Question 1: Concept of IPR

Intellectual property rights are exclusive legal rights that cover the privileges given to
individuals who are the owners and inventors of a work, and have created something with
their intellectual creativity.

Intellectual Property is an asset that can be bought or sold, licensed and exchanged.
But of course, unlike other properties, intellectual property is intangible; rather it cannot
be identified by its specific parameters.

The creator/inventor gets exclusive rights against any misuse or use of work without his/her
prior permission. However, the rights are granted for a limited period of time to maintain
equilibrium.

According to the definition of ‘Intellectual Property’ by the WIPO (World Intellectual

Property Organization), “Intellectual property means the legal rights which result from
intellectual activity in the industrial, scientific, literary and artistic fields.”

There are two main reasons why countries have IP laws. One is to respect the moral and
economic interests of the authors of their works and the rights of the public to access them.
The second is to encourage innovation as a deliberate act of government policy, disseminating
and using the effects, and to promote fair trade that would lead to economic and social
development.

❖ Intellectual Property:

Intellectual Property is divided into two categories for ease of understanding:

1. Industrial Property
2. Copyright

Industrial property, which includes inventions (patents), trademarks, industrial designs,

integrated circuits and geographic indications of source; and

Copyright, which includes literary works such as novels, poems, plays, films, musical works,
etc, and artistic works such as drawings, paintings, photographs and sculptures, architectural
designs, computer programs. 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.

Intellectual property shall include the right relating to:

1. Literary, artistic and scientific works;

2. Performance of performing artists;
3. Inventions in all fields of human endeavour;
4. Scientific discoveries;
5. Industrial designs;
6. Trademarks, service marks and etc;
7. Protection against unfair competition.
 ❖ Intellectual Property Rights:

Intellectual property rights can be defined as the rights given to people over the creation of
their minds. They usually give the creator an exclusive right over the use of his/her creations
for a certain period of time. The different types of Intellectual Property Rights are:

1. Patents
2. Copyrights
3. Trademarks
4. Industrial designs
5. Protection of Integrated Circuits layout design
6. Geographical indications of goods
7. Biological diversity
8. Plant varieties and farmers rights
9. Undisclosed information

But, the most important forms of intellectual property rights are, as follows:

1. Trademarks
2. Copyrights
3. Patents
4. Trade secrets

❖ Duration of Intellectual Property Rights:

1. Term of every patent will be 20 years from the date of filing of patent application,
irrespective of whether it is filed with provisional or complete specification. Date of
patent is the date on which the application for patent is filed.
2. Term of every trademark registration is 10 years from the date of making of the
application which is deemed to be the date of registration.
3. Copyright generally lasts for a period of 60 years after the death of the Author.
4. The registration of a geographical indication is valid for a period of 10 years.
5. Duration of registration of Chip Layout Design is for a period of 10 years counted from
the date of filing an application for registration or from the date of first commercial
exploitation anywhere in India or in any convention country or country specified by
Government of India whichever is earlier.
6. The duration of protection of registered varieties of plants is different for different
crops namely 18 years for trees and vines, 15 years for other crops and extant
varieties.

Question 2: Nature and Scope of Intellectual Property

Intellectual properties have their own peculiar features. These features of intellectual
properties serve to identify intellectual properties from other types of properties. They are
as follows:
 1. Intangible Rights over Tangible Property:

The main Property that distinguishes IP from other forms of Property is its intangibility.
While there are many important differences between different forms of IP, one factor they
share is that they establish property protection over intangible things such as ideas,
inventions, signs and information whereas intangible assets and close relationships are a
tangible object. In which they are embedded. It allows creators or owners to benefit from
their works when they are used commercially.

2. Right to sue:

In the language of the law, IP is an asset that can be owned and dealt with. Most forms of IP
are contested in rights of action that are enforced only by legal action and by those who have
rights. IP is a property right and can, therefore, be inherited, bought, gifted, sold, licensed,
entrusted or pledged. The holder of an IPR owner has a type of Property that he can use the
way he likes subject to certain conditions and takes legal action against the person who
without his consent used his invention and can receive compensation against real Property.

3. Rights and Duties:

IP gives rise not only to property rights but also duties. The owner of the IP has the right to
perform certain functions in relation to his work/product. He has the exclusive right to
produce the work, make copies of the work, market work, etc. There is also a negative right
to prevent third parties from exercising their statutory rights.

4. Coexistence of different rights:

Different types of IPRs can co-exist in relation to a particular function. For example, an
invention may be patented, and the invention photograph may be copyrighted. A design can be
protected under the Design Act, and the design can also be incorporated into a trademark.
There are many similarities and differences between the various rights that can exist
together in IP. For example, there are common grounds between patent and industrial design;
Copyright and neighbouring rights, trademarks and geographical indications, and so on. Some
intellectual property rights are positive rights; the rest of them are negative rights.

5. Exhaustion of rights:

Intellectual property rights are generally subject to the doctrine of exhaustion. Exhaustion
basically means that after the first sale by the right holder or by its exhaustion authority,
his right ceases and he is not entitled to stop further movement of the goods. Thus, once an
IP rights holder has sold a physical product to which IPRs are attached, it cannot prevent
subsequent resale of that product. The right terminates with the first consent. This
principle is based on the concept of free movement of goods which is in force by consent or
right of the rights holder. The exclusive right to sell goods cannot be exercised twice in
relation to the same goods. The right to restrict further movements has expired as the right
holder has already earned his share by the act of placing goods for the first sale in the
market.
 6. Dynamism:

IPR is in the process of continuous development. As technology is rapidly evolving in all areas
of human activities, the field of IP is also growing. As per the requirement of scientific and
technological progress, new items are being added to the scope of IPR, and the scope of its
preservation is being expanded. Bio Patents, Software Copyrights, Plant Diversity Protection,
these are few names which reflect contemporary developments in the field of IPR. The
importance of intellectual property and its mobility is well established and reflected at all
levels, including statutory, administrative and judicial.

Question 3: Theories of protection of IPR i.e., Justification

The intellectual property rights function with the underlying principle of protecting the
products of human intellect in the same way physical properties are safeguarded. The
theories of intellectual property rights play a definite role in making someone understand the
rights offered and the reason behind the same.

The following are the five theories that justifies the protection of IPR:

1. The natural rights theory has been constructed on the basis of John Locke’s idea.
2. The utilitarian theory is based on the Jeremy Bentham and John Stuart Mill ideal
of “the greatest good for the greatest number.”
3. The deterrence theory supports morality.
4. The ethic and reward theory promotes the ethical and moral aspect of intellectual
property rights.
5. The personhood theory, which was propounded by Kant and Hegel.

❖ The Natural Rights Theory

The term “natural right” signifies a fundamental right that a person has in his possession.
The natural rights theory takes into consideration that everyone has a natural property right
on his, or her ideas. This is because creation is the result of both labour, and creativity of
the person putting it into effect.

Drawing its roots from John Locke’s philosophy that says an author has a natural right over
the output of his, or her intellectual endeavours, the natural rights theory is applicable to
both tangible and intangible properties.

The extension of this theory incorporates the right to use or to exclude others from use and
the right to transfer the object owned. As ownership over a creation becomes a natural right
of the owner, infringement, or unauthorized use of the same will be considered as an offence.
This idea has been incorporated by different categories of intellectual property as well.

Though this theory sounds too simple to be perceived, the major criticism that the theory
has received cannot be ignored. The primary criticism of this theory has been presented
hereunder;
1. The philosophy propounded by John Locke is restrictive as it restrains a creator from
being the owner of an abstract idea which by its existence can affect other innovators.
Therefore, if a person is vested with the right to ownership in the idea of preparing
lemon juice, the same ipso facto will prohibit other innovators from adapting similar kinds
of ideas. The principle behind the copyright laws is somewhat the same as Locke’s
philosophy as there exists no copyright in an idea but in an expression of that idea in a
tangible form.

2. The Lockean theory observes that the ownership of tangible properties is not bounded by
a time limit. Generally, intellectual property rights are limited by nature as after the
expiration of a prescribed time, the safeguarded object, or creation becomes available in
the public domain to be freely accessible by any individual. But Locke’s theory is not
completely ignored when it comes to trade secret laws. This is because trade secret
protection remains throughout a creator’s life unless he/she by himself/herself retains
the protection to disclose confidential information to the world.

3. As per the natural rights theory, an appropriator cannot delight over all the available
natural resources of the world. If a creator is provided with the ownership of his/her
idea of producing milk from soybeans, the rest of the market will be cornered by the
creator in concern with soymilk production. Thus, to conclude, the natural rights theory
encourages innovation by an individual, on one hand, it restricts the others from the same,
when it comes to an idea.

❖ The Utilitarian Theory

The utilitarian theory walks in the footsteps of Jeremy Bentham and John Stuart Mill who
focused on the “greatest good for the greatest number”.

While the term “utilitarian” signifies “social welfare”, the theory essentially is based on the
fact that industrial progress and cultural goods together can promote a better and
significant economic impact on the society, and the people at large.

When it comes to intellectual property rights, the theory calls for a need to encourage
innovation and creations. This need can be satisfied by a minimal certification that the
product of such creation will be superior in comparison to the expenses that have been
incurred for the concerned product.

This theory expressly bars trade secrets to be considered intellectual property because a
trade secret in the process of protecting information that is exclusive to an individual, or a
group, prohibits the general public from benefiting from the same.

The utilitarian theory is also known as the incentive theory because the theory endorses
society’s duty to respect the innovator’s right to ownership on his/her creation which is not
only a source of profit for the creator himself/herself but the society as a whole.

Like the previous theory, the utilitarian theory has also been subject to criticism. The main
criticism of this theory is that the utility gains from the impetus of a unique creation are
neutralized against the losses incurred due to exclusive ownership of the creation. Thus the
issue arises if at all the benefits of intellectual property rights can be weighed against the
casualties or not.

❖ Deterrence Theory

The deterrence theory promotes morality, virtue, and illicit commercial behaviour. The
deterrence theory draws its roots from the fact opposed by the utilitarian theory which
does not accept deterrence in the process of drawing benefit from innovation for the entire
society. It is the trade secret laws that behave as a hindrance to unfair marketing and
therefore, becomes the essence behind the deterrence theory. The term “deterrence”
signifies discouragement. The theory discourages misappropriation of a creation, information,
etc. as the secrecy of the same is focused in this theory.

❖ The Ethic and Reward Theory

The term “ethic” signifies “fairness” whereas the term “reward” symbolises “validation of the
efforts contributed in a particular thing”. Put simply, the ethics and reward theory throw
light on the fact that a creator must be rewarded for the creation and in doing so the ethics
behind intellectual property rights will be realized.

These sets of exclusive rights are considered as an expression of appreciation to the creator
for his or her immense contribution to society by his or her creation.

It is to be noted that the question as to whether the reward given to creators and inventors
for benefitting the entire society, truly deserves the same or not, remains associated with
the ethic and reward theory. While on one hand, the theory presumes that inventors deserve
to be rewarded, on the other the theory makes it obvious that the inventors do not deserve
it twice.

Many consider that the creators are already remunerated taking into account the exclusive
right he/she possesses over his/her work. That will be further used as a source of profit for
the creator as well. Thus, it is quite evident that the exclusive right that the creator has
over his or her creation is excessive.

❖ The Personhood Theory

The personhood theory provides that it is the creator’s creation that builds his or her
personality thereby clarifying an individual’s personality is inherent to his or her property
right.

The theory draws its roots from Hegel’s philosophy, which provides that intellectual
property rights are also associated with safeguarding personality development that extends
to material things. In this way, the theory remarked that an unauthorized user who offers to
the general public someone’s creation without prior consent will be considered a thief.

The theory brings along its criticism which is linked to the underlying principle of the theory
which relates personality with creativity. This justification is ipso facto deficient as
personality cannot be said to have been linked with the outcome of someone’s creation.
Though this is one side of the coin, the other side of the coin says that even if the creation
is independent of its creator, it is very much dependent on the public. It is from the public
that the work gains substance and importance.

Question 4: Historical Evolution of IPR

February 28, 1856, the Government of India promulgated legislation to grant what was then
termed as "exclusive privileges for the encouragement of inventions of new manufactures"
i.e., the Patents Act. On March 3, 1856, a civil engineer, George Alfred DePenning,
petitioned the Government of India for grant of exclusive privileges for his invention - "An
Efficient Punkah Pulling Machine".

On September 2, DePenning, submitted the Specifications for his invention along with
drawings to illustrate it’s working. These were accepted and the invention was granted the
first ever Intellectual Property protection in India.

❖ History of Copyright Law in India:

Modern copyright law developed in India gradually, in a span of more than 150 years.
Copyright law entered India in 1847 through an enactment during the East India
Company's regime. According to the 1847 enactment, the term of copyright was for the
lifetime of the author plus seven years post-mortem. But in no case could the total term
of copyright exceed a period of forty-two years.

Suit or action for infringement was to be instituted in the "highest local court exercising
original civil jurisdiction."

The government could grant a compulsory licence to publish a book if the owner of copyright,
upon the death of the author, refused to allow its publication.

At the time of its introduction in India, copyright law had already been under development in
Britain for over a century and the provisions of the 1847 enactment reflected the learnings
from deliberations during this period.

In 1914, the then Indian legislature enacted a new Copyright Act which merely extended
most portions of the United Kingdom Copyright Act of 1911 to India. It did, however, make
a few minor modifications.

Firstly, it introduced criminal sanctions for copyright infringement. Secondly, it modified

the scope of the term of copyright; the "sole right" of the author to "produce, reproduce,
perform or publish a translation of the work shall subsist only for a period of ten years
from the date of the first publication of the work."

The 1914 Act was continued with minor adaptations and modifications until it was
repealed by the Copyright Act of 1957 which was brought into force on 24th January,
1958.

Till today Copyright law in India is governed by the Copyright Act of 1957 with few
modifications over the years. The most notable amendment was introduced in 1984 including
“computer programmes” within the definition of "literary work”.
 ❖ History of Patent Law in India
The first legislation in India relating to patents was the Act VI of 1856. The objective of
this legislation was to encourage inventions of new and useful manufactures and to induce
inventors to disclose secret of their inventions.

This Act was based on the United Kingdom Act of 1852 with certain departures including
allowing assignees to make application in India and also taking prior public use or
publication in India or United Kingdom for the purpose of ascertaining novelty.

The Act was subsequently repealed and a new legislation for granting ‘exclusive privileges’
was introduced in 1859 as Act XV of 1859. This legislation contained certain modifications
of the earlier legislation, namely, grant of exclusive privileges to useful inventions. The Act
excluded importers from the definition of inventor.

This Act provided protection for invention only but not for designs whereas United
Kingdom had been protecting designs from 1842 onwards. To remove this lacuna, the
‘Patterns and Designs Protection Act’ was passed in 1872.

In 1888, new legislation was introduced to consolidate and amend the law relating to
invention and designs in conformity with the amendments made in the UK law.

In 1911, the Indian Patents and Designs Act, 1911 was brought in replacing all the
previous legislations on patents and designs. This Act brought patent administration under
the management of Controller of Patents for the first time.

