PAPER NO: - 2 INTELLECTUAL PROPERTY LAW

UNIT 1:- BASIC CONCEPT OF INTELLECTUAL PROPERTY

QUE: - DEFINE INTELLECTUAL PROPERTY. DISCUSS THE NATURE, ORIGIN AND DEVELOPMENT OF THE
CONCEPT OF INTELLECTUAL PROPERTY RIGHTS?

ANS: -INTELLECTUAL PROPERTY DEFINED:

Intellectual property means the legal property which results from intellectual activity in the industrial,
scientific and artistic fields.

Countries have laws to protect intellectual property for two main reasons. One is to give statutory expression
to the moral and economic rights of creators in their creations and such rights of the public in access to those
creations.

The second is to promote, as a deliberate act of government policy, creativity and the dissemination and
application of its results and to encourage fair trading which would contribute to economic and social
development.

Generally speaking, IP law aims at safeguarding creators and other producers of intellectual goods and services
by granting them certain time- limited rights to control the use made of those productions.

These rights do not apply to the physical object in which the creation may be embodied but instead to the
intellectual creation as such.

Difference between “Property” and “Intellectual Property”

There are at least two ways in which intellectual property is fundamentally different to physical property.

1. Intellectual property is fundamentally social. IP is essentially an idea, and ideas are only useful when
they are expressed in some way. Think about music, for example. If I were to have an idea which I turned into a
song, then that idea is only useful to me when I make that song public. I have to perform it before anyone can
appreciate it or enjoy it or pay me for it. Patented designs are like this as well. The idea is only as good as it is
useful.

It’s fundamentally social in another way, as well. All of the ideas that might turn into songs or inventions are
going to be based in some on upon the work of other people. Very few people invent their own musical
instruments, notation, and languages for the purpose of making music. Inventions make use of the maths,
sciences, and otherwise important discoveries that people before them have made. In other words, we all stand
on the shoulders of giants.

2. The second difference is that intellectual goods are infinitely sharable. The difference between an idea
and a car is that an unlimited number of people may possess and use an idea at the same time, while only a
small number may possess and use a car at the same time. When one of us puts an idea out into the world, it can
be held by any number of people without being less available to the originator. When I give you my car, I no
longer have a car. When I give you an idea, we can each have it in exactly the same quantity and quality.
Intellectual property is especially vulnerable to theft and misattribution because, unlike my car, someone might
be able to take credit for my ideas and inventions without my knowledge. I will notice that my car is missing
because it is a physical object, and when I need to drive somewhere I will be alarmed that it is missing. Not so,
my ideas. Even if I am not harmed by the misattribution of my ideas, it seems appropriate to protect them from
theft.

IP is traditionally divided into two branches: “industrial property and copyright”.

The convention establishing the World Intellectual Property Organization (WIPO), concluded in Stockholm on
July 14, 1967 (Art. 2(viii) provides that

“Intellectual property shall include rights relating to:

1) Literary, artistic and scientific works:

2) Performances of performing artists, phonograms and broadcasts;

3) Inventions in all fields of human behavior;

4) Scientific discoveries;

5) Industrial designs;

6) Trademarks, service marks, and commercial names and designations;

7) Protection against unfair competition and all other rights resulting from intellectual activity in industrial
scientific, literary or artistic fields”.

What are Intellectual Property rights?

Intellectual Property Rights are exclusive legal rights over creations of the mind. They give the owner rights
from which to exploit their intellectual creation. They are considered crucial to fostering innovation by
providing a financial incentive to stimulate creativity, whereby businesses can reap the benefits from their
inventions and will be more willing to invest in research and development.

IPRs do not protect ideas but the expression of the idea.

Nature of Intellectual Property

Intellectual properties have their own peculiar features. These features of intellectual properties may serve to
identify intellectual properties from other types of properties. Thus, we will discuss them in brief.

1. Territorial: - Any intellectual property issued should be resolved by national laws. Why is it an issue?
Because intellectual property rights have one characteristic which other national rights do not have. In
ownership of intellectual property of immovable properties, issues of cross borders are not probable. But in
intellectual properties, it is common. A film made in Hollywood can be seen in other countries. The market is
not only the local one but also international. If a design in China is imitated by another person in France which
law would be applicable?
2. Giving an exclusive right to the owner: - It means others, who are not owners, are prohibited from using the
right. Most intellectual property rights cannot be implemented in practice as soon as the owner got exclusive
rights. Most of them need to be tested by some public laws. The creator or author of an intellectual property
enjoys rights inherent in his work to the exclusion of anybody else.

