection is independent of the
existence of protection in the country of origin of the work (principle of
"independence" of protection). If, however, a Contracting State provides for a
longer term of protection than the minimum prescribed by the Convention and
the work ceases to be protected in the country of origin, protection may be
denied once protection in the country of origin ceases [3].

4th Principle (minimum standards)

(2) Principle minimum standards of protection : The minimum standards of

protection relate to the works and rights to be protected, and to the duration of
protection:
(a) As to works, protection must include "every production in the literary,
scientific and artistic domain, whatever the mode or form of its expression"
(Article 2(1) of the Convention).

(b) Subject to certain allowed reservations, limitations or exceptions, the

following are among the rights that must be recognized as exclusive rights of
authorization:
  the right to translate,
 the right to make adaptations and arrangements of the work,
 the right to perform in public dramatic, dramatico-musical and musical works,
 the right to recite literary works in public,
 the right to communicate to the public the performance of such works,
 the right to broadcast (with the possibility that a Contracting State may
provide for a mere right to equitable remuneration instead of a right of
authorization),
 the right to make reproductions in any manner or form (with the possibility
that a Contracting State may permit, in certain special cases, reproduction
without authorization, provided that the reproduction does not conflict with the
normal exploitation of the work and does not unreasonably prejudice the
legitimate interests of the author; and the possibility that a Contracting State
may provide, in the case of sound recordings of musical works, for a right to
equitable remuneration),
 the right to use the work as a basis for an audiovisual work, and the right to
reproduce, distribute, perform in public or communicate to the public that
audiovisual work [4].
The Convention also provides for "moral rights", that is, the right to claim
authorship of the work and the right to object to any mutilation, deformation or
other modification of, or other derogatory action in relation to, the work that
would be prejudicial to the author's honor or reputation.
(c) As to the duration of protection, the general rule is that protection must be
granted until the expiration of the 50th year after the author's death. There are,
however, exceptions to this general rule. In the case of anonymous or
pseudonymous works, the term of protection expires 50 years after the work
has been lawfully made available to the public, except if the pseudonym leaves
no doubt as to the author's identity or if the author discloses his or her identity
during that period; in the latter case, the general rule applies. In the case of
audiovisual (cinematographic) works, the minimum term of protection is 50
years after the making available of the work to the public ("release") or – failing
such an event – from the creation of the work. In the case of works of applied
art and photographic works, the minimum term is 25 years from the creation of
the work [5].

IPR lecture 26-Oct-2023 11:40AM

Principle of national treatment

Compulsory protection

Optional protection: folkware protection

Persons protected
 1. citizen or residents of member country

Article 11bis

14ter6bis – its Italian style to suffix article number amendment

What are civil law countries, and common law countries?

Successors and title under IP are different from family law successors

IPR lecture 27-Oct-2023 11:40AM

Paris convention for protection of industrial property 1883

IPR divided into two aspects – copy right (Berne) and industrial property (Paris convention)

Applicable to every type of IP except copyright

4 Categories –

1. National treatment protection of foreigners against discrimination

2. …
IPR lecture 30-Oct-2023 11:40AM

4 Categories –

1. National treatment protection of foreigners against discrimination

2. Right of priority
3. Rules establishing rights and obligations of natural persons and legal entities, or rule
requiring or permitting the number of countries to enact legislation following those rules
4. Administrative framework which has been set up to implement the convention and includes
the final clauses of the convention

National treatment and principle of reciprocity – req of reciprocity of protection is excluded under
Paris convention

Patent granted by Central or State government?

Which list includes patent – list 1 item No. 49

IPR lecture 31-Oct-2023 11:40AM

IPR lecture 1-Nov-2023 11:40AM

Priority in other member country based on first application.

Refer below books amongst Recommended in syllabus:

1. Trade Related Aspects of Intellectual Property Rights (2nd Edition): A Commentary on the
TRIPS Agreement, Carlos Maria Correa, Oxford University Press, (2020).

2. Intellectual Property Rights in the WTO and Developing Countries, Jayashree Watal, Kluwer
Law International, (2002).

11. Gopalkrishnan N S, & Agitha T G, Principles of Intellectual property. Luckhnow: Estern Book
Company
22. Ahuja V K, Law Relating to Intellectual Property Rights (LexisNexis, New Delhi, 2017)
IPR lecture 2-Nov-2023 11:40AM

Substantive provisions – right of duty or others duty towards you

Procedural –

Article 5A importation of goods – read in detail

IPR lecture 3-Nov-2023 11:40AM

Substantive provisions 5 bullets

A. Right against forfeiture of patented good illegally imported

Invalidation and Annulment – commodities made void
Revocation or Repeal – if act is done by
B. Compulsory Licensing
Meaning and Justification (promote industrialisation, increase commercial exploitation,
prevent blocking of working of invention or monopoly)
B.1. CL – failure to work
B.2. Public interest, military security, public health, dependent patents
C. Grace period for payment of maintenance fees [Art.5BIS]
D. Patents in international traffic (means of transport in international travel vessel, aircraft, etc.)
E. Inventions at International exhibitions [Art.11]

IPR lecture 4-Nov-2023 11:40AM

Uruguay Round of GATT

TRIPS agreement
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.

