Basic course in Intellectual Property Rights

Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page1 Introduction Intellectual Property Rights The term Intellectual Property (IP) means product of the mind or the intellect. In our daily life we come across various forms of Intellectual properties at every step. For example, the design on the bed sheet, pillow cover, bed and other items of furniture in the house, television, personal computer, gas stove, microwave oven, refrigerator, vehicles, weighing machine, breakfast cereals, pasteurized milk in tetra pack, soft drinks and their bottles, books, films, music cassettes, tiles, paints, and practically everything we use in our day to day life, is the product of man’s ingenuity, knowledge and skill, besides labor and capital and it falls under one or the other kind of intellectual property. The concept of Intellectual Property will be well understood, if we know what is meant by the frequently used term Property. Property in legal language is essentially a bundle of rights flowing from the concept of ownership and possession which forms an integral part of property, which means: a. Tangible property such as land and chattel1; b. Intangible property such as intellectual property (IP) which includes invention, work of literature and art etc. With this concept in the mind, Intellectual Property Right (IPR) can be defined as the right given to a person over the creation of his/her mind. Intellectual property acquires legal rights in the form of patent, copyright, trademark, industrial design etc. It gives the creator an exclusive right over the use of his/her creations for a certain period of time. 1. Importance of Intellectual Property Rights (IPR) Intellectual property protection is critical to fostering innovation. Without protection of ideas, businesses would not reap the full benefits of their inventions and would focus less on research and development. Also, there are possibilities, where it can be copied or misused by others affecting business adversely. Hence, the knowledge and awareness of Intellectual property rights (IPR) is important. Interesting Facts  In 1979, Xerox decided not to patent its Graphical User Interface invention, which later formed the basis of Apple’s Macintosh and Microsoft’s Windows personal computer operating systems. Xerox lost around US$500 million during the lifetime of the patent.  In Brazil, MNCs have patented more than half of the 55000 available plant species.  In Texas, Rice Tec patented modified basmati rice, which is traditionally grown in India & Pakistan.  There are several patents in USA on yogasanas, which has been developed and been used in India for more than 5000 years.  There are 200 medicinal plants from our country on which multinationals are trying to take patents on various usages all over the world. 1 An item of tangible movable or immovable property except real estate and things (as buildings) connected with real property. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page2 Ignorance of knowledge on IPR can be extremely detrimental in case organization is using IP of others with or without knowledge. This may lead to unnecessary litigations/infringement proceeding resulting in financial and reputation losses. Interesting Facts Anant Electronics and Futuristic Concepts Media Ltd were using ‘digital transmission system’ technology to manufacture VCDs without knowing that in India, Philips had a patent protection on this technology. Delhi High Court ordered the two Indian companies to stop manufacturing the VCDs that infringed Philip’s “digital transmission system”. Therefore, using technology protected by others can drive a company out of business. Knowledge of IPR is important not only to protect your own IP but also to respect others IP. Generation of IP usually involves huge investment in terms of money, talent, time, manpower and hence, it becomes important to protect it in order to prevent copying by others as well as to have ownership and exclusive rights over it. Exclusive rights that flow by owning IP act as an incentive or reward, which is considered critical to encourage stimulation of ideas leading to further advances. Commercialization of IP can be a great source of revenues for an organization. Interesting Facts  In 2002, IBM got more than 3000 patents & generated IP-licensing revenues of over $1.7 billion per annum.  Canon registered 1,925 patents in US in 1998 & earned over $1 million from its patent portfolio.  Samsung Electronics earned $400,000 from IP in 1998.  In 1980s, Texas Instruments found that Japanese companies such as Hitachi, Mitsubishi, Oki, Fujitsu, Toshiba, Sharp and Samsung are infringing its 10 patents on Dynamic Random Access Memory chips. Texas filed a complaint in 1986 as result Japanese companies took licenses for the use of Texas patents. In the period 1986 to the first half of 1993, it earned $1.5 billion in royalty payments from these licenses. 2. Different forms of IP Intellectual property rights as a collective term includes following independent IP rights, which can be collectively used for protecting different aspects of an inventive work for multiple protection: A. Patent B. Copyright C. Trademark D. Industrial Design E. Geographical Indication F. Traditional knowledge G. Semiconductor integrated circuit layout design H. Protection of undisclosed information or Trade secret I. Protection of plant varieties and farmer’s rights A. PATENT Patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention. Patent rights are territorial i.e. the patent granted in India is valid only in India. To have protection in other countries, inventor is required to file patent application separately in other countries too. Life of a patent is 20 years from date of filing. The aim of the patent system is to: Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page3  Encourage industrial development  Encourage complete disclosure of invention  Prevent duplication of research  Focus on commercial relevance of the invention  Prevent exploitation of researchers by giving them recognition as inventor and providing them royalty upon commercialization  Generate revenue when the invention gets commercialized  Provide a source of technical information Indian Patent Office is administered under superintendence of Controller General of Patents, Designs, Trademarks and Geographical Indications. It functions under Department of Industrial Policy and Promotion, Ministry of Commerce and Industry with Head Offices at Kolkata and branch offices in Chennai, Mumbai and Delhi. History of Patents and Indian Patent Act The first patent in the history was granted in Venice to a German engineer in 1323 for model grain mill, which could cater storage needs of entire Venice. In United States, the first patent was granted in 1787 for specially designed grain elevator. The first legislation in India relating to patents was the Act VI of 1856. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the sovereign. The 1856 Act was based on the United Kingdom Act of 1852 with certain departures including allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty. In India first patent was granted to George Alfred of Calcutta, a civil engineer, on 2nd September 1856 for his innovative “Efficient Punkah Pulling Machine”. George Alfred of Calcutta, a civil engineer, on 2nd September 1856 was granted first patent in India for his innovative “Efficient Punkah Pulling Machine”. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page4 The Act of 1859 provided protection for invention only and not for designs and to remove this lacuna, the ‘Patterns and Designs Protection Act’ (Act XIII) was passed in 1872. This Act was amended the 1859 Act to include any new and original pattern or design or the application of such pattern to any substance or article of manufacture within the meaning of ‘new manufacture’. The Act XV of 1859 was further amended in 1883 by XVI of 1883 to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibitions of India. In 1888, new legislation was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the UK law. In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought in and it replaced all the previous legislations on patents and designs. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was amended in 1920 to provide for entering into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate the provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, another amendment was made to provide for filing of provisional specification and submission of complete specification within nine months. Indian Patents & Designs Act, 1911 was amended after independence. Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949, to review the patent law in India in order to ensure that the patent system is conducive to the national interest. The Committee submitted its interim report on 4th August, 1949 with recommendations for prevention of misuse or abuse of patent right in India. Based on the above recommendation of the Committee, the 1911 Act was amended in 1950 (Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation. In 1952, an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any iinvention relating to surgical or curative devices, through Act LXX of 1952. The compulsory licence was also available on notification by the Central Government. Based on the recommendations of the Committee, a bill was introduced in the Parliament in 1953 (Bill No.59 of 1953). However, the bill lapsed on dissolution of the Lok Sabha. In 1957, Justice N. Rajagopala Ayyangar Committee examined the question of revision of the Patent Law. The report of the Committee comprised of two parts. The first part dealt with general aspects of the patent law and the second part gave detailed note on the several clauses of the lapsed bill of 1953. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st September, 1965 but it lapsed. In 1967, an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20th April, 1972 with the publication of the Patents Rules, 1972. This Act remained in force for about 24 years till December 1994 and an ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999 and was later replaced by the Patents (Amendment) Act, 1999, brought into force retrospectively from 1st January, 1995. The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May, 2003 with the introduction of the new Patents Rules, 2003 by replacing the earlier Patents Rules, 1972. The third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act, 2005 (Act 15 Of 2005 ) on 4th April, 2005 which was brought into force from 1st January, 2005. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page5 Summary of Patent legislation in India  1856: Act on protection of inventions based on the British patent law of 1852. Certain exclusive privileges granted to inventors of new manufacturer for a period of 14 years  1895: Patent monopolies called exclusive privileges (making, selling and using inventions in India and authorizing others to do so for 14 years from date of filing specification  1872: The patents and design protection act  1883: The protection of inventions act  1888: Consolidated as the inventions and design act  1911: The Indian patents and design act  1972: The patent act (Act 39 of 1970) -20th April 1972.  1999: On March 26, 1999 Patents (Amendment) Act, (1999) -01-01-1995  2002: Patents (Amendment) Act 2002 -2Oth May 2003  2005: Patents (Amendment) Act 2005 -1st January 2005 Patents Rules Central Government has power to formulate Rules for the Patents Act, 1970 under Section 159 [Power of Central Government to make rules]. Patents Rules, 1972 were notified and brought into force with effect from 20th April, 1972. These Rules were amended from time to time till 20th May, 2003, when new Patents Rules, 2003 were brought into force by replacing the 1972 rules. These Rules were further amended by the Patents (Amendment) Rules, 2005 and the Patents (Amendment) Rules, 2006. The last amendments were made effective from 5th May, 2006. Schedules There are four Schedules to the Patents Rules which provide details of fees and forms pertaining to various types of actions required under Patents Act and Rules: i. The First Schedule prescribes fees to be paid. ii. The Second Schedule specifies the list of forms and the texts of various forms which are to be used wherever required in connection with various activities under the Patents Act. iii. The Third Schedule prescribes the Form of the patent to be issued on the grant of patent. iv. The Fourth Schedule prescribes costs to be awarded in various proceedings before the Controller under the Act. Types of Patent Applications Following types of patent applications can be filed by the inventor: a. Ordinary Application b. Convention Application c. PCT International Application d. PCT National Phase Application e. Application for Patent of Addition f. Divisional Application Ordinary Application: The first application for patent filed in the Patent Office without claiming priority from any application or without any reference to any other application under process in the Patent office is called an ordinary application. Such an application can be filed by an inventor himself (as an applicant) or by a person to whom the invention is assigned by the inventor (an assignee is the applicant), without claiming any priority of application made in a convention country or without referring to any other application being processed in the Patent Office. The applicant can be either from India or from abroad. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page6 Convention Application: When an applicant files a patent application, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. To get a convention status, an applicant should file the application before any of the patent offices within 12 months from the date of first application in the convention country. PCT International Application: Patent Laws differ from country to country and there is no "World Patent" or "International Patent". However, there is an international patent filing system to file patent in multiple countries called PCT (Patent Co-operation Treaty) System and the application is PCT application or International Application. The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 125 Paris Convention countries. The PCT does not grant patent, but makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The grant of patents remains under the control of the national or regional patent Offices, what is called the “national phase”. PCT National Phase Application: PCT national phase follows the international phase, the application can be filed within 30 months from the international filing date or priority date (whichever is earlier). However in India, it can be filed within 31 months. If the applicant does not enter the national phase within the prescribed time limit, the International Application loses its effect in the designated or elected States. Patent of Addition: Patent of addition is an application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent. In order to be patentable an improvement, should be something more than a mere workshop improvement and must independently satisfy the test of invention. The major benefit is the exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent. Divisional Application: A divisional application is one which has been "divided" from an existing application. The applicant, at any time before the grant of a patent can file a further application, if he so desires or if an objection is raised by the examiner on the ground that the claims disclosed in the complete specification relates to more than one invention. A divisional application can only contain subject matter in the application from which it is divided (its parent), but retains the filing and priority date of that parent. A divisional application is useful if a unity of invention objection is issued, in which case the second invention can be protected as a divisional application. What is an Invention? Invention as defined in Section 2 of The Patent Act, 1970 – “A new product or process involving an inventive step and capable of industrial application” Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page7 Invention shall fulfill following three conditions:  Novelty  Inventive step/non obviousness  Industrial application a. Novelty A patent cannot claim something that already exists, nor can it claim something obvious to a person skilled in the art. To determine this, patent examination always involves looking for prior art, earlier publications to assess novelty or obviousness of the invention. One of the reasons that a patent system exists is to reward inventors for disclosing their invention to the public. This implies that an invention should be new, because otherwise the inventor would get a reward for monopolizing something already in public domain. An important aspect of the patent system therefore, is the determination of novelty of an invention. If examination reveals that an invention is not novel, the patent application is rejected. And even if the patent is granted, it can still be annulled by a court, if the court finds that the invention wasn't novel after all. Novelty means any invention or technology, which has not been anticipated by publication or claim in any document or used in the country