Subject- Intellectual Property Rights

Lecturer Notes
B.Tech 7th Semester All Branches
Prepared By- Mr.Jyoti Prakash Panda
Asst.Professor(Finance)-MBA
Nalanda Institute of Technology, Bhubaneswar
 Module-I

❖ Meaning of Intellectual Property

What do we mean by “Intellectual Property”?

Intellectual property (IP) is a term referring to creation of the intellect is assigned to

designated owners by law. For example: A poet writes poetry. The poetry is his intellectual
property. Some common types of intellectual property rights (IPR) copyright, patent and
trademarks, trade secrets all these cover music, literature and other artistic works, discoveries
and inventions and words, phrases, symbols and designs. Intellectual Property rights provide
protection for creations and inventions, to enable creators and inventors to earn recognition
and financial benefit from their work.

Meaning of Intellectual Property

❖ Intellectual property (IP) refers to the ownership of an idea or design by the person
who came up with it. It is a term used in property law.
❖ It gives a person certain exclusive rights to a distinct type of creative design, meaning
that nobody else can copy or reuse that creation without the owner's permission.
❖ Intellectual property (IP) refers to creations of the mind, such as inventions; literary
and artistic works; designs; and symbols, names and images used in commerce.
❖ Intellectual property rights are the rights given to persons over the creations of their
minds.
❖ They usually give the creator an exclusive right over the use of his/her creation for a
certain period of time.
❖ It is the rights associated with intangible assets owned by a person or company and
protected against use without consent.
❖ Intangible assets refer to non-physical property, including right of ownership in
intellectual property.

Examples of intellectual property rights include:

⚫ Patents-A patent is the granting of a property right by a sovereign authority to an

inventor. Ex-Telephone

⚫ Domain names
 ⚫ Industrial design

⚫ Confidential information

⚫ Inventions

⚫ Moral rights-Moral rights are personal rights that connect the creator of a work to
their work. Moral rights are about being properly named or credited when your work
is used, and the way your work is treated and shown. Moral rights require that your
name is always shown with your work.

⚫ Database rights

⚫ Works of authorship

⚫ Service marks-Amazon (which provides services as an online retailer and sells

goods ), Google, FedEx, McDonald's etc

⚫ Logos

⚫ Trademarks-Apple, McDonald's, iPod (A trade mark, generally speaking, is any mark

used, or proposed to be used, to identify goods or services, and to distinguish those
goods and services from similar kinds of products or marks within the industry.)

⚫ Design rights

⚫ Business or trade names

⚫ Commercial secrets-Commercial Secrets means any technical and economic

information that is not known to the public, that may bring economic benefits to a
competitor, that has practical use and that is protected by their owner.

⚫ Computer software

Nature of Intellectual Property (IP)

One important characteristics of intellectual property is that it is intangible. The word

―intangible‖ means something that you cannot touch because it has no physical appearance.
Properties are of two types - tangible property and intangible property i.e. one that is
physically present and the other which is not in any physical form. Building, land, house,
cash, jewellery are few examples of tangible properties which can be seen and felt physically.
On the other hand there is a kind of valuable property that cannot be felt physically as it does
not have a physical form. Intellectual property is one of the forms of intangible property
which commands a material value which can also be higher than the value of a tangible asset
or property.

Intellectual properties have their own peculiar features. These features of intellectual
properties may serve to identify intellectual properties from other types of properties. Thus,
we will discuss them in brief.

1. Territorial

Any intellectual property issued should be resolved by national laws. Why is it an issue?
Because intellectual property rights have one characteristic which other national rights do not
have. In ownership of intellectual property of immovable properties, issues of cross borders
are not probable. But in intellectual properties, it is common. A film made in Hollywood can
be seen in other countries. The market is not only the local one but also international. If a
design in China is imitated by another person in France which law would be applicable?

2. Giving an exclusive right to the owner

It means others, who are not owners, are prohibited from using the right. Most intellectual
property rights cannot be implemented in practice as soon as the owner got exclusive rights.
Most of them need to be tested by some public laws. The creator or author of an intellectual
property enjoys rights inherent in his work to the exclusion of anybody else.

3. Assignable

Since they are rights, they can obviously be assigned (licensed). It is possible to put a
dichotomy between intellectual property rights and the material object in which the work is
embodied. Intellectual property can be bought, sold, or licensed or hired or attached.

4. Independence

Different intellectual property rights subsist in the same kind of object. Most intellectual
property rights are likely to be embodied in objects.

5. Subject to Public Policy

They are vulnerable to the deep embodiment of public policy. Intellectual property attempts
to preserve and find adequate reconciliation between two competing interests. On the one
hand, the intellectual property rights holders require adequate remuneration and on the other
hand, consumers try to consume works without much inconvenience. Is limitation unique for
intellectual property?

6. Divisible (Fragmentation)

Several persons may have legally protected interests evolved from a single original work
without affecting the interest of other right holders on that same item. Because of the nature
of indivisibility, intellectual property is an inexhaustible resource. This nature of intellectual
property derives from intellectual property‘s territorial nature. For example, an inventor who
registered his invention in Ethiopia can use the patent himself in Ethiopia and License it in
Germany and assign it in France. Also, copyright is made up of different rights. Those rights
may be divided into different persons: publishers, adaptors, translators, etc.

Importance of Intellectual Property Rights

⚫ set your business apart from competitors

⚫ be sold or licensed, providing an important revenue stream

⚫ offer customers something new and different

⚫ form an essential part of your marketing or branding

⚫ be used as security for loans

⚫ TURN THE INNOVATIVE IDEAS INTO PROFIT

Ideas on their own have little value or no value. IP has great untapped potential to turn your
ideas into commercially successful goods and services. Registering your patients and
copyright can result in a steady stream of royalty and extra revenue, which can improve the
overall business bottom line.

⚫ MARKETING OF BUSINESS GOODS AND SERVICES

Intellectual Property is crucial for creating a unique identity for the business. It helps to
differentiate the goods and services of one company from the other in the market and to
easily promote them to the target customers.
 ⚫ ACCESS OR RAISE FINANCE FOR THE BUSINESS

A person can monetize the IP assets through sale, licensing or can use them as collateral for
debt financing. Furthermore, IP registration is also very useful to apply for government or
public funding, loans and subsidies.

⚫ IMPROVE THE EXPORT OPPORTUNITIES FOR THE BUSINESS

Intellectual Property also increases the competitiveness of a business in the export market. An
IP right holder can use these brands or designs for marketing the goods and services in
foreign countries and can seek franchising agreement with the overseas firm, or export the
patented goods.

⚫ TO SECURE THE UNIQUE IDEAS AND CREATION

When any person has a unique idea or creation, there will always be people who will try to
replicate that idea or creation for monetary gains. Hence, it is crucial to secure the IP assets
before they are illegally infringed by any third party. IP protection can be taken for all kind
and size of business. So, after analyzing the business need and circumstances, a person can
decide which Intellectual Property Protection (trademark, copyright, or patent registration),
can be used for covering different areas of Intellectual Properties

⚫ ACCELERATES THE BUSINESS GROWTH

It is very crucial for small size business to shield their unique products or services, which can
be used by the competitors for taking away the market share, resulting in steady growth and
sales. Losing a market share in the initial stage in a business can be hazardous to its business
health in the long-term.