In 1930, further amendments were made to incorporate, inter-alia, provisions relating to

use of invention by Government, powers of the Controller to rectify register of patent
and increase of term of the patent from 14 years to 16 years.

After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling
its objective.

Accordingly, the Government of India constituted a committee under the Chairmanship of

Justice Bakshi, a retired Judge of Lahore High Court, in 1949, to review the patent law
in India.

Based on the recommendations of the Committee, the 1911 Act was amended in 1950 in
relation to working of inventions and compulsory licence/revocation.

In 1952, an amendment was made to provide compulsory licence in relation to patents in

respect of food and medicines, insecticide, germicide or fungicide and a process for
producing substance or any invention relating to surgical or curative devices.

The 1911 Act was continued with minor adaptations and modifications until it was repealed
by the Patent Act of 1970.

Till today Patent law is governed by the Patent Act of 1970 with few modifications over the
years. It has been amended in the year 1995, 1999, 2002 and 2005 to fulfil its conventional
duty and to meet the changing times.
 ❖ History of Trademark Law in India
While some form of proprietary protection for marks in India dates back several millennia,
India’s statutory Trademarks Law dates back to 1860.

Prior to 1940 there was no official trademark Law in India. Numerous problems arouse on
infringement were resolved by law of “passing off” and by application of Section 54 of the
Specific Relief Act, 1877 and the registration for obtaining ownership of a trademark was
carried out under Indian Registration Act, 1908.

To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940,
this corresponded with the English Trademarks Act. After this there was an increasing
need for more protection of Trademarks as there was a major growth in Trade and
Commerce.

The replacement to this act was the Trademark and Merchandise Act, 1958. This Act was
to provide for registration and better protection of Trademarks and for prevention of the
use of fraudulent marks on merchandise. The objective of this act was easy registration
and better protection of trademarks and to prevent fraud.

The repeal of the Trademarks and Merchandise Act gave rise to the Trademark Act,
1999; this was done by the Government of India so that the Indian Trademark Law is in
compliance with the TRIPS obligation on the recommendation of the World Trade
Organisation. The object of the 1999 Act is to confer the protection to the user of the
trademark on his goods and prescribe conditions on acquisition, and legal remedies for
enforcement of trademark rights.

Question 5: TRIPS Provision Relating to IPR

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an
international agreement administered by the World Trade Organization (WTO). It came into
effect on 1 January 1995, is to date the most comprehensive multilateral agreement on
intellectual property.

The TRIPs emerged as the basic framework for ensuring intellectual property rights across
the world. It is not the universal Intellectual property law. But it provides a basic framework.
Every member of WTO should include TRIPs provisions in their domestic intellectual
property legislations.

❖ Salient features of TRIPS Agreement:

Trade Related Aspects of Intellectual Property Right (TRIPS) is an agreement on
international IP rights.

1. TRIPS establishes minimum standards for the availability, scope, and use of seven
forms of intellectual property namely, trademarks, copyrights, geographical
indications, patents, industrial designs, layout designs for integrated circuits, and
undisclosed information or trade secrets.
2. It applies basic international trade principles regarding intellectual property to
member states.
 3. It is applicable to all WTO members.
4. TRIPS Agreement lays down the permissible exceptions and limitations for balancing
the interests of intellectual property with the interests of public health and economic
development.
5. TRIPS is the most comprehensive international agreement on IP and it has a major
role in enabling trade in creativity and knowledge, in resolving trade disputes over
intellectual property, and in assuring WTO members the latitude to achieve their
domestic policy objectives.
6. It frames the IP system in terms of innovation, technology transfer and public
welfare.
7. The TRIPS Council is responsible for administering and monitoring the operation of
the TRIPS Agreement.
8. TRIPS was negotiated during the Uruguay Round of the General Agreement on Tariffs
and Trade (GATT) in 1986–1994.
9. The TRIPS Agreement is also described as a “Berne and Paris-plus” Agreement.

❖ Intellectual Properties recognised by TRIPS:

The areas of intellectual property that it covers are:

1. Copyright and Related Rights:

➢ Rights of artists, painters, musicians’, sculptors, photographers, and authors for

copyright in their works;
➢ Rights of computer programmes whether in source or object code for a copyright
in their programmes and compilation data;
➢ Rights of performers producers of phonograms and broadcasting organizations in
respect of fixation on their programmes for copyright in their work.

2. Right of traders in their trademarks.

3. Right of manufacturers & producers on geographical indication in relation to such
products and produce.
4. Right of designers for their distinctive design striking to the eye.
5. Patents:

➢ Right of the inventor for patent is his invention.

➢ Rights of plant breeders and farmers.
➢ Rights of biological diversity.

6. Right of computer technologist for their layout design of integrated circuits.

7. Right of businessmen for protection of their undisclosed information or trade secrets
on technology and management.

TRIPS also specify enforcement procedures, remedies, and dispute resolution procedures.

Protection and enforcement of all intellectual property rights should meet the objectives to
contribute to the promotion of technological innovation and to the transfer and dissemination
of technology, to the mutual advantage of producers and users of technological knowledge
and in a manner conducive to social and economic welfare, and to a balance of rights and
obligations.
❖ Part II of TRIPS:

➢ Copyrights and related rights

Part II, Section 1 (Article 9 to Article 14) of the TRIPS agreement deals with the minimum
standard in respect of copyrights.

➢ Trademarks
Part II, Section 2 (Article 15 to Article 21) of the TRIPS agreement contains the provisions
for minimum standards in respect of Trademarks.

➢ Geographical Indications
Part II, Section 3 (Article 22 to Article 24) of the TRIPS Agreement contains the provisions
for minimum standards in respect of geographical indications.

➢ Industrial Designs
Part II, Section 4 (Article 25 and Article 26) of the TRIPS Agreement contains the
provisions for minimum standards in respect of Industrial designs.

➢ Patents
Part II, Section 5 (Article 27 to Article 34) of the TRIPS Agreement contains the provisions
for standards in respect of Patents.

➢ Layout Designs of Integrated Circuits

Part II, Section 6 (Articles 35 to 38) of the TRIPS agreement contain the provisions for
protection of rights in respect of Layout Designs of Integrated Circuits.

➢ Protection of undisclosed information

Part II, Section 7, Article 39 of the TRIPS agreement elaborates on the protections of
trade secrets.

❖ Features of the TRIPS Agreement

There are three main features of TRIPS agreement which are discussed below:

1. Standards: 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.
2. Enforcement: The second main set of provisions deals with domestic procedures and
remedies for the enforcement of intellectual property rights. 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.
3. Dispute Settlement: The Agreement makes disputes between WTO Members about the
respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.

❖ TRIPS and its impact on India:

The intellectual property right regime of the country has been modified by a number of
legislations since 1995. For India, the WTO’s TRIPs agreement became binding from 2005
onwards as the country had got a ten-year transition period (1995-2005) to make the
domestic legislation compatible with TRIPs. Also,
India has got additional five-year transition period because of not having product patent
regime in critical sector like pharmaceutical. Hence, existing laws were amended and fresh
legislations were introduced during this period such as:

1. Copyrights:
The Copyright Act, 1957 has been amended in 1983, 1984, 1992, 1994, 1999 and 2010 to
meet its obligations under the TRIPS agreement. The most important amendment was the
Amendment Act, 1984 which included computer programme as a part of literary wark.

2. Patents:
The Patents Act, 1970 as amended time to time in the year 1995, 1999, 2002 and 2005 to
meet its obligations under the TRIPS agreement. Further, it has been amended to support
the various technological developments in India, to match with the development of the
International intellectual property laws.

3. Trademarks:
Trademarks Act 1999 has been enacted repealing The Trade and Merchandise Marks Act,
1958 to meet its obligations under the TRIPS agreement.

Following new legislations were enacted to govern and regulate intellectual properties and
also to meet TRIPS obligations, such as:

4. Geographical Indications: The Geographical Indications of Goods (Registration

and Protection) Act, 1999.
5. Designs: The Designs Act, 2000
6. Layout design of integrated circuits: The Semi-Conductor Integrated Circuits
Layout Design Act, 2000
7. Plant Varieties: The Protection of Plant Varieties and Farmers’ Rights Act, 2001
8. Bio-Diversity: The Biological Diversity Act, 2002

❖ TRIPS Agreement Latest News

In view of the COVID-19 pandemic, India and South Africa had proposed to the WTO in
October 2020 that the TRIPS Agreement (that included patent protection to pharmaceutical
products including COVID vaccines) be waived off for COVID vaccines, medicines and
diagnostics for the time period of the pandemic in order to make vaccines and drugs for
COVID available to a maximum number of people worldwide.

If the vaccines are patent protected, only a few pharmaceutical companies from developed
western countries would be able to manufacture it, making such drugs unavailable or
inaccessible due to the high costs to people of other countries, especially, developing and
least developed countries.

The US, which was opposed to any TRIPS waiver, has backed this proposal, along with the EU.
This move has been welcomed by many since it might lead to the manufacture of more
volumes of COVID vaccines enabling the whole world to get rid of the coronavirus at the
earliest. However, pharmaceutical companies have protested the move saying this would not
necessarily ensure vaccine availability since developing countries did not have the capability
to produce the vaccines.
 Question 6: Human Rights and Constitutional dimensions of IPR
Human rights in its very essence have existed in this world far longer than the concept of
intellectual property or the rights of creation. Human Rights law and Intellectual Property
Rights (IPR) on the face of it show no relationship to share as their core constitution are not
at all complimentary to each other which is generally regarded as a requisite for things to be
interrelated. Since their very beginning, they grew isolated from each other. It was only
natural that they never interfered in each other’s domain. The dots were present all along
and it is interesting to note that these two separate domains never got along until recently.

❖ UDHR, 1948 and IPR

The Universal Declaration is a resolution of the United Nations General Assembly, it was
adopted in 1948.

Article 27.1 of UDHR, clearly states that everyone has the Right freely to participate in
the cultural life of the community, to enjoy the arts and to share in scientific
advancement and its benefits.

Also, Article 27.2 of the UDHR, states that everyone has the Right to the protection of
the moral and material interests resulting from any scientific, literary or artistic
production of which he is the author.

In simple words the Article 27 recognizes three rights i.e., the right of everyone:

1. To take part in cultural life;

2. To enjoy the benefits of scientific progress and its applications;
3. To benefit from the protection of the moral and material interests resulting from any
scientific, literary or artistic production of which he is the author.

❖ ICESCR, 1966 and IPR

The International Covenant on Economic, Social, Cultural Rights, which was adopted by the
General Assembly in 1966 and is an international agreement binding on the Member States of
the United Nations.

Article 15 of the ICESCR repeats the clauses of the UDHR mentioned above.

Based upon the above two Conventions, it is evident that there is a nexus between IPR and
Human Rights.

❖ Constitutional dimension of IPR

The Intellectual Property right is not expressly recognized as a property right by the Indian
Constitution but at the same time, the property right under Indian Constitution does not
expressly exclude the Intellectual Property Rights.

Property rights was once a guaranteed fundamental right under Article 19(1)(f) the Indian
Constitution but it was now downgraded just as a constitutional right under Article 300A.
Hence, Writ under Article 32 cannot be filed for the same but Writ under Article 226 can
be filed to enforce constitutional right under 300A.

Article 300A states, “No person shall be deprived of his property save by authority of law”.
The Supreme Court in the K.T. Plantation & Anr. Vs. State of Karnataka (2011), a
constitutional bench held that “the expression `Property' in Article 300A is confined not
to land alone, it also includes intangibles like copyrights and other intellectual property
and embraces every possible interest recognized by law”, and expanded the scope of the
right to property as a constitutional right.

Hence protection under Article 300A of the Indian constitution is squarely applicable to
Intellectual property also. In the background of Article 300A that the Government or
executive cannot interfere with the right of the individual relating to the IP rights unless a
specific provision of law which authorizes to restrict their rights.

Article 300A, therefore, protects Intellectual property against executive action. Any
Deprivation of property including intellectual property such as copyright and patent is within
the meaning of Art.300A, commonly for a public purpose or public interest.

Also, Article 253, empowers the Parliament to make laws throughout the territory of India
or any part thereof, for implementation of any international treaty, agreements or
conventions concluded between states or with international bodies. These subjects are also
enumerated under Entries 12, 13 and 14 of List 1, Schedule 7 of the Constitution.

Further, Entry 49 of List 1, Schedule 7 of the Constitution recognises intellectual

properties such as patents, inventions, designs, copyright, trademarks and merchandise
marks. However, it does not recognize the concept of traditional knowledge, biodiversity,
geographical indications and others but these categories of intellectual property rights can
be included within the existing one.

Moreover, when Schedule 7 is read with Article 245 of the Constitution empowers the
Parliament to make laws throughout the territory of India or any part thereof on Subjects
enumerated under List I and List III i.e., Union list and Concurrent list.

Article 248 further empowers the parliament with residuary powers i.e., parliament has the
power to make laws on those subject matters that are not enumerated in any of the 3 Lists
mentioned in Schedule 7.

It is because of these provisions of the Constitution; the Parliament has enacted various
legislations relating to intellectual properties such as:

✓ The Copyright Act, 1957

✓ The Patents Act, 1970
✓ The Trade Mark Act, 1999
✓ The Geographical Indications of Goods (Registration and Protection) Act, 1999
✓ The Designs Act, 2000
✓ The Semi-Conductor Integrated Circuits Layout Design Act, 2000
✓ The Protection of Plant Varieties and Farmers’ Rights Act, 2001
✓ The Biological Diversity Act, 2002

Question 7: WIPO
The World Intellectual Property Organisation or WIPO is a UN specialized agency created in
1967 to promote intellectual property (IP) protection and encourage creative activity all over
the world. WIPO is basically a global forum for IP policy, services, information and
cooperation.

❖ What is WIPO?

The World Intellectual Property Organisation or WIPO is a global body for the promotion
and protection of Intellectual Property Rights (IPR).

1. It acts as a global forum for IP Services.

2. WIPO is a self-funded agency of the United Nations.
3. With 192 members, WIPO’s motto is to encourage creative activity, to promote the
protection of intellectual property throughout the world.
4. Currently, headed by Francis Gurry, who is its Director-General. WIPO is
headquartered in Geneva, Switzerland.
5. WIPO has its origins in the United International Bureaux for the Protection of
Intellectual Property (BIRPI), which was established in 1893.
6. India joined WIPO in 1975.

❖ Historical evolution of WIPO:

1883: Paris Convention for First step taken to protect intellectual work in other
the Protection of Industrial countries. It covers:
property ✓ Inventions(patents),
✓ Trademarks,
✓ Industrial Designs.

1886: Berne Convention For the Protection of Literary and Artistic Works. It
covers:

✓ Novels, short stories, poems, plays;

✓ Songs, opera, musicals;
✓ Drawings, paintings, sculptures, architectural
works.

1891: Madrid Agreement The first international IP filing service is launched.

1893: BIRPI established Two secretariats set up to administer the Paris and
Berne Conventions combine to form the United
International Bureaux for the Protection of Intellectual
Property (BIRPI).

1970: BIRPI becomes WIPO WIPO becomes a member state-led intergovernmental

organization.