or elsewhere in the world before the date of filing of patent application and the subject matter has not fallen in public domain or it does not form part of the state of the art. An invention is not considered to be novel: a. If it has been anticipated by publication before the date of filing of the application in any of the specifications2 filed in pursuance of application for patent in India on or after 1st January, 1912; or b. If it has been anticipated by publication made before the date of filing or the date of priority of the application in any of the documents in any country; or c. If it has been claimed in any claim of any other complete specification filed in India, which was filed before the date of application though published after the date of that application. Relative and absolute novelty In some countries, such as the United States, Canada and Japan, a grace period exists for protecting an inventor or their successor from authorized or unauthorized disclosure of the invention before the filing date. That is, if the inventor or the successor in title publishes the invention, an application can still be validly filed which will be considered novel despite the publication, provided that the filing is made during the grace period following the publication. The grace period is usually 6 or 12 months. This type of 2 Patent Specification in particular Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page8 novelty bar is sometimes known as a relative novelty bar. Australia, Mexico, Brazil, the Philippines, Ghana and Ukraine also are the examples of such jurisdictions. South Korea and Russia also provide a similar broadly operating grace period, providing a period of six months in which to file a patent application following the initial disclosure or publication of the invention. At the other end of the spectrum, Europe, New Zealand, South Africa, Zimbabwe and Zambia make no provision for a grace period. Similarly, there is no provision for a grace period in India as well. In these countries, any act that makes an invention available to the public, no matter where in the world, before the filing date or priority date has the effect of barring the invention from being patented. Examples of acts that can make an invention available to the public are written publications, sales, public oral disclosures and public demonstrations or use. This is known as an absolute novelty requirement. Prior art search In order to determine novelty of an invention, a prior art search is often conducted by Patent Attorneys, Patent Agents or Patent searchers before an inventor files a Patent application. At later stages, it is conducted by a Patent Examiner during patent examination at a Patent Office. Patent office deals with prior art searches in the context of the patent granting procedure. To assess the validity of a patent application, patent examiners explore the prior art that was disclosed before the invention occurred or before the filing date. The prior art search may be done by searching in databases of patents, patent applications and other documents such as utility models and in the scientific literature. Patent practitioners call this as "the state of the art". The state of the art in the case of an invention is taken to comprise all matter (whether a product, a process or information about either available in India or elsewhere), which has at any time before the priority date of that invention been made available to the public by publication of description or by use in India. A matter is considered as part of the state of the art on the date it first becomes available to the public, wherever in the world that may be, and in whatever manner or language the disclosure is made. There is no limit on the age of the disclosure. No search can possibly cover every single publication on earth, and therefore one cannot actually say that an invention is "new". A prior art search may, for instance, be performed using a keyword search of large patent databases, scientific papers and publications, and even in Google3. However, it is impossible to guarantee the novelty of an invention, even if a patent has been granted, since some obscure little known publication may have disclosed the claimed invention. Important A prior art document is said to anticipate a claim of a patent, if the prior art document describes all the features of that claim, either implicitly or explicitly, which means that the features of the claim are entirely contained within a single document in the prior art. If more than one document is cited, each must stand on its own. The cumulative effect of the disclosures cannot be taken into consideration and lack of novelty can not be established by forming a mosaic of elements taken from several documents. This may be done only when arguing obviousness. However, if a cited document refers to a disclosure in another document in such a way as to indicate that, the disclosure is intended to be included in that of the cited document, then the two are read together as though they were a single document. Such document can still be useful as prior art, but only to prove that the claimed invention is obvious. Usually, to establish that an invention is obvious, more than one prior art document is necessary. 3 www.google.com/patents Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page9 To determine whether invention is anticipated by prior art, the filing date of the patent application or patent in question is crucial. If the publication or disclosure was made before the day of filing, it counts as prior art. It doesn't matter how long before the day of filing the publication was made. It is important, however, that the publication date is established with sufficient accuracy. For example, if a patent application is filed on March 1st, 2000, a book published in 1999 counts as prior art. Its second edition from 2001 does not as prior art because patent was filed before publication of the same. An issue of a journal from "March 2000" may or may not be prior art, depending on the publication date of the journal. Illustrative Cases4 a. In the case of Monsanto Company v. Coramandal Indag Products (P) Ltd. (1986), it was held that the invention was publicly known, since its formula was published in the report of the International Rice Research Institute in the year 1968 and its common name Butachlor was published in the same report in the year 1969. b. A document is not considered as a proper anticipation unless it gives the public the same information as the one presented in the applicant’s specification. A “mosaic of extracts” culled from several documents have not been accepted as constituting a relevant anticipation (Decision of the Controller (1942) Patent Application No. 27709). c. A ‘mosaic’ of separate steps, each known in manufacture, is not sufficient to constitute ‘anticipation’ as to warrant the refusal of grant of a patent, though they may have a bearing upon the question of quantum of ingenuity which arises when a court is called upon to consider whether there is ‘subject matter’ for a patent in the invention (Decision of the Deputy Controller (1946) Patent Application No. 32384.) Prior Claiming5 In order to be novel, the invention shall not be claimed in any other patent before priority date of the invention. Prior art search in order to check prior claiming is done by using the patent databases. a. In the matter of application for patent No. 123140, Centron Industrial Alliance Private Limited v. Harbans Lal Malhotra and Sons Private limited, application was filed on 15th September, 1969 in respect of “Improvements in or relating to blades of razors and like instruments.” The claim 1 was a method of manufacturing, superior quality blades of razors and like instruments as therein defined, which included coating the blades with polytetrafluoroethylene, characterized in that, the said method consisted of atomic or molecular deposition in vacuum of a thin film of particles of a corrosion resistant material on the cutting edge or edges of the blades of the said instruments before coating the said blades with said polytetrafluoroethylene. Claim 1 of the prior filed application 120345 filed on 14th March, 1969 cited for prior claiming was a method of manufacturing superior quality blades of razors and like instruments consisting of atomic or molecular deposition in vacuum of a thin film of particles of a corrosion resistant material on the cutting edge or edges of the blades of the said instruments and thereafter coating the said blade with polytetrafluoroethylene. Controller found the application completely anticipated by prior claiming. b. Three more applications, 120651 and 120652 