INTELLECTUAL PROPERTY RIGHTS

General

The importance of intellectual property in India is well established at all levels- statutory, administrative and judicial. India ratified the agreement establishing the World Trade Organisation (WTO). This Agreement, inter-alia, contains an Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which came into force from 1st January 1995. It lays down minimum standards for protection and enforcement of intellectual property rights in member countries which are required to promote effective and adequate protection of intellectual property rights with a view to reducing distortions and impediments to international trade. The obligations under the TRIPS Agreement relate to provision of minimum standard of protection within the member countries legal systems and practices.

The Agreement provides for norms and standards in respect of following areas of intellectual property

• Copyrights and related rights
• Trade Marks
• Geographical Indications
• Industrial Designs
• Lay out Designs of Integrated Circuits
• Protection of Undisclosed Information (Trade Secrets)
• Patents
• Plant varieties

Transition Period

India, as a developing country, had a transition period of five years (with effect from 01 January, 1995), i.e., till January 01,2000 to apply the provisions of the Agreement. An additional transition period of five years, i.e., till January 01,2005, is also available for extending product patent protection to areas of technology not protected so far. This would be mainly in the areas of pharmaceuticals and agricultural chemicals.

Copyrights

India’s copyright law, laid down in the Indian Copyright Act, 1957 as amended by Copyright (Amendment) Act, 1999, fully reflects the Berne Convention on Copyrights, to which India is a party. Additionally, India is party to the Geneva Convention for the Protection of rights of Producers of Phonograms and to the Universal Copyright Convention. India is also an active member of the World Intellectual Property Organisation (WIPO), Geneva and UNESCO.

The copyright law has been amended periodically to keep pace with changing requirements. The recent amendment to the copyright law, which came into force in May 1995, has ushered in comprehensive changes and brought the copyright law in line with the developments in satellite broadcasting, computer software and digital technology. The amended law has made provisions for the first time, to protect performer’s rights as envisaged in the Rome Convention

Several measures have been adopted to strengthen and streamline the enforcement of copyrights. These include the setting up of a Copyright Enforcement Advisory Council, training programs for enforcement officers and setting up special policy cells to deal with cases relating to infringement of copyrights. more....

Trade Marks

Trade marks have been defined as any sign, or any combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings. Such distinguishing marks constitute protectable subject matter under the provisions of the TRIPS Agreement. The Agreement provides that initial registration and each renewal of registration shall be for a term of not less than 7 years and the registration shall be renewable indefinitely. Compulsory licensing of trade marks is not permitted.

Keeping in view the changes in trade and commercial practices, globalisation of trade, need for simplification and harmonisation of trade marks registration systems etc., a comprehensive review of the Trade and Merchandise Marks Act, 1958 was made and a Bill to repeal and replace the 1958 Act has since been passed by Parliament and notified in the Gazette on 30.12.1999. This Act not only makes Trade Marks Law, TRIPS compatibility but also harmonises it with international systems and practices. Work is underway to bring the law into force. more...

The Trade and Merchandise Marks Act,1958

An Act to provide for the registration and better protection of Trade Marks and for the prevention of the use of fraudulent marks on merchandise.

Full text of the act

Geographical Indications

The Agreement contains a general obligation that parties shall provide the legal means for interested parties to prevent the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the goo. There is no obligation under the Agreement to protect geographical indications which are not protected in their country or origin or which have fall en into disuse in that country.

A new law for the protection of geographical indications, viz. the Geographical Indications of Goods (Registration and the Protection) Act, 1999 has also been passed by the Parliament and notified on 30.12.1999 and the rules made there under notified on 8-3-2002. more...

Industrial Designs

Industrial designs refer to creative activity which result in the ornamental or formal appearance of a product and design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. Industrial designs are an element of intellectual property. Under the TRIPS Agreement, minimum standards of protection of industrial designs have been provided for. As a developing country, India has already amended its national legislation to provide for these minimal standards.

The essential purpose of design law it to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The existing legislation on industrial designs in India is contained in the New Designs Act, 2000 and this Act will serve its purpose well in the rapid changes in technology and international developments. India has also achieved a mature status in the field of industrial designs and in view of globalization of the economy, the present legislation is aligned with the changed technical and commercial scenario and made to conform to international trends in design administration.

This replacement Act is also aimed to inact a more detailed classification of design to conform to the international system and to take care of the proliferation of design related activities in various fields.

Obligations envisaged in respect of industrial designs are that independently created designs that are new or original shall be protected. Individual governments have been given the option to exclude from protection, designs dictated by technical or functional considerations, as against aesthetic consideration which constitutes the coverage of industrial designs. The right accruing to the right holder is the right to prevent third parties not having his consent from making, selling or importing articles being or embodying a design, which is a copy or substantially a copy of the protected design when such acts are undertaken for commercial purposes. The duration of protection is to be not less than 10 years.

A new designs law repealing and replacing the Designs Act, 1911 has been passed by Parliament in the Budget Session, 2000. This Act has been brought into force from 11.5.2001. more...

Patents

The basic obligation in the area of patents is that, invention in all branches of technology whether products or processes shall be patentable if they meet the three tests of being new involving an inventive step and being capable of industrial application. In addition to the general security exemption which applied to the entire TRIPS Agreement, specific exclusions are permissible from the scope of patentability of inventions, the prevention of whose commercial exploitation is necessary to protect public order or morality, human, animal, plant life or health or to avoid serious prejudice to the environment. Further, members may also exclude from patentability of diagnostic, therapeutic and surgical methods of the treatment of human and animals and plants and animal other than micro-organisms and essentially biological processes for the production of plants and animals. more...

