Intellectual Property Rights

Prof. Sudhir K. Jain

([email protected])
Adjunct Professor & Former HoD
Department of Management Studies
INDIAN INSTITUTE OF TECHNOLOGY DELHI
New Delhi – 110067 (INDIA)
 IP and IPRs
Intellectual Property (IP)
• Any form of Non-physical or Intangible property
• Owner can use his/her IP in any legal manner

Intellectual Property Rights:

• Rights on Intellectual Property

Prof. Sudhir K. Jain 2

 Major forms of
Intellectual Property Rights
– Patents
– Industrial Designs
– Trademarks
– Copyrights
– Layout Designs of ICs
– Trade Secrets
– Plant Varieties
– Geographical Indications
– (Traditional Knowledge – IP, but not IPR)
Prof. Sudhir K. Jain 3
 PATENT TRADEMARK
If an automatic exposure control Trademark “Canon”
mechanism is invented for first can be protected by
time such invention (i.e. new Trademark law.
technology) can be protected by
patent law.

Each IPR is Expression of Work

protected in Instruction Manual
under the Law is protected under
Copyright
DESIGNS
A Design of camera’s appearance can be protected by
Design Law. Design right is valid for 10 years from the date
of its registration and it may be extendable for another
period of 5 years. 4
 IPR Legislations
• The Patents Act, 1970
• The Trade Marks Act, 1999
• The Copyrights Act, 1957
• The Designs Act, 2000
• The Protection of Plant Varieties and Farmers Rights Act, 2001
• The Semiconductor Integrated Circuits Layout Design Act, 2000
• The Geographical Indications of Goods (Registration and
Protection) Act, 1999

• The Biological Diversity Act, 2002

Supporting legislations • The Information Technology Act,
2000

• Trade Secrets: No separate legislation but

protected under principles of Contracts
 History of Indian
‘Invention Protection’ System
• 1856: The Act VI of 1856 on protection of inventions
based on the British Patent Law of 1852. Certain exclusive
privileges granted to inventors of new manufacturers for a
period of 14 years
• 1859: The Act modified as act XV 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 Patterns & Designs Protection Act
• 1883: The Protection of Inventions Act
• 1888: Consolidated as the Inventions & Designs Act
 History of Indian Patent System
• 1911: The Indian Patents & Designs Act, 1911
• The Patents Act, 1970
• 1999: On March 26, 1999 Patents (Amendment)
Act, (1999) came into force from 01-01-1995
• 2002: The Patents (Amendment) Act 2002 came
into force from 20th May 2003
• 2005: The Patents (Amendment) Act 2005
effective from 1st January 2005
 Intellectual Property & IPRs
Identifying
Problems Ideation
Further R&D
IP Creation
IP Portfolio
Management IP Application;
IP & Claims
IP/Patent
Maintenance IPRs IP Valuation

Infringement
Technology
Suits
Negotiation & Marketing
ToT & Licensing
Agreement

8
Problem Identification → Innovation
→ Patenting → Commercialization
• Innovation is the process and outcome of creating
something new, which is also of value
• Innovation involves the whole process:
– Problem identification
– Ideation
– Invention: Technical Solution to Problem
– Prototyping
– Production & Marketing
▪ Innovate, Patent, Incubate, Commercialize
▪ Innovate, Invent, Patent, Publish, ToT
9
 Dimensions of Innovation
Types of Innovations
– Process, Product, Service, Management, ...