3. Assignable: - Since they are rights, they can obviously be assigned (licensed). It is possible to put a
dichotomy between intellectual property rights and the material object in which the work is embodied.
Intellectual property can be bought, sold, or licensed or hired or attached.

4. Independence: - Different intellectual property rights subsist in the same kind of object. Most intellectual
property rights are likely to be embodied in objects.

5. Subject to Public Policy:- They are vulnerable to the deep embodiment of public policy. Intellectual property
attempts to preserve and find adequate reconciliation between two competing interests. On the one hand, the
intellectual property rights holders require adequate remuneration and on the other hand, consumers try to
consume works without much inconvenience. Is limitation unique for intellectual property?

6. Divisible (Fragmentation):- Several persons may have legally protected interests evolved from a single
original work without affecting the interest of other right holders on that same item. Because of the nature of
indivisibility, intellectual property is an inexhaustible resource. This nature of intellectual property derives from
intellectual property’s territorial nature. For example, an inventor who registered his invention in Ethiopia can
use the patent himself in Ethiopia and License it in Germany and assign it in France. Also, copyright is made up
of different rights. Those rights may be divided into different persons: publishers, adaptors, translators, etc.

Why are IPRs important?

We are increasingly hearing more about intellectual property rights. In today’s knowledge based economy,
returns on investment for knowledge are higher than returns on other factors of production. Intellectual
property rights contribute to ensuring profitability from knowledge.

Coupled with this is the fact that in the digital, globalized era it is much easier to reproduce creations than ever
before. A song, film or book in digital form can be transmitted globally and instantaneously via the internet. A
machine created in Norway can be reverse engineered, perfectly reproduced and put on the market in another
country with minimal effort. Ensuring that rights are in place provides a legal basis from which to protect
against copying.

According to the FBI, Interpol, World Customs Organization and International Chamber of Commerce, roughly
7-8% of world trade every year is in counterfeit goods. That is the equivalent of as much as $512 billion in
global lost sales. IP theft poses a risk to all industry sectors; those most commonly affected are manufacturing,
consumer goods, technology, software, and biotechnology, including pharmaceuticals.

Is my intellectual property protected abroad?

Patents, Designs and Trademarks are only protected in the territories where they are specifically registered e.g.
a patent registered in Norway will only protect you within Norway. If you are exporting or are considering
exporting you should seriously consider protecting your IP in these markets which are of interest to you. If you
are producing in another country - regardless of whether you intend to sell in that market or not, you should
consider registering in that country to ensure that you are protected against copying within that geographic
area.
Copyright on the other hand is an automatic right. There are a number of international treaties regulating
minimum standards for copyright law - there are however some disparities across international borders.

There is more detail on this in the individual descriptions of the rights below.

What can be protected?

IP is generally divided into two branches – namely industrial property and copyright. Industrial property
largely protects inventions, the most commonly used forms are patents, trademarks and industrial designs.
Copyright protects literary and artistic works. The most common IPRs are discussed below.

Patents
Patents are used to protect inventions, i.e. new products or processes containing a new principle or idea. The
idea itself is not protected - it is the product or the process. It is a monopoly right granted by a State to
commercially exploit an invention in that country - in return for full disclosure of the invention. It forbids
others to commercially produce, sell, work, use, import and possess the invention.

A patent can be granted for the following

• A product
• The apparatus for producing the product
• The process for producing the product
• The use of the product

In order to be patentable the invention must satisfy four conditions of patentability. It must be capable of
industrial application; it must be novel and show a new characteristic beyond what is already known in its
technical field; it must show an inventive step beyond what a person with average knowledge in the technical
field possesses and finally it must fall within the scope of patentable subject matter. This varies from country
to country, but common examples of subject matter excluded from patentability include scientific theory,
mathematical methods, methods for medical treatment and any invention where commercial exploitation
would be considered to be contrary to public order.

International patent situation

there is no such thing as a world patent. Each country grants its own patent rights over its own territory.
However there are international and European application procedures. It is possible to submit an
‘international’ application under the Patent Cooperation Treaty (PCT) where a number of countries can be
designated and the rights preserved to submit applications within them. There is a 12 month period before
you must decide which countries you wish to designate in the PCT application. The contracting states to the
PCT can be found here.

A European patent application can be submitted to the European Patent Office (EPO) designating which of the
38 European countries the application refers to. The patent is then processed at the national level in each of
the designated countries. This results in a bundle of patents having effect at the national level.

Copyright
Copyright protects artistic creations; books, music, paintings, sculptures, films and technology based works
such as computer programmers. In some jurisdictions there is also sui-generis protection for electronic
databases. It affords exclusive rights to produce and sell copies, to import or export the work, to create
derivative works, to perform or display publicly or to sell or assign the rights to others.

