Intellectual Property Rights

Intellectual Property Rights

– Combination of Copy rights and Industrial
rights

• Intellectual: creative human activity

• Property: special form of ownership
• Other characteristics: negative, exclusive,
absolute
 Intellectual Property Rights
INDUSTRIAL PROPERTIES COPYRIGHT

• Patents • Literary, Novel, Poem,

• Industrial Designs Plays
• Trademarks • Films, Musical
• Trade Secrets • Artistic
• Plant Varieties • Drawings, Photograhs
• Integrated Circuits • Performing Arts
• Geographical • Sculptures
• Indicators • Software 3
 Industrial Rights
• Protection of scientific, technological works
• Not so tight connection between the creator and the
work
• More objective assessment
• Stronger economic-financial aspects
• Heterogeneous field
• Protection is granted
– by the state/official body
– For a fixed (not so long) period of time - trademark
 Industrial rights - Patent
– Patents - granted for any invention concerned with the
functional and technical aspects of products and processes.
– To qualify for patent protection the invention must fulfill the so-
called conditions of patentability:
• Invention
– New
– Inventive
– Industrially applicable
• Novelty
• Industrial Applicability
• Patentable subject matter
– Certain subject areas are excluded:
• Discovery, theory, business methods, mental acts etc
 Patents
• Utility Models
– Title of protection for certain inventions
• such as inventions in the mechanical field.
– Technically less complex inventions or for inventions that have a short
commercial life and normally do not meet the patentability criteria.

• Industrial Design
– Right granted in many countries to protect the original, ornamental and
non-functional features of a product that result from design activity.
– Merely the appearance (the 'design') of a product, not the product
itself.
– It allows the owners to exclude others from making, importing, selling,
hiring or offering articles for sale in which the design is embodied.
 Patent - Procedures
– Registration
– Patent application
• Claims
• Defining the invention
• Examination
• Fee
• Exclusive rights are granted by the patent office
– For the patentee
– To use the patented invention
– For definite period
• Prevent others from using the invention
 Industrial Rights – Trade mark
• Distinctive sign or indicator used by an individual or legal entity to
identify its products and/or services
– a sign
– capable of “graphical representation”
– with a distinguishing capability
• Word, logo, slogan, name, number, sound, smell etc.
• Types
– Word mark
– Figurative mark
• Primary function of a trademark is to serve as indication of origin
– a trademark must have a distinctive character
– must not be generic/descriptive and
– must not be identical or confusingly similar to other trademarks
used for same or similar types of goods or services
 TRADE MARKS
• a sign, or a combination of signs, used in the trade to identify
and distinguish the goods or services of one enterprise from
those of another.
• A trademark owner is granted exclusive rights to:
– Use the mark in relation to the good or services with respect to which it
is registered
– Prevent others from using a substantially identical or deceptively
similar mark in relation to the goods or services registered by the mark.
– Words, letters, numerals, pictures, shapes and colours, as well as any
combination of the above.
– allowed for the registration of less traditional forms of trademark, such
as three-dimensional signs (like the Coca-Cola bottle), audible signs
(sounds, Nokia jingle), or olfactory signs (smells, such as perfumes
 Trademarks - Four main functions
• Distinguishing the products or services of one
enterprise from those of other enterprises
• Referring to a particular enterprise which offers the
products or services on the market
• Referring to a particular quality of the product or
service for which it is used
• Promoting the marketing and sale of products, and
the marketing and rendering of services .
 Industrial Rights – Trade mark
• Formalities
– In most jurisdictions through use and registration

• Duration – potentially perpetual

• Geographical scope

• Main rule: only where used/registered

• Exemption : Well-known marks

• Exclusive right of the trademark owner to use the trademark in the

course of trade
 Copyrights
• Relates to literary and artistic creations, such as poems, novels,
music and paintings, but also includes cinematographic works,
architectural works, sculptures, TV and radio broadcasts and many
others.
• Protection of the form, expression
– Copyright applies to any expressible form of an idea or
information that is substantive and discrete
– Idea, conception, theory not protected
• Individual connection between the author and the work
• Subjective elements, Homogeneous field
• Baselines:
– Creator, Work
– Exclusive rights
– Protection for long (definite) period
 Copyright
– protects only the expression of ideas as long as it
is original.
– work is ‘original’ when it is created independently
and skill, labour, judgment are applied to it.
 Patent Information
• includes not only the content of published patent documents but also

bibliographic and other information concerning patents for inventions, inventors’

certificates, utility certificates and utility models.

• Largest, well-classified and most up-to-date collection of technical documents

on new and innovative technologies.

• Patent applications are filed in accordance with the requirements of national or

regional patent laws.