 Dispute settlement. The Agreement makes disputes between WTO

Members about the respect of the TRIPS obligations subject to the WTO's
dispute settlement procedures.

In addition the Agreement provides for certain basic principles, such as national
and most-favoured-nation treatment, and some general rules to ensure that
procedural difficulties in acquiring or maintaining IPRs do not nullify the
substantive benefits that should flow from the Agreement.
The obligations under the Agreement will apply equally to all Member countries,
but developing countries will have a longer period to phase them in.
Special transition arrangements operate in the situation where a developing
country does not presently provide product patent protection in the area of
pharmaceuticals.
The TRIPS Agreement is a minimum standards agreement, which allows Members
to provide more extensive protection of intellectual property if they so wish.
Members are left free to determine the appropriate method of implementing the
provisions of the Agreement within their own legal system and practice.
Trade secrets – there is no law currently in India to protect trade secret
Most favoured nation
Object and Subjects of law – Object of international law is Subject of international law would
be states

Rights of broadcasting agency - Performance and producers

Provision relating to copyrights – subject matter of CR extends to ideas and not mathematical
concepts

Source code and object code – protected

Members means members of TRIPS agreement

Terms of protection

IPR lecture 6-Nov-2023 11:40AM

What copyright protections expect

Copyright can be assigned to someone or legal heirs have right

Persons covered for protection under TRIPS agreement

 1. Performers (Owners of literary or artistic work) and broadcasting organisations
1. Rights conferred: fix the medium of performance
2. Reproduction of said fixation
3. Wireless broadcasting
4. Live performance in public

Fixation – is fixing a medium of program

2. Producers of phonograms
Authorise or prohibit direct or indirect reproduction of their phonograms

IPR lecture 7-Nov-2023 11:40AM

Trademarks –

subject matter - Any sign or any combination of signs

shall be capable of being protected as
trademark
- The sign must be capable of
distinguishing the goods or services of
any undertaking from those of other
undertakings.
-
Prerequisites of registration of a sign as - Distinctiveness, signs be visually
trademark perceptible
- published before it is registered or
promptly after it is registered
- reasonable opportunity granted to
oppose and cancel the registration of
TM

Rights conferred to owners of TM Using the trademark

Identical or similar signs which would result in
confusion
Exceptions Fair use of subject matter

IPR lecture 8-Nov-2023 11:40AM

SECTION 2: TRADEMARKS

Article 15

Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one

undertaking from those of other undertakings, shall be capable of constituting a trademark. Such

signs, in particular words including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be eligible for registration as

trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services,

Members may make registrability depend on distinctiveness acquired through use. Members may

require, as a condition of registration, that signs be visually perceptible.

2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a

trademark on other grounds, provided that they do not derogate from the provisions of the Paris

Convention (1967).

3. Members may make registrability depend on use. However, actual use of a trademark shall

not be a condition for filing an application for registration. An application shall not be refused solely

on the ground that intended use has not taken place before the expiry of a period of three years
from

the date of application.

4. The nature of the goods or services to which a trademark is to be applied shall in no case form

an obstacle to registration of the trademark.

5. Members shall publish each trademark either before it is registered or promptly after it is

registered and shall afford a reasonable opportunity for petitions to cancel the registration. In

addition, Members may afford an opportunity for the registration of a trademark to be opposed.

Article 16

Rights Conferred

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not
having the owner’s consent from using in the course of trade identical or similar signs for goods or
services which are identical or similar to those in respect of which the trademark is registered where
such use would result in a likelihood of confusion. In case of the use of an identical sign for identical
goods or services, a likelihood of confusion shall be presumed. The rights described above shall not
prejudice any existing prior rights, nor shall they affect the possibility of Members making rights
available on the basis of use.

2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In
determining whether a trademark is well-known, Members shall take account of the knowledge of
the trademark in the relevant sector of the public, including knowledge in the Member concerned
which has been obtained as a result of the promotion of the trademark.

