Intellectual Property Rights

Tools in the IPR kit: Patents Patent Law, national and international International Patent Law o Organization of African Unity (OAU) Anybody can come, research and file a patent in the member countries, but benefits of commercialization have to be shared with local community o China China passed a law overnight to enforce researchers to share all biological resource / research being sourced from China, with the Govt. Case in point Human Genome Project Meaning of Patent o A patent is a set of exclusive rights given to an inventor against public disclosure of the invention o Granted on inventions in all fields of technology, on products / processes / combinations o Never granted on discoveries o A patents grants protection for 20 years from date of application with provisional specifications Filing system in India o Governed by Indian Patent Act (1970) o Indian Patent Act was amended in 2004 to allow only product patents in Agriculture, Chemical and Pharma o India follows first to file policy o India allows Pre-grant Opposition o What is not patentable in India Any invention related to Atomic energy Any process, surgical, curative, medicinal, diagnostic, or prophylactic, to cure human beings and animals An admixture of chemical substances Plants Computer Programs (Software can only receive copyright for lines of code) o Process of Patent filing in India Application with provisional specifications grant priority date Complete Specifications (Claims) have to be submitted within 15 months Patents Trademarks Copyrights Designs Geographical Indications Trade Secrets

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Intellectual Property Rights

Patent details published in government gazette, subject to argument for 4 months after the date of publication In absence of argument / challenge / opposition within 4 months, the patent is granted Argument after 4 months possible only via legal recourse Filing system in USA o USA follows first to invent policy o USA allows Post-grant Revocation o What is required to prove first to invent status Detailed lab notebook, without any empty pages Notebook has to be notarized The USPTO accepts application and goes through the lab notebook Search against prior art conducted at this point TRIPS requirements for Patentability are that every invention must be: o New or novel w.r.t. Prior Art Prior Art if there is knowledge of invention in the public domain, or known to members of the public, it has no novelty, so will not receive a patent Published information Patent Documents, Scientific Journals, Newspapers, Articles, Thesis, Dissertations, etc o Non-obvious Non-obviousness if there is knowledge of your invention among experts, or if they see nothing new in it, it is obvious and not patentable o Useful or commercially utilizable If useful and not utilized commercially by the patent assignee, compulsory license may be granted by the government to other companies, allowing them to work your patent / commercialize it The Indian patent office makes a list of patents which are not commercially worked in India for this purpose o Not be opposed to public order Public order Decency, Morality or any other law for the time being enforced PCT filing o PCT = Patent Cooperation Treaty o PCT is not a platform for the grant of patents o It is a cost effective remedy to file patents internationally o PCT allows a single window filing from any WTO country, with PCT filing proving to be the date of priority o Filing with PCT Phase I International Phase Prior Art Search, international search report in 24-30 months Optional search conducted by International preliminary examination authority (IPEA), which consists of Patent offices of US, CA, AU, KR, JP, UK Bio Piracy & Bio Diversity o Convention on Bio Diversity held in Earth summit (1992) at Rio De Janeiro Page 2

