Intellectual Property Rights India Overview. IPR in India: Summary

Transcription

1 Intellectual Property Rights India Overview IPR in India: Summary 1 2 3

2 1 2 3! Given its growing contribution to world economy, India recognizes the need for effective IPR system! #$% #&'#(# ##'# )*## %*!#&$#*$# +%'#'*#'#$# +, Source: Foresight 2020-Economic Industry and Corporate Trends, Economic Intelligence Unit

3 India recognizes following IPRs IPR recognized in India Industrial Patents Trademark Copyright Neighbouring rights Given for 20 years for making or selling the invention Ex: Drug patents Signs and symbols distinguishing the goods & services Ex: Brand names Given for 50 years minimum period after the death of author Ex: Novels Rights of artists and broadcasting organizations Industrial design Geographical indication Performance right Broadcasting right Features regarding pattern applied to an object Source: What is Intellectual Property?, WIPO Related to place of origin Ex: Scotch # Rights of performing artists Ex: Music artist s right on his work Rights of Broadcasters Ex: Music artists right on his work Ex: Satellite channels Effectiveness of Indian IPR system can be gauged from the following # Global investors rate IP protection as the third most important factor for R&D location India is emerging as a global R&D hub $ % &! India is the second most favoured destination for FDI FDI in India is visible across multiple sectors India has received considerable amount of FDI in IP-sensitive sectors IP-sensitive Pharma MNCs are collaborating with Indian companies IP-sensitive electronics players have also announced major investments in Indian R&D Rule of law protects IP in all areas India is a member of key international IPR bodies and treaties Indian IPR laws are in conformity with TRIPS India has a well structured patent filing process in place Amendments have been made to speed up the process India has a well structured IPR litigation process in place $!

4 Global investors rate IP protection as the third most important factor for R&D location '()*+ Local R&D Cost 52% Manpower Availability 51% IP Protection 50% Quality of Univerities and Research Centres 46% IT and Local Infrastructure 42% Regulatory Environment 36% Reputation for Creativity and Innovation 35% Ability to Tailor Products & Services 29% Proximity to Customers 28% Presence of Supporting Industries 28% Local Market Size 28% Government R&D Incentives 26% Openness to International Trade 25% Presence of Industry Competitors 19% Proximity to Manufacturing 19% Local Firm's R&D Assets 16% Local Firm's R&D Absorption Capacity 16% Quality of Life and Environment 15% Bilateral Investment Treaties Others 3% 9% Source: FDI Confidence Index 2005, AT Kearney % India is emerging as a global R&D hub R&D investment in India has grown at a CAGR of 45% and is likely to remain over 40% in the coming years UNCTAD ranked India as the 3rd R&D hotspot after USA and China in World Investment Report 2005 Over 200 global companies have R&D hubs in India For many companies, Indian R&D is the largest facility outside US/Europe India is drawing 25% of fresh global investments in R&D centres ) Source: The New Face of Global R&D; FICCI &

5 India is the second most favoured destination for FDI India is rated as the second most favoured destination for FDI in 2005 Country s attractiveness is expected to increase in future given government maintained focus on Reforms Infrastructure Regulatory barriers Logistics ))-&, & 1 China 2 India 3 USA 4 UK 5 Poland 6 Russia 7 Brazil 8 Australia 9 Germany 10 Hong Kong % China USA India UK Germany France Australia Hong Kong Italy Japan Source: FDI Confidence Index 2005, AT Kearney; FICCI ' FDI in India is visible across multiple sectors )./! 0!1,(.& Metallurgical Industry 4% Pharma 4% Transportation 5% Chemical 10% Fuels 2% Food Processing 1% Electrical Equipment 33% 2.2 Cement and Gypsum 11% Services 14% Telecom 16% Electrical equipment sector, including computer software and electronics, attracted USD 4.9 billion in FDI from Aug 91 to Jan 06 Source: RBI Statistics ( #