BROAD CLASSIFICATION

IP is divided into two categories for ease of understanding:

I. Industrial Property: which includes inventions (patents), trademarks, industrial designs,

and geographic indications of source?

II. Copyright: which includes literary and artistic works such as novels, poems and plays,
films, musical works, artistic works such as drawings, paintings, photographs and sculptures,
and architectural designs? Rights related to copyright include those of performing artists in
their performances, producers of phonograms in their recordings, and those of broadcasters in
their radio and television programs.

TIP: One easy method to remember between the two types of IPR is to understand the basic
structure of both types. Industrial property as the name suggests is related to business or
manufacturing units. On the other hand, copyright deals with creative works of literary, music
etc.

I. Types of Industrial property:

Patent: A patent is an exclusive right granted for an invention – a product or process that
provides a new way of doing something, or that offers a new technical solution to a problem.
A patent protection provides patent owners with protection for their inventions. Protection is
granted for a limited period, generally 20 years. Patent protection means an invention cannot
be commercially made, used, distributed or sold without the patent owner‘s consent.

Patent rights are usually enforced in courts that, in most systems, hold the authority to stop
patent infringement. Conversely, a court can also declare a patent invalid upon a successful
challenge by a third party. A patent owner has the right to decide who may – or may not – use
the patented invention for the period during which it is protected. Patent owners may give 5
permission to, or license, other parties to use their inventions on mutually agreed terms.

Explanation: Patent grants exclusive right to the owner/inventor to use/sell etc his invention.
For example: A person invented a new process to make cancer medicine. He can apply for
patent. If he gets patent over that process, only he will be able to use that process to make the
cancer medicine; no other market players can use the technology for 20 years.

Trade Marks: A trademark is a distinctive sign that identifies certain goods or services
produced or provided by an individual or a company. Its origin dates back to ancient times
when craftsmen reproduced their signatures, or ―marks‖, on their artistic works or products of
a functional or practical nature over the years, these marks have evolved into today‘s system
of trademark registration and protection. The system helps consumers to identify and
purchase a product or service based on whether its specific characteristics and quality – as
indicated by its unique trademark – meet their needs.

Nike shoe is a trade mark of the company. The moment a customer enters the shop the trade
mark will help him to distinguish between the Nike products with other similar products. The
trade mark stands for quality and assurance of a particular trader. These trademarks are
granted protection from infringement. For example: Nike shoe logo cannot be used by other
traders; if any trader will use the logo for their own products then Nike company can seek
civil remedy i.e. can file case against that trader for trade mark infringement.

Types of Intellectual Property

There are four main types of intellectual property rights, including patents, trademarks,
copyrights, and trade secrets. Owners of intellectual property frequently use more than one of
these types of intellectual property law to protect the same intangible assets.

For instance, trademark law protects a product‘s name, whereas copyright law covers its
tagline.

1. Patents

⚫ The U.S. Patent and Trademark Office grants property rights to original inventions,
from processes to machines. Patent law protects inventions from use by others and
gives exclusive rights to one or more inventors. Technology companies commonly
use patents, as seen in the patent for the first computer to protect their investment in
creating new and innovative products. The three types of patents consist of:

⚫ Design patents: Protection for the aesthetics of a device or invention. Ornamental

design patents include a product‘s shape (Coca-Cola bottle), emojis, fonts, or any
other distinct visual traits.

⚫ Plant patents: Safeguards for new varieties of plants. An example of a plant patent is
pest-free versions of fruit trees. But inventors may also want a design patient if the
tree has unique visual properties.

⚫ Utility patents: Protection for a product that serves a practical purpose and is useful.
IP examples include vehicle safety systems, software, and pharmaceuticals. This was
the first, and is still the largest, area of patent law.

2. Trademarks

⚫ Trademarks protect logos, sounds, words, colors, or symbols used by a company to

distinguish its service or product. Trademark examples include the Twitter logo,
McDonald‘s golden arches, and the font used by Dunkin.
Although patents protect one product, trademarks may cover a group of products. A
trademark is a unique symbol or word(s) used to represent a business or its products.

3. Copyrights- Logo

❖ Copyright is given on works not on products.

⚫ Copyright law protects the rights of the original creator of original works of
intellectual property.

⚫ For Example, you can‘t copyright an idea. But you can write down an original
speech, poem, or song and get a copyright. Once someone creates an original work of
authorship (OWA), the author automatically owns the copyright.

4. Trade Secrets

⚫ Trade secrets are a company‘s intellectual property that isn‘t public, has economic
value, and carries information. They may be a formula, recipe, or process used to gain
a competitive advantage.

⚫ To qualify as a trade secret, companies must work to protect proprietary information

actively. Once the information is public knowledge, then it‘s no longer protected
under trade secrets laws.
 ⚫ Two well-known examples include the recipe for Coca-Cola and Google‘s search
algorithm. Although a patent is public, trade secrets is not public but the owner only
knows the secrets.

History/Genesis (Origin/Beginning) of IPR in India

Development of Intellectual Property Law in India

⚫ Intellectual Property Right (IPR) in India was imported from the west. The Indian
Trade and Merchandise Marks Act 1884, was the first Indian Law regarding IPR.

⚫ The first Indian Patent Law was enacted in 1856 followed by a series of Acts being
passed. They are Indian Patents and Designs Act in 1911 and Indian Copyright Act in
1914.

⚫ Indian Trade and Merchandise Marks Act and Indian Copyright Act have been
replaced by Trade and Merchandise Marks Act 1958 and Copyright Act 1957
respectively.

⚫ In 1948, the Indian Government appointed the first committee to review the
prevailing Patents and Designs legislation.
 ⚫ In 1957, Government appointed Justice Rajagobala Ayyangar Committee (RAC) to
revise the Patent Law.

⚫ Rajagobala Ayyangar Committee submitted its report on 1959, the report tried to
balance the constitutional guarantee of economic and social justice enshrined in the
preamble of the constitution.

⚫ This report provided the process for Patenting of drugs.

Patent and Patent Law

What is a patent?

A patent is a type of intellectual property that gives its owner the legal right to exclude others
from making, using, or selling an invention for a limited period of years, in exchange for
publishing an enabling public disclosure of the invention.

The patent owner has the exclusive right to prevent or stop others from commercially
exploiting the patented invention. In other words, patent protection means that the invention
cannot be commercially made, used, distributed, imported or sold by others without the
patent owner's consent.

 What is patent Law?

 Patent law is the branch of intellectual property law that deals with new
inventions. Once granted, a patent gives the inventors the exclusive right to sell their
invention for 20 years. Sometimes inventors give other companies a license to
manufacture and sell the invention in exchange for a fee.