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Biological resources belong to mankind, so cant prevent researchers from conducting research in any country o Every WTO member asked to pass law for Bio Diversity o India passed its Bio Diversity law in 2002 o Cannot use traditional knowledge of a country for a patent, this is Bio Piracy Case: Turmeric in the wound healing process Univ of Jacksonville Case: Brazzeil Berry artificial sweetener industry Univ. of Wisconsin Case: 750 live frogs from Amazon Basin taken to UK after bribing young tribesmen with wine, money, cocaine and women, created painkiller without side effects. No evidence of giving back to community Case: Ethiopia Tooley breed of cattle, needs less fodder, hardy, drought resistant with very tasty meat. AU, NZ researchers transplant Tooley foetuses, did not share with community Case: Japan golf course, mushrooms with medicinal properties. Create medicine to suppress immune system and gives more time to body for acceptance of transplanted tissue Bio Prospecting o 3 characteristics of Bio-prospecting Come into the country with Prior Informed Content (PIC), local bodies record entry Rightful Material Transfer Agreement (RMTA), pay for research material Equitable Benefit Sharing (EBS) based on ethics, good practice regarding biological research in another country Software Patents o No Software patents are granted in India o Only copyright protection is given to lines of software code in India o Europe voted out software patents in 2005 o Only USPTO grants software patents In 2000, USPTO introduced a new class of patents (CL 705), called business method patents, doing business using computer software o Mathematical, Scientific Theories, Algorithms or conversion of data to another form, except if it results in something of real world value (tangibly), are not patentable o Categories of Software Patents A computer program that brings about a change in hardware or other components. Eg: Patent on Mouse Pointer owned by Cat Track A computer program that brings about a transformation / change in a manufacturing process, where we transform a substance into another Case: Rubber Curing (Diamond vs Diehr). Rubber curing process was timed by software, result was Useful, Concrete and Tangible Case: Software to calculate NAV in a hub & spoke structure (State Street Bank vs Signature Financial Group). Patent seen as bad/broad Case: (Amazon vs Barnes and Noble) Onbe-click method of doing business for repeat users copied by Barnes and Noble. Lawsuit settled out of court, because cookies were nothing new Page 3 o

JIT | IPR

Intellectual Property Rights

Case: (Stac Electronics vs Microsoft Corporation) Microsoft reverse engineers data compression algorithm, uses it in VB 6.0, and copyrights it. Stac sues on 3 counts: o Trade secret violation Stac Electronics warned o Copyright infringement MS wins, because it has copyrights o Patent infringement Won by Stac Electronics, receives $120Mn in damages, $40Mn in preferred equity. MS has to disable data compression feature 3 trends in the software industry Defensive disclosure and Software Patent Institute (SPI) Inventor goes to SPI and discloses software if unsure of infringement. SPI does the following: o Publishes method and shares with members o Notifies USPTO o Notifies general public through journals and publications Defensive patenting and Crosslicensing If components (modules) of two software are being used by each other, both can sue each other Crosslicensing negates mutual liability Patent Parasite Company Buys patents and sees where they are being used, sends an emissary to say, Are you using our software to do business?, gives 2 options: o Licensing agreement to continue operations o Long nasty protracted litigation with interim injunction

Trademarks Trademarks can be: o Wordmarks Should not be descriptive Should be far removed from product used on o Symbols o Brands o Logos o Alphabets (group of 3 or combined with number) o Numbers o Sounds o Moving Images o Colours in a particular shape Combined with shape to prevent colour depletion (according to colour depletion theory) o Potraits o Punch lines (eg: Shiv Khera) o Pictorial representations Page 4

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Intellectual Property Rights

o Newly created words, combination words (i.e. not found in the dictionary) Indian rules for TM registration o Geographic names cannot be trademarks o Flags / national emblems cannot be trademarks o Gandhi Topi, Nehru Jacket, Turkish Towels, German Silver, French Polish, London Pilsner are all Trade Descriptors and not Trademarks Certification Marks o Belong to certifying institutions, and certify that the product meets established standards o Certifying institutions lend a stamp of approval to the products on which these marks are used o Some examples are: ISI Indian Standards Institute FPO Fruits Process Order (mandatory on all canned and bottled stuff) Woolmark Agmark (not mandatory) Tea Board of India Darjeeling Tea Nilgiri Tea Assam Tea Collective Marks o Do not certify anything, only signify belongingness to a collective or to a house (housemarks). Eg. Agarwal Sweets, Interflora Domain Names o Are allocated on first come first serve basis o Do not face pre-screening unlike Trademarks o Domain names can be trademarked if they are indicative of origin / source o Eg: Amazon.com Cybersquatting o Economic benefit with second level domain of registered trademark o Economic benefit from fear of defamation o Case: Bodacious Tatas

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