6 India has received considerable amount of FDI in IP-sensitive sectors 2!! 3*#'./! Computer Software/ Electronics Pharmaceuticals Source: IBEF IP-sensitive pharma MNCs are collaborating with Indian companies Source: Pharma Outsourcing Landscape in India, Zinnov Research $

7 IP-sensitive pharma MNCs are collaborating with Indian companies (cases in drug discovery) 2' )2 3 Merck has entered into a pact with Tata Sons promoted Advinus Therapeutics The firms will jointly develop drugs for metabolic disorders Wyeth Pharmaceuticals have entered into a partnership agreement with GVK Biosciences Pvt Ltd under the agreement GVK Biosciences Pvt Ltd would provide research services to the Wyeth Pharmaceuticals 5-year deal with for customized, high-level discovery services including informatics and IT support. Collaboration to develop enabling IT tools for discovery as well as doing drug discovery in specific therapeutic areas Source: Company Websites, ww.blonnet.com! IP-sensitive electronics players have also announced major investments in Indian R&D (5 )4( 6-*!/( 6-(27 R&D centre Works on over 50 products and technologies for the global Microsoft portfolio Networks and terminal solutions R&D Centre Manufacturing unit Located in Hyderabad 1700 people Located at Bangalore, Mumbai, Hyderabad Employees across 10 locations Establishing a separate centre of excellence for its to-be-launched Vista operating system To invest USD 150 million over four years for mobile handsets and base station control manufacturing unit Design & development Software & Hardware Engineering Located at Bangalore 2800 employees Existing investment of USD 700 million Plans to invest USD 1 billion over next 5 years Silicon design & development Located at Bangalore 1200 employees Setting up R&D center in Chennai Research centre 45 software patents from India and another 15 are in the pipeline Located at Noida 850 people 25% of the Adobe global engineering strength Planning to invest USD 200 million in India Source: Company Websites, ww.blonnet.com %

8 Rule of law protects IP in all areas The Patents Act, 1970 (amended) ) The Trade Marks Act, 1999 ) 2(5 * The Design Act, The GI Act, 1999, The Layouts and Integrated Circuits Act, 2000 (5*)* The Copyright Act, 1957 The Copyright Rules, 1958 Source: Intellectual Property Rights in India, Praveen Dalal # India is a member of key International IPR bodies and treaties World Trade Organization (WTO) with effect from Convention establishing World Intellectual Property Organization (WIPO) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998 Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998 Budapest Treaty with effect from 17th December, 2001 Source: $ &

9 Indian IPR laws are in conformity with TRIPS 6 Only process patents for food, medicines, chemicals 14 years term of patent Compulsory licensing, and licensing of right Areas like agriculture, surgical treatment for human, animals, and plants excluded Government allowed to use patented invention to prevent scarcity Product patents recognized 20 years term of patent Limited compulsory licensing incorporating TRIPs provisions Separate law has been made for plant varieties Very limited scope to use patented inventions Source: Economic & Political Weekly; Patent Office % India has a well structured patent filing process in place Filing of the patent application along with the prescribed fees at the appropriate office Filing of request for examination after the publication of the application The applications are examined. First examination report stating the objections is communicated to the applicant Applicant comply with the objection Yes Application is published in the gazette of India. Opposition can be filed on limited grounds. Hearing is not mandatory Patent is granted No Application is abandoned At any time after the grant but before the expiry of a period of one year from the date of publication opposition on substantive grounds is available Source: Patents in India: Law & Procedure, Ezine Articles & '

10 Amendments have been made to speed up the process 2 2 3(( Has to be mandatory published within 1 month after expiry of the statutory period of 18 months In case of request for an early publication, need to be published within 1 month from the date of request 6- A patent application now has to be referred to an examiner within 1 month of a request for its examination Controller will be required to take a decision within 1 month of its submission 1 st examination report must be issued in 6 months of the date of request for examination of a patent Source: ' India has a well structured IPR litigation process in place Defendant comply with the order Patentee successful in proving its case Patentee files the infringement suit in district court Defendant counterclaims for revocation of patent Case goes in high court * - Patentee not successful in proving its case Defendant seeks compulsory license if patent has been in force for more than 3 years Source: ( (

