INTELLECTUAL PROPERTY (IP)

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1 Managing IPR, Product Patents & Technological Changes Part 1: Introduction to Intellectual Property Rights V. GOVINDARAJULU Scientist F and Head Intellectual Property Management Department, Regional Research Laboratory, Thiruvananthapuram ABSTRACT The (Intellectual) Property is the creation of human labour with intellectual ingenuity. Like any other property, Intellectual Property is created by investing resources like creative human labour, capital, efforts and skills, besides codification of the stateof-the-art know-ledge. Rights in any property, including intellectual property, as granted by statutory laws, are a negative right. It precludes competition from unauthorized third parties and creates monopoly of its owner. Its aim is to enable the owner to earn a reasonable return on the investment, while providing the society with quality goods and services (at affordable prices) by himself or through authorised third parties. However, the logic of trade and technological development is such that it always creates competition and defeats the monopoly position. Thus there is a dialectical relationship, at times complementary and other times conflictive, between investment, inventions and innovations, cost and price, production and productivity, competition and monopoly, trade and technology transfer, private and public interests, national and international relations. In this context, it is the object of the statutory trade laws, including intellectual property (patents) laws, in combination with other constitutional laws and in harmony with international laws, treaties and conventions and public policy statements, to promote co-operation through competition, for better services to the society, while at the same time according reasonable monopoly rights to ensure continuous investment, return on investment (ROI), inventions, innovations and technology transfer worldwide. In this article we analyze, in brief, the historical developments of intellectual property rights (IPR), especially the patent laws, mostly through the efforts of international treaties like Paris Convention and TRIPS (Trade Related Intellectual Property Rights) of WTO (World Trade Organization) and present certain hindsights for managing IPR, product patents regime and technological changes in all fields of S&T, including chemicals, drugs and medicines and foods in the best interests of both private and public and national and international. INTELLECTUAL PROPERTY (IP) Intellectual property rights (IPR) like patents, trademarks, designs, copyrights and trade secrets are the legal rights that protect monopoly market rights of the owners. Such rights prevent third persons from unauthorized commercial use. Generally, IPR system is considered as an incentive for continued research and development (R&D), generation of new and useful ideas and technical information and their early disclosure to the public. Property rights have played vital historical role in developing knowledge, wealth and civilized societies. It is truer of the IPR system in not only generating knowledge and wealth, but also in shaping international relations through trade and technology transfer. The salient features of Intellectual Property system are briefly illustrated here. IP is inventive knowledge by intellectual ingenuity of human brains. IP is intangible & movable. Rights in IP could be possessed, enjoyed and disposed, like any other property, as per provisions of the laws of the land. IP right in the invention is a monopoly right of the owner granted by the law of the state that excludes all others from unauthorized commercial use. IP right in the invention could be commercialized by its owner for certain specific terms or transferred to third parties by sale or licensing or assignment for a price (fee and/or royalty) or otherwise. INDUSTRIAL PROPERTY RIGHTS Industrial property is the generic name evolved by CHEMICAL WEEKLY APRIL 13,

2 the common law countries led by Great Britain to identify with a group of IP that excluded, at the first instance, the copyrights. Thus industrial property originally included the following: Patents Industrial Designs Trade Marks When copyright was added to industrial property, the group then became known as intellectual property. It is further expanded by addition of confidential information as illustrated below: Intellectual Property Rights = [Industrial Property Rights] + [Copy Rights + Confidential Information] + [ ] Expanding Domain of IPR Today, IPR is an ever-expanding domain. As newer disciplines of science and technology (S&T) and newer industrial applications keep emerging, newer forms of laws are enacted to meet the requirements of the ever expanding IPR domain as illustrated below: Patents Industrial Designs Trade Marks Copy Rights Geographical Indications Integrated Circuits Trade Secrets Utility Models Know-how Confidential Information Plant Varieties Protection IT Protection Bio-diversity Protection Traditional Knowledge Protection IP Laws in force in India Till recently, only patents, trademarks, designs, and copyrights were in vogue in India. But today, post- TRIPS of WTO, the legal framework for IPR system in the country has been expanded manifold. Such an act also reflects India s changing scenario in S&T, industry, trade and international relations. At present, there are nearly a dozen types of legal rights created in the country to protect IP systems. They include: The Patents Act 1970 and The Patents (Amendment) Act, 2002 The Patents Rules, 2003 The Designs Act, 2000 The Trade Marks Act, 1999 The Trade Marks Rules, 2002 The Copy Rights Act 1957 and Amendments as on 1999 Geographical Indications of Goods (Registration & Protection) Act, 1999 The Information Technology (IT) Act, 2000 Semi Conductors IC Layout Designs Act, 2000 The Biological Diversity Act, 2000 The Protection of Plant Varieties and Farmer s Rights Act, 2001 Public Laws & Policy Statements Complementary to IPR India, over the years, did evolve many constitutional laws, public policy statements and guidelines that could be beneficially used as complementary legal framework to balance the private and public interests. Some such public policy statements, guidelines and laws in force in India are illustrated below: The Drugs & Cosmetics Act, 1940 and Amendments The Constitution of India, 1950 Industrial (Development & Regulation) Act, 1950 The Prevention of Food Adulteration Act, 1954 and Amendments Industrial Policy Resolution, 1948, 1956 Scientific Policy Resolution, 1958 The Income Tax Act, 1961 MRTP Act, 1969 and Amendments Technology Policy Statement, 1983 R&D Cess Act, 1986 The Consumer Protection Act, 1986 & Amendments New Industrial Policy Statement, 1991 The Drug Policy 1994 The Drug (Price Control) Order 1995 The Pharmaceutical Policy 2002 Science & Technology Policy Statement, 2003 IPR Related International Treaties Developments in IPR are both national and international and evolutionary in nature. Development trends in S&T, industry and international trade do shape the evolutionary trends in IP rights and IP laws. There are 184 APRIL 13, 2004 CHEMICAL WEEKLY