• An applicant may be a public and private company, government agency,

researcher in a university or in a research and development institution, or even

individual inventors.
 Patent Documentation
• A patent document contains

– in a standardized form

– a wealth of information about the state-of-the-art

– adjudged in the international context

– in technological developments in that area of technology.

– As a first step, it is essential to grasp clearly the basic concepts

of the patent system so as to appreciate better the practical

usefulness of patent information.

 Patents
• Provides its owner an exclusive right over a claimed invention,
which is granted by the industrial property or patent office of a
country or group of countries on the basis of a patent application.
• Granted after following the procedure prescribed in the relevant
patent law and regulations.
• Exclusive right of the owner provides a legal right and possibility to
the owner to prevent others from making, using, offering for sale,
selling or importing the patented invention without the owner’s
permission.
• Owner is required to disclose the claimed invention to the public.
Describing the invention in a patent application does this.
• Patent application consists of a front cover, an abstract and a
patent specification, including drawings (if necessary), a description
and one or more claim.
• The claims determine the patentability of the invention as well as
define the exact scope of the claimed invention.
 Patent Document
• Front page of a published patent document
displays bibliographic information such as
– Title of the invention
– Date of filing
– Priority date
– Relevant technical field
– Name and address of applicant(s) and inventor(s).
– Also contains an abstract and a representative drawing.
• Bibliographic information is an essential means of
identifying, locating and retrieving patent
documents.
 Patent Claims
• The claims define the scope of legal protection.
• While drafting claims, the applicant will draft them as broadly as
possible, whereas in an industrial property or patent office, during a
full substantive examination, if done, a patent examiner would
generally like to narrow the claims to the actual invention described
in the specification.
• This be combined effort of the applicant and the office concerned
makes the scope of protection clear and clarified.
• In patent litigation, interpreting claims is the first step in determining
whether the patent is valid and whether the patent has been
infringed.
• A patent is granted by a national or regional patent office and is valid
for 20 years from the filing date of the application or from the date of
an earlier related application.
• A patent is a territorial right and has no effect beyond the national or
common regional boundary of the country or countries concerned.
 Patents
• In most countries, a patent application is published 18
months after it is filed.
• There is always a time lag between the publication of
patent application and the point in time at which the
invention was made or completed.
• Patents are granted well before a product based on a
patent is introduced in the market.
• As such, the publication of a patent application, despite
the time lag, is invariably the earliest point in time at
which the relevant information becomes available to the
public as the first published detailed and up-to-date
information.
 Patents Practices
• Most countries require the invention to be disclosed in a manner
that is sufficiently clear and complete for it to be carried out by a
person skilled in the relevant art
• A patent document has much more detailed information about a
technology than any other type of scientific or technical publication.
• It is also a unique source of information, as it is estimated that, on
average, some 70 % of the information disclosed in patents is never
published anywhere else.
• Patents do not cover every kind of inventive activity in every country.
• Some inventions that are patentable are either kept as trade secrets
or put in the public domain through defensive publication so as to
prevent all others from obtaining a patent on that invention.
• Both are valid business strategies.
 Patents Practices
• Patents, however, do cover virtually every field of
technology although the subject matter excluded
from the purview of patents is variable from one
country to another.
• Consulting non-patent literature is often obligatory
to get a complete picture of the prior art.
• Even so, patent documents remain a key tool for
analyzing trends in the diffusion of key technologies
for the purpose of generating specialization profiles
of countries or companies of interest.
 Patent Information Analysis
Two primary ways of analyzing patent information:
• Qualitative
– The qualitative method shows more closely the content of the
individual patent documents.
• Quantitative.
– The quantitative method results in statistical processing.
• These two methods have quite different objectives and
different ranges of applications.
• Patent analysis can be displayed by visual representation using
bar graphs, polygonal line graphs, pie charts, radar charts and
other charts/graphs, which are called ‘Patent Maps’.
• Visualization is an especially effective way of representing the
results of this type of analysis.
 International Cooperation on IPR
• Traditional focus of the international law on intellectual
property has been the question of how to ensure
registration of an intellectual property right in one
jurisdiction has legal effect in other jurisdictions in which
it might otherwise be copied.
• Most types of intellectual property need to be registered
with national government registries in order that legal
protection attach to them.
• Patents and trademarks are two types of registrable
intellectual property right.
 Patent Procedures
• What is Invention- Section 2 (1) (j) of the Patent Act,
1970 (the Act) defines the invention as
“Invention means a new process and product which is
non-obvious and useful for industry”.