1974: WIPO joins the WIPO become one of the agencies of UN.
United Nations
 1978: Patent Cooperation By filing one international patent application under the
Treaty (PCT) system PCT, applicants can simultaneously seek protection for an
launched invention in a very large number of countries.

1994: Arbitration and The Centre offers alternative dispute resolution services
Mediation Centre (AMC) to help solve international commercial disputes between
established private parties.

❖ WIPO’s Mandate

WIPO is dedicated to developing a balanced and accessible international Intellectual

Property (IP) system, which rewards creativity, stimulates innovation and contributes to
economic development while safeguarding the public interest.’

❖ Functions of WIPO

The World Intellectual Property Organisation (WIPO) was established with the intent to
perform the following functions:

1. To assist the development of campaigns that improve IP Protection all over the globe
and keep the national legislations in harmony.
2. Signing international agreements related to Intellectual Property Rights (IPR)
protection.
3. To implement administrative functions discussed by the Berne and Paris Unions.
4. To render legal and technical assistance in the field of IP.
5. To conduct research and publish its results as well as to collect and circulate
information.
6. To ensure the work of services that facilitate the International Intellectual Property
Protection.
7. To implement other appropriate and necessary actions.

❖ Strategic Goals of WIPO

WIPO works on a 5-year based planned format, the current 5-year plan which is running is
from 2017-2021. WIPO makes strategic goals, Implementing Activities and Milestones for a
5-year term and they envision their growth according to that.

The strategic goal number 1 is to use IP assets to advance research and development(R&D)
for neglected tropical diseases (NTDs), malaria, and TB through collaboration. The
implementing activities for the same goal include establishing and maintaining the Special
Programme for Research and Training in Tropical Diseases and others and this work shall be
done in collaboration. Establishing new collaborations that can take care of the priority needs
and which can provide assistance and support is a major part of the implementing activities,
this will also require expansion in the number of company providers who can offer assets and
support for the operations of WIPO. The milestones that are expected to be achieved are
establishing at least eight new collaborations on an annual basis, preparing comprehensive IP
management strategies for two or three partnerships per year.
The strategic goal number 2 is to accelerate the advancement of promising compounds or
leads. The implementing activities for this include assisting collaborators for obtaining grants
for donor agencies, this will help to accelerate the progress. The projects with high potential
for the compound or lead will move rapidly to later stages of evaluation and they will be given
the highest priority. The milestones to be achieved by this are connecting two to three
partnerships or collaborations per year to relevant funding.

The strategic goal number 3 is to enhance global capacity for IP management and biomedical
R&D. The implementing activities include supporting the capacity development of member
organisations, providing them research fellowships at leading research centres for the same.
Milestone for this goal is providing two to four training sabbaticals annually.

The strategic goal number 4 is to communicate the beneficial role of IP in innovation for
NTDs, malaria, and TB. The implementing activities include increasing dissemination of
information about the role of IP for R&D in NTDs, malaria, and TB. This is the technology-
driven goal to combat the issues in hand. Milestones for this goal are to provide a user-
friendly web page consisting of all the available resources which would help facilitate the
formation of partnerships and update annually based on users’ feedback. This will also publish
at least four articles in journals and magazines, it will also make at least six presentations in
the subject matter meetings.

❖ WIPO and India

India joined the WIPO in 1975. India is a part of the following WIPO Treaties:

1. IPO Convention (1975)

2. Paris Convention (1998)
3. Berne Convention (1928)
4. Patent Cooperation Treaty (1998)
5. Phonograms Convention (1975)
6. Nairobi Treaty (1983)
7. Nice Agreement (2019)
8. Locarno Agreement (2019)
9. Vienna Agreement (2019)

India acceded to all of the above treaties. India was the first country to ratify the
Marrakesh Treaty.

India has jumped places in the Global Innovation Index (GII) in recent years. In the 2019
GII, India is ranked 52nd, which is a big leap from previous years.

✓ Since 2011, India is the top-ranked innovative country in the Southern and Central
Asia region.
✓ India has been outperforming on innovation relative to its GDP per capita for eight
years at a stretch.
✓ On innovation quality, India ranks second among middle-income economies globally.
✓ The Confederation of Indian Industry (CII) is a GII Knowledge Partner since 2009.
✓ In India, the Ministry of Commerce and Industry deals with WIPO and related issues.
 Question 8: Concept of Copyright
Copyright is the set of exclusive rights granted to the author or creator of an original
work, including the right to copy, distribute and adapt the work.

It gives protection for the expression of an idea and not for the idea itself. For example,
many authors write textbooks on physics covering various aspects like mechanics, heat,
optics, etc. Even though these topics are covered in several books by different authors,
each author will have a copyright on the book written by him/ her, provided the book is
not a copy of some other book published earlier.

Copyright ensures certain minimum safeguards of the rights of authors over their creations,
thereby protecting and rewarding creativity. Creativity being the keystone of progress, no
civilized society can afford to ignore the basic requirement of encouraging the same.
Economic and social development of a society is dependent on creativity.

❖ Meaning of Copyright:

According to Section 14 of the Act, “copyright” means the exclusive right subject to the
provisions of this Act, to do or authorise the doing of any of the following acts in respect of
a work, namely:

A. In the case of a literary, dramatic or musical work, not being a computer

programme:
1. to reproduce the work in any material form including the storing of it in any medium by
electronic means;
2. to issue copies of the work to the public not being copies already in circulation;
3. to perform the work in public, or communicate it to the public;
4. to make any cinematograph film or sound recording in respect of the work;
5. to make any translation of the work;
6. to make any adaptation of the work;
7. to do, in relation to a translation or an adaptation of the work, any of the acts specified
in relation to the work in sub-clauses (i) to (vi);

B. In the case of a computer programme:

1. to do any of the acts specified in clause (a);
2. to sell or give on commercial rental or offer for sale or for commercial rental any copy
of the computer programme:

Provided that such commercial rental does not apply in respect of computer programmes
where the programme itself is not the essential object of the rental.

C. In the case of an artistic work:

1. to reproduce the work in any material form including depiction in three-dimensions of
a two-dimensional work or in two dimensions of a three-dimensional work;
2. to communicate the work to the public;
3. to issue copies of the work to the public not being copies already in circulation;
4. to include the work in any cinematograph film;
5. to make any adaptation of the work;
6. to do in relation to an adaptation of the work any of the acts specified in relation to the
work in sub-clauses (i) to (iv);

D. In the case of cinematograph film:

1. to make a copy of the film, including a photograph of any image forming part thereof;
2. to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of
whether such copy has been sold or given on hire on earlier occasions;
3. to communicate the film to the public;

E. In the case of sound recording:

1. to make any other sound recording embodying it;
2. to sell or give on hire, or offer for sale or hire, any copy of the sound recording
regardless of whether such copy has been sold or given on hire on earlier occasions;
3. to communicate the sound recording to the public.

Explanation: For the purposes of this section, a copy which has been sold once shall be
deemed to be a copy already in circulation.

❖ Copyright in Ownership

Copyright is considered to be a sui generis right which means that a person who is a creator
or owner of a thing using his intellect is the prime owner of that thing and has an immediate
right over it.

Section 2(d) of the Act defines “Author” as:

1. In the case of a literary or dramatic work the author, i.e., the person who creates
the work.
2. In the case of a musical work, the composer.
3. In the case of a cinematograph film, the producer.
4. In the case of a sound recording, the producer.
5. In the case of a photograph, the photographer.
6. In the case of any literary, dramatic, musical or artistic work which is computer-
generated, the person who causes the work to be created.

Also, Section 17 of the Copyright Act, 1957 is concerned with the 1st owner of any work:

1. In the case of a literary, dramatic or artistic work made by the author, in such
cases the author is considered to be the first owner of the work.
2. In the case of a photograph taken, or a painting or portrait drawn, in such cases
the creator is considered to be the first owner of that work.
3. In the case of cinematography, the producer is considered to be the first owner of
the work.
4. In the case of Sound Recording, the producer is considered to be the first owner of
the work.
 5. In the case of a work made in the course of the author’s employment under a
contract of service or internship, the employer will be the first owner of the
copyright therein, in the absence of any agreement to the contrary.
6. If in case any of the above work is done by any person under a contract then the
owner of the work will be according to the terms of the contract.
7. In the case of a government work, government will be the first owner of the
copyright therein, in the absence of any agreement to the contrary.
8. In the case of a work made or first published by or under the direction or control
of any public undertaking, such public undertaking will be the first owner of the
copyright therein, in the absence of any agreement to the contrary.
9. In case of any work which is made or first published by or under the directions or
control of any international organisation, such international organisation will be
the first owner of the copyright therein.
10. In the case of any address or speech delivered in public, the person who has
delivered such address or speech or if such person has delivered such address or
speech on behalf of any other person, such other person will be the first owner of
the copyright.

❖ Term of Copyright

Section 22 to 29 of the Copyright Act, 1957 deals with the term of copyright. Copyright,
generally lasts for a period of sixty years.

1. In the case of literary, dramatic, musical or artistic works, the sixty-year period is
counted from the year following the death of the author.
2. In the case of cinematograph films, sound recordings, photographs, posthumous
publications, anonymous and pseudonymous publications, works of government and public
undertakings and works of international organisations, the 60-year period is counted
from the date of publication.
3. In case of Broadcast reproduction right: 25 years from the beginning of the calendar
year next following the year in which the broadcast is made.
4. In case of Performers right: 25 years from the beginning of the calendar year next
following the year in which the performance is made.

❖ Author’s Special Right (Moral Rights)

Apart from remedies for infringement of copyright, the Act expressly provides for the
protection of special rights of the author known as moral rights. Under Section 57 of the
Act an author of copyright work can restrain or claim damages in respect of any distortion
or mutilation of the work or any other action in relation to the said work which would be
damaging to his honour or reputation.

These rights can be exercised even after the assignment of the copyright. They can be
enforced by an action for breach of contract or confidence, a suit for defamation, or
passing off, as the case may be.
 Question 9: International Conventions relating to Copyright
Copyright law is territorial and regional in scope and application. Protection against
unauthorized use of work in a country will depend on the national laws of that country.

However, certain international copyright treaties and conventions have greatly simplified the
process of granting protection to foreign copyright holders. This has allowed creators and
content owners in different countries to enjoy exclusive rights over their work across the
world.

❖ Berne Convention for the Protection of Literary and Artistic Works, 1886

In 1886, the first multilateral agreement on copyright was concluded i.e., the Berne
Convention for the Protection of Literary and Artistic Works, 1886 and was meant for
providing protection to literary and artistic works.

A country joining the Convention has to provide copyright protection to literary and artistic
works of member countries in its own territory and also entitled for enjoying reciprocal
protection from others.

➢ Fundamental Principles of the Convention:

The fundamental principles on which the convention is based are as follows:

1. Principle of National Treatment: All member countries of this convention must

provide the same standard of protection to the copyright holders of other member
countries that provided to its nationals.

2. Principle of Automatic Protection: Protection must not be conditional upon

compliance with any formality or procedure.

3. Principle of Independence of Protection: Protection provided by other member

countries exists independently of the protection provided by the county of origin of
the work.

❖ Universal Copyright Convention, 1952

The post Second World War era saw the emergence of the need for protecting copyright on
a universal basis. Till then countries in the North America were not party to the Berne
Convention and copyright protection in these countries were governed by various national and
regional agreements.

In August, 1952 the Intergovernmental Copyright Conference was convened in Geneva

which led to the adoption of another historical copyright convention, namely the Universal
Copyright Convention (UCC) administered by UNESCO. The UCC is not a substitute for the
Berne Convention. Rather it tried to establish the link between the countries on the
Bern Union and those in North America. India is a member of both the Berne Convention
and the UCC.

❖ Trade relating to aspects of Intellectual Property Rights, 1995

In 1994, TRIPS Agreement negotiated at the Uruguay Round of General Agreement on
Tariffs and Trade (GATT) in 1994 came into effect on 1 January 1995. It consists of 73
Articles and 7 Parts.

Part II, Section 1 (Article 9 to Article 14) of the TRIPS agreement deals with the
minimum standard in respect of copyrights.

The TRIPS Agreement requires member countries to comply with the basic standards of
the Berne Convention. This is expressed in Article 9 of the Agreement which makes
reference to the Berne Convention for the Protection of Literary and Artistic Works of
1971 and Members should comply with Articles 1 through 21 and the Appendix thereto.

➢ Article 9: Relation to the Berne Convention

1. Members shall comply with Articles 1 through 21 of the Berne Convention (1971) and the
Appendix thereto.
2. Copyright protection shall extend to expressions and not to ideas, procedures, methods
of operation or mathematical concepts as such.

➢ Article 10: Computer Programs and Compilations of Data

1. Computer programs, whether in source or object code, shall be protected as literary
works under the Berne Convention (1971).
2. Compilations of data or other material, whether in machine readable or other form,
constitute intellectual creations shall be protected as such.

Such protection, which shall not extend to the data or material itself, shall be without
bias to any copyright subsisting in the data or material itself.

➢ Article 11: Rental Rights

In respect of at least computer programs and cinematographic works, a Member shall

provide authors and their successors the right to authorize or to prohibit the commercial
rental to the public of originals or copies of their copyright works.

In respect of computer programs, this obligation does not apply to rentals where the program
itself is not the essential object of the rental.

➢ Article 12: Term of Protection

Whenever the term of protection of a work, other than a photographic work or a work of
applied art, is calculated on a basis other than the life of a natural person, such term shall be
no less than 50 years from the end of the calendar year of authorized publication, or,
failing such authorized publication within 50 years from the making of the work, 50 years
from the end of the calendar year of making.

➢ Article 13: Limitations and Exceptions

Members shall confine limitations or exceptions to exclusive rights to certain special cases
which do not conflict with a normal exploitation of the work and do not unreasonably
prejudice the legitimate interests of the right holder.
 ➢ Article 14: Protection of Performers, Producers of Phonograms (Sound
Recordings) and Broadcasting Organizations

Producers of phonograms shall enjoy the right to authorize or prohibit the direct or indirect
reproduction of their phonograms.

1. The provisions of Article 11 in respect of computer programs shall

apply mutatis mutandis to producers of phonograms and any other right holders in
phonograms as determined in a Member’s law.
2. The term of the protection available under this Agreement to performers and producers
of phonograms shall last at least until the end of a period of 50 years computed from
the end of the calendar year in which the fixation was made or the performance took
place. The term of protection granted pursuant to paragraph 3 shall last for at least 20
years from the end of the calendar year in which the broadcast took place.

Question 10: Procedure for Registration of Copyright

Copyright comes into existence as soon as a work is created and no formality is required
to be completed for acquiring copyright.

However, facilities exist for having the work registered in the Register of Copyrights
maintained in the Copyright Office of the Department of Education.

The entries made in the Register of Copyrights serve as prima-facie evidence in the court of
law.

❖ Who can apply for Copyright:

Any person claiming to be the proprietor of a work used or proposed to be used by him
may apply in writing in Form IV for registration.