 Under the Indian patent law, a patent can be obtained only for an invention which
is new and useful.
What can be protected under patent?

 Nearly anything can be patented. Machines, medicines, computer programs, articles

made by machines, compositions, chemicals, biogenetic materials, and processes, can
all be the subject matter for a United States patent.

 Patent law protects inventions (utility patents) and ornamental designs for articles of
manufacture (design patents).

What is not patentable subject matter?

 The Supreme Court has long held that ―laws of nature, physical phenomena, and
abstract ideas” are not patentable.

 Not patentable examples

 Plants and animals in whole or any part thereof other than microorganisms.
  As per Sections 3 and 4 of the Indian Patent Act, the following innovations are not
patentable in India:

 An invention that is frivolous or trivial.

 An invention that claims anything obviously contrary to well established natural

laws.

 The mere discovery of a scientific principle.

How long does a patent last?

 For utility patents filed on or after June 8, 1995, the patent term is 20 years from the
date of filing. For design patents, the period is 14 years from date of issuance. (Design
patents are issued for ornamental designs of functional items). For plant patents, the
period is 17 years from date of issuance.

 What happens to patents after 20 years?

 As per the Indian Patents Act, a patent is granted on a product, process or an invention
for a limited period of 20 years. ..... You cannot extend the life of the patent. After this
lifespan expires, the invention no longer enjoys patent protection. The invention
becomes part of the public domain.

Why should I apply for a patent?

 A patent can get you a better market position.

 You can avoid price competition in those markets where you have patent protection.

 You also force other actors to develop their own technical solutions to the problem
that your invention solved.

 A patent can also make it easier to attract investors or sell your company.

Patentability Requirements/ What are the 5 requirements for obtaining a patent?

 1. The innovation is patentable subject matter

❖ Patentable

 New products such as toys, appliances, tools, medical devices, pharmaceutical drugs
  New process, such as a manufacturing process or an industrial method or process

 Software

 Business methods

 Some types of biological materials

❖ Not patentable

 Artistic creations

 Mathematical algorithms or models

 Abstract intellectual or mental concepts or processes

 Plans or schemes

 Principles or theories

2. The innovation is new (called 'novelty')

You cannot patent something that is already publicly known, as it would be unfair to confer
the economic benefits of a patent in relation to something that is already publicly known. The
test of 'novelty' is assessed as at the date you file your application for the patent. For this
reason, if you intend to disclose your product, process or invention to someone, it is critical
that you have a confidentiality agreement signed beforehand.

Surrender of Patents

Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The patentee can
offer to surrender his patent by giving notice to the Controller.

1. The offer to surrender the patent should be published by the Controller, and every person
interested in the patent must also be notified of the same.

2. After the publication, any interested person can oppose the surrender, by giving notice to
the Controller which should be notified by the Controller to the patentee.

3. If the patentee or the opponent wants to be heard, the Controller, on being satisfied that the
patent may be surrendered and after the hearing, may accept the offer and revoke the patent
by order.
4. The notice of opposition must be given to the Controller within a period of 3 months from
the date of publication of the notice to surrender the patent.

5. If the patentee‘s offer to surrender the patent is accepted by the Controller, he may:

➢ direct the patentee to return the patent; and

➢ on receiving the patent revoke it by order; and
➢ Publish the revocation of the patent.

Revocation of Patents

Section 64 of the Patents Act, 1970 deals with the ‗Revocation of patents‘. A patent that has
been granted to an invention can be revoked by the Appellate Board in the following ways:

➢ on a petition filed by any interested person; or

➢ on a petition filed by the Central Government; or
➢ on a counter-claim in a suit for infringement of the patent by the High Court.

Grounds for Revocation of Patents

A patent may be revoked on any of the following grounds:

➢ where an invention as claimed in a valid claim of earlier priority date which is

included in the complete specification of another patent;
➢ where the patent application was filed by a person who is not entitled under the
provisions of the Act and was granted a patent on such application;
➢ where the patent was wrongfully obtained and the rights of the petitioner or any
person under/through whom he claims, were contravened;
➢ when the subject of a claim of the complete specification is not an invention within
the meaning of the Act;
➢ where the invention that is being claimed is not new having regard to what was
publicly known or used in India before the priority date of the claim and also having
regard to what was published in any of the documents, whether in India or elsewhere;
➢ where the invention that is claimed is obvious and lacks any inventive step, having
regard to what was publicly known, used or published in India, before the priority
date;
➢ where the invention is not useful;
➢ where the invention and the method by which it is to be performed is not sufficiently
and fairly described by the complete specification. In other words, the description of
the method or the instructions for the working of the invention as specified in the
complete specification are insufficient to enable a person of average skill and
knowledge of the art to which the invention relates, to operate or work the invention
or where the best method of performing the invention which is known to the applicant
is not disclosed;
➢ where the scope of any claim is not defined properly or based on the matter which his
not disclosed in the specification;
➢ where a false suggestion or representation was made to obtain the patent;
➢ where the subject of any claim of the complete specification is not patentable under
the Act;
➢ the invention that is being claimed was secretly used in India before the priority date
of the claim;
➢ where the information required under Section 8 has not been disclosed by the
applicant of the patent to the Controller or the information that has been furnished is
false to his knowledge;
➢ where any direction of secrecy passed under Section 35 has been contravened by the
applicant or made an application in contravention of Section 39 for the grant of a
patent outside India;
➢ where the permission to amend the complete specification under Section 57 or 58 was
obtained by fraud;
➢ the complete specification does not disclose or mentions the wrong source or
geographical origin of biological material used for the invention;
➢ the invention was anticipated having regard to the knowledge which was available
within any local or indigenous community within India or elsewhere.
➢ However, where the invention claimed is not new, obvious or lacks any inventive
step, having regard to what was publicly known or used in India or published in India
or elsewhere, before the priority date of the claim:
➢ where the patent is for a process or for a product that is made by a process which is
claimed, the importation of the product which is made abroad by that process into
India will constitute knowledge or use in India of the invention, on the date of
importation. Except where the product has been imported for the purpose of
reasonable trial or experiment only.
 Furthermore, on a petition of the Central Government, the High Court may revoke a patent if
it is satisfied that the patentee has failed to comply with the request of the Central
Government, without any reasonable cause to make, use or exercise the invention which has
been granted a patent for the Government‘s purpose, within the meaning of Section 99 of the
Act.8 The petition for revocation of a patent should be notified to all persons mentioned in
the register who are proprietors of that patent or have a share or interest in the patent.

Restoration of Patent:

1. Under Section 60 of the Patents Act 1970, an application for restoration of lapsed patent
should be made by patentee or his legal representative.

2. Prescribed fee on Form 15

3. Proof to support that failure of the renewal/ maintenance was unintentional.

Although there is no additional fee for Patent of addition, but the patent holder or the patentee
has to submit each form individually for each additional patent with that of the parent
restoration application.

What are the steps in the patent application process?