• What is novelty- Section 2 (1) (1) of the Act defines new

inventions as
“new invention means any technology and invention
which is not available in any country or any published
document before the filing of patent application” is known
as a novelty.
 Patent Procedures
• What is inventive step –Section 2 (1) (a) of the Act
defines inventive step as
“inventive step means a feature of an invention that
involves technical advance as compared to the existing
knowledge or having economic significance or both and
that makes the invention not obvious to a person skilled
in the art”.

• What is industrial applicability- Section 2 (1) (AC) of

the act defines industrial applicability as
“industrial applicability means that any method or
technology being made which is useful to the industry.”
 Patent Procedures
• Invention not Patentable- Section 3 of the act mention different
types of invention which will not qualify for a patent even if they
satisfy the requirement of section 2 (1) (j) of the act namely.
– Any invention which is against the natural law
– Any invention which produces harmful effect to plant, animal or
human life
– Any discovery related to abstract theory and scientific principle
– A technique of agriculture
– Any method for the surgical, medicinal or other care of human
beings
– Presentation of information
– Topography of integrated circuits
 PATENT APPLICATION TYPES
• Ordinary application
• International/PCT application
• Convention application
• Application for addition
• Divisional application
 Ordinary Application
• Also called non-provisional application.
• This application contains the claims and the complete specification.
• It is submitted in the patent office without any reference to other
application.
• In the patent application, name and address of first and true inventor
must be given.
• The important documents of the patent application are:-
– Form 2 “Complete or Provisional specification”
– Form 3 “Statement and undertaking”
– Form 4 “Declaration as to inventor ship”
 Priority document  Power of attorney
 International/PCT application
• PCT application is also known as international application.
• It was introduced in the year 1970.
• The main purpose of this application is to give safety to the
inventor for his idea or discovery in the world.
• In PCT, there are 148 countries.
• Instead of filing several regional or national application the
applicant can file a PCT application and protects his invention
in these 148 countries.
• In PCT national phase application, the applicant must attach a
complete specification which includes title, drawing, abstract
description and claims.
• 31 months’ time period is fixed for entering into the national
phase from the priority date.
• PCT national phase application can be examined any time
before this time limit.
 Indian Patent Office (IPO) as
Receiving Office
• The receiving office sends the search copy of the applicant to
the International Searching Authorities (ISA).
• An applicant can file an international application in a language
other than the language which is accepted by the ISA for
carrying a search.
• A dialect acknowledgment by the ISA
• Publication Language
• A dialect acknowledged by the receiving office under rule 12.1
(a), unless the global application is documented in a published
language.
• The office is competent only if the international search has
been carried out by Swedish patent office or by Austrian patent
and registration offices.
 IPO as International Searching Authorities

• ISA notifies the applicant that the search copy has been
received in form PCT/ISA/202 and sends a copy of the
notification to the international bureau (IB).
• The Language accepted for international search is
English.
• The topics indicated in subsection (i) to (vi) of PCT Rule
39.1 are not searched.
• There is no need to submit the separate power of
attorney.
• ISA must create the international search report (ISR) and
written opinion within 3 months from the date of receipt of
the search copy.
 Patent Specification
• Specification should disclose the invention clearly and
precisely.
• Preferably, it should be illustrated by examples to
explain how to work or carry out the invention in
practice so as to enable anyone skilled in the relevant
art to do so likewise, without undue experimentation.
• In most countries, a specification of the invention
includes the background of the invention, summary of
invention, brief description of drawings (if necessary)
and a detailed description of the invention.
 PATENT SPECIFICATION
• Provisional Specification
– This is filed when the applicant feels that his
discovery/idea has reached the stage that it can
be disclosed in the form of a written report.
– Application is submitted to the patent office and it
helps to preserve the priority date of the
application.
– After receiving the provisional specification, the
patent office gives an application number to the
patent application.
 PATENT SPECIFICATION
• Complete Specification
• It is very important document in a patent application
for the grant of patent, the applicant must submit it
within 12 months from the date of filing of provisional
application.
• In this application, applicant gives a complete
description of his invention.
• The submission of complete specification period can
be extended by 3 months
 Content of Specification
1. Title
– Should describe the subject matter in the patent
application
2. Field of Invention
– General wide statement telling about the technology of the
invention
3. Background
– To describe the statement of the technology, the known
prior art, the disadvantage/needs that are being overcome
before the invention described in the patent.
– The background identifies the key feature of the invention
that were lacking in the prior art
 Content of Specification
4. Summary
– The inventions are represented in a summarized form in
this section.
– The information in this section is related to the step taken
to solve the problem which was discussed in the
background of invention.
– This section also describes the advantage of the invention.
5. Description
– It starts with the background of previous invention and also
includes information about the present invention like
process and products or its parts.
– It must be written in detail as per the rules of the act.
 Content of Specification
6. Claims:
– Claims must be clear and brief.
– It must describe the technical features of the
invention.
– Important features of the invention must be
stated in the independent claims.
– Use Arabic numerals for numbering the
claims.
– Only one independent claim should be present
in the same category of the application
 Content of Specification
7. Abstract
– It is short summary of invention and its uses.
– It should preferably be written in 150 words and should consist
of following.
• Invention description
• Description of the important component and their work
8. Drawing
– The drawing of a patent specification describes the invention by
using chemical or mechanical structures, charts and detailed
relationship of features.
– The drawing contains references as (numeric and alphabetic)
that relate the features described in the specification to the
features or portion shows in the drawing.
 Technology Transfer
• Used in the movements of technology from the laboratory to industry
• or from one application to another domain application
• or taking developing countries into consideration technology transfer
helps in growing access to technologies which are related to other
developed countries
• Helps in approaching towards the newer technologies and inventions
i.e. from Developed to developing countries.
• Licensing is allowance granted by the patent owner to another
person or organization for using the patented invention on
agreed terms and conditions, while the patent owner continues
maintaining his ownership to the patent and hereafter becomes
the source of income by receiving the predetermined royalties
or as per the condition.
 FORMS OF TECHNOLOGY TRANSFER
Vertical Technology Transfer
• Transfer of technology where transmission of new technologies is done
from the generation of new technology during the research and
development programs into the science and technology organizations
• For instance, to the application related to the industrial and agricultural
sectors, or we can say that vertical transfer is the technology transfer
commencing from basic research to applied research, from applied
research to development followed by development to production.