3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services
which are not similar to those in respect of which a trademark is registered, provided that use of that
trademark in relation to those goods or services would indicate a connection between those goods
or services and the owner of the registered trademark and provided that the interests of the owner
of the registered trademark are likely to be damaged by such use.

Article 17
 Exceptions

Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of
descriptive terms, provided that such exceptions take account of the legitimate interests of the
owner of the trademark and of third parties.

Article 18

Term of Protection

Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than
seven years. The registration of a trademark shall be renewable indefinitely.

Article 19

Requirement of Use

1. If use is required to maintain a registration, the registration may be cancelled only after an
uninterrupted period of at least three years of non-use, unless valid reasons based on the existence
of obstacles to such use are shown by the trademark owner. Circumstances arising independently of
the will of the owner of the trademark which constitute an obstacle to the use of the trademark,
such as import restrictions on or other government requirements for goods or services protected by
the trademark, shall be recognized as valid reasons for non-use.

2. When subject to the control of its owner, use of a trademark by another person shall be
recognized as use of the trademark for the purpose of maintaining the registration.

Article 20

Other Requirements

The use of a trademark in the course of trade shall not be unjustifiably encumbered by special
requirements, such as use with another trademark, use in a special form or use in a manner
detrimental to its capability to distinguish the goods or services of one undertaking from those of
other undertakings. This will not preclude a requirement prescribing the use of the trademark
identifying the undertaking producing the goods or services along with, but without linking it to, the
trademark distinguishing the specific goods or services in question of that undertaking.

Article 21

Licensing and Assignment

Members may determine conditions on the licensing and assignment of trademarks, it being
understood that the compulsory licensing of trademarks shall not be permitted and that the owner
of a registered trademark shall have the right to assign the trademark with or without the transfer of
the business to which the trademark belongs.

SECTION 3: GEOGRAPHICAL INDICATIONS

Article 22

Protection of Geographical Indications

Meaning Geographical indications are, for the purposes

of this Agreement, indications which identify a
 good as originating in the territory of a
Member, or a region or locality in that territory,
where a given quality, reputation or other
characteristic of the good is essentially
attributable to its geographical origin.

Responsibility of member states Prevent misleading of the public as to the

geographical origian if the goods

Additional Protection for Geographical

Indications for Wines and Spirits

1. Geographical indications are, for the purposes of this Agreement, indications which identify a

good as originating in the territory of a Member, or a region or locality in that territory, where a given

quality, reputation or other characteristic of the good is essentially attributable to its geographical

origin.

2. In respect of geographical indications, Members shall provide the legal means for interested

parties to prevent:

(a) the use of any means in the designation or presentation of a good that indicates or

suggests that the good in question originates in a geographical area other than the true

place of origin in a manner which misleads the public as to the geographical origin of

the good;

(b) any use which constitutes an act of unfair competition within the meaning of

Article 10bis of the Paris Convention (1967).

3. A Member shall, ex officio if its legislation so permits or at the request of an interested party,

refuse or invalidate the registration of a trademark which contains or consists of a geographical

indication with respect to goods not originating in the territory indicated, if use of the indication in
the

trademark for such goods in that Member is of such a nature as to mislead the public as to the true

place of origin.

4. The protection under paragraphs 1, 2 and 3 shall be applicable against a geographical

indication which, although literally true as to the territory, region or locality in which the goods

originate, falsely represents to the public that the goods originate in another territory.
Article 23

Additional Protection for Geographical Indications

for Wines and Spirits

1. Each Member shall provide the legal means for interested parties to prevent use of a

geographical indication identifying wines for wines not originating in the place indicated by the

geographical indication in question or identifying spirits for spirits not originating in the place

indicated by the geographical indication in question, even where the true origin of the goods is

indicated or the geographical indication is used in translation or accompanied by expressions such as

"kind", "type", "style", "imitation" or the like.4

2. The registration of a trademark for wines which contains or consists of a geographical

indication identifying wines or for spirits which contains or consists of a geographical indication

identifying spirits shall be refused or invalidated, ex officio if a Member's legislation so permits or at

the request of an interested party, with respect to such wines or spirits not having this origin.

3. In the case of homonymous geographical indications for wines, protection shall be accorded

to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall

determine the practical conditions under which the homonymous indications in question will be

Notwithstanding the first sentence of Article 42, Members may, with respect to these obligations,

instead provide for enforcement by administrative action.

13

differentiated from each other, taking into account the need to ensure equitable treatment of the

producers concerned and that consumers are not misled.

4. In order to facilitate the protection of geographical indications for wines, negotiations shall be

undertaken in the Council for TRIPS concerning the establishment of a multilateral system of

notification and registration of geographical indications for wines eligible for protection in those

Members participating in the system.