Degree of Newness
– Incremental to Radical

Impact
– Low, Medium or High

10
Problem Identification & Innovations
– Pencil Sharpener
– Board Pins
– Glue Stick
– Bubble Packaging Material

– Mosquito Repellents
» Tortoise Coil, Good Night, All Out
– Kitchen chimney ------------------→______
– Flying insect killer
– Folding Almirah (briefcase model)
– Umbrella: 2 fold or 3 fold or 4 fold (reduction in size, weight, ..)
» Illuminated Umbrella, Wind-resistant Umbrella

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First Invention and Subsequent Inventions:
Different Models of Pencil Sharpeners

Deposit for UM (1927)

(Photos: from DPMA)

First coffee-filter,
invented by Melitta
Bentz (Registered
as UM on 8 July
1908)
12
 Some Important Patents
➢ Adding Machine ➢ Air Conditioning
➢ Calculator ➢ Anesthesia
➢ Computer ➢ Camera
➢ Automobile ➢ Instant Photography
➢ Printing Press ➢ Motion Picture
➢ Incandescent Lamp ➢Telephone
➢Elevator ➢Telegraph
➢ Fertilizer ➢Television
➢ Lock ➢Typewriter
➢ Radio ➢Sewing Machine
Prof. Sudhir K. Jain 13
 Example of a Commercially Worthy
Important Patent

• Ring-pull technology for beverage cans licensed

in 90% of world’s market

• 160 mn cans opened per day

• Royalty: 0.1 penny per unit →

• > Rs. 1 crore per day

Prof. Sudhir K. Jain 14

 IPRs:
Patents
Prof. Sudhir K. Jain 15
What is a Patent?
Right on First Disclosure on an Invention

Conditions for Patentability

• Novelty
• Non-obviousness (Inventiveness)
• Industrial application (Utility)
Bag with 200 pockets? Trouser for 3-legged person?
2 Pencils joined together? Pen with 8 color refills?
Scroller of Mouse? Pendrive?

Prof. Sudhir K. Jain 16

 Why Patents?
• Knowledge Generation

• Stimulation of Creativity
• Technology Transfer
• Most inventions are results of intended,
expensive R&D, Therefore, Need to
accelerate return on investment on R&D
and to reduce financial risk

Prof. Sudhir K. Jain 17

Types of Patents
Product Patent & Process Patent
 Protects inventions (Product or Process)
 Example: A method to reducing noise in telephone calls
 Term : 20 years from earliest filing date
Plant Patent
 Protects new variety of plants (flowers, fruits, shrubs
and vines) produced asexually
 Example: A new variety of tea plant
 Term : 20 years from earliest filing date
Design (Design Patent in USA)
 Protects ornamental design, configuration, improved
decorative appearance, or shape of an invention
 Applicable for purely aesthetic reasons (does not protect
the functioning of the underlying device)
 Example: A novel design of a watch
 Term : 14 years from the date the patent is issued
Sample Patent: Parts of a Patent Application (1/2)

Bibliographic
Details

Representative
Drawing
 Sample Patent: Parts of a Patent Application (2/2)
First Patent
Inventor
No.
Patent Title
Grant
Inventors
Date
Assignee (Owner)
of the patent

Application No.
Patent Filing
Date
Details of Related
US Patent
Applications Non-Patent
Citations
IPC Class
Patent
US Class
Examiner
Patent
Backward Attorney,
Patent Agent or Firm
Citations
Abstract
 Patent Ownership : Assignee
Assignee
• Under US laws, the ownership of a patent or patent
application initially lies with the inventor. The inventor
can assign ownership rights to an entity, referred to
as the “assignee”
• Typically, an assignee is an organization that may
have employed the inventors – or at least
compensated them in some manner – when the
invention was conceived/reduced to practice
First
Inventor
Inventors
of the
Patent
Assignee (Owner)
of the Patent
Sample Patent: Drawings

Drawing Sheet No.

Reference No.

Figure No.
 Sample Patent: Background of the Invention

Details of
Related
Applications

Background
of the
Invention
 Sample Patent: Summary, Brief Description of Drawings
and Detailed Description of the Invention