Horizontal Technology Transfer

• While the horizontal technology transfer is the movement of a well-
known technology from one equipped environment to another (from
one company to another) or say refers to the transfer and use of
technology used in one place or organization to another place or
organization.
 TRANSFER OF TECHNOLOGY – General

• Transfer in ownership / Licence of a limited right / Complex

contracts
• Transfer of a patent
– a Transfer of the property of a patent as an incorporel asset on the basis
of a contract (depending on the counter performance a sale, barter,
investment in a legal person, donation, etc.)
– as patents for different countries are autonomous, each patent is to be
transferred separately according to the law of property of that country
(lex rei sitae);
– a European Unitary Patent however is a single patent to be transferred
as a whole according to the law of property of the country of the
applicant
– duty to guarantee of the transferor – extent of the duty depending on the
content of the contract
– price usually a fixed sum (sometimes also royalties)
– Transfer of know how Depends on how one classifies the right.
–
 TRANSFER OF TECHNOLOGY – LICENCE
• Licence
– granting a right to use the invention in the territory, whether or not
exclusive
• Patent licensing
– mere licence in the sense of exemption from prohibition
– normally in exchange for compensation in money (royalties) by the
licensee
– usually combined with other duties of the licensor (know how)
– obligation to guarantee, incl. against third parties without right (in
case of exclusive licence); no guarantee of return on investment
• « Licence » of know how ? Share information with the licensee in
exchange for payment and with an obligation of secrecy (for the
licensee)
•
 TRANSFER OF
TECHNOLOGY – LICENCE

 Content of Licence agreements (checklist)

 Scope of application: territory; substance (rights granted, e.g. including

manufacturing)
 Exclusive or not
 Transfer by licensee allowed or not
 Technical information and/or technical assistance to be given
 Guarantees relating to the right
 Rights and obligations concerning improvements and adaptations, e.g.
grantback of improvements by the licensee
 TRANSFER OF TECHNOLOGY – COMPLEX

• Licence combined with a transfer of technology for marketing:

see esp. Franchising
• Sometimes a mere licence to produce as « OEM » (original
equipment manufacturer), the licensor will put its trademark
on the product and sell/retail.
• Turn-key contracts (composite transfer of technology for
industrialisation):
– agreements for delivery and assembly of a ready-made
industrial plant.
– often including a guarantee of result, at least assistance
during production, etc.
 Geographical Indications
• Geographical indications of goods are defined as that aspect of
industrial property, which adverts to the geographical indication
referring to a country or to a place, situated there is as being the
country or place or origin of that product.
• The given product should have a specific geographical origin and
posse’s qualities or a reputation due to that place of origin.
• A place name is sometimes used to identify a product.
• This geographical indication not only refers to where the product was
made, but more importantly, it identifies the product’s special
characteristics which are the result of the products origin.
• Using the place name when the product was made elsewhere or when
it doesn’t have the usual characteristics can mislead consumers, and it
can lead to unfair competition.
• Some exceptions are allowed, for example if the name is already
protected as a trademark or if it has become a generic term.