INTELLECTUAL
PROPERTY RIGHTS
LECTURE NOTES
Unit-I
Page 1
INTELLECTUAL PROPERTY RIGHTS
Introduction of intellectual property
Intellectual property refers to creation of the human intellect Some common types
of intellectual property rights (IPR), in some foreign countries intellectual property
rights is referred to as industrial property, copyright, patent and trademarks, trade
secrets all these cover music, literature and other artistic works, discoveries and
inventions and words, phrases, symbols and designs Intellectual Property Rights are
themselves a form of property called intangible property.
A1lt9hough many of the legal principles governing IP and IPR have 20evolved
overcenturies, it was not until the 8th century that the term intellectual
property began to be used and not until the late 9th century that it became
commonplace in the majority of the world.
Types of Intellectual Property
The term intellectual property is usually thought of as comprising four separate
legal fields:
1. Trademarks
2. Copyrights
3. Patents
4. Trade secrets
Trademarks and Service Marks:
A trademark or service mark is a word, name, symbol, or device used to indicate the
source, quality and ownership of a product or service A trademark is used in the
marketing is recognizable sign, design or expression which identifies products or
service of a particular source from those of others.
Page 2
The trademark owner can be an individual, business organization, or any legal
entity A trademark may be located on a package, a label, a voucher or on the product
itself For the sake of corporate identitytrademarks are also being
Federal Registration of trademarks:
Interstate use of trademarks is governed by federal law, namely, the United
States Trademark Act (also called the Lanham Act), found at 15 USC 1051et seq In the
United States, trademarks are generally protected from their date of first public use
Registration of a mark is not required to secure protection for a mark, although it
offers numerous advantages, such as allowing the registrant to bring an action in
federal court for infringement of the mark.
Applications for federal registration of trademarks are made with the PTO
Registration is a fairly lengthy process, generally taking anywhere from twelve to
twenty-four months or even longer The filing fee is $335 per mark (Present $225 per
class) per class of goods or services covered by the mark
A trademark registration is valid for 10 years and may be renewed for
additional ten year periods thereafter as long as the mark is in used in interstate
commerce To maintain a mark the registrant is required to file an affidavit with the
PTO between the fifth and sixth year after registration and every ten years to verify
the mark is in continued use Marks not in use are then available to others.
A properly selected, registered and protected mark can be of great value to a
company or individual desiring to establish and expand market share and better way
to maintain a strong position in the market place.
1. Copyrights: Copyright is a form of protection provided by US law (17 USC 101 et
seq) to the authors of "original works of authorship" fixed in any tangible medium of
expression The manner and medium of fixation are virtually unlimited Creative
expression may be captured in words, numbers, notes, sounds, pictures, or any other
graphic or symbolic media The subject matter of copyright is extremely broad,
including literary, dramatic, musical, artistic, audiovisual, and architectural works
Copyright protection is available to both published and unpublished works
Page 3
Copyright protection is available for more than merely serious works of fiction
or art Marketing materials, advertising copy and cartoons are also protectable
Copyright is available for original working protectable by copyright, such as
titles, names, short phrases, or lists of ingredients Similarly, ideas methods and
processes are not protectable by copyright, although the expression of those ideas is
Copyright protection exists automatically from the time a work is created in
fixed form The owner of a copyright has the right to reproduce the work, prepare
derivative works based on the original work (such as a sequel to the original),
distribute copies of the work, and to perform and display the work Violations of such
rights are protectable by infringement actions Nevertheless, some uses of copyrighted
works are considered “fair use” and do not constitute infringement, such as use of an
insignificant portion of a work for noncommercial purposes or parody of a
copyrighted work
Definition:
General Definition of copyright “Copyright owner”, with respect to any one of the
exclusive rights comprised in a copyright, refers to the owner of that particular right
Federal Registration of Copyrights: The works are protected under federal
copyright law from the time of their creation in a fixed form Registration, however, is
inexpensive, requiring only a $30 (present$85) filing fee, and the process is
expeditious In most cases, the Copyright Office processes applications within four to
five months.