both of 31st March, 1969 and 118127 of 16th October, 1968 were found anticipating by prior claiming in part. Application No. 120651 claimed Rhodium as deposited material on the cutting edges of the blade instead of a general expression 4 Manual of Patent Practice and Procedure, 2008 5 Manual of Patent Practice and Procedure, 2008 Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page10 “corrosion resistant material” of impugned claim. The only difference of 120651 was the use of Rhodium as a thin film of particle deposited. The Controller observed that the characteristic property of Rhodium was identical with the property of corrosion resistant material and concluded that the claim at issue was anticipated by cited document in part by prior claiming. Similarly, 120652 used platinum and was held as anticipating in part by prior claiming. Application No. 118127 used razor blades made of carbon steel or hardened stainless steel having a coating of chromium. This was also held as anticipating in part by prior claiming. b. INVENTIVE STEP [NON-OBVIOUSNESS] The most common way to attack a claim based on lack of inventive step is to identify a problem in the first document that is solved by the second document. One of the most complex aspects of patent law is the inventive step or obviousness of an invention. Novelty is determined before inventive step because the creative contribution of the inventor can be assessed only by knowing the novel elements of the invention. Inventive step (non-obviousness) means a feature of an invention that involves technical advance as compared to existing knowledge or having economic significance or both and that makes the invention non-obvious to a person skilled in the art. Invention should take technology one-step ahead and should not be replica or repetition of some previous inventions. Or we can say that invention must be non-obvious to a person skilled in the art. Inventive step is defined in the Section 2(1)(ja) of India Patents Act , 1970 as under: ‘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.’ Even in the absence of a relevant prior art, a patent can’t be granted in case the invention is not different enough from similar inventions that are already there. A patent may be refused, if the differences between the invention and the prior art are too obvious. The invention must be sufficiently different or unique from what has been used or described before that it may be said to be non-obvious to a person having ordinary skill in the area of technology related to the invention. For example, the substitution of one material for another, or changes in size, is ordinarily not patentable. Important Features of Assessment of Inventive Step The Supreme Court laid down the following criteria for assessing inventive step in M/s. Bishwanath Prasad Radhey Shyam Appellant v. M/s. Hindustan Metal Industries, “It is important that in order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an ‘inventive step’. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. The combination of old known integers may be so combined that by their working interrelation they produce a new process or improved result. Mere collection of more than one integers or things, not involving the exercise of any inventive faculty, does not qualify for the grant of a patent.” Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page11 In Canadian General Electric Co. Ltd., v. Fada Radio Ltd. A.I.R., 1930. PC.I., it was observed that under the general law of patents, an invention which consists of a small inventive step but having regard to the conditions of the art, constitute a step forward, be good subject matter for a patent. In Gillette Industries Ltd., v. Yeshwant Bros. A.I.R., 1938. Bom. 347, it was held that mere simplicity was not necessarily an objection to the subject matter of an invention, though matters of ordinary skilled designing or mere workshop improvements were not inventions. When the invention is just an automatic or obvious extension of prior art, the invention lacks in inventive step. To judge the inventive step, the question to be answered is-“Would a person with ordinary skills in the art have thought of the alleged invention?” If the answer is ‘No’, then the invention is non-obvious. The question, “Is there an inventive step?” arises only if there is novelty in the invention. If the invention makes available to the person skilled in the art something that he would not reach by normal exercise of his skill, then the inventor has made a contribution to the art which justifies the grant of a patent. This does not mean that an invention has to be technically complex. This can be very simple too. The term "obvious" means that the invention does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art. For this purpose, a person skilled in the art is presumed to be an ordinary practitioner aware of what was general common knowledge in the relevant art at the relevant date. In some cases the person skilled in the art may be thought of as a group or team of persons rather than as a single person. Mosaicing Multiple Documents When assessing the inventive step, combining the teachings of different documents within the prior art [mosaics] is permissible, if it is obvious to do so at the time of filing or priority date of patent application, to the person skilled in the art. a. In Technograph v. Mills and Rockley (1972 RPC 346 at p-355(HL), it was observed that “when dealing with obviousness, unlike novelty, it is permissible out of relevant documents, but it must be mosaic which can be put together by an unimaginative man with no inventive capacity.” b. If the invention can be produced by combining the teaching of one document with common general knowledge or with standard practice in the art, then, even if the inventor has not conceived it, nor the applicant presented it in such terms, there is a strong presumption that such a combination would be obvious to the skilled person. If, in his application, the applicant refers to prior art as “conventional”, this may be taken to indicate that the prior art is common general knowledge (NEC Corporation’s Application (BL O/038/00). c. When a problem defined with reference to the prior art and as disclosed in a primary document would necessitate the skilled person to take help from the individual solutions available in different secondary documents, in the same or related fields to provide part of the solution to the objective problem, the inventive step is assessed taking into account these documents also. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page12 d. Where the documents are from different technical fields, the question is whether the problem would have prompted search in those fields. It is reasonable to expect a person skilled in the art, unable to fulfil a need in the relevant field, to look for suitable parallels in a neighbouring field so closely related that he would take developments therein into account, or in the broader general field in which the same or similar problems extensively arise and of which he must be expected to be aware (Decision T 176/84, OJEPO 2/86). e. In Dow Chemical Company (Mildner's) Patent [1973] RPC 804, an invention residing in an electrical cable in which a plastics jacket was securely bonded to a metal shield using a specified copolymer was held to be obvious in the light of one document disclosing all the features of the cable but not mentioning the adhesive copolymer and other documents disclosing the copolymer. Although these latter documents did not refer to cable manufacture, they did refer to the copolymer as having high moisture resistance and being suitable for bonding plastics to metal, both essential properties in adhesives for use in cables. It was, therefore, reasonable to expect the skilled person concerned with the problem of adhering plastics to metal in cables to have found and considered these documents. f. If a claim relates to a composition comprising known ingredients, it is likely to be obvious, unless the mixture/combination leads to some new effect or synergistic effect. g. If an invention lies merely in verifying the previous predictions, without substantially adding anything for advancement in the art, the inventive step is lacking. h. In general, where an invention comprises a collection of known or obvious parts, it must be shown before raising the objection for obviousness that it was obvious to combine these parts. i. Where an invention can be thought of as the result of a selection from a number of alternatives, to demonstrate that the invention is not obvious, it is usually only necessary to show that it solves a technical problem in a surprising