3 many international treaties, conventions and institutions that develop Model IP Rights and Model IP Laws to guide and co-ordinate member states and harmonize international laws and relations. Some such international treaties, conventions and institutions in which India is a member are listed below: Paris (Industrial Property) Convention, 1883 and Amendment as on Patent Cooperation Treaty (PCT), UPOV, 1978 and UPOV, UN-CBD, WTO-TRIPS, WTO-TRIMS, WTO-GATS, Universal Copy Rights Convention. Washington Treaty on Copy Rights. Budapest Treaty for Micro-Organisms Deposits. World Intellectual Property Organization (WIPO) (an international institution that administers Paris Convention, PCT, Universal Copyright Convention and such other international treaties). SALIENT FEATURES OF IPR SYSTEMS Patents create monopoly rights by preventing competition in new and useful S&T inventions and innovation for a limited period. Design rights are granted for a shorter period to novel features in physical appearance of mass produced goods. Copyrights grant long term monopoly rights in literary, artistic and musical creations. Trademarks protect against imitation, as long as it is used in trade. In the like manner, there are many other forms of IPR rights created by the law of nation states to promote orderly growth of investment, inventions, innovations, industry, trade, technology transfer and international relations. We briefly describe here the salient features of some important IPR systems. Patents Patents protect monopoly rights in new and useful inventions: Processes or products or both or their improvements subject to certain restrictions or exemptions. Patent rights protect the manner of marking an idea work and not the idea per se. Patent rights, being the creation of a statute of a state, are limited to the territorial jurisdiction of that country only. Any one desiring international protection must file the same patent application in each and every country where desired as per the provisions of the laws of such countries. The Patents Act 1970 integrated with The Patents (Amendment) Act, 2002 with Patents Rules 2003 are the specific laws, in India today, whose provisions should be followed by any one seeking patents protection. Today, as per The Patents (Amendment) Act, 2002, the term of Patent is 20 years from the date of Patent (filing). It applies uniformly to all patents in all fields of S&T. It also applies to the patents in force at the commencement of the New Act, that came into effect on 20 th May The New Patents Act 2002 broadly satisfies TRIPS requirements. Till recently, as per Patents Act 1970, a differential term, in the public interest/policy, was in force as: Food, Medicine & Drug - 5/7 years from grant/filing; all others - 14 years from the date of patent (filing). Features of Patents Patent means a patent granted under Patents Act 1970 and Patents (Amendment) Act 2002 (sec. (2)(1)(m) in India or any other Patent Act in force in other countries. A Patent is always in respect of an invention and not a discovery. A Patent is always in respect of one single invention and compounding of allied inventions into one single invention is allowed only in developed countries, notably the US. A Patent is either in respect of a new and useful process or product (substance or device or apparatus). Many a times it is difficult to bifurcate both process and product and hence could be expressed by compounding product (substance) specifications submerged into the process specifications. Complete Patent Application means complete specifications and claims distinctly and clearly mentioned. It is the claim(s) and claim(s) alone that constitute the Patent (Right) (ICI Vs. CGOP, AIR, 1978 Cal.77). Industrial Designs A Design is an idea, or concept as applied to an Article, as appealed to the eyes of the viewer in terms CHEMICAL WEEKLY APRIL 13,