Copyrighted works are automatically protected from the moment of their
creation for a term generally enduring for the author’s life plus an additional seventy
years after the author’s death The policy underlying the long period of copyright
protection is that it may take several year for a painting, book, or opera to achieve its
true value, and thus, authors should receive a length of protection that will enable the
work to appreciate to its greatest extent.
Page 4
Patents: A patent for an invention is the grant of a property right to the inventor,
issued by the United States Patent and Trademark Office Generally, the term of a new
patent is 20 years from the date on which the application for the patent was filed in
the United States or, in special cases, from the date an earlier related application was
filed, subject to the payment of maintenance fees US patent grants are effective only
within the United States, US territories, and US possessions Under certain
circumstances, patent term extensions or adjustments may be available.
The right conferred by the patent grant is, in the language of the statute and of
the grant itself, “the right to exclude others from making, using, offering for sale, or
selling” the invention in the United States or “importing” the invention into the United
States What is granted is not the right to make, use, offer for sale, sell or import, but
the right to exclude others from making, using, offering for sale, selling or importing
the invention Once a patent is issued, the patentee must enforce the patent without aid
of the USPTO.
There are three types of patents:
Utility patents may be granted to anyone who invents or discovers any new and
useful process, machine, article of manufacture, or composition of matter, or any new
and useful improvement thereof;
Design patents may be granted to anyone who invents a new, original, and
ornamental design for an article of manufacture; and
Plant patents may be granted to anyone who invents or discovers and asexually
reproduces any distinct and new variety of plant
Federal Registration of Copyrights: Patents are governed exclusively by federal law
(35 USC 100 et seq) To obtain a patent, an inventor must file an application with the
PTO (the same agency that issues trademark registration) that fully describes the
invention Patent prosecution is expensive, time consuming and complex Costs can run
into the thousands of dollars, and it generally takes over two year for the PTO to issue
a patent.
Page 5
Patent protection exists for twenty years from the date of filing of an application
for utility and patents and fourteen years from the date of grant for design patents
After this period of time, the invention fall into the public domain and may be used by
any person without permission.
The inventor is granted an exclusive but limited period of time within which to
exploit the invention After the patent expires, any member of the public is free to use,
manufacture, or sell the invention Thus, patent law strikes a balance between the need
to protect inventors and the need to allow public access to important discoveries.
2. Trade Secrets: A trade secret consists of any valuable business information The
business secrets are not to be known by the competitor There is no limit to the type of
information that can be protected as trade secrets.
For Example: Recipes, Marketing plans, financial projections, and methods of
conducting business can all constitute trade secrets There is no requirement that a
trade secret be unique or complex; thus, even something as simple and nontechnical
as a list of customers can qualify as a trade secret as long as it affords its owner a
competitive advantage and is not common knowledge.
If trade secrets were not protectable, companies would no incentive to invest
time, money and effort in research and development that ultimately benefits the
public Trade secret law thus promotes the development of new methods and
processes for doing business in the marketplace.
Protection of Trade Secrets: Although trademarks, copyrights and patents are all
subject to extensive statutory scheme for their protection, application and
registration, there is no federal law relating to trade secrets and no formalities are
required to obtain rights to trade secrets Trade secrets are protectable under various
state statutes and cases and by contractual agreements between parties.
For Example: Employers often require employees to sign confidentiality agreements
in which employees agree not to disclose proprietary information owned by the
employer.
