Intellectual Property Rights - Law and Practice

303 Pages·2015·2.07 MB·English

STUDY MATERIAL

PROFESSIONAL PROGRAMME
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MODULE 3

ELECTIVE PAPER 9.4

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PROFESSIONAL PROGRAMME
INTELLECTUAL PROPERTY RIGHTS - LAW AND PRACTICE
Intellectual property has increasingly assumed a vital role with the rapid pace of technological,
scientific and medical innovation that we are witnessing today. Moreover, changes in the global
economic environment have influenced the development of business models where intellectual
property is a central element establishing value and potential growth. In India several new legislations
for the protection of intellectual property rights (IPRs) have been passed to meet the international
obligations under the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS).
Intellectual property has therefore grown into one of the world’s biggest and fastest-growing fields
of law thereby necessitating the demand for IP professionals well versed in this area to deal with
(IPRs) across the national and international borders.
The study material has been prepared to provide the students with a wide perspective and in-
depth knowledge in intellectual property to enable them to get solid grounding in the legislative
framework, practice and procedure of the intellectual property protected through patents, trademarks,
copyrights, designs and geographical indications. The course contents of this study material have
been so designed as to develop specialised skills in the corpus and complexities of the different
aspects of the subject besides meeting the requirements of a future career in this area.
The domain of intellectual property is vast. Only those IPR legislations have been included which
are of direct relevance to the profession of Company Secretaries. Every effort has been made to
provide a self- contained material and an integrated approach has been adopted throughout.
While writing the study material, relevant provisions of the various Acts and Rules made
thereunder have been kept in mind. This paper warrants continuous updation in terms of substantive
and procedural laws as well as latest judicial pronouncements. Students are advised to keep
themselves abreast of latest developments by regularly resorting to reading of at least one of the
leading English Newspapers and additional source materials concerning corporate world which are
published from time to time. Students are also advised to refer the e-bulletin, `Student Company
Secretary’/`ICSI Journal’ `Chartered Secretary’ wherein all important judicial and legislative
developments are reported regularly.
Although care has been taken in publishing this study material yet the possibility of errors,
omissions and/or discrepancies cannot be ruled out. This publication is released with an
understanding that the Institute shall not be responsible for any errors, omissions and/or discrepancies
or any action taken in that behalf. In the event of any doubt, students may write to the Directorate of
Academics in the Institute for clarification at [email protected].
Should there be any discrepancy, error or omission in the study material, the Institute shall be
obliged if the same is brought to its notice for issue of corrigendum in the e-bulletin, Student Company
secretary.
This is to inculcate and develop skills of creative thinking, problem solving and decision making
amongst students of its Professional Programme and to assess their analytical ability, real
understanding of facts and concepts and mastery to apply, rather than to simply recall replicate and
reproduce concepts and principles in the examination.
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PROFESSIONAL PROGRAMME
SYLLABUS
FOR
ELECTIVE - PAPER 4: INTELLECTUAL PROPERTY RIGHTS
LAWS AND PRACTICE (100 MARKS)
Level of Knowledge: Expert Knowledge
Objective:
To acquire specialized knowledge of law and practice relating to Insurance.
Detailed Contents:
1. Introduction
• Meaning, Relevance, Business Impact, Protection of Intellectual Property
• Copyrights, Trademarks, Patents, Designs, Utility Models, Trade Secrets and Geographical
Indications
• Bio-diversity and IPR
• Competing Rationales for Protection of Intellectual Property Rights
• Introduction to the leading International Instruments concerning Intellectual Property Rights: the Berne
Convention, Universal Copyright Convention, The Paris Convention, Patent Co-operation Treaty,
TRIPS, The World Intellectual Property Organization (WIPO) and the UNESCO
2. Patents
• Concept of Patent
• Product / Process Patents & Terminology
• Duration of Patents- Law and Policy Consideration Elements of Patentability,- Novelty and Non
Obviousness (Inventive Steps and Industrial Application, Non- Patentable Subject Matter
• Procedure for Filing of Patent Application and types of Applications
• Procedure for Opposition,
• Revocation of Patents
• Ownership and Maintenance of Patents
• Assignment and licensing of Patents
• Working of Patents- Compulsory Licensing
• Patent Agent- Qualification and Registration Procedure
3. Patent Databases & Patent Information System
• Patent Offices in India
• Importance of Patent Information in Business Development
• Patent search through Internet, Patent Databases
(v)
4. Preparation of Patent Documents
• Lab Notebooks/Log Books/Record Books
• Methods of Invention Disclosures
• Patent Application and its Contents
• Writing of the Patent Document
5. Process for Examination of Patent Application
• Publication of Patent Applications
• Request for Examination
• Process for Examination & Prosecution
• Reissue & Reexamination
6. Patent Infringement
• Literal Infringement
• Doctrine of Equivalence and Doctrine of Colorable Variation
• Contributory Infringement
• Defenses to Infringement including Experimental Use, Inequitable Conduct, Patent Misuse
• Legal Aspects (Act, Rules, Procedures)
7. Recent Developments in Patent System
• Software and Business Method Patenting in India & other Jurisdiction
• Patentable Inventions with Special Reference to Biotechnology Products entailing Creation of New
Forms of Life
8. Trademarks
• The rationale of protection of trademark as (a) an aspect of commercial and (b) of consumer rights
• Definition and concept of Trademarks
• Different kinds of marks (brand names, logos, signatures, symbols, well known marks, certification
marks and service marks)
• Non Registrable Trademarks
• Procedure for Registration of Trademarks
• Opposition Procedure
• Assignment/Transmission / Licensing of Trademarks
• Infringement of Trademarks
• Passing off Action
• Offences and Penalties
• International Conventions- Madrid Protocol
• Domain Names
• WIPO Internet Domain Name Process
9. Copyrights
• Nature of Copyright
• Works in which Copyrights subsist
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• Author & Ownership of Copyright
• Rights Conferred by Copyright
• Assignment, Transmission, Licensing of Copyrights
• Infringement of Copyrights
• Remedies & Actions for Infringement of Copyrights
• Copyright Societies, Office, Board, Registration of Copyrights & Appeals
• International Conventions
• Copyright pertaining to Software/Internet and other Digital media
• Remedies, especially, possibility of Anton Pillar Injunctive Relief in India
10. Industrial Designs
• What is a Registrable Design
• What is not a Design
• Novelty & Originality
• Procedure for Registration of Designs
• Copyright under Design
• Assignment, Transmission, Licenses
• Procedure for Cancellation of Design
• Infringement
• Remedies
11. Geographical Indications
• Meaning and Nature
• Who are entitled for registration
• Conditions & Procedure for Registration
• Offences and Penalties
12. Protection of Trade Secrets