4 of its physical features like shape or configuration or pattern or ornament. Design rights promote the products in the markets for their artistic merits while practical utility and efficiency of performance taken for granted. A Design is either 2D or 3D. To secure, a legal protection, a Design must consist of a shape in 3D or a pattern in 2D and that the shape or pattern is applied to one article or some articles. The main criteria for securing a Design right protection is the existence of novelty and originality of the Design and not disclosed to the public before registration. Engineering designs and drawings, which are functional, and mathematical or geometrical models and formulae or basic principles are not the subject matter for the grant of Design Rights under Designs Act. But such functional drawings are eligible for Copy Rights under Copy Rights Act. The terms then extend to life term (LT) of the Author + 60 years. Examples of Designs: As applied to Textiles, Leather Goods, Shoes, Furniture, Television, Cars, Jewels etc. The right conferred by registration of a design under Design Act is known as Copy Right a monopoly right similar to the one under Patents Act but differs drastically with the right under Copy Rights Act. An artistic work registered under Designs Act for design right is not eligible for protection under Copy Rights Act. In case of an unregistered design under Designs Act, copy right subsists under Copy Rights Act but ceases as soon as any article to which the design is applied, is reproduced more than 50 times by an industrial process by its owner. Terms of Design Right: At first instance 10 years from the date of Application (Registration) & extended by another 5-year terms. i.e., the term of design right = 10 year + 5 year (sec.11 of Designs Act, 2000). Design rights could be easily enforced in case of infringement if the Articles, on which the design applied, is marked as Registered or Reg. or RD with Registration Number. Designs Act, 2000 is the Law in force at present in India. Prior to that it was Designs Act, Copy Rights Foundation of (Copy Right) Law: No one is permitted by law to appropriate himself what has been created/produced by the labour, skill, intellectual ingenuity and capital of another. Object of (Copy Right) Law: To protect the author of copyright work from an unlawful reproduction or exploitation by others. Scope of Copy Right: Copy Right is the creation of the statute. It is a negative right that prevents others from unauthorized commercial exploitation. Multiple Nature of Rights: Copy Right is a multiple right consisting of a bundle of different rights in the share of total work. The rights could be assigned or licensed wholly or separately. Ideas: Copy right does not protect the ideas per se. But it protects original manner of expression of the thoughts or ideas in various forms like speech, writing, printing, acting, films, audio, video etc. Works in which Copy Rights Subsists Original Literary works (including computer programmes, softwares, tables, compilations, databases), dramatic (including a piece for recitation choreographic etc.), musical (including graphical notation) and artistic (painting, sculpture, drawing etc.) Cinematography films (visual, motion, still etc.) Sound recordings Terms of Copy Right: Life Term (LT) of the Author from the date of writing/publishing + 60 years. Copy Right Laws, Conventions & Treaties Copy Right Act 1957 & Amendment Berne Convention Universal Copy Right Convention For research scientists and inventors, copyrights in various documents, such as the lab records, work notebooks, project reports, know-how documents, technology transfer documents, research communications and publications, patent specifications and claims and applications, design drawings, computer programs and softwares, data bases, tables and charts etc. are more important not only in terms of rights in the IP, but also for the purpose of proving various types of entitlements including first-to-invent, first-to-file, true and first inventors, the assignee(s) and/or the applicant(s), the first-to-register etc. in case of disputes and contentions and their amicable resolutions. 186 APRIL 13, 2004 CHEMICAL WEEKLY

5 Trade Marks (TM) Trade Mark is a Visual Symbol in terms of a word a device or a label applied to articles of commerce (vendible commodity). Property in trade mark, in respect of a vendible commodity (goods), is obtained by registration of the mark under TM Act The object of Trade Mark is to indicate to the eye of the public (consumers) about the quality attributes of goods in trade and their manufacturers or traders or the source of origin. The Trade Mark (Brand Name): It distinguishes and differentiates the manufacturer/ trader from all others by virtue of the standard quality attributes of the goods offered to the public and alert the public (consumers) about the deceptive practices of others by imitation. Registration of Trade Mark: It is the best way of protection as it is easy to establish infringement of TM. Unregistered Trade Mark: It requires sufficient use of TM of the goods in trade to establish its infringement and initiate passing off action. Service Marks fall under this category. TM Act 1999 provides provisions for registration of service marks and collective marks. Functions of Trade Mark To identify the goods with its source of origin. To guarantee its unadulterated quality attributes. To advertise the products (goods). To create an image (brand name) for the product in the market and promote its market share. Certification of Trade Marks (CTM) They do not indicate the origin of goods in trade. But such CTM do indicate that the quality of standard attributes of the goods in trade are duly certified by the proprietor-institutions of such marks e.g. Agmark, FPO Mark, BIS Mark, IS Specifications, ISO Marks etc. Term of Trade Mark (TM) It is ten years from the date of application (first registration) and renewable from time to time by payment of fee for an indefinite period as long as the TM is in use. A culture of trade marking, brand naming and/or service marking of new inventions (products and processes and/or services) by the research scientists/institutions in addition to patents, copyrights and design protections could enhance the commercial value of the inventions by manifold. [To be continued] CHEMICAL WEEKLY APRIL 13,

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