Lecture 1_ Intellectual property:
Concepts and fundamentals
Dr. Kausik Kapat
Assistant Professor, Medical Devices
NIPER Kolkata
Questions will be addressed in this lecture
• Definition and various forms of IP
• Illustrate various forms of IP with an example of a washing
machine
• Importance of IP in the pharma industry (significance and
economic importance)
• Criteria for patentability (NUNS test)
• Description of the patent filing process
• Patent validity
• Violation of IPR and associated penalties
• Name various International Instruments concerning IPR.
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assets or some
valuable items
Intellectual Property Rights
power given by law
creation of mind or
intellect
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Intellectual?
• Intellect: buddhi or creations of the human mind
• Example: inventions, literary and artistic works, and symbols,
names, images and designs used in commerce
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Property?
• Property: sampada; the matter over which the right of ownership is
exercised
• not only money or land but also intangible items as a source of
income or wealth.
Property
Tangible Intangible
• Personal property
• Physical property
• Cannot be moved, touched, or felt but
• can be moved, touched, or felt.
represents something of value
• Examples: house, furniture, currency, • Examples: music, literary, and artistic works;
investment, car, clothing, jewellery, etc. discoveries and inventions; words, phrases, symbols,
designs, securities, services, goodwill, etc.
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• Property rights?
• the rights and interests a human possesses over land,
belongings or assets and which excludes all others.
• properties over which none has an exclusive right
• sea, air
• that cannot be appropriated
• everyone has the right to enjoy them
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Intellectual Property?
• “Bauddhik sampada”
• When buddhi gets combined with sampada or comes into existence
by application of human intellect
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Intellectual Property Right?
• the exclusive rights accrued on the owner of Intellectual Property
• allow the creators (or owners) to benefit from their respective
work or investment in creation as a reward of the intellect, time,
money, skill, etc., they used to create such properties
• the Universal Declaration of Human Rights (UN), Article 27
• outlines the right to benefit from authorship of scientific, literary, or
artistic productions
• protection is granted by law
• prevents infringement or unauthorized use (without the permission of
its rightful owner) through legal actions
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IP protection (IPP)?
• Methods to protect the intangible property that keeps
companies and individuals competitive in the modern
economy
• The purpose is to
• give the owner the sole rights to their creation for a certain length
of time, depending on the type of IP
• incentivize them to develop creative products that benefit society
• limit the ability of competitors to duplicate the creations
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• IPR mainly deals with three things:
• the rights
• the creation of those rights
• its enforcement
• IPR is important in changing trade environments
• global competition
• high innovation risks
• short product cycle
• rapid changes in technology
• high investments in research and development (R&D)
• highly skilled human resources
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Two Broad Categories of IP
• 1. Industrial property
• Inventions: patents, e.g., the design of a new engine
• Trademarks: logo of KFC/Coca-Cola
• Newer forms:
• geographic indications of source: rasgulla
• industrial designs: e.g., semiconductor integrated circuit
• protection of plant varieties: newer varieties
• trade secret: undisclosed information, e.g., recipe of Pepsi
• 2. Copyright
• literary works: novels, poems, plays
• artistic works: films, musical works (lyrics of a musician), drawings,
paintings, photographs and sculptures, and architectural designs
• artists’ performances: recordings, radio or television programme
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Intellectual Property (IP)
Copyright Industrial Property
Information Innovation
Patents
Right of author Trademark
Trade Secret
Right of performer Geographical
Indication Industrial Designs
Plant Varieties
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IP Evolution
• Property → Right
• INTELLECT – PROPERTY – RIGHT
• Idea → Expression → Copyright
• Idea → Innovation → Invention → PATENT
• Idea → Quality → Identity → TRADEMARK
• Idea → Appearance → DESIGN
• Idea → Kept Confidential (no disclosure) → TRADE SECRET
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Intellectual property: all FOUR in ONE
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Patents
“Necessity is the mother of invention, and
inventions are the need of the hour”
• Invention that is new, non-obvious and has industrial
application is granted a Patent
• To protect
• new products
• process
• medicine formulas
• hardware, and software
• apparatus, etc.
• This provides a bundle of rights related to the invention,
including the right to use, assign etc.
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• Requirements of patent:
• the invention should be
1. new or novel or never done before
2. non-obvious in nature (inventive): does not exist in the public domain or
not disclosed anywhere at the time of patent application
3. must have a utility or industrial use
4. governed by statutes of the Nation
Other characteristics
1. Country/territory specific and registrable nationally
2. prevents anyone else other than the licensed user from making, using, selling,
or importing the invention
3. enforced by court proceedings
4. Infringement: unauthorized use, the owner can sue or ask the court for an
injunction, damages due to loss of revenue
5. Validity/Terms of protection
• utility patent (the way an article works)- 20 yrs from application
• design patent (the way it looks)- 14 yrs from grant of a patent 16
Patentability Criteria – NUNS Test
Novelty (New)
NOVEL, Must be new Must have INVENTIVE
must distinguish from step NON-OBVIOUS to a
“State of the Art” person “skilled in the art”
Utility (Industrial Application) Patentability Criteria Non-obviousness (Inventive step)
Must have UTILITY, Must be new
Industrial Application, Governed by STATUTES
made/used in any kind of the Nation
of industry
Statutory Subject Matter (Section
3 & 4 of the Indian Patent Act)
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• Patenting process
• one must have to establish the novelty of an invention
1. patent search with the Patent and Trademark Office.