13. Key Business Concerns in Commercializing Intellectual Property Rights
• Competition and Confidentiality Issues, Antitrust Laws
• Assignment of Intellectual Property Rights
• Technology Transfer Agreements
• Intellectual Property Issues in the Sale of Business
• Care & Maintenance of Confidential Information
• Legal Auditing of Intellectual Property
• Due Diligence of Intellectual Property Rights in a Corporate Transaction
Management and Valuation of Intellectual Property
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LIST OF RECOMMENDED BOOKS AND REFERENCES
ELECTIVE
PAPER 9.4 : INTELLECTUAL PROPERTY RIGHTS LAW AND PRACTICE

List of Recommended Books and References:
1. Aswani Kumar Bansal : Law of Trademarks in India
2. B L Wadehra : Law Relating to Patents, Trademarks, Copyright,
Designs and Geographical Indications.
3. G.V.G Krishnamurthy : The Law of Trademarks, Copyright, Patents and
Design.
4. Satyawrat Ponkse : The Management of Intellectual Property.
5. S K Roy Chaudhary & H K Saharay :
The Law of Trademarks, Copyright, Patents and
Design.Legal Aspects of Technology Transfer: A
Conspectus
6. Office of the Controller General of : Manual of Geographical Indications Practice and
Patents, Designs & Trade (CGPDTM) Procedure
7. Office of the Controller General of : Manual of Patent Office Practice and Procedure
Patents, Designs & Trade (CGPDTM)
8. Office of the Controller General of : Manual of Designs Practice and Procedure
Patents, Designs & Trade (CGPDTM)
9. Office of the Controller General of : Revised Draft Manual of Trademarks Practice and
Patents, Designs & Trade (CGPDTM) Procedure
10. Office of the Controller General of : Trade Marks Agents
Patents, Designs & Trade (CGPDTM)
11. WIPO : WIPO Guide To Using Patent Information
12. WIPO : Intellectual Property (IP) Audit
13. WIPO : WIPO Patent Drafting Manual
14. WIPO : The Value of Intellectual Property, Intangible Assets
and Goodwill
15. Journal of Intellectual Property Rights 2007 and 2009
16. OECD Report on Patents and Economic Performance
17. IPR & Technology Bulletin (www.psa.co.za )
18. Protecting Your Intellectual Property From Competitors (www.progressmedia.ca)
19. Patentability of Software in India - (Lex Orbis)
20. http://www.unesco.org/new/en/unesco/
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ARRANGEMENT OF STUDY LESSONS