1. Step 1: Idea incubation phase. Every invention has its beginning in an Idea.
2. Step 2 : Patentability search (optional step) .
3. Step 3 : Patent drafting/writing.
4. Step 4 : Filing patent application.
5. Step 5: Publication of application.
6. Step 6: Request for examination (RFE) .
7. Step 7: Response to objections.
8. Step 8: Grant of patent.

Procedure for filing patent application

Filing the patent application in India (Domestic)

1. Application for grant of patent. Form 1.

2. Provisional/complete specification. Form 2.
 3. Statement and undertaking under section 8 (this is only required where a patent
application is already filed in the country other than India) Form 3.
4. Declaration as to inventorship Form 5.

Filing the patent application in International

1. You can file directly in the country of choice.

2. You can file a Patent Co-Operation Treaty (PCT) application and then later designate your
countries of choice so long as that country is a PCT member.

3. You can file a utility patent application in the U.S. and within 12 months from filing do
either items 1 and/or 2.

Licensing of IPR

What is licensing in intellectual property?

Under an intellectual property licensing agreement (also known as an intellectual property

license or an intellectual property license agreement), you retain ownership of your patent,
copyright, or trademark, but you give another party permission to use some or all of your
intellectual property rights for a specific .
A licensing agreement refers to a partnership agreement between the owner of intellectual
property rights, i.e., the licensor, and the person who is authorized to utilize such rights, i.e.,
the licensee, in exchange for an agreed-upon payment, i.e., royalty or fee. Licensing
agreements are of the following types:

1. Copyright Licensing Agreement

2. Trademark Licensing and Franchising Agreement
3. Technology Licensing Agreement
In general, some or all of these agreements form part of a single contract as the licensing
agreements involve many rights and not just a single IPR. Being the owner or licensor of IP,
a person can ensure a steady stream of additional income; and as a licensee, a person can sell,
manufacture, import, distribute, or market the products and services related to the business,
which he wouldn‘t have been able to do otherwise.

In terms of the international context, a licensing agreement is possible only if the owner
wishes to license an intellectual property right that is protected in the other country as well.
 Moreover, if the same IP Right is not a part of the other country‘s laws and regulations, then
the owner also has no legal rights to put any restriction over its use by anyone else.

Copyright Licensing Agreement

If a brand or a business entity is interested in:

1. Manufacturing, marketing, or distributing the original literary or artistic works of the

creators, or
2. Expanding or extending their already existing market for the literary and artistic works of
their creators,
then they may consider Copyright License Agreements. Sometimes, owners find it arduous to
manage their Intellectual Property Rights and have usually formed collective management
organizations for representing and managing the rights on their behalf. Therefore, if a person
wishes to acquire these rights, he or she may have to reach to the appropriate collective
management organization that will be authorized to license the rights of their members.

Trademark Licensing and Franchising Agreement

If a brand or a business entity is interested in:

1. Marketing or selling a product, or service whose trademark is owned by others, or

2. Extending or expanding their already existing market for a product or service for which
their business owns the rights conferred by a trademark, they may consider a Trademark
Licensing or Franchising Agreement.
A trademark helps in distinguishing the products or services of one enterprise from others by
identifying their source of origin and making an implied reference to the quality and brand
name. Therefore, in the case of a Trademark Licensing Agreement, the owner is highly
advised to maintain a close connection with the licensee for ensuring that quality standards
are maintained and the consumers aren‘t deceived.

Through a Trademark Franchising Agreement, the owner of a business or brand entity who
has already achieved some success corresponding to the trademark may collaborate with
another enterprise (franchisee) who will bring in the expertise of their own or financial
resources to provide the products or services directly to the consumers.

Technology Licensing Agreement

A technology licensing agreement consists of the agreed-upon terms and conditions using
which the licensor authorizes the licensee to use the technology.
If a business entity is interested in improving the quality of a product or service or
manufacturing a new product or service by using the rights owned by another enterprise in
the form of a patent or utility model, then acquiring such rights through a technology
licensing agreement can prove to be fruitful. Additionally, if a business wishes to extend its
already existing market for a product or service for which they own the rights in the form of
patent or utility model, then authorizing any other enterprise to use the product or service
with the help of a technology licensing agreement can be the right solution.

Enforcement of Intellectual property rights

How is intellectual property rights enforced?

There are different ways to enforce your IP, either before litigation or through a formal
lawsuit. A cease and desist demand letter is typically the first step. The letter asks the
―infringer‖ to stop the unauthorized or illegal use of your IP (―cease‖), and not to use it again
in the future (―desist‖).
Enforcement of Intellectual Property Laws in India

India has a well-established statutory, administrative and judicial framework to safeguard

Intellectual Property Rights (IPRs), however, it is still facing problems with the enforcement
of IPR. It has always been a concern about slow judicial system involving lengthy and time-
consuming procedure of trial in India, however, in recent years, Indian courts have shown
dynamism and zeal for effective protection of Intellectual Property Rights. It has been
observed that by adopting right policies and strategies, IPR can be effectively protected with
the help of law enforcement authorities.

For any IPR related litigation, it is necessary to understand the Indian Judicial system and its
psychology. It has been observed that the Indian Courts are very active in granting equitable
reliefs like injunctions, etc, but are still reluctant in awarding punitive pecuniary damages.

Authorities involved in the Execution of Orders of Courts

The Government Authorities including police are bound to execute and enforce the orders of
court, and as such the courts are empowered to direct any government authority to do or not
to do or prevent / compel any person to comply with the orders of the court. There are
effective methods for the enforcement of the orders of the court, including Contempt of Court
proceedings, which provides for a fine as well as imprisonment, in case of non-compliance of
the order of the court. Execution/ compliance of the orders of the court are also done by way
of appointment of the Local Commissioner/Receivers by the court. In India, certain State
Governments have formed special Intellectual Property Cells, which deal with offences
relating to infringement of IPR.

In any civil action for enforcement of Intellectual Property Rights, the following reliefs may
be claimed in such suit:

• Permanent Injunction;
• Interim Injunction;
• Damages;
• Accounts and handing over of profits;
• Anton Pillar Order (Appointment of Local Commissioner by the Court for custody/
sealing of infringing material/accounts);
• Delivery up of goods/packing material/dies/plates for destruction.

Additionally, in case of infringement of Trademark, infringement of Copyright, Geographical

Indication, Plant Variety and Semiconductor Integrated Circuits Layout Design
following Criminal action can also be initiated:

• Registration of First Information Report (FIR); or

• Filing of a Criminal Complaint before a Competent Magisterial Court with
application for issue of search and seizure warrants directing the police to raid of the
premises of the accused for seizure of the infringing material and arrest of the
infringers.

It is interesting to note that in India, wherever provisions have been made for criminal
prosecution for violation of any Intellectual Property Rights, a criminal case can be filed
against known as well as unknown persons. It is also important to note that both civil and
criminal remedies, wherever applicable, can be availed simultaneously and both the remedies
are coexistent.