❖ Where to file an application:

A copyright application should be filed at the appropriate office of the Registry within
whose territorial limits. He should file the application at that office within his territorial
jurisdiction:

Section 9 of the Copyright Act requires for establishment of an office to be called the
Copyright Office for the purpose of the Act. The Copyright Office is to be under the
immediate control of a Registrar of Copyrights to be appointed by the Central
Government, who would act under the superintendence and directions of the Central
Government.

❖ Procedure for Registration of Copyrights:

Procedure for registration of a work is covered under Chapter VI of the Copyright

Rules, 1958, they are as follows:
1. Application for registration is to be made on Form IV as prescribed in the first schedule
to the Rules;
2. Separate applications should be made for registration of each work;
3. Each application should be accompanied by the requisite fee prescribed in the second
schedule to the Rules; and
4. The applications should be signed by the applicant or the advocate in whose favour a
Power of Attorney has been executed. The Power of Attorney signed by the party and
accepted by the advocate should also be enclosed.

The following Statement of Further Particulars should be submitted in triplicate along

with the Application for Registration of Copyright (Form IV):

A. Is the work being to be registered:

1. An original work?
2. A translation of a work in the public domain?
3. A translation of a work in which Copyright subsists?
4. An adaptation of a work in the public domain?
5. An adaptation of a work in which Copyright subsists?

B. If the work is a translation or adaptation of a work in which Copyright

subsists:
1. Title of the original work;
2. Language of the original work;
3. Name, address and nationality of the author of the original work and if the author is
deceased, the date of decease;
4. Name, address and nationality of the publisher, if any, of the original work;
5. Particulars of the authorization for a translation or adaptation including the name,
address and nationality of the party authorizing.

❖ Time taken for Registration

After filing application and receiving diary number the applicant should wait for a
mandatory period of 30 days so that no objection is filed in the Copyright office against
the claim that particular work is created by the applicant.

If such objection is filed it may take another one-month time to decide as to whether
the work could be registered by the Registrar of Copyrights after giving an opportunity of
hearing the matter from both the parties.

If no objection is filed the application goes for scrutiny from the examiners. If any
discrepancy is found the applicant is given 30 days’ time to resolve the same. Therefore, it
may take 2 to 3 months’ time for registration of any work in the normal course.

The cooperation of the applicant in providing necessary information is the key for
speedy disposal the matter. Any person aggrieved by the final decision or order of the
Registrar of Copyrights may, within three months from the date of the order or decision,
appeal to the Copyright Board.
 Question 11: Assignment and Licencing of Copyright
Copyright is a protection given to the creators of certain types of works as an
acknowledgment to their intellectual input. The objective of copyright has always been the
protection of the interest of a creator, coupled with dissemination of knowledge. Though this
protection started with the recognition of rights of authors in their books, but modern
technology has substantially changed the nature of work and its mode of exploitation.

Economic rights allow an owner to reap economic benefits from his intellectual creations.
According to section 14 of the Copyright Act, 1957, different rights are recognised with
respect to the nature of the work. As per this section, it is the exclusive right of the owner
to do or authorise the doing of the acts provided thereunder.

The owner of copyright work can generate wealth not only by exploiting it himself but also by
sharing it with others for mutual benefits. This can be done by way of assignment or licensing
of copyright.

❖ Assignment of Copyrights: Section 18 of Copyrights Act

Sec.18 of the Copyright Act, 1957 deals with assignment of copyright. The owner of the
copyright in an existing work or the prospective owner of the copyright in a future work
may assign to any person the copyright either wholly or partially and either generally or
subject to limitations and either for the whole term of the copyright or any part thereof.

The owner of the copyright of a work has the right to assign his copyright to any other
person. The effect of assignment is that the assignee becomes entitled to all the rights
related to the copyright to the assigned work. However, mere grant of right to publish and
sell the copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright,
he shall be treated as the owner of the copyright in respect of those rights. The assignor
shall also be treated as the owner of copyright with respect to unassigned rights. The legal
representatives of the assignee shall be entitled to the benefits of assignment, if the
assignee dies before the work comes into existence.

In Video Master v. Nishi Production, the Bombay High Court considered the issue whether
assignment of video rights would include the right of satellite broadcast as well. The Court
agreed with the contentions of defendant that there were different modes of communication
to the public such as terrestrial television broadcasting (Doordarshan), satellite broadcasting
and video TV. The owner of the film had separate copyright in all those modes, and he could
assign it to different persons. Thus, satellite broadcast copyright of film was a separate
right of the owner of the film and the video copyright assigned to the plaintiff would not
include this.

❖ Mode of Assignment: Section 19 of Copyrights Act

According to Section 19 of the Act, the mode of assignment should be in the following
manner:
 1. Assignment should be given in writing and signed by the assignor or by his duly
authorized agent.
2. The assignment should identify the work and specify the rights assigned and the
duration and territorial extent of such assignment.
3. The assignment should also specify the amount of royalty payable, if any.
4. Where the assignee does not exercise the rights assigned to him within a period
of one year from the date of assignment, the assignment in respect of such rights
will be deemed to have lapsed after the expiry of the said period unless otherwise
specified in the assignment.

The period of assignment will be deemed to be 5 years from the date of assignment
unless specifically mentioned. If the territorial extent of assignment of the rights is not
specified, it will be presumed to extend within India.

Also, Section 19(8) contemplates that the assignment of copyright work against the terms
and conditions on which rights have been assigned to a particular copyright society where the
author of the work is a member shall be void.

Further, Section 19(9) and Section 19(10) opine that the assignment of copyright for making
cinematograph film or sound recording shall not affect the right of the author to claim an
equal share of the royalties and consideration payable with respect to use of his protected
work.

In Saregama India Ltd v. Suresh Jindal, it was held that the owner of the copyright in a
future work may assign the copyright to any person either wholly or partially for the whole of
the copyright or any part thereof and once the assignment is made the assignee for the
purpose of this Act is treated as the owner of the copyright.

❖ Licencing of Copyright

Chapter VI containing Sections 30-32B deals with Licencing of Copyright. The owner of
copyright may grant a license of his work to any person.

The owner of a copyright may give a license to perform any of the acts over which he has sole
authority. The following are the different types of licenses:

❖ Voluntary Licence
1. The author or copyright owner has exclusive rights to his or her creative work, and he
or she is the only one who may grant a license for it.
2. The owner of the copyright in a work may give any interest in his copyright to any
person by license in writing, which must be signed by him or his duly authorized
representative, according to Section 30 of the Copyright Act 1957.
3. A license can be issued not only for existing work but also for future work; in this
case, the assignment will take effect when the future work is completed. If there is
no stipulation to the contrary, a licensee of the copyright in a future work who dies
before that work comes into existence will be entitled to the benefit of the license.
 4. The license mode is similar to an assignment deed, with section 19 providing the
appropriate changes and alterations (section 30A). As a result, just like an assignment,
a licensing deed for a work should include the following information:
✓ Duration of license;
✓ The rights which have been licensed;
✓ Territorial extent of the licensed;
✓ The quantum of royalty payable;
✓ Terms regarding revision;
✓ Extension and termination.

❖ Compulsory License
1. Compulsory and statutory licenses can affect the identification of the licensee with
whom the owner chooses to do business, as well as the terms, including royalty rates,
that the owner may establish. Compulsory licenses, when viewed in this light, are less
of a violation of owner sovereignty on both grounds.
2. The owner does maintain some liberty in terms of entering into proper licensing
agreements with those he sees fit, and he is also allowed to negotiate the terms of
the license within reason.
3. A compulsory license is usually triggered by an unjustified refusal to deal with a
person.
4. This takes us to the third key difference between a mandatory and statutory license.
The former is always granted after an individual makes a specific request to the
appropriate authority.
5. The latter, on the other hand, is the authority's broad setting of royalty rates and
the issuance of standardized licenses to all those who wish to use them. As a
necessary corollary, the owner has no control over the identities of persons who
receive the license or the amount of royalties they pay.

❖ Statutory License
1. Statutory licenses, on the other hand, do not necessitate any investigation into the
owner's behaviour. Once the work fits into the broader class of works that can be
licensed in this way, it tries a wholesale expropriation of owner autonomy.
2. Cover version recording licenses (Section 31C) and broadcasting licenses are the two
types of statutory licenses (Section 31D).
3. The first has existed since the beginning, however as part of the fair dealing
exceptions in Section 52. The second is a relatively new addition to the Act, as it was
amended in 2012.

❖ Difference between Compulsory Licensing and Statutory Licensing

1. Licensing a work means the Licensor (owner) giving rights to the Licensee to use his
work by following a procedure and paying a statutorily prescribed fee.
2. There is however no proper distinction between Compulsory and Statutory License.
Both the terms are often used interchangeably in various jurisdictions.
 3. However, the Indian Copyright Act tries to make a slight difference between them in
terms of fee. In case of Compulsory Licensing, the royalty is kept to be
negotiated by the parties whereas in Statutory Licensing, the royalty is prescribed
by the Copyright Board. In Statutory Licensing, no permission is required to be taken
from the owner to use his work as the permission is given by the Statute unlike in
Compulsory Licensing.
4. This can be derived from the Act itself under sections 31 to 31 D.

❖ Provisions under the Act:

This chapter discusses seven different types of licenses issued by the Copyright Board:

1. Compulsory licenses for works withheld from the public:

Any person may approach the copyright board, for issuance of a compulsory license to
publish a work that is withheld from the public by the copyright owner.

However, before approaching the Copyright Board, the complainant should have approached
the copyright owner first with regard to the same and the copyright owner should have
unreasonably rejected the request of the complainant.

2. Compulsory licenses for unpublished works of unknown authors:

In case of unpublished works of unknown or dead authors, any person may apply to the
Copyright Board for a license to publish or communicate to the public such works or
translations thereof. However, before making such an application, the applicant is required
by law, to publish his proposal to do so in a national newspaper.

3. Compulsory licenses for the benefit of the disabled:

Any person or non-profit organization working for the benefit of the disabled may apply to
the Copyright Board for a compulsory license to publish any work in a format suitable for
their accessibility.

4. Statutory licenses for Cover Version:

Section 31C of the Copyright Act provides for the grant of statutory licenses for making
cover versions of any sound recordings. This section specifically requires the Copyright
Board to fix the minimum amount of royalty to be paid for the creation of such a version.

5. Statutory licenses for Broadcasting literary, musical works and sound recordings:

This license is issued by the Copyright Board in favour of any broadcasting organization
desiring to broadcasting to the public any literary, musical work or sound recording which
is already published by the copyright holder.

Although the Copyright Board is authorized to determine the royalties payable under this
license, the Board is yet to convene and determine these royalties.
 6. License to produce and publish translations:

This license issued by the Copyright Board permits the applicant, after the applicant pays
a determined royalty to produce and publish a translation of literary or dramatic work,
after 7 years of publication of said work. It is relevant to note here, that this licensing is not
applicable to cinematographic films and sound recordings.

7. License to reproduce and publish works for limited purposes:

The Copyright Board may issue licenses to publish a work in India if the editions of such
literary, scientific or artistic works are not made available in India. The Copyright Board,
in case of such applications, may issue the license after determining the royalty to be
paid to the copyright holder.

❖ Termination of Licence:

Section 32B of the Act deals with termination of licences and provides that if at any time
after the granting of a licence, the owner of the copyright in the work or any person
authorised by him publishes a translation of such work in the same language and which is
substantially the same in content at a price reasonably related to the price normally
charged in India for the translation of works of the same standard on the same or similar
subject, the licence so granted shall be terminated.

However, such termination shall take effect only after the expiry of a period of three
months from the date of service of a notice in the prescribed manner on the person holding
such licence by the owner of the right of translation intimating the publication of the
translation.

❖ Fixed amount of Royalty

As we talk about royalties, the never-ending dispute between radio stations and music
companies cannot be ignored. The same can be best understood by the matter of Music
Broadcast Pvt Ltd & Ors. vs. Phonographic performance Ltd.3 In this particular case, a
dispute took place as the PPL was not ready to grant the license to the radio station at the
royalty that had been suggested by them. Aggrieved by this decision of PPL, nine applications
were filed by the FM radio stations under Section 31(b) of the Copyright Act. These
applications were filed before the Board for being granted with compulsory license for the
broadcast of the music produced by PPL. After hearing the matter from both the sides, the
Board came to the conclusion that 2% of the net advertisement earnings by each FM radio
station shall be distributed in proper proportions to all the music providers. Thus, the Board
passed a landmark judgement by fixing the rate of royalty for all the radio stations as well as
music companies.

In the matter of Entertainment Ltd. v. Super Cassette Industries Ltd 4, the importance of
section 31A comes into play. In this particular case, Radio Mirchi was playing the song whose
rights were held by Super Cassette industries. Super Cassette Industries felt their rights to
be infringed and hence they filed for a permanent injunction.
In the meantime, the FM station applied for the grant of compulsory license to the Copyright
Board under section 31(b) of the Copyright Act. Considering all these circumstances the main
issue that came up was whether this situation fulfils the criteria of being granted a
compulsory license.

The radio station put forth in their argument that since a license has already been granted to
AIR and Radio City, there shall not be any hindrance from the Board's side to provide the
compulsory license to the radio station. After hearing the arguments from both the sides,
the Board came up with the conclusion that Sec 31A can only be applied when the work is
denied to be published. In this particular case, license has already been obtained by the AIR
and Radio City, hence it was never barred or protected from being published. Thus, the Board
decided that the arguments put forth by the radio station held no particular ground. Also,
the Board made the Radio station liable for infringement of copyright of the music.

❖ Difference between License and Assignment of Copyright

License Assignment

Merely legalises the doing of certain things It is a complete transfer of ownership.

which otherwise can only be done by the
copyright owner.

No proprietary right is created under The proprietary right arises from

License. Licensee has an individual right in assignments. The assignee may re-assign or
the interest created, which is not deal with his interest in any way he likes.
assignable.

A mere licensee cannot sue an infringer in The assignee has a legal interest in his own
his own name without joining the owner of name, entitling such assignee or transferee
the copyright as co-plaintiff or co- to sue the infringer in his own name as an
defendant. exclusive assignee.

There is no change of ownership with the With an assignment, the assignee becomes
license. It is a permission to use the the owner of the copyright, which has been
copyright within limits of the license assigned to him.
without any breach of copyright.

Question 12: Performer’s and Broadcasting Rights

In earlier times, the role of the individual in broadcasting the content was not recognized. In
the year 1961, with the enactment of the Rome Convention, the concept of performer rights
was accorded recognition. As per the terms of this Convention performers works were
protected for the duration of 20 years. Article 7 of the Rome Convention accords
protection to the rights of the performers:

1. Performers have the right to prevent others from broadcasting or communicating to

the public by means other than broadcasting without their consent
 2. They have the right to prevent others from fixation of their unfixed live performance
without taking their consent.
3. They have the right to prevent others from reproduction of their live performance
without their consent.
4. They have the right to prevent the commercial exploitation of their performance for
any other purpose, for which the consent is not obtained.

The provisions of this convention are further strengthened by the TRIPS agreement, which
is administered by WTO. Article 14 of the TRIPS agreement states that:

1. They have the right to protect their work from broadcast and communication to the
public by wireless means.
2. They have the right to prevent reproduction of their live performances.
3. They have the right to prevent the fixation of their live performance on phonograms.
In the Rome Convention, such performances were not restricted to phonograms but
here the narrow approach has been adopted.