Page 6
If properly protected, trade secrets may last forever On the other hand, if
companies fail to take reasonable measures to maintain the secrecy of the
information, trade secret protection may be lost Thus, disclosure of the information
should be limited to those with a “need to know” it so as to perform their duties,
confidential information should be kept in secure or restricted areas, and employees
with access to proprietary information should sign nondisclosure agreements If such
measures are taken, a trade secret can be protected in perpetuity
Another method by which companies protect valuable information is by
requiring employee to sign agreements promising not to compete with the employer
after leaving the job Such covenants are strictly scrutinized by courts, but generally, if
they are reasonable in regard to time, scope and subject matter, they are enforceable
AGENCIES RESPONSIBLE FOR INTELLECTUAL PROPERTY REGISTRATION
United States Patents and Trademark Office:
The agency charged with granting patents and registering trademarks is the
United States Patent and Trademark Office (PTO), one of fourteen bureaus within the
US Department of Commerce The PTO, founded more than two hundred years ago,
employs nearly 700 (present 1000 employs) are working At present it is located in 18
building in Arlington, Virginia Its official mailing address is Commissioner of Patents
and Trademarks, Washington, DC 20231
The PTO is physically located at 2900 Crystal Drive in Arlington, Virginia Its web
site is http://wwwusptogov and offers a wealth of information, including basic
information about trademarks and patents, fee schedules, forms, and the ability to
search for trademarks and patents Since 1991, under the Omnibus Budget
Reconciliation Act, the PTO has operated in much the same way as a private business,
providing valued products and services to customers in exchange for fees that are
used to fully fund PTO operations
It uses no taxpayer funds The PTO plans to move all of its operations to
Alexandria, Virginia, by mid-2005 The PTO is one of the busiest of all government
agencies, and as individuals and companies begin to understand the value of
intellectual property, greater demands are being made on the PTO
Page 7
Legislation passed in 1997 established the PTO as a performance-based
organization that is managed by professionals, resulting in the creation of a new
political position, deputy secretary of commerce for intellectual property In brief, the
PTO operates more like a business with greater autonomy over its budget, hiring, and
procurement US patents issued its first patent in 1790 Since 1976 the text and images
of more than three million are pending for registration The PTO is continuing its
transition filing for both trademarks and from paper to electronic filing for both
trademarks and patents
The PTO is led by the Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office (the “Director”), who is
appointed by the President The Secretary of Commerce appoints a Commissioner for
Patents and a Commissioner for Trademarks Citations to many cases in this text will
be to “USPQ”, a reference to United States Patent Quarterly, a reporter of cases
decided by the Trademark Trial and Appeal Board (TTAB) as well as patent and
copyright cases
INTERNATIONAL ORGANIZATIONS, AGENCIES AND TREATIES
There are a number of International organizations and agencies that promote
the use and protection of intellectual property Although these organizations are
discussed in more detail in the chapters to follow, a brief introduction may be helpful:
International Trademark Association (INTA) is a not-for-profit international
association composed chiefly of trademark owners and practitioners It is a global
association Trademark owners and professionals dedicated in supporting trademarks
and related IP in order to protect consumers and to promote fair and effective
commerce More than 4000 (Present 6500 member) companies and law firms more
than 150 (Present 190 countries) countries belong to INTA, together with others
interested in promoting trademarks INTA offers a wide variety of educational seminars
and publications, including many worthwhile materials available at no cost on the
Internet (see INTA’s home page at http://wwwintaorg) INTA members have
collectively contributes almost US $ 12 trillion to global GDP annually INTA undertakes
advocacy [active support] work throughout the world to advance trademarks and
offers educational programs and informational and legal resources of global interest Its
head quarter in New York City, INTA also has offices in Brussels, Shanghai and
Washington DC and representative in Geneva and Mumbai
Page 8
This association was founded in 1878 by 17 merchants and manufacturers who saw a
need for an organization The INTA is formed to protect and promote the rights of
trademark owners, to secure useful legislation (the process of making laws), and to give
aid and encouragement to all efforts for the advancement and observance of trademark
rights
World Intellectual Property Organization (WIPO) was founded in 1883 and is
specialized agency of the United Nations whose purposes are to promote intellectual