or unexpected way. The invention has to be considered as a whole for consideration of inventive step. It is thus not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claim taken separately are known or might be found to be obvious. Ex-Post Facto Analysis in relation to Inventive Step The examiner (or any other person) who is considering the question of whether or not an invention is obvious has to bear in mind that it is an ex-post facto 6 analysis. He can be very easily misled by a line of reasoning involving taking the solution and working backwards to the problem by a succession of easy steps. In considering a prior publication, the examiner has to avoid looking at the document under the influence of the application he is examining, and should attempt to place himself in the shoes of the skilled person faced with the problem at hand. In famous case of Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd, [1985] RPC 59, the plaintiffs7 were the manufacturers of the first commercial windsurfer/sailboard and patented their design for sailboard with a Bermuda rig and a wishbone spar in the UK and other countries. Plaintiffs sued another company for patent infringement as a result of making and selling a similar sailboard in UK. The defendants Tabur marine challenged the validity of the patent based on the fact that in 1958, at least 10 years before the grant of the patent, a 12 year old boy called Peter Chilver had built an early version of a sailboard which was 6 Latin word meaning ‘after the fact’ 7 The party who initiates the lawsuit. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page13 evidenced by film footage taken off the coast of Hayling Island. They alleged the subject-matter of the plaintiffs' patent is anticipated. The Court of appeal upheld Tabur Marine's claim that the boy's invention predated the plaintiff's application for a UK patent and the patent was rendered invalid notwithstanding that Chilver's sailboard was of a slightly different design. The Court held that the question of obviousness “has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent in suit relates”. The court proposed the following 4-point test called the as ‘The Windsurfer Test’ to determine whether an invention involves an inventive step which is: a. The court identifies the inventive concept embodied in the patent in suit; b. The court will assume the mantle of the normally skilled but unimaginative addressee in the art (the person to whom the patent is addressed) at the relevant date and impute to him what was at that date common general knowledge in the art in question; c. The court identifies what, if any, differences exist between matter cited as known or used and the alleged invention, and d. The court decides whether, viewed without any knowledge of the invention, those differences constitute steps which would have been obvious to the skilled man or whether they required any degree of invention. Determination of Inventive Step The following aspects are looked into while determining inventive step in the alleged invention: A) Issues involved in assessment of Inventive Step (a) What was the problem which the patented development addressed? (b) How long had that problem existed? (c) How significant was the problem seen to be? (d) How widely known was the problem and how many were likely to seeking a solution? (e) What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution? (f) What other solutions were put forward in the period leading up to the publication of the patentee's development? (g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious? (h) How well had the patentee's development been received? (i) To what extent could it be shown that the whole or much of the commercial success was due to the technical merits of the development? B) Steps in Determination of Inventive Step (a) Determining scope and content of the prior art to which the invention pertains. (b) Assessing the technical result (or effect) and economic value achieved by the claimed invention. (c) Assessing differences between the relevant prior art and the claimed invention. (d) Defining the technical problem to be solved as the object of the invention to achieve the result. (e) Final determination of non-obviousness, which is made by deciding whether a person of ordinary skill could bridge the differences between the relevant prior art and the claims at issue. C) Assessing Inventive Step In assessing an inventive step, mosaics is permissible, if it is obvious to do so at the time of filing or priority date of patent application, to the skilled person in the art. The applicant may, for example, have presented his invention as a combination of features A, B, C and D which he admits as known in combination, with a further feature E which it would undoubtedly be inventive to add to the acknowledged combination. It may be that a prior document discloses the combination of features A and Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page14 E, and that the addition of the remaining features B, C, D is then the most natural way of completing the disclosure in the prior document and therefore obvious. Person Skilled in the Art The person skilled in the art is presumed to be an ordinary practitioner aware of what was common general knowledge in the art at the relevant date (average skilled person). He is also be presumed to have had access to everything in the state of the art, in particular the documents cited in the search report, and to have had at his disposal the normal means and capacity for routine work and experimentation. Such person need not possess any inventive capability. It was the presence of such capability in the inventor, which set him apart from the notional skilled person. His attitude is considered to be conservative. He would never go against an established prejudice, or try to enter unpredictable areas or take incalculable risks. The skilled person can be expected to look for suggestions in neighbouring fields if the same or similar problems arise in such fields. The skilled person can be expected to look for suggestions in a general technical field if he is aware of such fields. The notional skilled person would perform a transfer of technology from a neighbouring field to his specific field of interest, if this transfer involved routine experimental work comprising only routine trials. In Tetra Molectric Ltd v. Japan Imports Ltd ([1976] RPC 547), the Court of Appeal held that a claim to a smoker's lighter using piezoelectric ignition was obvious. Since the possibility of using piezoelectricity in a lighter would have occurred to the industry, a skilled lighter manufacturer, himself not an expert in piezoelectricity, could reasonably be expected to seek advice from those who were. If such experts had been consulted, they would have advised that the suggestion was definitely worth trying, and they could have solved such problems as they arose. The hypothetical skilled man in this case was therefore a team which included persons skilled in piezoelectricity, and not simply persons engaged in the lighter industry. In advanced technical fields, the competent "skilled person" could be taken to be a group of people as "skilled person" from the relevant technical branches such as a research or production team. Lack of Inventive Step Some examples of lack of inventive steps are given below: a) When invention lies only in providing equivalents (mechanical, electrical or chemical) to the known art. For example, use of hydraulic motor instead of electric motor in a pump. b) When the prior art is incomplete and the invention lies in “filling the gap”, which would naturally or readily occur to the skilled person. For example, the invention is a building structure made from aluminium. The prior art discloses such a structure of light weight material but does not mention aluminium. c) When an invention consists of a new use of well-known material employing the known properties of that material, inventive step is lacking. For example, a washing composition containing detergent which is a known compound having property of lowering the surface tension of water; the property being known as the essential one for detergents. d) Substitution of a recently developed material in a known device whose properties make it suitable for that use as earlier. For example, an electric cable comprises a polyethylene sheath bonded to a metallic shield by an adhesive. The invention lies in the use of a particular newly developed adhesive known to have the property of being suitable for metal bonding. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page15 e) Selecting a particular range of parameters from a limited range of possibilities, which is obvious. The invention can be arrived at as a mere simple extrapolation in a straightforward way from the known art. f) Use of a known technique in a closely analogous situation. For example, application of a pulse control technique to an electric motor driving an auxiliary mechanisms of an industrial truck such as a fork – lift truck , where the use of this technique is already known for the electric propulsion motor of the truck. g) Juxtaposition of known devices or processes not producing any non–obvious working inter-relationship. Indicators of Inventive Step While assessing an inventive step, various indicators could be employed. a. Distance: It is to be decided as to how much is the distance between the subject-matter of the invention and the prior-art. If such distance is large, establishing the inventive step is easier. b. Surprising Effect: The inventive step may be present if there is a surprising or unexpected effect. However, if the measures which lead to this effect, are near at hand by themselves, a surprising effect is not sufficient for granting a patent. c. Long Felt Need: If the claim solves a "long felt need", there is a presumption that a claim is not obvious as other inventors might have also tried to solve it but could not provide the solution to fulfil the need. d. Failure of Others: If other inventors have tried to solve a problem and were not successful, the claim will likely involve an inventive. e. Complexity of Work: If the work undertaken by the inventor in order to produce the invention was particularly complex, and not readily carried out, that is an indication that it was not a matter of routine. In such cases the invention can be non-obvious. f. Commercial Success: Commercial success is indicative (but not conclusive) of an inventive step. g. Cheaper and more economical product and simplicity of the proposed technological solution. h. Prior art motivation. Long Standing Problem The fact that no-one has followed a particular path before, does not of course dispose of an objection of obviousness, otherwise any invention which was new would automatically be inventive. However, the reasons why this has not been done before may well be important, in establishing inventive step. (i) If the inventor has solved a long-standing problem by using in a conventional way, the materials or techniques which have only recently become available then this is not inventive. (ii) It is also not inventive to respond to a change in economic circumstances. For example, if a product has not been made from a particular material or by a particular process for reason of cost, and the material or process becomes cheaper or the market value of the product increases, it is not inventive to take advantage of this. (iii) If a newly-arisen problem is solved by the use of available resources in an obvious way, then there is no inventive step (unless the inventor has been the first to identify the problem). (iv) But if the inventor has solved a long-recognised problem by means which others could have used but did not, then there may be an inventive step (Minnesota Mining & Manufacturing Co v Rennicks Ltd [1992] RPC 331). Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page16 In Chiron Corpn v. Organon Teknika Ltd [1994] FSR 202, a claim to a polypeptide comprising an antigenic determinant of the hepatitis C virus was found to be non-obvious because despite the attempts of numerous research groups over a 10 year period to identify the agent responsible for Non-A, Non-B Hepatitis (later named as Hepatitis C), the patentees succeeded in a unique fashion by adopting a known technique which would not have been obvious to try in the circumstances. Fulfilling Need Evidence that an invention fulfils a long-felt need and has been commercially successful is ordinarily taken into account in assessing obviousness. The decisions in Hickman v. Andrews, [1983] RPC 147, PLG Research Ltd v. Ardon International Ltd, [1993] FSR 197) and Optical Coating Laboratory Inc. v Pilkington P.E. Ltd. [1995] RPC 145, P. 166, uphold this principle. At the same time, it is important to have evidences as to the long-felt want or unsuccessful attempts to solve a particular problem, time taken in developing the prior art and the advantage stemming from the invention. It is possible that commercial success of the invention may be attributable to factors achieved independently of the invention, such as the quality or price of the product, or to superior marketing. Advantages of invention If an invention claims a variation from the prior art but which has no advantages, or is even disadvantageous; it does not meet the criterion of inventive step. The position is of course different if the applicant has discovered that a variation thought to be disadvantageous is in fact not so, or if from a large number of variants which would have been regarded as no more than feasible alternatives with no advantages, the applicant has selected a variant with an unexpected advantage. Selection Although there is no inventive step if it is clear from the prior art that taking that step is likely to lead to success, there may be invention if that is only one of many courses possible, and there is no reason to infer from the prior art that this one is more likely than the others to be profitable. In Bayer AG (Baatz's) European Application [1982] RPC 321, carbonless copying paper was characterised by microcapsules made of a particular polymer, which was already known for forming coatings on textiles, leather, wool and metal. Even if these were thought to be neighbouring fields, there was no reason to expect that improved results would be obtained by the use of this material (as the results of comparative experiments showed they were), and thus it was not obvious to select it from the enormous number possible. A "selection" invention should meet the criterion that the selection is based on some substantial advantage gained or some substantial disadvantage avoided. All the selected members must possess the advantage in question and selection must be in respect of a quality of special character which can fairly be said to be peculiar to the selected group. This is not necessarily nullified if it transpires that some other members of the class from which the selection is made have this quality, but the claim may be invalid if it is found that the quality is common to many other members in addition to those selected. Overcoming Technical Prejudice An invention may be regarded as non-obvious if it goes against the generally accepted views and practices in the art. Further examples are if persons skilled in the art would regard certain materials or techniques as unsuitable for a particular purpose, then if the inventor has found that this prejudice is not Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page17 well-founded, then he has made an inventive contribution to the art. Likewise, the omission of a step hitherto thought to be necessary may constitute an inventive step. There is also no invention in merely tolerating the disadvantages which have deterred others. For example, if an inexpensive plastics material is thought unsuitable for making tools because it is not durable, there is no invention in using it to make a cheap screwdriver intended only for light work and accepting that it will have only a short life. It has been stated for years in textbooks that a particular class of chemical reaction, carried out under elevated pressure, gives poor yields, and an inventor now claims the synthesis of a particular compound by such a process. If all he has done is to take advantage of the high price commanded by the product, or the cheapness of the starting materials, and has decided to accept the disadvantage of low yield, then that is not inventive; it is an obvious response to prevailing economic circumstances. On the other hand, if the inventor has discovered that good yields can be obtained by the use of still higher pressures, a fact not suggested in the prior art, then that would be inventive. But if higher yields would be expected at difficult-to-obtain pressures, and the inventor has merely taken advantage of new techniques making such pressures more available, then that is not inventive. Finally, if the inventor has discovered that the standard accepted views on the low yields, while being normally true for this reaction, are not in fact true for this particular compound, then there is inventive step in the choice of this process. c. CAPABLE OF INDUSTRIAL APPLICATION The third criterion of patentability is that the invention should be capable of industrial application. It is defined in Section 2 (1) (ac) of the Patents Act, 1970, as: “Capable of Industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry. If the subject matter is devoid of industrial application, it does not satisfy the definition of “invention” for the purpose of the Act. The purpose of granting a patent is not to reserve an unexplored field of research for an applicant. Methods of testing are generally regarded as capable of industrial application if the test is applicable to the improvement or control of a product, apparatus or process which itself is capable of industrial application. It is therefore advisable to indicate the purpose of the test if this is not otherwise apparent. An invention for a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not taken to be capable of industrial application. Parts /pieces of the human or animal body to be used in transplants are objected as not being capable of industrial application. Case studies on Industrial applicability In Chiron Corp v. Murex Diagnostics Ltd and other [1996] RPC 535 (page 607), it was held that the requirement that the invention can be made or used “in any kind of industry” so as to be “capable of industrial application” carries the connotation of trade or manufacture in its widest sense and whether or not for profit and, further, that no industry exists in that sense to make or use that which is useless for any known purpose. Views of the High Court of Australia in NRDC's Application [1961] RPC 134, give a good guide to the meaning to be attributed to industrial application. There must be a product, but this need not be an article or substance, but must be something in which a new and useful effect, be it creation or alteration, may be observed. It may, for example, be a building, a tract or stratum of land, an electrical oscillation, but it must be useful in practical affairs. A method of eradicating weeds was held to give rise to a product (an Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page18 improved crop) because this was an artificially created state of affairs; moreover it was one whose significance was economic. In John Lahiri Khan’s Application (BL O/356/06) a method for effecting introductions with a view to making friends was held not to be industrially applicable, even though it could be carried out by a commercial enterprise. It was also found to be excluded as a method of doing business. In Eastman Kodak Co. v. American Photo Booths Inc. (BLO/457/02), the issue was a patent for a photo-booth camera, it was held that the folded optical path as described and claimed could not give rise to the claimed narrowing of the depth of field. As a result, the hearing officer held that the invention could not work as described and claimed, and so lacked both industrial applicability and sufficiency of disclosure. Objecting to insufficiency may be particularly appropriate if the claims do not refer to the intended function or purpose of the invention, for example if a “flying gyroscope” is claimed merely as an article having a particular specified construction. B. COPYRIGHT Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works and producers of cinematographic films. Copyright gives protection for the expression of an idea and not for the idea itself (Patent provides protection for implementation of an idea). For example, many authors write textbooks on physics covering various aspects like mechanics, heat, optics etc. Even though these topics are covered in several books by different authors, each author will have a copyright on the book written by him /her provided the book is not a copy of some other book published earlier. India is a member of the Berne Convention, an international treaty on copyright. Under this Convention, registration of copyright is not an essential requirement for protecting the right. It would, therefore, mean that the copyright on a work created in India would be automatically [inherent] and simultaneously protected through copyright in all the member countries of the Berne Convention. The moment an original work is created, the creator starts enjoying the copyright. However, an undisputable record of the date on which a work was created must be kept. When a work is published with the authority of the copyright owner, a notice of copyright may be placed on publicly distributed copies. The use of copyright notice is optional for the protection of literary and artistic works. It is, however, a good idea to incorporate a copyright notice. Copyright Act, 1957 governs the copyright protection in India. The total term of protection for literary work is the author’s life plus sixty years. For cinematographic films, records, photographs, posthumous publications, anonymous publication, works of government and Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page19 international agencies the term is 60 years from the beginning of the calendar year following the year in which the work was published. For broadcasting, the term is 25 years from the beginning of the calendar year following the year in which the broadcast was made. C. TRADEMARK Trademark is a distinctive sign, which identifies certain goods or services as those produced or provided by a specific person or enterprise. Trademarks may be one or combination of words, letters, and numerals. It may also consist of drawings, symbols, three dimensional signs such as shape and packaging of goods, or colors used as distinguishing feature.  Identify and distinguish the goods/services  Indicate the source  Symbol of good will  Guaranties consistency in quality  Makes purchasing decisions easy  Advertises & creates an image Some famous Trademarks: Nike, Reebok, Coca-cola, Pepsi etc. Trademarks may be a single word or a combination of words, letters, and numerals etc. It may also consist of drawings, symbols, three dimensional signs such as shape and packaging of goods, or colors used as distinguishing feature. Trademarks are especially important when consumers and producers are far away from one another. Children ask for Barbie dolls, Lego building blocks, and Hot Wheels toy cars. Some adult’s dream of Ferrari automobiles, but more can afford to buy Toyota or Honda brands. These consumers need trade-marks to seek or avoid the goods and services of particular firms. A trademark:  is used to identify and distinguish the goods/services  is used to indicate the source  is a symbol of good will  guaranties consistency in quality  makes purchasing decisions easy  advertises & creates an image of a brand D. INDUSTRIAL DESIGN Industrial design as per The Designs Act, 2000 means the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article, whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but it does not include any mode or principle of construction or anything which is in substance a mere mechanical device. In this context, an article means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately. The industrial designs are applied to a wide variety of products of industry or handicraft such as watches, jewellary, fashion, industrial and medical implements etc. The existing legislation on industrial designs in Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page20 India is contained in The Designs Act, 2000 which serves its purpose well in the rapid changes in technology and international developments. The total term of a registered design is 15 years. Initially the right is granted for a period of 10 years, which can be extended, by another 5 years before the expiry of initial 10 years period. The proprietor of design may make the application for such extension even as soon as the design is registered. E. GEOGRAPHICAL INDICATION A geographical indication (GI) is a sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin. Most commonly, a geographical indication consists of the name of the place of origin of the goods. A geographical indication not only assures quality and uniqueness but also allows producers to obtain market recognition and a premium price. A Geographical Indications Registry with all India jurisdictions operates in Chennai, as per the Geographical Indication of Goods (Registration and Protection) Act 1999. Darjeeling Tea is among the around 36 Indian products registered with the GI registry. The other products are: Pochampally Ikat (Andhra Pradesh); Chanderi saree (Guna, Madhya Pradesh); Kotpad Handloom fabric (Koraput, Orissa); Kota Doria (Kota, Rajasthan); Kancheepuram silk (Tamil Nadu); Bhavani Jamakkalam (Erode, Tamil Nadu); Mysore Agarbathi (Mysore, Karnataka); Aranmula Kannadi (Kerala); Salem fabric (Tamil Nadu); Solapur terry towel (Maharashtra); Mysore silk (Karnataka); Kullu shawl (Himachal Pradesh); Madurai Sungudi (Tamil