Brief
Description
Summary
of the
of the
Drawings
Invention

Detailed
Description
of the
Invention
Sample Patent: Claims

Claims
of the
Invention

Independent
Claim

Dependent
Claims
(Dependent
on Claim-1)
Patents: Types of Forms (1/3)
S. Process Title Form
No. No.
1 The First Schedule Fees Fees
2 Application for Grant of Patent Form01
3 Provisional/Complete Specification Form 02
4 Statement and Undertaking Under Section 8 Form 03
5 Request for Extension of Time Form 04
6 Declaration as to Inventorship Form 05
7 Claim or Request Regarding any Change in Applicant for Patent Form 06
8 Notice of Opposition Form 07
9 Representation for Opposition to Grant of Patent Form
07(A)
10 Claim or Request Regarding Mention of Inventor as Such in a Form 08
Patent
11 Request for Publication Form 09
 Patents: Types of Forms (2/3)
S. Process Title Form
No. No.
12 Application for Amendment of Patent Form 10
13 Application for Direction of The Controller Form 11
14 Request for Grant of Patent Under Section 26(1) and 52(2) Form 12
15 Application for Amendment of The Application for Form 13
Patent/Complete Specification
16 Notice of Opposition to Amendment / Restoration / Surrender Form 14
17 Application for Restoration of Patent Form 15
18 Application for Restoration of Title/Interest Form 16
19 Application for Compulsory Licence Form 17
20 Request/Express Request for Examination of Application for Patent Form 18
21 Application for Revocation of a Patent for Non-Working Form 19
 Patents: Types of Forms (3/3)
S. Process Title Form
No. No.
22 Application for Revision of Terms and Conditions of Licence Form 20
23 Request for Termination of Compulsory Licence Form 21
24 Application Registration of Patent Agent Form 22
25 Application for Registration of Name in The Register of Patent Agents Form 23

26 Application for Review/setting Aside Controller Decision/Order Form 24

27 Request for Permission for Making Patent Application Outside Form 25
28 Authorisation of a Patent Agent or any Person in a Matter or Form 26
Proceeding Under The Act
29 Statement Regarding the Working of Patented Invention on Form 27
Commercial Scale in India
30 To be submitted by Small Entity / Start-up Form 28
31 Request for Expedited Examination of Application for Patent Form 18(A)
32 Request for Withdrawal of the Application for Patent Form 29
33 To be used when No Other Form Is Prescribed Form 30
S. Purpose E-filing Fee (Rs.)
No. Natural MSME LSEs,
Person etc. MNCs etc.

1 Initial Patent Application 1600 4000 8000

2 Request for Examination (A) 4000 10000 20000

3 Request for Expedited Examination (B) 8000 25000 60000

4 Request for Conversion of (A) to (B) 4000 15000 40000
5 Annual Patent Renewal 1st & 2nd Year Nil Nil Nil
6 Annual Patent Renewal 3rd to 6th Year 800 2000 4000
7 Annual Patent Renewal 7th to 10th Year 2400 6000 12000
8 Annual Patent Renewal 11th to 15th Year 4800 12000 24000
9 Annual Patent Renewal 16th to 20th Year 8000 20000 40000
10 Opposition Application 2400 6000 12000

11 Restoration of Lapsed Patent

Prof. Sudhir K. Jain
2400 6000 12000
29
 Patent Agent Related Fee

S. Fee
Purpose (Rs.)
No.

1 Patent Agent Examination 1600

2 Patent Agent Registration 3200

3 Patent Agent Annual Renewal 800

Prof. Sudhir K. Jain 30

 Patents & Government

• Monopoly through Patents

• Discouragement of continuation of monopoly
• Maintenance of Patents (annually)
• ‘Progressive Maintenance Fee’ structure
→ ‘Patent Portfolio Management’ requirement

Prof. Sudhir K. Jain 31

 Inventions Not Patentable

• Frivolous & obviously contrary to laws of nature

• Contrary to law, morality or injurious to public health
• Discovery of living or non living substances occurring in
nature
• Mere discovery of scientific principle or formulation of
abstract theory
• A mathematical or business method or a computer
program per se or algorithms

Prof. Sudhir K. Jain 32

 Privileges to Public

Without the consent of the patentee, the

patented article or patented process can be
freely used for:

• R&D purposes

• Imparting instructions to the pupils

Prof. Sudhir K. Jain 33

 Limitations on Patent Rights

• Govt. use of a patent (e.g. for defense)