Competent Court

In India, a suit may be instituted in any court of original jurisdiction, subject to their
pecuniary and territorial jurisdiction. In relation to IPR litigation, the designation of the
lowest court is "District and Sessions Judge". These cases can also be filed in the High Court,
directly, if such High Court is having original jurisdiction. The jurisdiction of the High Court
can be invoked, subject to the payment of court fees. The structure of court fees payable
varies from state to state.

Border Control Measures for Enforcement of IPR

The Government of India under s 11 of the (Indian) Customs Act, 1962 is empowered to
prohibit importation and exportation of goods of specified description, if it deems necessary
to do so. The provision, inter alia, empowers the government to prohibit the import or export
of goods for "the protection of patents, trademarks and copyrights". The goods imported in
contravention of the provisions of the Customs Act or any other laws for the time being in
force are liable to be confiscated. In this regard, a customs officer is empowered to inspect
any premises, conveyance, x-ray any person and effect search and seize in case where they
have reasons to believe that the goods are of contraband nature. They can also investigate or
interrogate any person and arrest him.

Intellectual Property Rights (Imported Goods) Enforcement Rules, 2007

India has notified the Intellectual Property Rights (Imported Goods) Enforcement Rules,
2007. The rules comply with border measures as required by the TRIPS Agreement
empowering the Customs Officers to enforce IPR over the imported products. Actions under
Customs Act are independent to the remedies provided under various statues on Intellectual
Property. As per rule 2(b) of the Intellectual Property Rights (Imported Goods) Enforcement
Rules, 2007, Intellectual Property includes patents, designs, and geographical indications
together with trademarks and copyrights.
 Module-II

Copyrights: meaning, scope;

What is covered by copyright?
How long does copyright last?
Why protects copyright?
Related rights, Rights covered by copyright.
Ownership: Duration, Division,
Transfer and Termination of Transfers

❖ Meaning and Definition of Copy right

• Copyright refers to the legal right of the owner of intellectual property.

• In simpler terms, copyright is the right to copy.
• Copyright is a type of intellectual property that gives its owner the exclusive right to
make copies of a creative work, usually for a limited time.
• This means that the original creators of products and anyone they give authorization
to are the only ones with the exclusive right to reproduce the work.

Copyright example

• Copyright works such as text, images, art works, music, sounds, or movies.

The five fundamental rights that the bill gives to copyright owners—
• the exclusive rights of reproduction,
• adaptation,
• publication,
• performance, and
• display
are stated generally in section 106.

What is the scope of protection in the Copyright Act, 1957?

❖ The Copyright Act, 1957 protects original literary, dramatic, musical and artistic
works and cinematograph films and sound recordings from unauthorized uses.
❖ Unlike the case with patents, copyright protects the expressions and not the ideas.
❖ The Copyright Act provides a closed list of protected works under section 13.
❖ Copyright law in India also protects neighbouring rights (ie, broadcast reproduction
rights and performers‘ rights).
 ❖ The Indian courts, (notably the Supreme Court) have laid down that not every effort
or industry, or exercise of skill, results in a copyrightable work, and only those works
whose creation involves some intellectual effort as well as a certain degree of
creativity can be protected by way of a copyright.

What types of rights are covered by copyright?

The Copyright Act, 1957 sets out the following rights of copyright held by copyright owners:

• In the case of literary, dramatic or musical works – the exclusive right to

reproduce (including storage in any medium by electronic means, issuing copies,
public performance, making any film or sound recording in respect of that work); to
translate and adapt the work; and to communicate the work to the public (which is
defined widely enough to cover dissemination over the internet).
• In the case of computer programs – all rights as mentioned for literary works in
addition to selling or giving on hire, or offering for sale or hire for commercial rental
any copy of the computer program.
• In the case of artistic works – to reproduce the work in any material form. This may
include storing it in any medium by electronic or other means or depicting a two-
dimensional work in three dimensions or vice versa. Copyright in an artistic work also
includes the exclusive right to communicate the work in public, issue copies of it,
include it in a cinematograph film, and translate or adapt the work in any way.
• In the case of cinematograph films – to make copies of the film (on any medium,
electronic or otherwise) including copies in the form of photographs that form a part
of the film, sell or give on hire, or offer for sale or hire any copy of the film, to sell,
give or offer for sale on commercial rental copies of the film and communicate the
film to the public.
• In the case of sound recordings – to make any other sound recording embodying it
on any medium including storing of it on any medium, to sell or give on commercial
rental or offer for sale such rental and to communicate the sound recording to the
public.
What is the term/ Last of protection of copyright? Or How long do copyright claims
last?
The general rule is that copyright lasts for 60 years. In the case of original literary,
dramatic, musical and artistic works the 60-year period is counted from the year
following the death of the author.
The Berne Convention stipulates that the duration of the term for copyright protection
is the life of the author plus at least 50 years after their death.
A number of countries, including the European Union and the United States, have
extended that to 70 years after the author's death.
Copyright protection generally lasts for 70 years after the death of the author. If the
work was a "work for hire", then copyright persists for 120 years after creation or 95
years after publication, whichever is shorter.
Can copyright be renewed in India?
There is no renewal of copyright under Indian law as neither registration nor renewal are
required for subsistence of copyright in a work for its entire term.

Why should copy right be protected?

Copyrights should be protected because it ensures certain minimum safeguards for author's
rights over their creations, thus protecting and rewarding their creativity.
1. Your work is an asset
If you have an original idea or piece of creative work, no matter what others may say, it‘s still
a potential asset and should be treated as such. Your work can end up having considerable
value in the future and can even potentially be used for financial collateral. There is also the
concept of copyrights as a legacy as they can last for decades, passed down as part of an
estate. For literary, musical or artistic works, copyrights can last a further 70 years after the
death of the original creators death and in broadcast or publishing cases this time period
extends to 50 years.

2. Protect your rights

If someone infringes your copyright, you will have legal grounds to pursue the guilty party to
either pay you for a license, or compensate you for any financial loss you may have incurred.
If they are using your work without your knowledge, you are well in your rights to stop them
doing so and receive compensation for any earnings they have made off the back of your
work. If you do see that someone is using your work without your knowledge or permission,
we recommend consulting one of our IP experts about what legal recourse you can take.

3. Licensing is the way forward

If you have copyrighted works that has attracted the interests of other parties, you can explore
your licensing options to make sure you can financially benefit from their use. Licensing is a
legal authorisation from you to another party that permits them to use some (or all) of your
copyrighted works. Licensing is also an effective way to increase the legal protection around
your idea, and can be used as evidence against another party who does not fulfil their part of
the deal or is using your work without permission. The above are just a few broad areas why
you should take an active interest in your intellectual property, even if you think it is already
protected. Copyright infringements happen every day, so stay on top of your intellectual
property protection and take proactive steps to ensure your rights are looked after.