property throughout the world and to administer 23 treaties (Present 26 treaties)
dealing with intellectual property WIPO is one of the 17 specialized agencies of the
United Nations It was created in 1967, to encourage creative activity, to promote the
protection of Intellectual Property throughout the world More than 175 (Present 188)
nations are members of WIPO
Its headquarters in Geneva, Switzerland, current Director General of WIPO is
Francis Gurry took charge on October 1, 2008 The predecessor to WIPO was the
BIRPI [Bureaux for the Protection of Intellectual Property] it was established in 1893
WIPO was formally created by the convention (meeting) establishing the world
intellectual Property organization which entered into force on April 26 1970 and
artistic works It has more than 145 member nations The United States became a party
to the Berne Convention in 1989 The Berne Convention is administered by WIPO and
is based on the precept that each member nation must treat nation must treat
nationals of other member countries like its own nationals for purposes of copyright
(the principle of “nation treatment”) In addition to establishing a system of equal
treatment that internationalized copyright amongst signatories, the agreement also
required member states to provide strong minimum standards for copyrights law It
was influenced by the French “right of the author”
Madrid Protocol It is a legal basis is the multilateral treaties Madrid (it is a city
situated in Spain) Agreement concerning the International Registration of Marks of
1891, as well as the protocol relating to the Madrid Agreement 1989 The Madrid
system provides a centrally administered system of obtaining a bundle of trademark
registration in separate jurisdiction
Page 9
The protocol is a filing treaties and not substantive harmonization treaty It provides a
cost-effective and efficient way for trademark holder It came into existence in 1996 It
allows trademark protection for more than sixty countries, including all 25 countries
of the European Union
Paris Convention:
Paris convention for the protection of Industrial Property, signed in Paris, France, on
th
20 March 1883, was one of the first Intellectual Property treaties, after a diplomatic
conference in Paris, France, on 20 March 1883 by Eleven (11) countries According to
Articles 2 and 3 of this treaty, juristic (one who has through knowledge and experience
of law) and natural persons who are either national of or domiciled in a state party to
the convention The convention is currently still force The substantive provisions of the
convention fall into three main categories: National Treatment, Priority right and
Common Rules
An applicant for a trademark has six months after filing an application in any of
the more than 160 member nations to file a corresponding application in any of the
other member countries of the Paris Convention and obtain the benefits of the first
filing date Similar priority is afforded for utility patent applications, although the
priority period is one year rather than six months The Paris Convention is
administered by WIPO
North American Free Trade Agreement (NAFTA) came into effect on January 1,
1994, and is adhered to by the United States, Canada, and Mexico The NAFTA resulted
in some changes to US trademark law, primarily with regard to marks that include
geographical terms
The NAFTA was built on the success of the Canada-US Free Trade Agreement and
provided a compliment to Canada’s efforts through the WTO agreements by making
deeper commitments in some key areas This agreement has brought economic growth
and rising standards of living for people in all three countries
Page 10
General Agreement on Tariffs and Trade (GATT) was concluded in 1994 and is
adhered to by most of the major industrialized nations in the world The most
significant changes to US intellectual property law from GATT are that nonuse of a
trademark for three years creates a presumption the mark has been abandoned and
that the duration of utility patent is now twenty years from the filing date of the
application (rather than seventeen years from the date the patent issued, as was
previously the case)
THE INCREASING IMPORTANCE OF INTELLECTAL PROPERTY RIGHTS
o Protecting Intellectual Property Rights
o Technology has led to increase awareness about the IP
o Some individuals and companies offer only knowledge Thus, computer
consultant, advertising agencies, Internet companies, and software
implementers sell only brainpower
o Domain names and moving images are also be protected
o More than fifty percent of US exports now depend on some form of
intellectual property protection
o The rapidity with which information can be communicated through
the Internet has led to increasing challenges in the field of intellectual
property
o The most valuable assets a company owns are its Intellectual property
assets
o Companies must act aggressively to protect these valuable assets from
infringement (breaching, violation of law) or misuse by others
o The field of intellectual property law aims to protect the value of such
Page 11
investments
Page 12