• Compulsory license
• Revocation of non-working patents
• Restoration of lapsed patents

Prof. Sudhir K. Jain 34

 Patent Filing
in
Foreign Countries
 Traditional Patent System
Local patent application followed within 12 months by
multiple foreign applications claiming priority under Paris
Convention:
▪Multiple formality requirements
▪Multiple searches
▪Multiple publications
▪Multiple examinations and prosecutions of
applications
▪Translations and national fees required at 12 months
 Traditional Patent System

(Months)

0 12
File Application File Applications
Locally Abroad
 PCT System
Local application followed within 12 months by the
PCT, claiming priority under the Paris Convention
– One set of formalities requirements
– International search
– International publication
– Optional international preliminary examination
– Translations and national fees required at 20 or 30
months, and only if applicant wants to proceed with
national phase entry
 PCT System
International
(Months) Publication
0 12 16 18 20 30

File First File International

Applicatio PCT Search Report /
n Written Opinion

OR Enter
National
File Demand Phase

International
Preliminary
Examination
30
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 Member States of EPO (1/3)
S. Code Member State Date of Accession
No.
1 BE Belgium 7 Oct. 1977
2 DE Germany 7 Oct. 1977
3 FR France 7 Oct. 1977
4 LU Luxembourg 7 Oct. 1977
5 NL Netherlands 7 Oct. 1977
6 CH Switzerland 7 Oct. 1977
7 GB United Kingdom 7 Oct. 1977
8 SE Sweden 1 May 1978
9 IT Italy 1 Dec. 1978
10 AT Austria 1 May 1979
11 LI Liechtenstein 1 Apr. 1980
12 GR Greece 1 Oct. 1986
13 ES Spain 1 Oct. 1986
14 DK DenmarkProf. Sudhir K. Jain 1 Jan. 1990 46
 Member States of EPO (2/3)
S. Code Member State Date of
No. Accession
15 MC Monaco 1 Dec. 1991
16 PT Portugal 1 Jan. 1992
17 IE Ireland 1 Aug. 1992
18 FI Finland 1 Mar. 1996
19 CY Cyprus 1 April 1998
20 TR Turkey 1 Nov. 2000
21 BG Bulgaria 1 July 2002
22 CZ Czech Republic 1 July 2002
23 EE Estonia 1 July 2002
24 SK Slovakia 1 July 2002
25 SI Slovenia 1 Dec. 2002
26 HU Hungary 1 Jan. 2003
27 RO Romania 1 Mar. 2003
Prof. Sudhir K. Jain 47
28 PL Poland 1 Mar. 2004
 Member States of EPO (3/3)

S. Code Member State Date of

No. Accession
29 IS Iceland 1 Nov. 2004
30 LT Lithuania 1 Dec. 2004
31 LV Latvia 1 July 2005
32 MT Malta 1 Mar. 2007
33 HR Croatia 1 Jan. 2008
34 NO Norway 1 Jan. 2008
35 MK North Macedonia 1 Jan. 2009
36 SM San Marino 1 July 2009
37 AL Albania 1 May 2010
38 RS Serbia 1 Oct. 2010
Prof. Sudhir K. Jain 48
 Understanding the
Innovation System
R&D for Continuous Improvement in
Products to Solve Our Needs More
Effectively through Improvement in
Quality, Reliability, Performance, Ease of
Operation, Cost Reduction, Addition of
More Features etc.