It is an automatic right - granted once the work is created and it automatically belongs to the author. It does
not need to be registered nor does it need to be published - however there should be a record of it. Copyright
is represented with this symbol ©. It is not mandatory to use this symbol - you still benefit from copyright
protection without using it. However it is recommended to mark a work with the date on which it was created,
the author name and the symbol.

Trademarks
A trademark is ‘any sign capable of being represented graphically and which is capable of distinguishing goods
or services of one undertaking from those of other undertakings’. It is a businesses’ way of being represented
in the market and is central for building up a reputation for the business.

Words, logos, slogans and any other distinguishing mark can be registered. In many jurisdictions this has been
extended to permit sounds, colors and even smells e.g. the smell of freshly cut grass for tennis balls. A mark
should be distinctive and should not be descriptive. For example the word apple could not be registered for a
brand of apples as it describes the product; however ‘apple’ can be used for a brand of computers.

International trademark situation

A single international application system exists for registering trademarks in multiple jurisdictions. This is
known as the Madrid system. A trademark owner can file an application in one jurisdiction with one set of
fees, make changes and renew registrations through a single administrative process. As with patents these
remain national trademarks. Members of the Madrid Union can be found here.

A European Union Trademark is now possible. A single application can be submitted to the OHIM (Office for
the Harmonization of the Internal Market) which can result in a single Trademark covering all European Union
Members.

Industrial design rights

registered designs provide protection over the appearance and shape of a product. It is also possible in many
jurisdictions to register brands and logos as designs. They do not provide any protection for the
technical/functional features of the product – this is protected by patents. There are novelty requirements
similar to those necessary for patents.

International Design situation

There is a similar application system for designs as there is for trademarks, it is known as the ‘Hague’ system.
The list of countries party to The Hague agreement can be found here. A single EU design right is also available
through the OHIM under the same practices as trademarks.

Terms of cover

Patent: 20 (some countries have 17 years)

Copyright: Life of author plus 70 years (Europe)
Registered Design: 25 years
Trademark: Indefinite (provided renewal fees are paid and use can be shown)

Which Rights should I choose?

A strategy for IPRs is vital for a company. Very often it is not simply a case of choosing one right, but is about
having a suite of rights. It is also necessary to have a strategy for exploiting the rights. Having an IPR in itself is
of little value if this is not combined with a strategy for exploitation.

How to make money from IPRs

There are a number of strategies which can be used to exploit Intellectual property. A company can use either
one or a combination of these strategies.

These include the following

• Own use – A company can use and exploit the right themselves within their own company.
• Assignation – A company can sell the rights
• Licensing – A company can license the rights to others to use.
• Franchising – A company can franchise the rights such as practiced by McDonalds and Burger King
• Merchandising – A company can allow others to use their rights for merchandising such as Hello Kitty and
Mickey Mouse

QUE: - WHAT ARE VARIOUS INTERNATIONAL CONVENTIONS FOR THE PROTECTION OF INTELLECTUAL
PROPERTY? EXPLAIN THE BERNE CONVENTION IN DETAILS.

Summary of the “Berne Convention” for the Protection of Literary and Artistic Works (1886)

 The Berne Convention, adopted in 1886, deals with the protection of works and the rights of their
authors.
 It provides creators such as authors, musicians, poets, painters etc. with the means to control how their
works are used, by whom, and on what terms.

 It is based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that want to
make use of them.

 The Berne Convention deals with the protection of works and the rights of their authors.

 It is based on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries that want to
make use of them.

 The three basic principles are the following:-

 Works originating in one of the Contracting States (that is, works the author of which is a national of
such a State or works first published in such a State) must be given the same protection in each of the
other Contracting States as the latter grants to the works of its own nationals (principle of "national
treatment").

 Protection must not be conditional upon compliance with any formality (principle of "automatic"
protection).

 Protection is independent of the existence of protection in the country of origin of the work (principle of
"independence" of protection). If, however, a Contracting State provides for a longer term of protection
than the minimum prescribed by the Convention and the work ceases to be protected in the country of
origin, protection may be denied once protection in the country of origin ceases.

(2) The minimum standards of protection relate to the works and rights to be protected, and to the duration of
protection:
(a) As to works, protection must include "every production in the literary, scientific and artistic domain,
whatever the mode or form of its expression" (Article 2(1) of the Convention).