2. should apply less than 1 year after disclosure of the claimed
invention
3. disclosure can be through the sale of the product,
demonstration, or speech on publicly accessible channels
• Provisional patent – anytime
• Complete specification – within 1 year of filing a provisional patent
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Trade Marks
• A mark or symbol
• unique, distinctive, made up of names, logos, words, shapes, jingles (short
songs or tunes for advertising purposes), etc.
• provide the product(s) or service(s) with a recognizable identity
distinguished from the competing products
• serve the purpose of recognizing the source/origin of the goods or services
(marketing identity of a brand)
• registered by its founder/user nationally and internationally,
• products with symbol® reflect the registration status of the symbol
• unregistrable trade mark is symbolized by ‘TM’ along with the mark
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• Trademark rights can be enforced through court proceedings
• if a competitor uses the same/similar trademark for his products in the
same/similar field, one has to prove in the court that he/she is using such
mark before the competitor
• the state authorities like the Customs Department, the Police, and even
the Consumer Protection Agencies can be approached
• relief in the form of injunction/damages can be availed in cases of
counterfeit
• Filing a trademark is important to protect the identification of a company
or product but also has additional legal benefits
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• Trademark protection extends beyond of a logo
• protect a phrase, symbol or any unique design
• used to identify a source of a service and/or product
• but not to protect specifically the service or product
• Example: The logo.
• the red or black combination
• the font
• the curves of the “3” lay tangent to the “M”
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• The term/validity - 10 years
• renewable as long as the owner continues paying the
maintenance fees
• renewal to be filed within the year before each successive
10 year period (USPTO)
• in every 10 year, the owner must file an affidavit of use
between the fifth and sixth year of use (USPTO)
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Copyright @ copyright protected.
• exclusive legal rights
• to protect “original works of authorship” or “a tangible form of
expression”,
• e.g., published articles, artistic, dramatic, musical, sound
recordings, cinematographic films, broadcasts, computer graphic
designs, software
• independent of the medium on which the work is recorded
(buying a copy does not confer a right to copy the work)
• Copyright owner has rights to reproduce, translate, adapt,
perform, distribute, publicly display the work, etc.
• Terms/Validity: Lifetime of author + 60 years after death; 60 years
from publication 23
• What can be copyright protected?
• a mere idea cannot be copyrighted, only the expression of idea
• does not exist for a title, slogan or a phrase (these can be
registered as a trade mark)
• matter published through web pages [permission is required to
copy its contents or hyperlink]
• Registration of Copyright
• not necessarily registrable
• arises automatically upon creation of the work itself
• still recommended to complete the registration (public record)
• can be enforced through the court of law
• hard to acquire if the creative aspect is not strong enough
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• Limited copying is permissible
• only for research activities
• photocopying, scanning, and downloading without permission of
the copyright owner
• excerpts or quotes require a due acknowledgment of the source
• criticism, news reporting, teaching, and research (as per fair use
doctrine incorporated in the Copyright Act 1976, USPTO)
• Scope of copyright
• no absolute copyright protection globally
• countries who are members of the Berne Convention or Protection
of Literary and Artistic Works and/or the Universal Copyright
Convention
• an infringement suit can be filed in courts if made within 3 months
of publication
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Trade Secrets
• Any confidential business information which provides an enterprise
a competitive edge, encompass manufacturing or industrial or
commercial secrets
• Examples: R&D information, software, algorithms, inventions, designs,
formulas, financial records, ingredients, lists of customers, devices,
methods, consumer policies, advertising strategies or policy of a company
• Terms:
• protected for unlimited period of time
• only provides the owner protection of misappropriation
• no registration process with the government
• owner’s responsibility to protect the secret
• If disclosed to the public in any form, the associated protection is lost
• Coca-Cola Company is successfully protecting the Coke recipe since 1891
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Geographical Indication (GI)
• GI of goods or industrial property originated
from/belonging to a particular country or a
place
• Primarily an agricultural, natural or
manufactured product (handicrafts and
industrial goods) originating from a definite
geographical territory
• Terms/Validity: 10 Years+ Renewal for other
10 years
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Genetic Resources & Traditional Knowledge
• Genetic resources: genetic material
(functional units of heredity) of potential
value derived from plant, animal, microbe
or other origin (biotechnological products)
• Traditional knowledge: the knowledge,
systems, innovations and practices of local
communities across the globe
• The Biological Diversity Act, 2002 for
preservation of biodiversity in India,
provides mechanisms for benefit sharing
out of traditional biological resources and
knowledge 28
• Patents are not granted for plant
varieties
• Protection of Plant Varieties and
Farmers Rights
• provide an effective system for plant
varieties (New Variety, Derived Variety)
• and rights of farmers and plant
breeders
• Terms/Validity:
• Tree & Vines – 18 years
• Other crops – 15 years
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• Layout designs of a Semiconductor integrated
circuit
• Original, distinctive, capable of distinguishing from any
other layout design
• Terms/Validity: 10 Years
Layout design
Semiconductor integrated circuit 30
Design Registration
• Industrial Designs are the features of shape, configuration,
pattern, ornament, or composition of lines or colors
applied to the product, which makes it look different from
other articles in the market.