Rights covered by copyrights

1. Right of Reproduction

The most prominent is the right to reproduce, which implies making copies of the work in
any form (Article 9). In the modern context copying a song on a CD would amount to
reproduction. Sound and visual recordings are also considered as copying. Copying would
amount to infringement unless it can be classified under one of the fair use defences. It is
necessary to show that the person copying does not intend to make any commercial benefit
out of it. In all other cases permission of the author is required.

2. Right to Distribute

An off-shoot right of reproduction is the right of distribution. The copyright owner may
distribute his work in any manner he deems fit, he can even license it if he wishes or give it
out on rent. The owner is at liberty to assign certain specific rights to somebody while
retaining the rest; for example he may assign the right to make translations.

3. Right to make Derivative Works

Another important right that the owner has is to use the work in various ways, for instance
while making adaptations (modifications in a work to suit some other requirements) (Article
12) or translations (converting from one language to another) (Article 11). Examples of
adaptations would include making a movie based on a novel. Nobody else can make these
derivative works without the owner‘s consent. Authors of literary and artistic works also have
an additional right to make cinematographic adaptations and distribute the same (Article 14).
In this context, related rights of the owner are also important, for instance, the right to
integrity which protects the owner against distortion, mutilation or modification of his work
in a way that it is harmful for his reputation.

4. Right to Publicly Perform

The copyright owner also has the right to publicly perform his works. Example, he may
perform plays based on his work or perform at concerts, etc. Public does not have to be of a
specific strength; even a large group of people would amount to performing before the public
(Article 11).

5. Right to broadcast
A copyright owner also has the right to broadcast his work. Broadcasting would mean using
of any means to make the work available to the public. In the modern context, this would
extend to making the work accessible on the Internet. The terms and conditions of access will
be decided by the copyright holder (Article 11bis).

6. Right of Public Recitation

Authors of literary works are additionally conferred with the right to publicly recite their
works (Article 11ter).

7. Right to Follow
A special right granted to authors is the right to obtain a percentage in the subsequent sales of
his work and is called Droit de Suite or Right to Follow. The right is also available to artists
on resale of their work. (Article 14ter).

Ownership: Duration

The duration of protection for copyright works varies according to the type of work and the
date of creation of the work. It is divided as follows:

Literary, dramatic, musical or artistic works:

The Copyright expires after 60 years from the end of the calendar year in which the author
dies. Where a work has a joint author/co-author, it expires 60 years from the end of the
calendar year in which the co-author dies. Where the author's identity is unknown, copyright
expires 60 years from the end of the calendar year in which the work was first published. In a
case where there are joint authors/co-authors, and the identity of one author is known and the
identity of the other is unknown, the copyright expires 60 years from the end of the calendar
year in which the known author dies.

Cinematograph films:
The Copyright shall subsist until 60 years from the beginning of the calendar year following
the year in which the film is made available to the public.

Sound recordings:
The Copyright shall subsist until 60 years from the beginning of the calendar year following
the year in which the sound recording is made available to the public.
Further, the author's moral right, which is a right against distortion, is available even after the
expiry of the term of copyright.

The ownership of copyright is dependent on various factors. The concept of "first owner" is
quite important and may be determined as follows:

In the case of a literary, dramatic or artistic work (which includes a photograph, painting or a
portrait) created during the course of employment or under a contract of service or
apprenticeship, for the purpose of publication in a newspaper, magazine or similar periodical,
the author of such a publication shall, in the absence of a contract to the contrary, be the first
owner of copyright.

However, such ownership shall vest with the proprietor of the publication only for the limited
purpose of publishing the work or a reproduction of the work in a publication and, for all
other purposes, the copyright shall vest with the author of the work.

Transfer of Ownership. —

(1) The ownership of a copyright may be transferred in whole or in part by any means of
conveyance or by operation of law, and may be bequeathed by will or pass as personal
property by the applicable laws of intestate succession.

(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of
the rights specified by section 106, may be transferred as provided by clause (1) and owned
separately. The owner of any particular exclusive right is entitled, to the extent of that right,
to all of the protection and remedies accorded to the copyright owner by this title.

Termination of Copyrights — In the case of any work other than a work made for hire, the
exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a
copyright, executed by the author on or after January 1, 1978, otherwise than by will, is
subject to termination under the following conditions:

Copyright infringement and resulting termination are statutorily defined in both India and the
US. Under section 17 USC 107 of the Copyright Act of 1976, there is a provision to
terminate if there is a misuse from the party to whom the copyright owner has
licensed/assigned his copyrighted work.
Copyright infringement and resulting termination are statutorily defined in both India and the
US. Like other legal rights, copyright too is not absolute but is subject to limits and
exceptions. The legal framework of copyright does not absolutely prohibit the use of a
copyrighted work, but, in fact, allows a person to use a copyrighted work under certain
exceptions. One such exception is ―fair use.‖ The term fair use, although undefined under
both US and Indian copyright law, has its spirit captured in legislation, with the judicially
derived factors being listed under 17 USC 107 and Section 52 of the Copyright Act of
1957, rendering ―certain acts not amounting to infringement.‖ To avoid misuse of
copyrighted works for personal gain the law has granted the provision to terminate the
copyright that was previously licensed/assigned.

Conditions for termination

If there is a work besides work made for hire, the exclusive and nonexclusive authorisation
for transfer or license of that copyright or any of the right under copyright, exercised by the
artist/author on or after January 1, 1978, is/are subject to closure/termination under below
conditions:

• If the author/artist is dead then the person who is entitled to exercise more than
50% of that author/artist‘s termination interest.

• Where artist/author is dead and his or her termination interest is owned by

relevant parties, it may be exercised as mentioned below:

1. The widow or widower and surviving children or grandchildren of the author. The
ownership of more than 50% of the author/artist‘s interest is divided among them
and only when the majority of authors/right holders are interested.

2. The author/artist‘s manager/trustee will also own the author/artist‘s entire

termination interest.

• Termination could be initiated at any time during the intended period of five years
starting at the end of 35 years from the date of starting of the grant.

• The termination can be initiated by issuing an advance notice in writing duly

signed by the owners/majority of termination interest.
 • The notice will mention the effective date of the termination, which will be within
the five-year period and the notice shall be issued not less than 2 or more than 10
years before that given date. A copy of the notice will also be sent to the Copyright
Office.

• Termination can be initiated with an agreement to make a will or to make or create

any future grant.

Result of termination

After the effective date of termination, all rights covered come back to the author, artists, and
other persons owning the termination rights under clauses (1) and (2) of the subsection. The
termination rights holders can make a further agreement/grant. Such a new agreement/grant is
effective only if it is made post the mentioned date of the termination.

Module-III

Infringement and Remedies:

• Literal and non-literal infringement
• Role of claims
Doctrines on infringement:
• Equivalent doctrine
• Pith and Marrow doctrine
• Comparative test
Defences:
• Gillette Defence
• General grounds
• Patents granted with conditions
• Parallel import
Remedies:
• Civil Remedies
• Administrative Remedies
 • Infringement
Infringement refers to the violation of a law or a right. An infringement is a violation, a
breach, or an unauthorized act. Infringement occurs in various situations. Harm to one's right
is an infringement.
Types of infringement

Direct infringement is of two types - literal and nonliteral.