Prof. Sudhir K. Jain 49

 Formal Innovation System: Idea to Enterprise
Univ. /R&D
Labs/Centers
Companies
BIRTH SURVIVAL GROWTH

Idea Idea Marketable

Generation Validation Product/Process

SUPPORT
MECHANISMS

Informal STEPs/TBIs
VC Funding &
NGO’s FIs Schemes Sector Specific
Individuals Funding

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 Some Bio R&D & Patenting
• Sugars in Infants: Risk to Some Babies
• Healthy Aging in Modern Times
• New Insights Into Malaria Parasite
• Immune Cell Cradles Mammary Stem Cells
• How the Heart Responds to Exercise
• Genetic Testing in Advanced Lung Cancer
• New Face of a Famous Protein, SWI2/SNF2 ATPase
• Aging and the Nucleolus in Your Cells
• New Nuclear RNA Retention Activity Discovered

Prof. Sudhir K. Jain 51

 PATENT DOCUMENTS are
storehouse of Knowledge on
the STATE-OF-THE-ART

• 80% of all scientific and technical information

is published only in patents, not elsewhere

• 85% of patents worldwide have lapsed in

their tenure, so they are in Public Domain
(can be exploited commercially)

➢Millions of patents being filed annually now

Prof. Sudhir K. Jain 52

 Patent Infringements

Past:
Reverse engineering common

Present/Future:
Selective reverse engineering possible
(you need to know the basics of IPRs)

The intended product or any of its components

should not be under patent in your country

Prof. Sudhir K. Jain 53

 Top 10 Patent Awards in the U.S.
Amount Year Parties Technology
$1,520,000,000 2007 Alcatel-Lucent  Microsoft Software

$1,350,000,000 2005 Karlin Technology  Medtronics Medical

$873,000,000 1991 Polaroid  Eastman Kodak Chemical
$700,000,000 1997 Digital  Intel Computer
$505,000,000 2002 Igen International  Roche Holding Drugs

$500,000,000 1990 Texas Instruments  Toshiba Electronics

$500,000,000 2002 City of Hope Nat Med Cent  Genentech Drugs

$475,000,000 2002 SpinBrush Inc  Procter & Gamble Mechanical

$453,000,000 2002 InterTrust  Sony, Philips Software

$424,000,000+ 2002 Medical Instrument  Elekta Medical

Prof. Sudhir K. Jain 54

 Reverse Engineering Strategy

• Find out new patents with potential commercial

application
• Start patent search

• Find out validity of patent

• If it is in public domain, it costs nothing

• Else, seek technology transfer

 Patent Search Sites
• Patentscope (www.wipo.int)
• Espacenet (All Countries Patent Databases)
• www.uspto.gov
• www.epo.org
• www.ipindia.nic.in
• www.freepatentsonline.com
• www.patentstorm.com
(PatentStorm is one of the oldest patent reference sites,
serving information about current, pending, and expired U.S.
and world patents)

Prof. Sudhir K. Jain 56

 DATA COVERAGE of PATENTSCOPE
• Access to millions of patent documents
• International Patent Applications filed under the PCT
• Regional and National Patent Collections from:
• EPO (European Patent Office)
• ARIPO (African Regional Intellectual Property Organization)
• Argentina • Bahrain • Brazil • Canada • Chile • China • Colombia
• Costa Rica • Cuba • Dominican Republic • Ecuador • El Salvador
• Egypt • Estonia • EAPO (Eurasian Patent Office) • Germany
• Germany (GDR data) • Guatemala • Honduras • Israel • Japan
• Jordan • Kenya • LATIPAT • Mexico • Morocco • Nicaragua
• Panama • Peru • Portugal • Republic of Korea • Russian
Federation • Russian Federation (USSR data) • Singapore
• South Africa • Spain • United Arab Emirates • Uruguay • USA
• Vietnam

Prof. Sudhir K. Jain 57

 GoI’s
National
Policy on
IPRs (2016)

Prof. Sudhir K. Jain 58

 Importance of IPRs
in WTO Era
(Patent Filing by Major Countries)

GoI’s National Policy

on IPR (May 2016)

Prof. Sudhir K. Jain 59

National Policy on IPR (2016)
• Creative India • Innovative India
• सज
ृ न भारत • अभभनव भारत