The TRIPS Agreement provides for a minimum term of protection of 20 years counted from the date of filing.

India had already implemented its obligations under Articles 70.8 and 70.9 of TRIP Agreement.

A comprehensive review of the Patents Act, 1970 was also made and a bill to amend the Patents Act, 1970 was introduced in Parliament on 20 December, 1999 and notified on 25-6-2002 to make the patent law TRIPS compatible.

Modernisation of Intellectual Property Administration

The modernisation of IP administrations (patents, trademarks, designs, geographical indications) has been accorded priority by the Government as a strategic response to economic liberalisation and globalisation.

Modernisation of patent offices was sanctioned at a cost of Rs. 75.59 crores in December, 1998. The Patent Offices are located at Mumbai, Delhi, Chennai and Kolkata (Head Office).

The components of the project included establishment of National Patent Office, human resource development, computerisation and re-engineering of work practices, clearance of backlog of pending applications, and operational and financial autonomy.

Implementation of the project was delayed due to protracted litigation and could be started only in October, 2000.

Effective steps have since been taken in terms of acquisition of additional accommodation for Delhi, Kolkata and Chennai offices and its renovation, computerisation of operations; provision of additional staff; improvement of library facilities; and novelty search facilities, etc.

Modernised Delhi and Chennai offices were inaugurated on 25 July, 2001 and 25 August, 2001 respectively.

Website of the office was launched, a logo of the office put into use and a work manual also, put into use. Information brochures on different aspects of intellectual property including patents have been prepared and released.

On-line search facilities have been established

Efforts have been made to improve the working of the Patent Offices within the resources available and that the problem of backlog is also being attacked through 50% higher monthly target for disposal of patent applications per Examiner.

A Steering Committee is regularly monitoring the progress of implementation. This comprises representatives of Patent Offices, NIC, NID, NPC, Finance Wing, etc.

A sum of Rs. 15 crores was provided in the budget of 2001-2002 for taking up further activities, which are being finalised in consultation with NPC/NIC and WIPO.

Salient features of the Patents (Amendment) Act,2002 and the Patents Rules,2003

Term of every patent which is in force including a patent restorable U/S. 60 as on 20.5.2003 has now become 20 years from date of filing. Time for restoration of a ceased patent U/S 60 has now increased from 12 months to 18 months, as such an application for restoration of a patent ceased on or after 20th May,2003 can be filed within 18 months from the date of ceasing. A new definition of "Invention" meaning a new product or process involving inventive steps and capable of industrial application has now come into force. A method or process of testing during the process of manufacture will now be patentable. Process defined U/S 3(i) in case of plants, are now patentable while a process for diagnostic and therapeutic has now been considered as non patentable. A list of Authorized Depository Institutions have been notified in the Gazette Of India, Part II, Section 3 sub-section (ii) dated 20.5.2003 for depositing the biological materials mentioned in the specification at the time of filing a patent application. The source of Geographical origin of the biological material used in invention is required to be disclosed in the specification. 18 months publication has been introduced, therefore, every patent (except in which a secrecy direction is given U/S 35) will now be published just after 18 months from the date of filing/priority and will be open for public on payment. As such the filing intimation being published in the Gazette immediately after filing has been stopped. A request for examination system has been introduced and therefore all the patent applications in which First Examination Report has not been issued on or before 19th May,2003 will now be examined U/S 12 only after filing a request for examination on Form –19 with prescribed fee. The applications for patent will now be examined in serial order in which the request for examination is filed. In case the application has been filed before the commencement of this Act, the request shall be made within a period of twelve months from the date of commencement of the Act ie. 20th May 2003 or 48 months from the date of application, whichever is later. Provision for filing request for examination by any other interested person (other than applicant) also has been introduced. Provision for the withdrawal of application by applicant any time before grant has been introduced. Time for putting the application in order for acceptance U/S 21 has now been reduced from 15/18 months to 12 months. Ground of opposition U/S 25 as well as revocation U/S 64 have been enlarged by adding following grounds:

Non disclosure or wrongly mentioning the source of geographical origin of biological material used for invention; Anticipation having regard to the knowledge oral or otherwise available with in local or indigenous community in India or elsewhere. Section 39 in modified form prohibiting filing patent application outside India, inventions limited to the fields of defence purposes or atomic energy has been reintroduced. Opposition Proceedings U/S 25 have been simplified and shortened, fixing hearing is not compulsory, if the applicant does not file reply statement and evidence, application will be deemed to have been abandoned. Provision for extension of time up to 6 months for paying the overdue renewal fees initially i.e. renewal fees, which have become due, due to the late grant of patent can now be paid within 9 months from the date of record by taking an extension on Form – 4. Charges for supplying the photocopies of the documents available in the Patent Office have now been reduced from Rs. 10/- to Rs. 4/- per page. Charges for amendments in name, address, nationality, and address for service, payable on Form – 13 have been drastically reduced from Rs. 1000/ 6000 to Rs. 200/500. Patent Applications and other documents (except PCT International application) are now required to be filed only in duplicate. Documents can now be filed (1 copy) in electronic form with one hard copy (paper form). Fees required to be paid on documents can now be paid within 1 month from its date of filing. Provision for allowing Paris Convention Priority has been extended to group or union of countries or inter governmental organizations, therefore, 12 month priority will also be available to applications filed in EPO, AIRPO, OAPI and EAPO.