• Literal Infringement
There is literal infringement, which means that the allegedly infringing product infringes each
and every claim limitation of an issued patent, and there is infringement under the doctrine of
equivalents, which means the allegedly infringing product infringes the true scope of the
patent holder's invention.

In cases of literal infringement, it is often quite clear that the patent is being infringed. The
infringing product literally has every feature that is in the claims of the patent. It is very
infrequent that an infringer will unabashedly and directly copy and sell the exact same
product as the patent holder - although copycat cases do occur, especially when the infringer
is someone in another country. More often, when infringement disputes involving literal
infringement escalate to the level of litigation, there is usually some other underlying issue or
potential defence to the infringement allegations. For instance, the accused infringer might
raise the defence that they have licensed the right to make or sell the product from the patent
holder, or that the patent in question is invalid.
Experienced patent litigators will be able to analyse the patent claims, the allegedly infringing
product and the defences that are being raised by the accused infringer. No one should get
away with infringing the patent rights of others.
• Non-literal infringement

Non-literal infringement occurs when the infringing device or process may be similar or
equivalent to the claimed invention (performs substantially the same function, in substantially
the same way and to achieve substantially the same result.
 ❖ Role of Claim

A Role Claim is a statement about a role. When a user is a member of a role, they
automatically inherit the role's claims. An example of where this feature could be used is for
handling application permissions. Roles provide a mechanism to group related users.

A claim right is a right which entails responsibilities, duties, or obligations on other parties
regarding the right-holder. In contrast, a liberty right is a right which does not entail
obligations on other parties, but rather only freedom or permission for the right-holder.

❖ Doctrine of Equivalents

The doctrine of equivalents arises in the context of an infringement action. If an accused

product or process does not literally infringe a patented invention, the accused product or
process may be found to infringe under the doctrine of equivalents.

Under the doctrine of equivalents, a patent claim may be found to infringe if there
is "equivalence" between the elements of the accused product or process and the claimed
elements of the patented invention, even if that does not literally infringe upon the express
terms of patent claims.

❖ Pith and Marrow Doctrine

The doctrine of pith and marrow is the doctrine that has been applied in English patent law
for over a century to see whether there was an infringement of a patent where the product or
process or device or apparatus alleged to constitute an infringement did not exactly or
precisely fall within the text of the relevant.

The doctrine of equivalents is a legal rule in many of the world's patent systems that allows a
court to hold a party liable for patent infringement even though the infringing device or
process does not fall within the literal scope of a patent claim, but nevertheless is equivalent
to the claimed invention.
 ❖ Pith and Marrow Doctrine

The ‗Pith and Marrow‘ Doctrine While there are votaries of the literal interpretation of claims
and the lawyers by training may be inclined to take that approach it is to be kept in mind that
patent specifications and claims are not addressed to lawyers but primarily to scientists and
engineers and technologists to convey a technological advance and describe an invention.
Thus limiting the claim merely by language may not be serving the ends of justice in all
cases. The fence-post approach therefore was not regarded as very satisfactory to interpret
claims and construct their scope. The alternative appeared to be a ‗pith and marrow‘ doctrine
which suggests that an invention could be considered as consisting of several ‗integers‘
(components), some essential to it and some nonessential. The essential integers are
fundamental to the invention and are like the ‗pith and marrow‘ of it. If a variant of a
patented invention, which is alleged to have infringed the invention, contains all the essential
integers, it infringes the patent, no matter what differences are there in non-essential integers.
This again puts the focus on carefully drafting the specification and claims. The draft should
take all care to ensure that the property in the invention, which makes it worthy of protection
is adequately protected by the claim and no loop-holes are left. Also, the draft should ensure
that inroads into the periphery of the claim cannot be made. The claims, even while being
realistic, and supported by data filed in the specification, must be framed with sufficient
breadth and imagination to eliminate the possibility of patenting other inventions which may
only be minor variants of the patentee‘s invention. It is important to remember that even in
the ‗pith and marrow‘ approach, one has to face the problem of interpretation of the claims
and the construction of the scope of the claims. The difficulty of interpretation and
construction of a claim was sought to be resolved by Lord Diplock as follows: See what
practical persons skilled in the art would understand by a particular word or phrase in the
claim. If the understanding is that a strict compliance with the word or phrase in the claim is
intended to be an essential requirement of the invention, then any variant of the invention,
that does not meet this understanding, cannot be taken as infringing the invention. Based on
this approach Holmann J. evolved a 3-part test to decide whether a variant infringes as
invention.

i) Does the variant have a material effect on the way the invention works? − If yes the variant
lies outside the claim and does not infringe the invention. ii) If the variant had no material
effect, as in (i) above, would this have been obvious to a reader skilled in the art on the date
of publication of the patent? − If no, the variant is outside the claim and does not infringe the
patent. − If yes, proceed to part (iii). iii) (If it would have been obvious on the date of
publication of the patent to a person skilled in the art that the variant would have no material
effect on the way the invention works) would such a reader nevertheless have understood
from the language of the claim, that the patentee intended strict compliance with the primary
meaning? − If yes, the variant is outside the claim and does not infringe the patent. − If no, it
would mean that the patentee was using the word or phrase only figuratively to denote a class
of things which included the variant and the literal meaning only indicated the best-known
example of the class.

Module-IV

❖ State Law: Trade Secret, Contract, Misappropriation,

❖ Right of Publicity Trademarks
❖ Trade Secret - Overview, Requirements, Misappropriation of Trade Secret
❖ Departing Employees, Remedies
❖ Criminal Liability, Misappropriation
❖ Clickwrap Agreements
❖ Idea Submissions
❖ Right of Publicity
❖ Federal Pre-emption, Review

Trade Secrets

Any data or information that relates to businesses and is not known to the general public
along with reasonable attempts being made to keep such informational confidential qualifies
as a trade secret. According to North American Free Trade Agreement (NAFTA) ―a trade
secret is any information having commercial value, which is not in the public domain, and for
which reasonable steps have been taken to maintain its secrecy.

Trade secrets are intellectual property (IP) rights on confidential information which may be
sold or licensed. In general, to qualify as a trade secret, the information must be:

❖ commercially valuable because it is secret,

❖ be known only to a limited group of persons, and
 ❖ be subject to reasonable steps taken by the rightful holder of the information to keep it
secret, including the use of confidentiality agreements for business partners and
employees.

The unauthorized acquisition, use or disclosure of such secret information in a manner

contrary to honest commercial practices by others is regarded as an unfair practice and a
violation of the trade secret protection.

What kind of information is protected by trade secrets?

In general, any confidential business information which provides an enterprise a competitive

edge and is unknown to others may be protected as a trade secret. Trade secrets encompass
both technical information, such as information concerning manufacturing processes,
pharmaceutical test data, designs and drawings of computer programs, and commercial
information, such as distribution methods, list of suppliers and clients, and advertising
strategies.