The protection of performer’s rights is 50 years from the end of the year in which the
performance was fixed or it took place.

❖ What are the rights of Performer under the Copyright Act?

Section 38A of the Act recognises the following rights:

1. Performer has right to make sound or visual recording:

A performer has the right to make the sound or visual recording. He can also give consent to
other people to record the live performance. Without the consent of the performer, no other
person can make use of that sound recording. But, in case, their performance is for the
cinematograph film and the written agreement is made consenting the incorporation of his
performance in such film then all the rights will, therefore, be enjoyed by the producer of
such film irrespective of whether the performer is a singer or actor.

2. Performer has the right to produce the sound or visual recording:

A performer may also become producer of the sound or visual recording and can enjoy all the
rights that a producer enjoys such as reproducing a number of copies, giving the copies for
commercial rental, communicating the work to the public etc. But for that purpose, the
performer must have the prior permission from the individual copyright owner like lyricist
and music composer and should have the certificate related to the sound or visual recording
by the competent authority.

3. Performer has the right to broadcast performance:

Performers can prevent others from broadcasting their live performance. In case the
consent of the performer is not taken and any other individual is broadcasting his
performance then it will amount to copyright infringement.

But if the performance is for the cinematograph film and then rights will be enjoyed by the
producer of the cinematograph film but if the performance is commercially exploited for
other purposes than such film then the performer has the right to claim the royalties.
 4. Performer has the right to communicate the work other than by broadcast:
Performer can use other means to communicate with the public than by means of broadcast.
Broadcast means communication to the public either by means of wireless diffusion or by
wire.

❖ Acts that do not constitute infringement of Performer’s Rights

Section 39 of the Act states the following:

1. The act of reproducing any sound or visual recording either for the purpose of private
use or for teaching and research work only.
2. In case the work is reproduced for the purpose of judicial proceeding.
3. Reproduction for the purpose of reporting, reviewing or other things that come under
fair dealing.
4. In case the work is reproduced for the purpose of use by members of legislature.
5. Some other uses that are not considered infringement under Section 52 of the
Copyright Act.

❖ Acts that constitute the infringement of performer’s rights

1. Reproduction of the work of performer without his consent.

2. Use of performer’s work without his consent.
3. Use of performer’s work for any other purpose for which the consent is not obtained
from performer.
4. Broadcast of the work of performer other than the one mentioned in Section 39 of
the Copyright Act.
5. Communication of the performance without the consent of performer to the public
other than by broadcast.

❖ Moral Rights of the Performer

The performer has the right to be identified for his work even though he has given all his
rights to the producer of the cinematograph film. The performer, even after giving up their
rights over the work, have the right to be recognized for their work. They also have the
right to object; in case any alteration is made in the work performed by them. In case, the
producer of the cinematograph film shortens the length of the performance or removes some
portion of the work because of some technical issues or time constraints then the moral right
of the performer is not said to be prejudiced. Moral rights of the legal representatives of
the performer and legal representatives of copyright owners are different and cannot be
exercised in the same manner.

❖ Important Case Laws

One of the earliest cases where the performers rights came into question and where it was
completely denied by the court to recognize the performer’s right in the cinematograph film
was in Fortune Films International v. Dev Anand, here the court held that an actor has no
right to control the use of their performance in the film.
The actors were given a fee for their performance and after that the producer was free to
use their performance in whatever they wish to use it. But with the amendment in the
Copyright Act in 1994, performer’s rights were given recognition.

In Super Cassettes Industries v. Bathla Cassette Industries, the Delhi High Court held
that copyright and performers rights are two different things and in case the song is re-
recorded then the prior permission of the original singer is required.

In Neha Bhasin v. Anand Raj Anand, the court addressed the issue that what will
constitute the live performance, here it held that whether the performance is recorded in
the studio or in front of the audience, for the first instance, both will be called live
performance and if anyone use such performance without the consent of the performer then
performer’s rights is said to be infringed.

Other than the abovementioned decisions, there has not been much development in the field
of performer’s rights in India. But with the evolution of technology, one may expect in the
future that new issues will arise testing the provisions of the performer’s rights.

❖ Judicial Pronouncement Related to Act, 1957

The very first case, Fortune Films International v. Dev Anand, where the issue of whether
the copyright of the work of the actor has been recognised or protected by the Copyright
Act was raised in the Bombay High Court. The Honourable Supreme Court held that an actor
in a film has no rights over his performance in the film and thereby denied the existence of
the rights of the performers under the Indian copyright laws back then.

In the case of Super Cassettes Industries v. Bathla Cassette Industries, the Delhi High
Court stated that since the incorporation of the Amendment Act of 2012, performer’s right
and copyright are two different concepts. This case established a step ahead towards the
recognition of the performer’s rights by stating that the rerecording of any work or song
without the consent of the original maker of the song is an infringement to the performer’s
rights.

In the case of Neha Bhasin v. Anand Raj Anand, issue in matter was related to the live
performance. The Delhi High Court held that every performance has to be live in the first
instance, whether it is before an audience or in a studio. If this performance is recorded and
thereafter exploited without the permission of the performer, then the performer’s right is
infringed.

In the latest case of Star India Pvt. Ltd. V Piyush Aggarwal, the issue that was raised was
whether a cricket match would constitute a “performance” or not under the copyright act.
The Delhi High Court observed that a cricket match will be considered a “performance” and
therefore, cricketers, commentators and umpires are performers under the Act.

❖ Remedies against Performer’s Rights Infringement

The remedies are available against the infringer of performer’s right in Section 55 and also
from Section 63 to 70 of the Copyright Act.
The following remedies may be availed:

1. Civil Remedies:
The owner of the performer’s right or his exclusive licensee may go to the court and obtain
the injunction either temporary or permanent or they may also claim damages.

2. Criminal Remedies:
Not only civil remedy but criminal remedy is also available against the infringer. The infringer
may be sentenced for six months which may extend up to three years or may be liable to pay
a fine of Rs. 50,000 to Rs. 2,00,000 or both.

3. Anton Pillar Order:

Sometimes the court gives permission to the plaintiff, on an application by him, to enter into
the defendant’s place along with the attorney and inspect the relevant documents. This is
necessary because the defendant may remove the documents from his premises if he knows
beforehand that the inspection is going to happen or any search warrant is released by the
court.

Question 13: Copyright of Computer Programmes and Software

Innovation drives Information Technology. Whether it is a new business setup or an old
corporate giant, everyone relies on innovation and technology. Then why not safeguard this
invention and technology. Interestingly, now you can copyright your program and application
via copyright registration. Not all developers understand the importance of copyright
registration.

The unprotected programs that hold commercial value are more likely to fall in the hand of
the infringer. There are so many instances where infringers copy the software even before it
is officially released. To keep that adversity at bay, it’s essential for all the developers to
avail of the copyright registration for their program.
❖ Why Copyright Protection for Computer Programs is Imperative?

As the software industry booming at a rapid rate, the newly launched program and application
have become more vulnerable to infringement act. On a massive scale, such an act can tear up
the company apart by shredding off their profit in the market. Availing copyright is the best
way to keep the infringers as the way. At least it can undermine their efforts to access the
software in an unauthorized manner.

You can take advantage of the Copyright Act, 1957, to protect your secure code. In past, the
government authorities made various changes to meet the domestic and global requirements
for copyright protection. The Technology Act and International Copyright Laws work in
tandem with the Indian Copyright Act. This act is the foundation for the copyright
protection of software in India.

However, the law doesn’t provide global protection to the computer program. To avail of
comprehensive protection, various international conventions render copyright protection by
becoming a member. These include:
✓ Universal copyright protection;
✓ Berne convention;
✓ TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement

❖ Copyrighting Source Code

No wonder there can be similar computer programs in the market, but copyright imparts the
unique identity to the product. It offers the following benefits to the product.

1. Registering the source code confirms the software ownership as it acts like prima
facia evidence.
2. It is not compulsory in India to register the work to overcome infringement issues.
However, copyright protection of software renders a list of rights, which include:
✓ Right for the reproduction of the computer programs.
✓ Right for creating a software or code.
✓ The right to improve the code.
✓ Right to seal the program to others.

❖ Penalties Regarding Infringement of Programs

In the case of violation, the person is liable to face punishment under section 66 and 67 of
the Copyright Act, 1957. Furthermore, the individual has to bear a penalty of Rs 1 lac or Rs 2
lac and confront a punishment of three years or five years, depending on the severity of the
crime.

❖ Process of Copyright Registration

The copyright protection for software can be availed through the following channels.

1. Registration through online mode.

2. Form filing at the regional office of copyright.
 3. Get a paper form from a relevant portal, fill it, and then send it to the copyright
office via post. The registration fee has been capped at Rs 500.

The application should go along with the source code and object code. The applicant has the
right to submit the part of the source code to the authority instead of the complete code to
safeguard the trade secret. The copyright serves typically the validity period of 60 years
along with the lifetime of the owner.

❖ Where to Display the Copyright Notice?

The copyright notice ought to be placed on software copies in such a manner as to render the
reasonable notice of the claimant of copyright. The notice could be placed on the title page
of the software’s documentation. Moreover, the notice can also be placed at the user
terminal at sign-in. Failure to add the copyright notice does not destroy copyright protection
even if:

1. The notice has been removed from a few copies of the computer software.
2. Copyright registration is availed within 6 years of first publication of the software
and the concerned entity has made a reasonable effort to append a notice on the
already distributed copies, or
3. The notice was removed in contravention of an express agreement, in writing, by which
the owner become legally eligible to transfer the right of distribution to another
person.

Copyright protection for computer programs is extremely crucial as it can safeguard the
work from intentional manipulation and unnecessary access. Whether it’s a sophisticated
source code or complex app program, copyright is the best protection available that legally
makes your product isolated from infringers. Also, it helps your product garner credibility
overtimes which gradually strengthen its brand value.

❖ Conclusion

It should be noted that the copyright only protects the expression, not the idea that lies
behind it. This is the key difference between patent and copyright. Thus, taking the
complexity of the patent protection in the view, copyright is the most conducive option in the
current scenario to safeguard your work’s creativity. The copyright protection for computer
programs is important if the product holds some considerable value or has the potential to
transform human life. Since these types of programs are highly susceptible to replication, it’s
the job of a developer to at least copyright some part of the program to stay safe. Keep in
mind that as per the Berne Convention, the use of the copyright is optional.

Question 14: Doctrine of Fair-Use

Doctrine of Fair Dealing is an exception to the law that would usually protect any material
that would be considered to be copyrighted as under the Indian Copyright Act, 1957
(hereinafter known as the “Act”).
It is a legal doctrine which permits a person to use any work which is protected under the
Act with limited usage of such work so as to maintain the sanctity and originality of such
work as well as the registered proprietor of the work.

The meaning of “Fair Dealing” depends on different facts and circumstances. In India, the
Court applies basic common sense so that they can determine as to what can be constituted
as Fair Dealing on the case- to- case basis. Fair dealing is a significant limitation on the
exclusive right of the copyright owner. It has been interpreted by the courts on a number of
occasions by judging the economic impact it has on the copyright owner. Where the economic
impact is not significant, the use may constitute fair dealing. The fair nature of the dealing
depends on the following four factors:

1. the purpose of use;

2. the nature of the work;
3. the amount of the work used, and
4. the effect of use of the work on the original.

❖ What do you mean by Fair Use under the Indian Copyright Act?

Under Indian regime legal framework being the Copyright Act, 1957, Section 52 lays down
certain acts or works that cannot be considered as an infringement of copyright namely fair
dealing with a literary, dramatic, musical or artistic work not being a computer program for
the purposes of:

1. fair dealing with any work, not being a computer programme, for the purposes of
✓ private or personal use, including research;
✓ criticism or review, whether of that work or of any other work;
✓ the reporting of current events and current affairs, including the reporting of a
lecture delivered in public.
2. the transient or incidental storage of a work or performance purely in the technical
process of electronic transmission or communication to the public;
3. transient or incidental storage of a work or performance for the purpose of providing
electronic links, access or integration, where such links, access or integration has not
been expressly prohibited by the right holder, unless the person responsible is aware or
has reasonable grounds for believing that such storage is of an infringing copy:
4. the reproduction of any work for the purpose of a judicial proceeding or for the purpose
of a report of a judicial proceeding;

The Court along with the above-mentioned provision, also relies upon classic cases which has
been dealt in brief in the next chapter as to what and up to how much extent any work which
is abridged as under the Act can be considered to be “Fair Use” of the copyrighted work
which in fact, is an extremely technical based issue that is seen by the Court mainly looking
into the fact of the case.

❖ International Cases

Hubbard vs Vosper: In the line of dealing with the concept of Fair Dealing, Lord Dennings
has stated that “It is impossible to define what is “Fair Dealing”. It must be a question
of degree. You must first consider the number and extent of the quotations and
extracts…. then you must consider the use made of them…Next, you must consider the
proportions…other considerations may come into mind also. But, after all, is said and
done, it is a matter of impression”.

Gyles vs Wilcox: This case had initially established the doctrine of “Fair Abridgment” which
eventually came to be known as “Fair Dealing” which was the first case based on the concept
of Fair Use law as was adjudicated by the Court of Chancery of England. In this case, the
Court adjudicated the issue of whether work which comes within the purview of copyright
can be abridged or such abridged are to be considered as new work, separate to that of
abridged work. In that regard, Lord Hartwicke established two categories under which such
abridged work would be classified into firstly, “True Abridgments” which in itself explains
that the work was created at its truest form without violating the copyright. While the other
being “Coloured Shortenings” which is the colouring or certain adjustments made to the
original copyrighted work.

Folsom vs Marsh: This case was the first-ever case of “Fair Use” in U.S. wherein, Justice
Story has set forth the following four factors to determine a work to be of Fair Use, which
later went to be codified under the Copyright Act, 1976:

1. “The nature and objects of the selections made;

2. The nature of the original work;
3. The amount is taken; and
4. The degree in which the use may prejudice the sale, or diminish the profits, or
supersede the objects, of the original work.”

❖ Indian Cases

India TV Independent News Services Pvt. Ltd. vs Yashraj Films Pvt. Ltd: The facts of
this case state that the defendants that is, India TV broadcasted a show on its channel
documenting the life of the singers wherein the singers were shown to perform their own
songs however, while such performance was being filmed clips of a movie scene were shown to
play in the background. The plaintiff, that is, Yashraj Films Private Limited claimed that such
a scene of the movie in the background amounts to infringement of its Copyright. The
defendants took the defence of fair dealing under Section 52. The Delhi Court dismissed the
defence of fair dealing and restrained the defendants from the production, distribution and
broadcasting or in any way exploiting any cinematograph film, sound recording or part thereof
which is owned by the Plaintiff. This litigation battle went on for years, where different
angles and viewpoints were considered, in an appeal from the above order, the Hon’ble bench
of Delhi High Court also felt the need to overlook the conventional approach of dealing with
Section 52 of the Copyright Act, the bench set aside the order passed by the single Judge
and uplifted the restrictions so imposed. However, the Appellants were still prohibited from
broadcasting any cinematograph film without the appropriate permission. It was through the
Copyright (Amendment) Act, 2012 that fair dealing as a concept brought within its scope
musical recordings and cinematograph films.
Through this case the Indian legal system made advancement in the field of fair dealing
under Copyright by overlooking the rigid and conventional approach and implementing the
necessary changes.