(b) Subject to certain allowed reservations, limitations or exceptions, the following are among the rights that
must be recognized as exclusive rights of authorization:

 the right to translate,

 the right to make adaptations and arrangements of the work,

 the right to perform in public dramatic, dramatic-musical and musical works,

 the right to recite literary works in public,

 the right to communicate to the public the performance of such works,

 the right to broadcast (with the possibility that a Contracting State may provide for a mere right
to equitable remuneration instead of a right of authorization),

 the right to make reproductions in any manner or form (with the possibility that a Contracting
State may permit, in certain special cases, reproduction without authorization, provided that the
reproduction does not conflict with the normal exploitation of the work and does not
unreasonably prejudice the legitimate interests of the author; and the possibility that a
Contracting State may provide, in the case of sound recordings of musical works, for a right to
equitable remuneration),

 The right to use the work as a basis for an audio-visual work, and the right to reproduce,
distribute, perform in public or communicate to the public that audiovisual work.

The Convention also provides for "moral rights", that is, the right to claim authorship of the work and the
right to object to any mutilation, deformation or other modification of, or other derogatory action in relation to,
the work that would be prejudicial to the author's honor or reputation.

(c) As to the duration of protection, the general rule is that protection must be granted until the expiration of
the 50th year after the author's death. There are, however, exceptions to this general rule. In the case of
anonymous or pseudonymous works, the term of protection expires 50 years after the work has been lawfully
made available to the public, except if the pseudonym leaves no doubt as to the author's identity or if the author
discloses his or her identity during that period; in the latter case, the general rule applies. In the case of
audiovisual (cinematographic) works, the minimum term of protection is 50 years after the making available of
the work to the public ("release") or – failing such an event – from the creation of the work. In the case of works
of applied art and photographic works, the minimum term is 25 years from the creation of the work .

(3) The Berne Convention allows certain limitations and exceptions on economic rights, that is, cases in which
protected works may be used without the authorization of the owner of the copyright, and without payment of
compensation. These limitations are commonly referred to as "free uses" of protected works, and are set forth in
Articles 9(2) (reproduction in certain special cases), 10 (quotations and use of works by way of illustration for
teaching purposes), 10bis (reproduction of newspaper or similar articles and use of works for the purpose of
reporting current events) and 11bis(3) (ephemeral recordings for broadcasting purposes).

(4) The Appendix to the Paris Act of the Convention also permits developing countries to implement non-
voluntary licenses for translation and reproduction of works in certain cases, in connection with educational
activities. In these cases, the described use is allowed without the authorization of the right holder, subject to the
payment of remuneration to be fixed by the law.
The Berne Union has an Assembly and an Executive Committee. Every country that is a member of the Union
and has adhered to at least the administrative and final provisions of the Stockholm Act is a member of the
Assembly. The members of the Executive Committee are elected from among the members of the Union, except
for Switzerland, which is a member ex officio.

The establishment of the biennial program and budget of the WIPO Secretariat – as far as the Berne Union is
concerned – is the task of its Assembly.

The Berne Convention, concluded in 1886, was revised at Paris in 1896 and at Berlin in 1908, completed at
Berne in 1914, revised at Rome in 1928, at Brussels in 1948, at Stockholm in 1967 and at Paris in 1971, and
was amended in 1979.

The Convention is open to all States. Instruments of ratification or accession must be deposited with the
Director General of WIPO.

Intellectual Property Rights

Patents, designs, copyrights and trademark are industrial property as they are used in some form of industry or business.
They are also aptly termed intellectual property since they are the products of pure intellectual effort. Attempts have been
made from time to time to expand the boundaries of Intellectual property and to convert a protective law into a source of
monopoly.
Comparitive analysis of patent, copyright and trademark
PATENT COPYRIGHT TRADEMARK

Right Protected Right conferred in respect of
a new invention to
manufacture the product
patented or use the process
patented.
Right conferred in respect of
original, literary, dramatic, musical
and artistic works, cinematograph
film and records.
Right conferred to use a
particular mark, which may be a
symbol, word, device applied to
articles of commerce to indicate
the distinctiveness of goods.

Time Period 14 years and in case of food Life time plus 50 years for literary, 7 years and may be renewed
and drugs 5 or 7 years. dramatic, musical and artistic from time to time.
works. 50 years from year of
publication for records.

Who Can Register Actual inventor or an The author or publisher of, or owner Proprietor of the trademark and
assignee of the right to make of or other person interested in the application may be made in the
an application or legal copyright in any work. name of an individual, partners
representative of either. of a Firm, Corporation,
Government department or
Trust.

Commercial Use Assigning rights or licensing By assigning or licensing the right Licensing the right by
them to industrialists for a to others on a royalty or lump sum registration of the licensee as a
lump sum payment or royalty basis. registered user.
basis.

Remedy For Infringe- Injunction, Damages, Civil, Criminal, Administrative. Injunction, Damages, Accounts
ment Accounts of profits. of profits