A trade secret may be also made up of a combination of elements, each of which by itself is
in the public domain, but where the combination, which is kept secret, provides a competitive
advantage.

Other examples of information that may be protected by trade secrets include financial
information, formulas and recipes and source codes.

What kind of protection does a trade secret offer?

Depending on the legal system, the legal protection of trade secrets forms part of the general
concept of protection against unfair competition or is based on specific provisions or case law
on the protection of confidential information.

While a final determination of whether trade secret protection is violated or not depends on
the circumstances of each individual case, in general, unfair practices in respect of secret
information include industrial or commercial espionage, breach of contract and breach of
confidence.

A trade secret owner, however, cannot stop others from using the same technical or
commercial information, if they acquired or developed such information independently by
themselves through their own R&D, reverse engineering or marketing analysis, etc. Since
trade secrets are not made public, unlike patents, they do not provide ―defensive‖ protection,
 as being prior art. For example, if a specific process of producing Compound X has been
protected by a trade secret, someone else can obtain a patent or a utility model on the same
invention, if the inventor arrived at that invention independently.

Which law protects trade secrets?

The most significant federal law dealing with trade secret theft is the Economic Espionage
Act of 1996 (EEA). The EEA gives the U.S. Attorney General sweeping powers to prosecute
any person or company involved in trade secret misappropriation and punishes intentional
stealing, copying or receiving of trade secrets.
❖ Requirements of Trade Secret
• It must not be generally known or readily accessible by people who normally deal with such
type of information.
• It must have commercial value as a secret.
• The lawful owner must take reasonable efforts to maintain its secrecy.

❖ Misappropriation of Trade secret

Trade secret infringement is called ―misappropriation.‖ It occurs when someone
improperly acquires a trade secret or improperly discloses or uses a trade secret without
consent or with having reason to know that knowledge of the trade secret was acquired
through a mistake or accident. To establish violation of trade secret rights, the owner of a
trade secret must be able to show the following: (1) Infringement by or competitive
advantage gained by the person/company who has misappropriated the trade secret. (2) The
owner had taken all reasonable steps to maintain it as a secret. (3) There is misuse as the
information obtained has been used or disclosed in violation of the honest commercial
practices.
The three elements of misappropriation of a name or likeness are: (1) the defendant
appropriated the plaintiff's name or likeness for the value associated with it; (2) the plaintiff
can be identified from the defendant's publication of the name or likeness; and (3) there was
some advantage or benefit to the defendant.
It occurs when someone else improperly discloses or uses confidential information. Because
of the confidential nature of the information, it can be important to act quickly to protect
trade secrets and other proprietary rights.
 ❖ Departing Employee
Departing employee means an employee of a fortune brands party listed on exhibit A who will
retire or be involuntarily terminated as a result of the distribution. Departing Employee means a
limited partner whose employment by an employing entity terminates, whether voluntarily or
involuntarily, without immediate re-employment by another employing entity, during the Early
Departure Period other than by reason of death or disability.

❖ Remedies of IPR
When a company or individual discovers that its IPRs are about to be infringed, or are being
infringed, it has two judicial remedies i.e.
(i) sue the infringer for damages,
(ii) When the infringement has already commenced, apply for a perpetual injunction
restraining the infringing defendant from carrying on with.
There are three types of remedies a person can get for copyright infringement in India – civil
remedies, criminal remedies and administrative remedies.

Criminal remedies Civil remedies

Counterfeiting, piracy, cyber theft is a Infringement, violation, unauthorized usage of IPR

criminal offence. generally comes under civil wrong.

The social criticism and embarrassment

attached to facing the police. Police action not involved.

❖ Criminal Liability

Criminal liability arises when a person commits an act which is criminal in nature. A criminal
offence is only committed when an act, which is forbidden by law, is done voluntarily. It is
only voluntary acts which amount to offences. In simplest terms, when you are ―criminally
liable,” it means you may be held legally responsible for breaking the law. It is also defined
as responsibility for any illegal behaviour that causes harm or damage to someone or
something.

❖ Click wrap Agreement

✓ A click wrap or click through agreement is a digital prompt that offers individuals the
opportunity to accept or decline a digitally-mediated policy. Privacy policies, terms of
 service and other user policies, as well as copyright policies commonly employ the
click wrap prompt.
✓ A click wrap agreement, also known as a click through, shrink-wrap, or sign-in-wrap,
is an online agreement in which the user signifies his or her acceptance by clicking a
button or checking a box that states ―I agree.‖ The purpose of a click wrap agreement
is to digitally capture acceptance of a contract.
✓ A click wrap (also known as click-accept, click-to-sign, or click through) agreement
is an online agreement that users agree to by clicking a button or checking a box that
says ―I agree.‖ The act of signing via an electronic signature is replaced with the act
of clicking.

Are click wrap agreements legally binding?

Yes, the click wrap agreements are valid and enforceable contracts as far as offer and
acceptance is concerned.

❖ Right of Publicity

Publicity rights, also referred to as celebrity rights, is the right of an individual to prevent
others from using his name, likeness, photograph or image for commercial purposes without
obtaining consent. These rights can arise out of an individual's association with an event,
sport, movie, etc.
The right of publicity prevents the unauthorized commercial use of an individual's name,
likeness, or other recognizable aspects of one's persona. It gives an individual the exclusive
right to license the use of their identity for commercial promotion.
The right of publicity is an intellectual property right that protects against the
misappropriation of a person's name, likeness, or other indicia of personal identity—such as
nickname, pseudonym, voice, signature, likeness, or photograph—for commercial benefit.
❖ Federal Pre Emption

In the law of the United States, federal pre-emption is the invalidation of a U.S. state law that
conflicts with federal law. For example, the Voting Rights Act, an act of Congress, pre-
empts state constitutions, and FDA regulations may pre-empt state court judgments in cases
involving prescription drugs. Congress has pre-empted state regulation in many areas.

What are the two types of pre-emption?

There are two main types pre-emption.
1. Express pre-emption
2. Implied pre-emption.
1. Express pre-emption:- It occurs when a federal law expressly states that it is intended to
pre-empt state law.
2. Implied pre-emption - When the local ordinance prohibits an act permitted by the state
legislature. When a local ordinance permits an act prohibited by the state legislature. When
there is clear legislative intent that the "field" is pre-empted by state law.
When Does Federal Law Pre-empt State Law?
The U.S. Constitution declares that federal law is ―the supreme law of the land.‖ As a result,
when a federal law conflicts with a state or local law, the federal law will supersede the other
law or laws.

What is the effect of pre-emption?

Pre-emptive laws can effectively stop progress in public health policy-making and also
eliminate the ability of local governments to act to protect their citizens.

❖ Review

An inter parties review of a patent is a type of administrative trial proceeding. Inter parties
review became available in 2012 and replaced inter parties re-examination as a way to
challenge patentability at the Patent Office. Any person who is not the owner of a patent can
file a petition for a review of a patent.

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