•Make in India
•Digital India
•Smart Cities
•Skilled India
Capturing the Spirit of IP Stimulated Growth
60
 Seven Key Objectives
• IP Awareness : Outreach and Promotion
• Generation of IPRs (Vibrant Innovation Ecosystem)
• Legal and Legislative Framework
• Administration and Management
• Commercialization of IPR
• Enforcement and Adjudication
• Human Capital Development

61
 Awareness
• Customised programs for MSMEs, Start-ups, R&D and S&T
Institutions, Universities and others
• Reaching out to less visible and silent IP creator
• Indian competence leading to competitive advantage
• Eminent personality as ambassador
• Exhibits and other means
• Targeted for industry, R&D etc
• State help, Hall of Fame etc
• Suitable course material (WIPO DL101, IGNOU, ....)
• Use of Media for awareness creation

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 2. Generation of IPRs
(To Stimulate the generation of IP)

A comprehensive base line IP survey

or IP audit across all sectors

Adopting National Slogan

“Creative India; Innovative
India”
“रचनात्मक भारत; अभभनव भारत”

Strengthening IPR Facilitation Centres

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 Generation of IPRs
• Develop affordable drugs
• Open source based research
• IP facilitation centres in industry & university
innovation clusters
• Large corporate
• Support system
• MSMEs
• Start-ups
• Grass root innovations
• CSR
• Incentive for green technologies
• TK, TKDL, GIs, Design, ICT
• International systems
• Increase domestic filing
11/9/2020 Prof. Sudhir K. Jain 64
3. Legal & Legislative Framework
To have strong and effective IPR Laws, which
balance the interest of rights owners
with larger public interest

It becomes necessary to carryout the legislative

changes as may be required from time to time in the
light of changing and dynamic knowledge field

Including benefit of TK to mankind and protect

it from misappropriation

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 Legal and Legislative
Framework
• Review of IP laws and updates
• Negotiation and accession to International treaties
• Protection of Indian TK from misappropriation

• Interplay amongst IP laws

• IP and Competition law
• Inter authority- Patent and NBA
• Trade Secrets

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4.Administration & Management
To modernize & strengthen service-oriented IPR
administration

Steps towards fixing and adhering timelines for

disposal of IPR applications

Creation of
“Cell for IPR Promotion and Management”
(CIPAM) at DIPP, Ministry of Commerce & Industry

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 Administration and Management
• Copyright Office from MHRD to DIPP
• IC Layout from DeitY to DIPP
• Modernising IPOs
• Manpower
• ICT Infrastructure
• Collaboration of IP Offices with stakeholders
• TKDL PCT Minimum Documentation
• Common Portal for IP Offices
• Expedited Examination
• International and Bilateral Cooperation
• Quality

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5. Commercialization of IPR (1/3)
Get value of IPR through commercialization

• There is an urgent need to take stock of existing

IP funding by different departments and bodies of the
Government like BIRAC, NRDC and TIFAC and take
measure to consolidate the same.

• Significant potential of emerging technologies like nano,

bio, life, green, telecom, new material and space etc exists

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 Commercialization of IPR (2/3)
• CIPAM (at DIPP)
– Platform as facilitator
– Study for feasibility of an IPR Exchange
– IP database equipped with market analyst, funding and
intermediaries
• Promote Technology Transfer
– Contractual and licensing guidelines
– Patent pooling
– Cross licensing
• MSME single window
• IP (GI) based products for global markets
• Collaborative R&D
• Industry, R&D and Academia
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 Commercialization of IPR (3/3)
• Affordable medicine (PPP, Universities, NGOs collaboration)
• Streamlining regulatory process
• Promote open source software incl. possibility of Indian O/S
• Support financial aspects
• IP Valuation, ToT & Licensing
• Facilitating investments (thru IP Exchanges)
• Needed Financial/Other support to IP professionals

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6. Enforcement and Adjudication
To strengthen the enforcement and adjudicatory
mechanism for combating IPR infringements

• There is need to build Respect for IPR amongst the

general public and to sensitise inventors/creators of IP
on measures for protection and enforcement and at
the same time enhancement of efficiency of
enforcement agencies.