11 IPR in India: Summary Administrative issues are a concern, but remedial measures are being taken )' No prescribed time frame!* (( () Industry bodies are calling for special IPR courts Trainers are been invited from US and Europe to provide training on intricacies of IPR Initiatives like training program for police and custom officials Constitution of a Copyright Enforcement Advisory Council (CEAC) Creation of separate cells in state police headquarters Lack of patent offices in country Talks in progress for increasing patent offices in cities like Ahmedabad, Hyderabad, and Lucknow Source: The Patent Challenge, Express Pharma Online, July 31, 2006

12 Administrative issues are a concern, but remedial measures are being taken India has 275 patent examiners compared to 3500 with USA '( Nearly 240 new patent examiners have now been recruited Institutes, law schools, and science faculties introducing patent courses and training for suitable candidates Lack of digitization of patent records *8 Over patent records, and design records have been digitized A searchable database has been proposed for the website Source: Express Pharma Online! 1 2 3

13 India has a fair and unbiased litigation process (1 of 4)./ 0, 1,2, 3(( 9 * )9(5 ) Eden Cosmetics were using certain drawings and moulds for its Abel Spyro toothbrushes, that were substantially identical to SKB's moulds and drawings of its Aquafresh Flex toothbrushes SmithKline Beecham (SKB) applied for orders restraining Eden Cosmetics from use SKB's Copyrighted moulds and drawings Eden applied for ad-interim protective orders on the basis of its registered toothbrush design Copyright subsisted in SKB's moulds SKB had a serious, arguable and prima facie case for grant of interlocutory injunction as the defendant's moulds were reckless copies of SKB's moulds A Receiver was directed to take possession of the moulds of both parties Eden's claims on the basis of design registration alone was insufficient on account of prior publication SKB was awarded costs Source: # India has a fair and unbiased litigation process (2 of 4). - 3/+ 0 3(( 9 * ) Filed a suit in Delhi High Court seeking to restrain an Indian whiskey manufacturer from using the name Red Scot or any other name containing the word scot to sell its product Court held that the Indian whisky manufacturer cannot use the word scot or scotch in compliance with the WTO agreement Court directed Golden Bottling to pay damages of USD 0.11 million to the UKbased scotch association and its members for passing off its whiskey as scotch whiskey The court also directed Golden Bottling to pay USD million as litigation cost to the scotch whiskey association Source: No Scotch for Indian Whisky, The Economic Times $!

14 India has a fair and unbiased litigation process (3 of 4). -/ /, (( 9 * ) Sony Corporation has been selling products under the trademark SONY in India since the year 1983 The registration of the mark SONY exists in 193 countries of the world Sony Corporation has a wholly owned Indian subsidiary by the name Sony India Limited which uses SONY on all its products In January 2001, Sony Corporation first learned about AASHISH ELECTRONIC's activities of using the mark SONNY on electrical goods In spite of due notice from Sony Corporation, AASHISH ELECTRONIC failed to desist from use of the mark SONY or SONNY The court granted interim injunction against AASHISH ELECTRONIC from using the mark SONY or any of its variant on Electronic goods Source: No Scotch for Indian Whisky, The Economic Times % India has a fair and unbiased litigation process (4 of 4) 6. 3(( 9 * US based Yahoo Inc., owner of the registered Trademark YAHOO filed a suit seeking to restrain Sanket from manufacturing and marketing its silver mint (supari) under the brand name Yahoo ) The Delhi High Court, in an ex parte interim order, restrained Mumbai based Sanket Industries, from using the brand name 'Yahoo'to promote its beverages and tobacco (gutka) products Source: &

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