Nadu); Kangra tea (Himachal Pradesh); Coorg Orange (Karnataka); Mysore betel leaf (Karnataka); Nanjanagud banana (Karnataka); Mysore sandalwood oil (Karnataka); Mysore sandal soap (Karnataka); Bidriware (Karnataka); Channapatna toys & dolls (Karnataka); Coimbatore wet grinder (Tamil Nadu); Mysore rosewood inlay (Karnataka); Kasuti embroidery (Karnataka); Mysore traditional paintings (Karnataka) and Orissa Ikat (Orissa). The registration of a GI shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees. F. SEMICONDUCTOR INTEGRATED CIRCUIT LAYOUT DESIGN Semiconductor Integrated Circuits (IC) Layout Design Act 2000 provides protection for semiconductor IC layout designs. IC Layout design includes a layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor IC. Semiconductor IC is a product having transistors and other circuitry elements, in which are inseparably formed on a semiconductor material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function. In order to get registration the IC Layout design shall be:  Original  Not commercially exploited anywhere in India or in a convention country  Inherently distinctive  Inherently capable of being distinguishable from any other registered layout design is not registrable as IC layout design The design not exploited commercially for more than 2 years from date of registration of application are treated as commercially exploited for the purpose of Semiconductor Integrated Circuits (IC) Layout Design Act 2000. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page21 The term is 10 years from the date of filing or from the date of first commercial exploitation anywhere in any country whichever is earlier. G. UNDISCLOSED INFORMATION OR TRADE SECRET A trade secret refers to data or information relating to the business which is not generally known to the public and which the owner reasonably attempts to keep secret and confidential. Trade secrets generally give the business a competitive edge over their rivals. Almost any type of data, processes or information can be referred to as trade secrets so long as it is intended to be and kept a secret, and involves an economic interest of the owner. For example, a business may have certain internal business processes that it follows for its day-to-day operations that give it an edge over its competitors. This could be regarded as a trade secret. The Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) under the auspices of the World Trade Organization lays down the following three criteria for regarding any information as undisclosed information (or trade secrets):  It must not be generally known or readily accessible by people who normally deal with such type of information.  It must have commercial value as a secret  The lawful owner must take reasonable steps to keep it secret. Intellectual property being intangible in nature requires registration in order to obtain ownership. At the time of registration the owner has to completely disclose IP which he/she wishes to protect and register. Trade secrets and confidential information is a very unique form of IP that may lose its value once it is disclosed and hence it is not registered. Therefore, the only way to protect it is to keep it confidential and not to disclose to anyone. Hence it becomes extremely important to take precautionary measures to protect all such IP. Legal Framework in India There is no specific law in India that protects trade secrets and confidential information. Nevertheless, Indian courts have upheld trade secret protection on basis of principles of equity, and at times, upon a common law action of breach of confidence, which in effect amounts to a breach of contractual obligation. The law of trade secrets is derived from the basic principles of the law of torts, restitution, agency, quasi-contract, property and contracts. There are sound economic reasons for trade secret protection. Failure to protect obligations of confidentiality could inhibit both the quantity of information exchanged and its quality. The “owner” of the secret will in most cases have expended substantial resources to discover the secret and hence has a clear economic interest in its remaining secret. In addition, the economic rationale behind such protection is to offer an incentive to invest in the creation of information. In India it is possible to contractually bind a person not to disclose any information that is revealed to him/her in confidence. In one case, the Delhi High Court has also upheld that a claim that disclosure of information would amount to breach of confidence is not defeated by the fact that other people in the world already knew the information. The Supreme Court of India has also upheld a restrictive clause in an employment contract, which imposed constraints on the employee to not reveal or misuse any trade secrets that he or she has learnt whilst in employment. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page22 The remedies available to the owner of trade secrets would be to obtain an injunction preventing a third party from disclosing the trade secrets, return of all confidential and proprietary information, and compensation for any losses suffered due to disclosure of trade secrets. Confidential information vs trade secret The terms, “confidential information” and “trade secret” are used synonymously and usually confused with each other. Confidential information is the information which company would like to keep secret. It may or may not be essential for business. In other words, all trade secrets are confidential in nature but all confidential information cannot be termed as trade secret. Examples of trade secret  The fish medicine for chronic asthma patients, a traditional treatment known only to Bathini Gowd brothers of Hyderabad. The medicine is given out only once a year on an auspicious day determined by astrological calculations.  The Coca-Cola formula is The Coca-Cola Company's secret recipe for Coca-Cola. As a publicity marketing strategy started by David W. Woodruff, the company presents the formula as a closely held trade secret known only to a few employees.  Recipes for other soft drinks of Coca-Cola and products -such as KFC chicken and McDonald's special sauce -are also closely-guarded trade secrets, but the Coke formula is the oldest. IMPORTANT: Confidential information should always be clearly communicated to be “confidential”. Such information cannot be proved to be so if not communicated to be confidential and appropriate measures have not been taken to protect it. But on the other hand do remember that even if the document is not labeled or communicated as “confidential” and from its contents it looks confidential to a educated person like you, it is your implied duty to maintain its confidentiality and do needful to safeguard it. Peculiar features All trade secrets are confidential in nature but all confidential information may or may not be trade secret. Peculiar features of trade secret are: • Usually there may or may not be any defined legal framework to protect it but misappropriation may be an offence. In India there is no legal framework to protect it but it is protected under contract law or law of torts etc. • It is not disclosed like other forms of IP and it loses its value in the market once secret is disclosed and there is no way to retrieve it back. • It’s very crucial for business (trade secret). • The duration not fixed as in case of patent or copyright. Life of a trade secret is as long as it is kept a secret. Once secret is out, value is lost for ever. • It’s easily misappropriated because it represents nothing more than information, which can be memorized, scribbled down, e-mailed or copied onto some tangible medium and then quietly removed from company premises. • Independent creation of a trade secret is not infringement. If company X has a trade secret and company Y creates an identical trade secret independently without stealing it from company X, there is no infringement. • Once trade secret is disclosed in public, value is lost forever-One cannot “unring the bell”. Introduction C o p y r i g h t s © 2 0 1 1 , O r i g i i n I P S o l u t i o n s , L L P , A l l R i g h t s R e s e r v e d . Page23 • It’s often overlooked as intellectual property asset and most of the times companies fail to identify and assess its value properly. • The creation of trade secret is never announced in public. • The validity of trade secret is only proved in case of litigation. H. PLANT VARIETY AND FARMER’S RIGHT The Protection of Plant Variety and Farmer’s Rights Act, 2001 provides for the establishment of an effective system for protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants. ***