SECTION 4: INDUSTRIAL DESIGNS

Article 25

Requirements for Protection

1. Members shall provide for the protection of independently created industrial designs that are new
or original. Members may provide that designs are not new or original if they do not significantly
differ from known designs or combinations of known design features. Members may provide that
such protection shall not extend to designs dictated essentially by technical or functional
considerations.

2. Each Member shall ensure that requirements for securing protection for textile designs, in
particular in regard to any cost, examination or publication, do not unreasonably impair the
opportunity to seek and obtain such protection. Members shall be free to meet this obligation
through industrial design law or through copyright law.

Article 26

Protection

1. The owner of a protected industrial design shall have the right to prevent third parties not having
the owner’s consent from making, selling or importing articles bearing or embodying a design which
is a copy, or substantially a copy, of the protected design, when such acts are undertaken for
commercial purposes.

2. Members may provide limited exceptions to the protection of industrial designs, provided that
such exceptions do not unreasonably conflict with the normal exploitation of protected industrial
designs and do not unreasonably prejudice the legitimate interests of the owner of the protected
design, taking account of the legitimate interests of third parties.

3. The duration of protection available shall amount to at least 10 years.

SECTION 5: PATENTS

Article 27

Patentable Subject Matter

1. Subject to the provisions of paragraphs 2 and 3, patents shall be available for any inventions,

whether products or processes, in all fields of technology, provided that they are new, involve an

inventive step and are capable of industrial application.5

Subject to paragraph 4 of Article 65,

paragraph 8 of Article 70 and paragraph 3 of this Article, patents shall be available and patent rights

enjoyable without discrimination as to the place of invention, the field of technology and whether

products are imported or locally produced.

2. Members may exclude from patentability inventions, the prevention within their territory of

the commercial exploitation of which is necessary to protect ordre public or morality, including to

protect human, animal or plant life or health or to avoid serious prejudice to the environment,

provided that such exclusion is not made merely because the exploitation is prohibited by their law.

3. Members may also exclude from patentability:

(a) diagnostic, therapeutic and surgical methods for the treatment of humans or animals;
(b) plants and animals other than micro-organisms, and essentially biological processes

for the production of plants or animals other than non-biological and microbiological

processes. However, Members shall provide for the protection of plant varieties

either by patents or by an effective sui generis system or by any combination thereof.

The provisions of this subparagraph shall be reviewed four years after the date of

entry into force of the WTO Agreement.

Inventions exclusions

Any invention whose use could be contrary to the public order or morality or which causes the threat
to environment

Article 28

Rights Conferred

1. A patent shall confer on its owner the following exclusive rights:

(a) where the subject matter of a patent is a product, to prevent third parties not having the owner’s
consent from the acts of: making, using, offering for sale, selling, or importing6 for these purposes
that product;

(b) where the subject matter of a patent is a process, to prevent third parties not having the owner’s
consent from the act of using the process, and from the acts of: using, offering for sale, selling, or
importing for these purposes at least the product obtained directly by that process.

2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to
conclude licensing contracts.

Article 30

Exceptions to Rights Conferred

Members may provide limited exceptions to the exclusive rights conferred by a patent, provided that
such exceptions do not unreasonably conflict with a normal exploitation of the patent and do not
unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate
interests of third parties.

Article 31

Other Use Without Authorization of the Right Holder

Where the law of a Member allows for other use7 of the subject matter of a patent without the

authorization of the right holder, including use by the government or third parties authorized by the

government, the following provisions shall be respected:

(a) authorization of such use shall be considered on its individual merits;

(b) such use may only be permitted if, prior to such use, the proposed user has made

efforts to obtain authorization from the right holder on reasonable commercial terms

and conditions and that such efforts have not been successful within a reasonable

period of time. This requirement may be waived by a Member in the case of a

national emergency or other circumstances of extreme urgency or in cases of public

non-commercial use. In situations of national emergency or other circumstances of

extreme urgency, the right holder shall, nevertheless, be notified as soon as

reasonably practicable. In the case of public non-commercial use, where the

government or contractor, without making a patent search, knows or has

demonstrable grounds to know that a valid patent is or will be used by or for the

government, the right holder shall be informed promptly;

(c) the scope and duration of such use shall be limited to the purpose for which it was

authorized, and in the case of semi-conductor technology shall only be for public

non-commercial use or to remedy a practice determined after judicial or

administrative process to be anti-competitive;

(d) such use shall be non-exclusive;

(e) such use shall be non-assignable, except with that part of the enterprise or goodwill

which enjoys such use;