ELECTIVE PAPER 9.4: INTELLECTUAL PROPERTY RIGHTS − LAW AND PRACTICE (100 Marks)

Lesson No. Subject

1. Introduction
2. Patents
3. Patent Databases & Patent Information System
4. Preparation of Patent Documents
5. Patent Infringement
6. Recent Developments in Patent System
7. Trade Marks
8. Copyright
9. Industrial Designs
10. Geographical Indications
11. Protection of Trade Secrets
12. Key Business Concerns in Commercializing Intellectual Property Rights
13. Management and Valuation of Intellectual Property
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PROFESSIONAL PROGRAMME
INTELLECTUAL PROPERTY RIGHTS − LAW AND PRACTICE

CONTENTS

Lesson 1
INTRODUCTION
Page

Learning Objectives … 1
Introduction … 2
The Concept of Intellectual Property … 2
Intellectual Property System in India … 3
Development of TRIPS Complied Regime in India … 4
Patents Act, 1970 … 4
Trade Mark Act, 1999 … 4
The Designs Act, 2000 … 5
The Geographical Indications of Goods (Registration and Protection) Act, 1999 … 7
Copyright Act, 1957 … 7
The Protection of Plant Varieties and Farmers’ Rights Act, 2001 … 8
The Semi Conductor Integrated Circuits Layout Design Act, 2000 … 9
Trade Secrets … 10
Utility Models … 10
IPR & Biodiversity … 11
The Convention on Biological Diversity (CBD) 1992 … 11
Competing Rationales for Protection of IPRs … 12
Leading International Instruments Concerning IPR … 13
World Intellectual Property Organisation (WIPO) … 13
WIPO and WTO … 14
Paris Convention for the Protection of Industrial Property … 15
National Treatment … 15
Right of Priority … 15
Common Rules … 15
Patents … 15
Marks … 16
Industrial Designs … 17
Trade Names … 17
Indications of Source … 17
Unfair Competition … 17
Patent Cooperation Treaty (PCT) … 17
Advantages of PCT Filing … 18
Berne Convention for the Protection of Literary and Artistic Works … 18
Basic Principles … 19
Duration of Protection … 19
Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement … 20
(x)
Page
Issues Covered under TRIPS Agreement … 20
Features of the Agreement … 21
Protection of Intellectual Property under TRIPS … 21
Copyright and Related Rights … 21
Trademarks … 23
Geographical indications … 24
Industrial Designs … 25
Patents … 26
Patentable Subject Matter … 26
Rights Conferred … 26
Exceptions … 26
Term of protection … 26
Conditions on Patent Applicants … 26
Process Patents … 26
Other Use without Authorization of the Right Holder … 26
Layout-Designs of Integrated Circuits … 27
Protection of Undisclosed Information … 27
Enforcement of Intellectual Property Rights … 27
UNSECO … 28
LESSON ROUND UP ... 28
SELF TEST QUESTIONS ... 29

Lesson 2
PATENTS

Learning Objectives … 31
Concept of Patent … 32
Patents Act, 1970 … 33
Salient Features of the Act … 34
Product/Process Patents … 34
Duration of Patents … 35
Patentable Subject Matter … 36
Elements of Patentability … 36
Novelty … 36
Inventive Step (Non-Obviousness) … 37
Industrial Applicability … 37
Inventions not Patentable … 38
Application for Patent … 47
Form of Application … 48
Specification … 48
Provisional Specification … 49
Complete Specification … 50
Important Elements of the Complete Specification … 50
Types of Patent Applications … 51
Where to Apply? … 51