Civic Chandran vs Ammini Amma: In this case, the Court considered that a parody did not
constitute an infringement of copyright as long as it has not been misused or
misappropriated. In consonance with this case, the Court established the following three
tests which is to be taken into consideration to determine work to be an infringement of
copyright:

1. the quantum and value of the matter taken in relation to the comments or criticism;
2. the purpose for which it is taken; and
3. the likelihood of competition between the two works.”

❖ Conclusion

It can be safely concluded that the test to determine a copyrighted work as a Fair Use of
such work indeed differs from case to case since such facts are to be given high priority
more than the law itself. Though the legislature has attempted to make law on this concept
more flexible but precise, in the Indian scenario, section 52 of the Copyright Act, 1957
makes a legitimate stand for the public to rely upon this provision for now. As mentioned
under Article 13 of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) which
reads as follows:

“Members shall confine limitations or exceptions to exclusive rights to certain special

cases which do not conflict with a normal exploitation of the work and do
not unreasonably prejudice the legitimate interests of the rights holder”.

India has been able to establish a proper ground as for now since the whole idea having an
exception as against the protection of copyright is to give rise to creativity and growth which
can be transformed and expressed in many other new ways so as to encourage people to
attain such degree of creativity with careful consideration to the original copyrighted work.

Question 15: Infringement of Copyright and its Remedies

Copyright infringement or copy right violation is the unauthorized use of material that is
covered by copyright law, in a manner that violates one of the copyright owner’s exclusive
rights.

A Suit for Infringement of copyright has to be filed in a District Court or a High Court,
depending on the pecuniary jurisdiction, within whose territorial jurisdiction the cause of
action has arisen.

❖ Some of the commonly known acts involving infringement of copyright:

1. Making infringing copies for sale or hire or selling or letting them for hire;
2. Permitting any place for the performance of works in public where such performance
constitutes infringement of copyright;
 3. Distributing infringing copies for the purpose of trade or to such an extent so as to
affect prejudicially the interest of the owner of copyright;
4. Public exhibition of infringing copies by way of trade; and
5. Importation of infringing copies into India.

❖ Civil Remedies

There are two types of civil remedies provided under Section 55 of the Copyright Act, 1957
that could be extended when copyright infringement ensues:

1. Preventive civil remedies; and

2. Compensatory remedies

Preventive measures are implemented on anticipation of infringement i.e., before the

actual act of copyright infringement takes place. An interlocutory injunction is one of the
remedies which can have a significant effect against copyright infringement. It is basically a
legal process which restrains a delinquent threatening to intrude the equitable and legal
rights of another by stopping the breach before it can commence or continue or by
commanding to restore the right holder’s position prior to the commission of the
infringement.

The idea behind the interlocutory injunction is to provide the copyright holder with
immediate relief and abstain further damage to his creation. It is well within the discretion
of a trial court to render a decision of interlocutory injunction. Furthermore, when a pirated
work can be segregated from the unobjectionable part of the work then simply the
publication of the pirated part is directed. However, in cases wherein the pirated version
cannot be isolated from the copyrighted work then-interim injunction becomes imperative.

In India three factors are important to determine if granting an injunction is imperative and
those are:

✓ Establishment of prima facie case

✓ Whether the balance of convenience is inclined towards the plaintiff
✓ Ensuring if the injury caused to the plaintiff will be irreparable if interlocutory
injunction is not granted.

In the case of Gujarat Bottling Company Ltd v. Coca Cola Company the Apex court
observed that, “the decision whether or not to grant an interlocutory injunction has to be
taken at time when the existence of the legal right assailed by the plaintiff and its alleged
violation are both contested and uncertain and remain uncertain till they are established at
the trial on evidence.

Relief by way of interlocutory injunction is granted to mitigate the risk of injustice to the
plaintiff during the period before that uncertainty could be resolved. The object of the
interlocutory injunction is to protect the plaintiff against injury by violation of his right for
which he could not be adequately compensated in damages recoverable in his favour at the
trial.
The need for such protection has, however, to be protected against injury resulting from his
having been prevented from exercising his own legal right for which he could not be
adequately compensated. The court must weigh one need against another and determine
where the balance of conveniences lies.”

In the case of Barbara Taylor Bradford v. Sahara Media Entertainment Ltd., the court
refused to order an interim injunction against the defendants on accounts of the immaturity
of the interlocutory application. In Media Transata Ltd v. Indian Airlines Ltd, the
plaintiffs were denied interim injunction as they delayed in filing the suit even after
possessing the information related to the respondent’s activities.

Now, if the plaintiff successfully establishes that the defendant has caused copyright
infringement then the court will entitle him to a permanent injunction restraining the
delinquent from causing any future infringements for the duration until copyright subsists in
the work. Attaining a permanent injunction does not require the proof of actual damage and
mere proof of infringement of copyright is acceptable. However, the claim must show the
evident likelihood of infringement and not a trivial claim.

Hereunder are certain grounds when the court may refuse the grant of a permanent
injunction:

✓ No evidence exists to show that the defendant's activities can threaten or intervene
in the plaintiff's enjoyment of copyright
✓ The intrusion of rights even if exists then they are theoretical in nature and which
would to the maximum provide the plaintiff with nominal damages
✓ The extent of injury caused to the defendant and is higher than the advantage the
plaintiff will derive from the injunction

Compensatory civil remedies could be of the following kinds:

✓ Damages for concession

✓ Account of profits
✓ Delivery of infringing copies

The purpose of awarding damages is to restore the plaintiff to his original position as he was
prior to the infringement took place. Generally, the damages are equivalent to the amount the
plaintiff would have charged had the defendant requested a license of the work. For
assessing the amount of damages there are certain other factors to be taken into
consideration like – the reduction in the extent of sales of the right holder, losses incurred
in profit which he otherwise could have made, injury to reputation, etc.

Section 58 of the Indian Copyright Act, 1957 mandates that the right holder can initiate
recovery proceeding against the defendants possessing infringing copies of his work and
plates used. Also, all the plates intended to be used in the production of further infringing
copies can also be recovered.
The plaintiff can also claim for all the profits incurred by the incurred by the defendant as a
result of the sale of the copyrighted work of the plaintiff in case any. The plaintiff can
either opt for the account of profits or for damages, but not for both concurrently.

❖ Administrative Remedy

Section 53 (1) of the Indian Copyright Act, 1957 authorizes the Registrar of copyright to
make an order obstructing the importation of copies of work in which copyright subsists into
India if brought without the permission of the copyright holder. Furthermore, clause (2)
mandates that the Registrar of copyrights himself or any person authorised by him may
enter any dock or ship or premise where any infringing copies are suspected to present and
examine them. The provision is important to ensure that copies of infringed work of the
applicant are stopped from being circulated.

Section 11 of the Customs Act, 1963 lays down that the Central Government if satisfied that
it is imperative for the protection of copyrights, patents and trademarks, it may obstruct
subject to certain conditions or absolutely the export and import of goods satisfying the
aforementioned description. All the infringing copies seized under Customs Act shall not
remain with the government but shall be delivered to the copyright holder of the work.
Nevertheless, copyright infringement does not take place if an infringing copy of work is
imported for private and domestic use by the person importing.

❖ Criminal Remedies

Criminal proceedings can be initiated against the person involved in the infringement. The
criminal remedies provided under the Copyright Act are separate and independent of the
other remedies and can be resorted to concurrently to curtail further infringement and
punish the delinquent.

Chapter XIII, extending from Section 63 to 70 are related to offences with respect to
copyright. Any person who with all the knowledge about the infringement commits the act of:

✓ Infringement of a copyrighted work, or

✓ breached any other right which the Act confers, or
✓ abets such infringement.

Such person is guilty of the offence of infringement of copyright and is punishable with
imprisonment for which must not be less than 6 months and which may extend till 3 years
along with a fine of a range Rs. 50,000 to 2 lacs. Further, any police officer as provided
under Section 64, above the rank of sub-inspector if has reasonable cause to believe
regarding the offence under Section 63 has been, is being or is likely to be committed, seize
without a warrant all the copies of such work and any plates used to make such infringing
copies of work.

In fact, with regard to any person possessing or making any plate with knowledge of
committing copyright infringement is guilty of an offence under Section 65 and is thereby
punishable of imprisonment for a term of 2 years and fine. Section 66 says that such
infringing copies or plates may be ordered to be disposed of by the court or delivered to the
owner of the copyright even when the alleged offender has not been convicted.

The constitutional validity of Section 64 was challenged in the case of Girish Gandhi v.
Union of India, on the grounds that since the section is not substantiated with any
procedure, hence the section is arbitrary and in violation of the constitutional rights. The
court dismissed the issue observing that the term 'satisfaction' occurring in Section 63
entails the due process of collection of relevant information before the police officer can
proceed with the seizure of material. Such satisfaction ought to be objective

Section 63A mandates that for repeat offenders the minimum term of imprisonment is
maximised to 1 year along with a fine of 1 Lac which may be reduced according to the
discretion of the judge after considering adequate and special reasons showing that the
infringement was not committed for gain in course of business or trade. Also, Section 63
provides for a non-bailable offence.

Section 63B lays down that any person making use of a computer programme with knowledge
of it being an infringing copy shall be sentenced to imprisonment for a minimum term of 7
days and which can extend till 3 years along with a fine of 50,000 to 2 lacs. However, the
sentence can be reduced depending on the discretion of the judge after considering adequate
and special reasons that the programme was not used for the gain in business and trade.

Section 68A mandates the compliance of Section 52A to ensure that certain information
imperative to be supplied on a sound recording or video film with respect to the name and
address of the person who has made the work is not withheld. Anyone deviating from such
provisions can be found guilty and imprisoned for a term that may extend till 3 years along
with fine.

In the case of State of Andhra Pradesh v Nagoti Venkararamane, the Apex court was
posed with the issue of whether the identification of the owner of the copyright is required
to convict an offender under the Copyright Act, 1957. The court observed that the objective
of Section 52A was to prohibit piracy of cinematographic films and sound recording.
Therefore, if the prosecutors are mandated to track the identity of the owner of the
copyrighted work in order to adduce evidence, then this objective would be defeated.

Question 16: Meaning and Concept of Patent

Patent is a grant of an exclusive right awarded to an individual or inventor for his work or
invention, respectively.

For example, the formula used for tooth by Colgate company with a specific constitution of
ingredients can be called a patent. Similarly, the electronic design of a motherboard supplied
by Intel company is also a patent. Even the computer-based system of Windows sold by
Microsoft company is a patent. In fact, patent gives the right to produce and deploy a certain
design commercially in the market. Even food products can have a patent.
Section 2(m) of the Patent Acts, 1970 defines “Patent” as an exclusive grant from the
Government to the invertors for a limited period of time, the exclusive right to make use,
exercise and vend his invention. After the expiry of the duration of patents, anybody could
use the invention.

Section 2(i) of this Act defines “Invention” as a new product or process involving an inventive
step and capable of industrial application. Invention means any new and useful:

1. Art, process, method or manner of manufacture machine, apparatus or another article.

2. Substance produced by the process of manufacture, i.e. invented commodity having
commercial value and use.

Under Patent act, the invention to be patentable should meet the following criteria as,

1) Novel: the invention disclosed in the specification is not published in India or

elsewhere before the date of filing of the patent application in India.
2) Invention: the invention is not obvious to a person skilled in the art in the light of the
prior publication/ knowledge/ document but as a new product or process involving an
inventive step.
3) Industrial applicable: invention should possess utility, so that it can be made or used
in the industry.

It protects inventions that are novel and non-obvious with respect to the prior art and
useful. The invention must be disclosed to the appropriate patent controller in a prescribed
format, which must include its specifications.

❖ Inventions that are Patentable

As stated above, a patent is granted for an invention which may be related to any process or
product. An invention is different from a discovery. Discovery is something that already
existed but had not been found. Not all inventions are patentable. An invention must fulfil
certain requirements known as conditions of patentability.

The patent must be in respect of an invention and not a discovery. The fundamental principle
of Patent Law is that a patent is granted only for an invention which must be new and useful.

That is to say, it must have novelty and utility. It is essential for the validity of a patent that
it must be the inventor’s own discovery as opposed to mere verification of what was already
known before the date of the patent.

It is important to bear in mind that in order to be patentable an improvement on something

known, should be something more than a mere workshop improvement. To be patentable the
improvement or the combination must produce a new result, or a new article or a better or
cheaper article than before.

In Raj Prakash v. Mangat Ram Choudhary, it was held that invention, as is well known, is to
find out some thing or discover something not found or discovered by anyone before. It is
not necessary that the invention should be anything complicated. The essential thing is that
the inventor was first to adopt it.
❖ The Conditions of Patentability are:
1. Novelty
2. Inventive step (non-obviousness) and
3. Industrial applicability (utility)
❖ Novelty:

A novel invention is one, which has not been disclosed, in the prior art.

For an invention to be judged as novel, the disclosed information should not be available in
the 'prior art'. This means that there should not be any prior disclosure of any information
contained in the application for patent (anywhere in the public domain, either written or in
any other form, or in any language) before the date on which the application is first filed i.e.
the 'priority date'.

❖ Inventive Step (Non-obviousness):

Inventive step is a feature of an invention that involves technical advance as compared to

existing knowledge or having economic significance or both, making the invention non obvious
to a person skilled in art.

An invention shall not be considered as involving an inventive step, if, having regard to the
state of the art, it is obvious to a person skilled in the art.

For this purpose, a “person skilled in the art” should be presumed to be an ordinary
practitioner aware of what was general common knowledge in the relevant art at the relevant
date.

❖ Industrial Applicability:

An invention is capable of industrial application if it satisfies three conditions, cumulatively:

1. can be made;
2. can be used in at least one field of activity;
3. can be reproduced with the same characteristics as many times as necessary.

An invention to be patentable must be useful. If the subject matter is devoid of utility it

does not satisfy the requirement of invention.

❖ Inventions not Patentable

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may
not qualify for a patent. Section 3 and 4 of the Patent Act is highly debatable and deals
with the list of exclusions that are non-patentable that do not satisfy the above conditions.
They are as follows:
1. Inventions which are frivolous or contrary to well established natural laws.
2. Inventions which go against public morality: An invention which is contrary to public
order or morality or which causes serious prejudice to human, animal or plant life or
health or to the environment.
 3. Inventions that are a mere discovery of something that already exists in nature:
The mere discovery of a scientific principle or the formulation of an abstract theory
or discovery of any living thing or non-living substances occurring in nature.
4. Mere new use for a known substance: The mere discovery of a new form of a known
substance which does not result in the enhancement of the known efficacy, i.e., salts,
esters, polymorphs, metabolites, pure form, particle size, isomers, mixtures of
isomers, complexes, combinations, etc.
5. A substance obtained by a mere admixing of known substance.
6. Mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
7. Omitted by Patents (Amendment) Act, 2002.
8. A method of agriculture or horticulture;
9. Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in
human and animals are non-patentable.
10. Essential biological processes for the production or propagation of animals and
plants are not an invention.
11. Simple mathematical or business or computer programs are not an invention.
12. Literacy and Artistic works are not patentable: Literary, dramatic, musical or artistic
work or any other aesthetic creation whatsoever including cinematographic works and
television productions;
13. Mental act, rule or method is not an invention.
14. Presentation of information is non-patentable.
15. Topography of integrated circuits.
16. Traditional Knowledge is not an invention: An invention which in effect, is traditional
knowledge or which is an aggregation or duplication of known properties of
traditionally known component or components.
17. Atomic-Energy inventions are non -patentable: Section 4 prohibits the grant of
patent in respect of an invention relating to atomic energy falling within Sub-section
(1) of Section 20 of the Atomic Energy Act, 1962.