• It would be desirable to adjudicate on IPR through

specialised commercial courts

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 Enforcement and Adjudication
• Create value of IP & respect for IPR culture by
– Explaining/demonstrating Ills of counterfeits
– At all levels including e-commerce
• Strengthening the enforcement mechanism
– Coordination amongst agencies; State governments
– Manpower, infrastructure
– Training for technology based enforcement
• Facilitate effective adjudication of IP
– Commercial courts at appropriate level
– IP modules for judges
– Alternative Dispute Resolutions (ADRs)

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 7. Human Capital Development
To strengthen & expand human resources, institutions & capacities
for teaching, training, research & skill development in IPRs

• In order to harness the full potential of IPRs for economic

growth, it is essential to develop an increasing pool of IPR
professionals and experts,

• Such a reservoir of experts will facilitate in increasing

generation of IP assets in the country and their utilisation
for development purpose.

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 Human Capital Development
• Strengthen
– RGNIIPM, Nagpur
– IPR Professorial Chairs
• Introduce multi-disciplinary IP courses for
– Judicial Academy
– National Academies of Administration/Police/Customs
• Progressively introduce IP at School /College level
• IP teaching in collaboration with WIPO WTO etc
• IPR to be an Integral part of Curriculum in Legal & Technical
institutions, NIFT, AYUS, NID etc.

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 Implementation of
National IPR Policy
Nodal Agency: DIPP
Respective Departments and Ministries to
implement as role assigned

DIPP → DPIIT
Department for Promotion of Industry and
Internal Trade

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 Further ....

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 Goals of IPR System
• National development
• Active partner in global trade (All IPRs)
• Promoting innovations
• Better R&D culture thru better S&T Mgmt.
• Better utilization of national resources viz., financial,
human, biodiversity, mineral etc.

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 Science Education in Indian Schools
NUEPA (NIEPA) Report Findings:
Secondary Education in India: where Do We Stand (2010-11)
24 states 6 to 50% schools have science labs
5 states 50 to 60% schools have science labs
3 states 60 to 70% schools have science labs
2 states 70 to 90% schools have science labs
1 UT 100% schools have science labs
Survey in 2,04,000 schools in all States & Uts (642 Districts)

→ Need to introduce IPR education in schools

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 Percentage Share in Gross Investment
in R&D (2009-10)

Govt Inv. in
• Central Govt. 54.4
R&D
• Private Sector 28.9
(in IT, Electronics, drugs)
• DRDO 31.6
• State Govts. 7.3 • DoS 15.5
• PSUs 5.4 • DAE 14.4
• Higher Education 4.1 • ICAR 10.8
• CSIR 10.0
• DST 8.3

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 IP Promotion Strategy
for Academia (1/3)
✓ IPR course(s)
✓ Own IPR policy
✓ IP generation (R&D, Patents, Designs, Papers, ...)
✓ IP protection (Application/Filing)
✓ IPRs granted/registered
✓ Share of internal funding
✓ Share of sponsors’ funding
✓ Creation & Strengthening IPR Cells in academic institutions

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 IP Promotion Strategy
for Academia (2/3)
✓ Awards (national and state levels)
✓ Use of IPR info in deciding research theme
✓ Collaborative Research with Industry
✓ Transfer of Technology, Negotiation, Licensing
✓ IP Conversion Ratio (IP monetized as % of IP protected)
✓ Revenue Generation through ToT & Licensing vs.
Expenditure on IPRs Protection & Maintenance
✓ IPRs Portfolio Management
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 IP Promotion Strategy
for Academia (3/3)
Incentives to Scientists/Faculty/Student
• Significant weightage to IP Creation in
Promotion/Elevation (Patents: Filing or Granted
or Commercialized?)