• also be protected through the copyright
• The design must be new and distinct.
• The design protection is provided for 10 years. The period
of protection is extendable to 5 years after the expiry of 10
years’ duration.
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Duration of Protection
Form of IPR Registration Term of Protection
Patent Compulsory 20 years
Trademark Optional 10 years & renewable
Designs Compulsory 10 years + renewable by 5 years
Geographical Indication Compulsory 10 years + renewable
Copyright Optional Lifetime of author + 60 years
Plant Protection Compulsory 15/18 years
Integrated Circuits Compulsory 10 years
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Violation of IPR
• IPR infringement
• when IP is copied or used or exploited without inventor’s
permission or unauthorized usage of mark for the product
• IPR counterfeiting
• fraudulent imitation of something for the exactly or
substantially similar product, seems originated from the
original source
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• IPR theft
• Stealing of someone’s idea, inventions, creative
expressions, trade secrets etc. without his consent;
remedied by both civil and criminal procedure
• Cyber theft/Cybercrimes
• stealing of ideas, trade secrets, copyright, patents using
computers and the internet
• e.g., stealing of famous recipes, website interfaces,
designs, business strategies etc. for selling to the rival
companies who then exploit for their own benefit
• pirated copies of books, movies, software etc. results in
huge revenue loss for the copyright owner/holder. 34
Penalties for violation
• Both counterfeiting and piracy are recognized as criminal offences
under the Indian legislations i.e., Indian Penal Code 1860, Trademarks
Act 1999, Copyright Act 1957 and Information Technology Act, 2000
• Departments those monitors IPR issues
• Department for Promotion of Industry and Internal Trade (DPIIT)
• National Cyber Coordination Center (NCCC), under the Ministry of Home Affairs (MHA)-
cybersecurity and e-surveillance agency in India
• the Code of Criminal Procedure (CrPC) (Part II, Schedule I),
• offences which are punishable with imprisonment for <3 yrs or with a fine
only, are bailable and non-cognizable (not very serious)
• offences which are punishable with imprisonment for three years and above
but not >7 yrs, are non-bailable and cognizable (very serious in nature).
• Copyright Act (Section 63 ) and Trademark Act (Section 103), provides
punishment for certain offences with imprisonment for NLT 6 months
and may extend to 3 years. 35
Role of IP in pharmaceutical industry
• essential for the continued innovation of new medicines and holds utmost
importance in the pharmaceutical industry
• 1. Protection of medical invention
• without an IP, a drug/process/medical treatment/instrument that is newly designed
or developed can be reverse-engineered, and the invention would be stolen
• 2. Drives economic growth and competitiveness
• sole marketing rights of the invention lie with the inventor/investor/company with
options for selling or licensing it
• 3. Consumers safety
• helps the consumers make the right choice while selecting a medical product,
ensuring quality standard, reliable, and effective public health infrastructure
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• 4. Generates solutions to global challenges
• promotion of innovation is essential; funding is also necessary to do so
• IPR encourages to develop drugs and vaccines for the new diseases by providing
incentives for turning innovative ideas
• 5. Protection against potential infringers
• allow pharmaceutical companies to take strict actions against counterfeit drugs
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Intellectual Property Transactions: Commercial aspects
• commercial transactions in the intellectual property sphere:
• Licensing
• partnership agreement between the licensor and the licensee
• materialize from the need of one party (the licensee) to use the IP
of another party (the licensor) through a series of lengthy
negotiations
• In exchange, the licensee will pay the licensor a fee or a royalty.
• Mergers and Acquisitions
• all assets of the company including physical as well as non-physical,
• transferred to the acquiring company or the final merged company
Global effects and financial implications
• IPR is good or bad for global economy?
• For few, it barriers to trade
• For others, it promotes trade through innovation, economic
growth, and technology transfer
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• 1. Impact on under-developed countries
• Difficulties in accessing technological goods and services to produce high
value products
• compete through cheap labour, natural resources; innovation aspect is
very small
• get no advantages for tight global IP protection
• Trade flow into large developing economies is restricted by weak IPRs
(significant risks for imitation)
• Further, adoption of the TRIPs standards can raise their imports of
technologically sophisticated goods in significant amounts.
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• 2. Impact on developed countries
• higher industrial and technological developments
• high IP protection
• encourage companies and entrepreneurs to innovate and produce
superior goods and services.
• later sold to the rest of the world
Summary
• Other than trade, IP protection negatively or a positively influence, e.g.,
healthcare, culture, education, etc.
• But as a whole, higher IP protection worldwide could be positive for the
world’s development
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