Question 17: Procedure for obtaining Patent

The procedure for filing a patent application can be analysed under the following sub-
headings:

❖ Types of Patent Applications

There are 5 kinds of Patent Application, it is classified according to its scope and purpose:

1. Ordinary Application, i.e., an application which has been filed directly in the Indian
Patent Office.
2. Convention Application.
3. PCT Application.
4. Divisional Application, which can result from division of a Patent Application.
 5. Patent of Addition, which may be filed subsequent to the Filing of an Application for
Patent, for an improvement or modification.

❖ Where to Apply:

The four patent offices are located at Kolkata, Mumbai, Delhi & Chennai. As per Rule 4 of
the Patents Rules, 2003, application for the patent has to be filed in the respective patent
office as mentioned, the territorial jurisdiction is decided based on whether any of the
following occurrences falls within the territory:

1. Place of residence, domicile or business of the applicant (first mentioned applicant

in the case of joint applicants);
2. Place from where the invention actually originated.
3. Address for service in India given by the applicant, when he has no place of business
or domicile in India (Foreign applicants).

❖ Persons Entitled to Apply for Patents:

According to Section 6 of the Patent Act and subject to the provisions contained in Section
134, an application for a patent for an invention may be made by any of the following persons:

1. By any person claiming to be the true and first inventor of the invention.
2. By any person being the assignee of the person claiming to be the true and first
inventor.
3. By the legal representative, if the true and first inventor is deceased.

❖ Form of Application:

Section 7 of this Act deals with the forms of application and lay downs certain conditions,
they are as follows:

1. Every Application for a patent shall be for one invention only and shall be made in
the prescribed form i.e., Form No. 1 and filed in the Patent Office.
2. Every International Application under the Patent Cooperation Treaty for a patent, as
may be filed designating India shall be deemed to be an application under this Act, if
a corresponding application has also been filed before the Controller in India.
3. Where the Application is made by virtue of an assignment, there shall be furnished
with the application proof of the right to make the Application.
4. Every Application under this Section shall state that the applicant is in possession
of the invention and shall name the person claiming to be the true and first
inventor;
5. Every such Application shall be accompanied by a provisional or a complete
specification (not being a Convention Application or an application filed under the
Patent Cooperation Treaty designating India).

Finally, the authority examines whether such invention is patentable, and if the authority is
satisfied and accepts the application, then the applicant will be granted patent.
 Question 18: Specification
In order to obtain a patent, an applicant must fully and particularly describe the
invention, in a complete specification. The disclosure of the invention in a complete
specification must be such that a person skilled in the art may be able to produce the
invention. This is possible only when an applicant discloses the invention fully and particularly
including the best method of performing the invention.

The Specification is a techno-legal document containing full scientific details of the

invention and claims to the patent rights. It, thus, forms a crucial part of the Patent
Application. It is mandatory on the part of an applicant to disclose fully and particularly
various features constituting the invention. The Specification may be filed either as a
provisional or as a complete specification.

The Specification (provisional or complete) is to be submitted in Form-2 along with the

Application in Form-1 and other documents, in duplicate, along with the prescribed fee as
given in the First Schedule. The first page of the Form 2 shall contain:

1. Title of the invention;

2. Name, address and nationality of each of the applicants for the Patent; and
3. Preamble to the description.

The title of the invention shall sufficiently indicate the specific features of the invention.
Every Specification whether provisional or complete shall describe the invention. The
Controller may also require the applicant to submit drawings, if necessary, at the examination
stage.

❖ Provisional Specification

When the applicant finds that his invention has reached a stage wherein it can be
disclosed on paper, but has not attained the final stage, he may prepare a disclosure of
the invention in the form of a written description and submit it to Patent Office as a
provisional specification which describes the invention.

A provisional specification secures a priority date for the application over any other
application which is likely to be filed in respect of the same invention being developed
concurrently.

Immediately on receiving the Provisional Specification the Patent Office accords a filing
date and application number to the Application.

Section 9 stipulates that an application for a patent accompanying a provisional

specification, a complete specification shall be filed within twelve months from the date of
filing of the application, and if the complete specification is not so filed, the application
shall be deemed to be abandoned.
 ❖ Complete Specification:

As the complete specification is an extremely important document in the patent proceedings

it is advised that it should be drafted with utmost care, without any ambiguity. Important
Elements of the Complete Specification:

As per Section 10, every complete specification is required to:

1. fully and particularly describe the invention and its operation or use and the
method by which it is to be performed;
2. the best method of performing the invention which is known to the applicant and for
which he is entitled to claim protection; and
3. with a claim or claims defining the scope of the invention for which protection is
claimed; and
4. be accompanied by an abstract to provide technical information on the invention.

Also, the Controller may require the applicant to submit, any time before the grant, models
or samples related to the invention for better illustration of the invention.

Normally, it should contain the following matter:

1. Title of invention;
2. Preamble;
3. Field of invention;
4. Background of invention with regard to the drawback associated with the invention;
5. Object and Statement of invention;
6. A summary of invention;
7. A brief description of the accompanying drawing;
8. Claim(s);
9. Abstract.

Further, According to Section 10, in case of an international application designating India

the title, description, drawings, abstracts and claims filed with the application shall be taken
as the complete specification for the purposes of the Act. The claim or claims of a complete
specification shall relate to a single invention, or to a group of inventions linked so as to form
a single inventive concept, shall be clear, brief and be fairly based on the matter disclosed in
the specification.

Question 19: Government use of Patent

A patent granted under the provisions of the Patents Act, 1970 (the Act), confers an
exclusive right of the patentee to exploit their invention and to produce, sell or import the
patented product or process for the duration of the patent. However, this is not an absolute
right, and certain limitations have been stipulated in Section 47 of the Patent Act.

In this article, we will primarily be looking at Section 47. It provides that the patent grant is
subject to certain conditions.
Specifically, Sections 47 (1), (2), and (4) deal with governmental use, and Section 47 (3) deals
with experimentation/research of the granted patents.

❖ Section 47 and Governmental use

Section 47 provides a statutory exemption from patent infringement liability to the

government. Particularly, Section 47 (1) and (2) states that the government may import,
make, or have made on its behalf any patented product or product made by a patented
process “merely for its own use.” Further, Section 47 (4) allows the government to make,
use, vend, or even import any medicine or drug, medical equipment, or other equipment for
use or distribution in public health centres owned by the government or notified by the
government for that purpose. This Section’s scope is narrow compared to other sections of
the Act dealing with the governmental use of a patented invention, like Sections 100 and 101.

Garware Wall Ropes Ltd. v. AI. Chopra and Konkan Railway Corp. Ltd.

In this case, the Bombay High Court highlighted the differences between Sections 47 and
100. In this case, the plaintiff (appellant), Garware Wall Ropes Ltd. (patentee), filed an
injunction against the defendant to end the manufacturing and selling of their patented
products. The defendant was A. I Chopra, who was making these products and selling them to
Konkan Railways under a contract. The defendant contended that since they were
manufacturing and selling the patented products only for the Konkan Railways, a Central
Government department, and that their contract had been signed on behalf of the President
of India, it would fall within the scope of Government use.

The Bombay HC stated that a government agency (third party) could use
the patented invention on behalf of the government on the payment of royalty/remuneration
to the patentee based on a contract or a license between the patentee and the third party
under Section 100. However, under Section 47, the use of the patented invention by the
government is restricted merely to its own use only. Therefore, a third party is not allowed
to use the patented invention under this section. Further, no royalty fee or other
remuneration had to be paid to the patentee by the government when it uses the patented
invention for a sovereign purpose. The Bombay HC opined that the government exemption
under Section 47 would only apply to departments of the government and government
servants and agents only.

Chemtura Corporation v. Union of India

The Delhi High Court provided a different interpretation in this case relating to Section 47.
The defendants, in this case, were the government of India and a consortium of third parties
who supplied products based on drawings provided to them by the Railway Ministry based on a
contract. The plaintiff contended that Section 47 would not apply to the consortium and
would be liable for infringement as it was not a government agency. The Delhi HC rejected
this contention and stated the consortium (third party) strictly followed the instructions and
drawings provided by the Ministry and had no autonomy concerning the product. Therefore, it
opined that the consortium would fall within the scope of the government exemption. These
views can be observed in the two landmark cases concerning the government exemption in
Section 47.

❖ Section 47 and Experimentation/Research

Section 47 (3) deals with another instance where a patented invention may be used without
attracting liability – for research/experimentation and imparting instructions to pupils for
educational purposes. Article 47 (3) reads, “any machine, apparatus or another article in
respect of which the patent is granted or any article made by the use of the process in
respect of which the patent is granted, may be made or used, and any process in respect of
which the patent is granted may be used, by any person, for the purpose merely of
experiment or research including the imparting of instructions to pupils.”

By reading Section 47 (3), it can be understood that it has a broad scope that has not yet
been tested in a court of law. The landmark cases discussed in this article mainly deal only
with the government’s exemption from patent infringement. It will be interesting to keep
track of how the law relating to it develops.

Question 20: Patent Infringement and its Remedies

A person can use a patented product by seeking permission from the owner. This permission
may generally be granted in the form of a license. Patent infringement is the act of utilizing a
patented invention without permission from the patent holder.

A Suit for Infringement of Patent has to be filed before the District Court or the High
Court, depending on the pecuniary jurisdiction, within whose territorial jurisdiction the cause
of action has arisen.

The right to move the court of law to enforce a patent is vested with any person who holds a
valid claim on the subject matter of the patent.

➢ Civil Remedies against infringement of a patented invention are as follows:

A. Interlocutory Injunction

A patent owner at the start of a trial can request for an interim injunction to restrain the
defendant from committing the acts complained of until the hearing of the action or further
orders. Permanent injunction is given based on the merits of the case at the end of the trial.

B. Relief of damages:
An award of damages focuses on the losses sustained by the claimant. A patent owner is
entitled to the relief of damages as compensation.

C. Account of profits:
Account of profits focuses on the profits made by the defendant, without reference to the
damage suffered by the claimant at the hands of the defendant. The purpose of the account
is to prevent the unjust enrichment of the defendant by the use of the claimant’s invention.
The patent owner may also select for the account of profits where he has to prove use of
invention and the amount of profit derived from such illegal use.

➢ Penalties against infringement of a patented invention under Patent Act of

1970 are as follows:

A. Contravention of secrecy provisions relating to certain inventions (Sec.118):

If any person fails to comply with any directions given under section 35 or makes or causes
to be made an application in contravention of section 39, he shall be punishable with
imprisonment up to 2 years or with fine or with both. (Section 35 deals with secrecy
directions relating to inventions relevant for defence purposes and Section 39 deals with
residents not to apply for patents outside India without prior permission).

B. Falsification of entries in register, etc (Sec.119):

If any person makes, or causes to be made, a false entry in any register kept under this
Act, he shall be punishable with imprisonment for a term that may extend to 2 years or with
fine or with both.

C. Unauthorized claim of patent rights (Sec.120):

If any person falsely represents that any article sold by him is patented in India, he will
be punishable with fine that may extend to Rs.1,00,000. The use of words 'patent',
Patented', 'Patent applied for', 'Patent pending', 'Patent registered' without mentioning the
name of the country means they are patented in India or patent applied for in India.

D. Wrongful use of words, "patent office" (Sec.121):

If any person uses on his place of business or any document issued by him or otherwise the
words “patent office” or any other words which reasonably lead to the belief that his place
of business is, or is officially connected with, the patent office, he will be punishable with
imprisonment for a term that may extend to 6 months, or with fine, or with both.

E. Refusal or failure to supply information (Sec.122):

If any person refuses or fails to furnish information as required under section 100(5) and
146, he shall be punishable with fine, which may go up to Rs 10,00,000/-. If he furnishes
false information knowingly, he shall be punishable with imprisonment that may extend to 6
months or with fine or with both.

F. Practice by non-registered patent agents (Sec.123):

Any person practicing as patent agent without registering is liable to be punished with a
fine of Rs 1,00,000/- in the first offence and Rs.5,00,000/- for subsequent offence.

G. Deals with offences by companies (Sec.124):

When offence is committed by a company as well as every person in charge of and responsible
to the company for the conducts of its business at the time of the commission of the offence
will be deemed to be guilty and will be liable to be preceded against and punished accordingly.
 Question 21: International Conventions relating to Patent
The international rights of inventors, creators, and property owners are very difficult to
unify, but as cultures and businesses become more globally aware, it is extremely vital that
laws governing intellectual property not only address concerns with a genuine understanding
of the international nature of the subject matter but with sensitivity to the magnified role
intellectual property plays in the betterment of our global society. These concerns must
specifically be addressed with respect to intellectual property rights in living matter with a
keen awareness of the special issues that can arise.

The World Intellectual Property Organization keeps the international community aware of
the important role efficient systems of intellectual property law play in the progression of
the quality of life for individuals around the world. Two of its governing ideals are articulated
in the Paris Convention for the Protection of Industrial Property (which allows for a more
unified way to recognize intellectual property issues) and the Patent Cooperation Treaty
(which streamlines the process necessary in applying for patents).

❖ World Intellectual Property Organization

The World Intellectual Property Organization (WIPO) is dedicated to ensuring that “the
rights of creators and owners of intellectual property are protected worldwide and that
inventors and authors are, thus, recognized and rewarded for their ingenuity.” WIPO is
intended to act as a “spur to human creativity, pushing forward the boundaries of science and
technology and enriching the world of literature and the arts.” The stable environment for
marketing of intellectual property provided by WIPO “oils the wheels of international trade.”

As of September 2004, the member states of WIPO include 180 countries, accounting for
over ninety percent of the world’s countries. “WIPO carries out many tasks related to the
protection of intellectual property rights, such as administering international treaties,
assisting governments, organizations and the private sector, monitoring developments in the
field and harmonizing and simplifying relevant rules and practices.”

In looking to the future, “WIPO faces many new challenges; one of the most urgent is the
need for both the Organization and its member States to adapt to and benefit from the
rapid and wide-ranging technological change, particularly in the field of information
technology and the Internet.” The main goals of WIPO in the near future can be summarized
as follows:

✓ ensure the presence of the fundamental elements needed to enlarge the knowledge
base, encourage innovation and its exploitation and create a business-friendly, IP-
aware environment;
✓ mesh intellectual property and development policies to provide a cohesive, coherent
infrastructure, environment and culture to stimulate the use of invention and
creativity for economic growth; and
 ✓ fine-tune IP assisted development strategies and policies to build confidence and to
keep abreast of rapid changed in business, cultural and technological environment,
both nationally and internationally.

The goals WIPO has set for itself depend on the continued success of past treaties, such as
the Paris Convention and Patent Cooperation Treaty (PCT), and must be interpreted to allow
consistent results concerning intellectual property rights in living matter.

❖ The Paris Convention for the Protection of Industrial Property

WIPO has its roots in 1883 when “the need for international protection of intellectual
property became evident when foreign exhibitors refused to attend the International
Exhibition of Inventions in Vienna in 1873 because they were afraid their ideas would be
stolen and exploited commercially in other countries.” The Paris Convention for the
Protection of Industrial Property (The Paris Convention) of 1883 marked the birth of “the
first major international treaty designed to help the people of one country obtain protection
in other countries for their intellectual creations in the form of industrial property rights.”

The Paris Convention “constitute[s] a Union for the protection of industrial property.” Under
the Paris Convention “any person or entity that files a patent application in one of the
countries of the Union shall enjoy all of the benefits of priority if the same patent
application is filed within twelve months in another Union Country.” The ideals of uniformity
and progressive international legislation set forth in the Paris Convention laid the ground
work for future treaties relating to international patent law, such as the Patent Cooperation
Treaty.

❖ Patent Cooperation Treaty

WIPO recognizes the “need for mechanisms providing speedy protection for new inventions
and commercially valuable assets, such as trademarks and industrial designs in multiple
countries.” In response WIPO administers treaties that “simplify and reduce the cost of
making individual applications or filings in all the countries in which protection for a given
intellectual property right is sought.”

The PCTT is “the most successful and widely used of these treaties.” The application of the
PCT serves as a “mechanism for streamlining the international patent application process—
instead of filing the same patent application in twenty different countries for a search and
examination, an applicant may file a single PCT international application, obtain a search
report and, if desired, an examination report prior to filing the applications in each of the
countries.”17 By filing a PCT application, the patent applicant from a contracting state can
file the application “as an international application in any contracting state.”

❖ TRIPS provision on Patent and its Impact

Part II, Section 5 (Article 27 to Article 34) of the TRIPS Agreement contains the provisions
for standards in respect of Patents.

➢ Patentable Subject Matter:

The TRIPS Agreement requires Member countries to make patents available for any
inventions, whether products or processes, in all fields of technology without
discrimination, subject to the normal tests of novelty, inventiveness and industrial
applicability.

➢ Rights Conferred:
Process patent protection must give rights not only over use of the process but also over
products obtained directly by the process. Patent owners shall also have the right to
assign the patent or transfer it by succession, and to conclude licensing contracts.

➢ Exceptions:
There are three permissible exceptions to the basic rule on patentability.
1) For inventions contrary to public policy or morality; this explicitly includes inventions
dangerous to human, animal or plant life or health or seriously prejudicial to the
environment.
2) Members may exclude patentability diagnostic, therapeutic and surgical methods
for the treatment of humans or animals.
3) Members may exclude plants, animals and other than micro-organisms and
essentially biological processes for the production of plants or animals other than
non-biological processes.

➢ Term of protection:
The term of protection available shall not end before the expiration of a period of 20 years
counted from the filing date.

➢ Conditions on Patent Applicants:

Members shall require that an applicant to obtain patent for his invention, shall file an
application before the appropriate patent controller in a prescribed form and format,
including its specifications, its process of manufacture.

➢ Process Patents:
The burden of proof lies upon the patentee, when such action is against process of
manufacture but the burden of proof lies upon the plaintiff, when such action is against
manufactured product.

➢ Other Use Without Authorization of the Right Holder:

Compulsory licensing and government use without the authorization of the right holder are
allowed, but are made subject to conditions aimed at protecting the legitimate interests of
the right holder.

Compulsory licence in relation to patents in respect of food and medicines, insecticide,

germicide or fungicide and a process for producing substance or any invention relating to
surgical or curative devices.

The law relating to patents contained in the Patents Act, 1970 has been amended in the
year 1995, 1999, 2002 and 2005 to meet India’s obligations under the agreement on
Trade Related Aspects of Intellectual Property Rights (TRIPs) forming part of the
Agreement establishing the World Trade Organisation (WTO).

Question 22: Patent of life forms and plant varieties

Since the discovery of the double-helix structure of DNA in 1953, there have been rapid
advancements in genetic engineering and other life sciences. This has coincided with an
increase in research commercialization, with thousands of patents being given for the rights
related to DNA sequences. The latest point of contention however is, the patenting of life
forms and genetically modified organisms.

The patenting of living organisms is unique for a number of different reasons: First of all, the
invention itself is alive. That is, in some instances the invention in itself can reproduce.
Moreover, it is not always the case that the invention can be adequately described for patent
specification purposes. This has led to cases where parties have had to deposit the invention
for patent purposes.

❖ Why should life forms be patented?

While genetically modified organisms are living organisms, they do not necessarily occur
naturally in nature. This fact was recognised in the famous American case of Diamond v.
Chakrabarty,(1980) the U.S. Supreme Court declared that a genetically modified bacterium
capable of digesting multiple components of crude oil is patentable with the reason being
that—the claimed bacterium was not found in nature nor was its activity exhibited in any
naturally occurring bacteria. The court also stated that the claimed bacterium satisfied the
primary essentials for patentability, as it was a product of human ingenuity and intellect
having its own distinctive name, character and specific use. The Chakrabarty verdict greatly
increased patent activity in the field of genetic engineering. A number of patent applications
were suspended pending resolution of the case, those and new applications have since been
processed. At present according to the National Centre for Biotechnology
Information (NCBI), there are roughly 500 applications related to genetic engineering
pending and awaiting approval. Many more are awaited in the immediate future. As a result,
patent activity in genetic engineering is increasing at roughly twice the pace of other similar
technologies.

It must also be remembered that genetic modification is an expensive process and is also
quite time-consuming, to say the least. As a result, if the creators behind genetically
modified products are not allowed to reap the benefit of their creations, they will have little
initiative and financial support to continue their research and thus the field will stagnate.

❖ Patenting of life forms: legal and ethical aspects

A section of the scientific world argues that the risk involved in commercially applying
scientific techniques can cause serious and irreparable damage to the environment. Some
others view that patenting in such areas should not be allowed for the reasons of biodiversity
preservation and rights of indigenous people. Some critics of cloning technology and organ
reconstruction technology foresee the danger to nature as compared to its advantages. That
is GM crops could cause naturally existing varieties to go extinct.

Furthermore, there is the question of whether patenting of genetically modified organisms is

ethical. This issue first came to the forefront in the case of Myriad genetics and the patent
it received over the breast cancer gene(BRCA). The company demanded a hefty 4000 dollars
for testing, while the actual cost was only a fraction of this. Feeling this was unjust, the
American Civil Liberties Union (ACLU) and a group of others sued Myriad genetics on the
basis that their patents were on non-patentable material. The eventual ruling in the supreme
court ruled in favour of the plaintiffs.

This however raised the crucial question of whether the individuals that discovered the gene
mutation should receive any form of reward for their hard work. That is without being
allowed to patent their products many companies would not even be motivated to do research
in the first place. A counterpoint which was raised was whether it was right to restrict
people from having access to lifesaving services, due to restrictive patents. Thus, arises the
central question, what can be patented? The answer to this is that while things found
naturally in nature cannot be patented, genetically modified organisms do qualify for patents.
A perfect example of this is the genetically modified golden rice, which is quite popular in
developing countries.

Another example would be Monsanto and the genetically modified corn they sell. While
farmers can buy from Monsanto and use them, they cannot save or share the seeds.

❖ What is a genetically modified organism?

A GMO, or genetically modified organism, is essentially a plant, animal, microorganism or some

other organism whose genetic makeup has been altered through means like genetic
engineering or transgenic technology. This formulates various combinations of plants, animals,
bacteria and virus genes that cannot be found naturally in nature or through the commonly
used conventional cross-breeding methods.

For thousands of years, humans have used a variety of different breeding methods to modify
organisms to better suit their requirements. That is a variety of plants and animals like Corn,
cattle, and even dogs and cats have been bred selectively over generations to have the
specific traits that we humans deem as desirable. Off late modern breakthroughs in
biotechnology have given scientists the requisite tools needed to directly modify the DNA of
microorganisms, crops, and animals. The conventional methods of modifying plants and animals
like selective breeding and crossbreeding take a significant amount of time. Moreover, these
methods do not always provide the desired results, with there often being instances of
unwanted or unpredicted traits cropping up alongside the desired characteristics. Meanwhile,
the modification of DNA using biotechnology has provided an alternative solution to this
problem. That is, scientists have devised a way to avoid this problem and continue improving
the genetic makeup of the test organism without having to deal with finding ways to balance
out the occurrence of unwanted characteristics or hindering features.
❖ What all is included in the GMO patent?

One might initially assume that GMO patents are sought out primarily to protect GMO plants.
While this view is partially accurate, there are other factors at play too. Basically, as long as
the specific inventor discovers or invents a new plant in a cultivated state and is then able to
progress to successfully reproducing it asexually, parties will be able to obtain a patent on
the organism. Keeping this logic in mind, the US Congress passed the Plant Patent Act in
1930. This was primarily in response to the discovery of plant breeding and other new
agricultural methods. Basically, via the new law, everything revolving around the making of
new plant strains derived from crossbreeding was declared to be patentable. This was
followed by the act later incorporating plants produced from modern biotechnological
methods, such as integration of foreign DNA into plant genomes into the fold.

While examining all this, what is really intriguing though is that GMO companies in most cases
do not really seek patents for their plants or its seeds. Instead, their primary goal is to
obtain what we call utility patents, a totally different type of patent protection with much
stricter controls with regard to the description of the invention. Utility patents are said to
have numerous advantages and benefits when compared to plant patents. First of all, the
scope of utility patents is not simply limited to plants and may cover many inventions beyond
them. That is, if the creation of a GMO involves the integration of novel, foreign DNA into
the specific plant genome, the uniquely designed DNA can also be offered protection by law
through the provisions for utility patents. Also, it must be noted utility patents oftentimes
provide much better protection for the patent hold against various forms of infringement.
This was reflected most notably in the landmark judgment of Bowman v. Monsanto.

❖ Why did Monsanto sue the farmers for infringement?

Monsanto Canada Inc v Schmeiser (2004) is a leading Supreme Court of Canada case
pertaining to patent rights in the realm of biotechnology. The parties of this case were Percy
Schmeiser, a Canadian canola farmer, and the agricultural biotechnology giant Monsanto.

While many believe that Monsanto sued farmers for selling its proprietary crops, when they
had simply harvested their crops on the Roundup-contaminated land, this was not necessarily
what had happened. According to Supreme Court records, one Percy Schmeiser, the main
person of interest in David V Monsanto, had gone to great lengths to wrongfully procure the
Roundup Ready canola plants that originated from his neighbour’s land. Then, by treating his
crops with the Roundup that he had obtained, he was able to make sure for all purposes that
only the resistant strains persisted. In the following seasons, he continued to replant the
seeds without having the requisite licensing agreement issued by Monsanto, for farmers who
bought and used their seeds. The unusually high prevalence (95-98%) of tolerant plants in
Schmeiser’s fields was considered to be proof of blatant infringement in the eyes of the
court, and hence Monsanto was able to claim a rightful remedy for its loss of profit, using
this fact.

A similar case to this in the Indian context is that of Monsanto Technology LLC v. Nuziveedu
Seeds Ltd. Here The Supreme Court of India, held that genetically modified cotton seeds
were patentable, and accordingly declared that the U.S. company, Monsanto, was within their
rights to file the aforementioned patent claims. This bench that comprised Justice Rohinton
Fali Nariman and Justice Navin Sinha effectively quashed the earlier order of the Division
Bench of the Delhi High Court, which had prior to the judgment held such claims did not apply
in the India context.

❖ Important provisions of the Plant Variety Protection Act

The Plant Variety Protection Act of 1970 (PVPA), is an intellectual property statute in
the United States. The PVPA essentially gives all registered plant breeders up to 25 years of
exclusive control over novel, distinct, sexually reproduced or tuber propagated plant species
created or propagated via genetic engineering.

Essentially, the PVPA provides protection similar to that available through patents, however,
these legal schemes differ quite a bit in some critical aspects.While plant patents are limited
exclusively to asexually reproduced plants, the scope of the PVPA is much wider.

Notably, the PVPA provides a limited period of legal monopoly to breeders of sexually
reproduced or tuber propagated plant varieties. Moreover, In order to be eligible for a
certificate under the PVPA, a plant variety must satisfy four requirements:

✓ First and foremost, it must be new, that is, the propagated or harvested material
must not have been sold or otherwise disposed of for purposes of exploitation for
more than one year in the United States, or more than four years in any other nation
(or six years in the case of a tree or vine).

✓ Second, the plant variety must well and truly be distinct, basically, it must be clearly
distinguishable from any other publicly known variety. Distinctness may be based on
one or more identifiable morphological, physiological, or other characteristics,
including commercially valuable characteristics affecting activities such as milling and
baking (in the case of wheat)

✓ Third, the variety must be uniform, with any variations arising being negligible in
nature. Lastly, the variety must be stable, in the sense that, when it is reproduced, it
will remain unchanged with regard to its essential and distinctive characteristics
within a reasonable sphere of commercial applicability.

The Indian counterpart of this is the Protection of Plant Variety and Farmers Right Act,
2001 (PPVFR Act). The PPV&FR Act, 2001 was enacted with the goal of providing intellectual
property rights to plant breeders, researchers and farmers who developed any new or unique
plant variety.

❖ GMO Patent Laws in India

In the case of India, prior to the 2002 amendment to the 1970 patent law, there was no real
form of patent protection for inventions relating to life forms and genetically modified
organisms. This changed after the Dimminaco A.G v. Controller of patent and design ruling. It
was held by the Calcutta High Court held that a process for the preparation of vaccines
containing the live virus is patentable since the term manufacture includes and is not limited
to living organisms. It was held by the court that even if the end product contains a live virus,
the process that was involved in bringing the final product to the fore can for all purposes be
considered and classified an invention. The Monsanto Technology LLC v. Nuziveedu Seeds Ltd
judgment further added to the case for GM and living organism patents. In this case, the
honourable Supreme Court held that genetically modified cotton seeds were patentable, and
allowed the U.S. company, Monsanto, to file their patent claims.

❖ Conclusion

Genetic engineering and life sciences could possibly play a huge role in our continued
advancement as a civilization. However, there are certain ethical and legal issues that have to
be addressed and there will be a constant need to maintain a balance. That is we must find a
way to both give adequate rewards and incentive to the creators of unique GM organisms and
also ensure that this does not make the product inaccessible to the common man. In the case
of India, there is still much work to be done in the area of GM related patents. That is, a
systematic framework needs to be established to ensure that there are no loopholes in the
law. While this has been achieved to some extent by India’s recently improved compliance
with TRIPS norms, there is still a long way to go.