• Share in earnings from monetization of IPR

• Award/s (Institutional/State level)

• Advanced International Training

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Commercialization & Use

of Patents for Business

Prof. Sudhir K. Jain 84

 Managerial Issues - I

Make sure there is clarity on issues:

➢Relating to rights over the invention
➢Maintaining confidentiality of R&D information
➢Basis of naming of inventors
➢Employer vs. employee inventions
➢Commercializing of patents

Prof. Sudhir K. Jain 85

 Managerial Issues - II
• Utilization of patent information in R&D and business
• Patent analysis, indicators and mapping
• Keeping records of research
• Evaluation of the merits of invention from the economic
point of view
• Valuation of patents
• Negotiating licensing of patents
• Licensing agreement

Prof. Sudhir K. Jain 86

 Managerial Issues - III

Protection of Confidential Information

by Employees:

• While making essential disclosures

• While in service

• After termination of the services

• While considering compensation to employees

Prof. Sudhir K. Jain 87

 Other IPRs
- Industrial Designs
- Trademarks
- Copyrights & Related Rights
- Geographical Indications
- Plant Varieties
Prof. Sudhir K. Jain 88
DESIGNS

Prof. Sudhir K. Jain 89

 Industrial Designs

➢Ornamental/aesthetic aspects of a useful article

➢ Shape, pattern, color combination
➢ Must have visual appeal
➢ Article must be reproducible by industrial means

Prof. Sudhir K. Jain 90

Examples of Industrial Designs
➢ Pencils (cross section: Triangular, Circular,
Hexagonal etc…)
➢ Water or Soft/Hard drink bottles

➢ Coffee Mugs (different shapes)

➢ Gem clip & pin holders

Prof. Sudhir K. Jain 91

Intellectual Property Rights
TM
Trademarks
®
Trademarks

Prof. Sudhir K. Jain 92

 What is Trademark?
• A Trademark is a distinctive sign which identifies
certain goods or services as those produced or
provided by a specific person or enterprise.
• Service Marks registered for services e.g.
banking, education, finance, insurance, real estate,
entertainment, repairs, transport etc.
• Certification Marks: Certified by the Proprietor
as having characteristics like geographical origin,
ingredients, quality e.g. AGMARK, WOOLMARK

Prof. Sudhir K. Jain 93

 Kinds of Trademarks
• Trademarks (Marks on goods)
• Service Marks
• Certification Marks
• Well-known Marks
• Trade Names

Prof. Sudhir K. Jain 94

WELL-KNOWN MARKS
• Coca Cola for soft drink
• Toblerone (Triangular-
shaped chocolates)

Trade Names (Family Name)

• Bajaj, Godrej (Furniture, Refrigerators etc.)

Prof. Sudhir K. Jain 95

 Why Trademarks
➢ For bonafide intention to use in commerce
➢ Words, letters, symbols, sound, smell that
distinguish products of a producer from those of
others
➢ Stylized representation possible
➢ Indicates producer & signals quality
➢ Consumer protection
➢ Helps in advertising
➢ Easy order processing
➢ Renewable forever
Prof. Sudhir K. Jain 96
 Some Examples

➢ Coca Cola, KINLEY

(not COCA COLA, Kinley)

➢Mc Donald’s

Prof. Sudhir K. Jain 97

 Trademarks

Conditions:
➢ Should be distinctive

➢ Should not be deceptive

Prof. Sudhir K. Jain 98

 Trade Secret
This is a closely guarded secret related to
Production process (Coca Cola)

Advantages
• No defined term of protection
• Recommended if you can manage to keep
the process or formulation as secret

Prof. Sudhir K. Jain 99

© Copyright
&
Related Rights

Prof. Sudhir K. Jain 100

 EXAMPLES

Films Dramatic
Literary

Sound Recording Artistic

Prof. Sudhir K. Jain 101

 Copyright
• Protects literary/artistic works of human intellect
➢ Literary works
• Story, Plays, Poem, Novel, Letter etc.
• Maintenance / Instruction manuals
• Published edition of works
• Photographs

➢ Artistic works
• Works of fine arts: Paintings, Sculptures, Cartoon, Logo
➢ Electronic databases
➢ Computer Programs

Prof. Sudhir K. Jain 102

 © Copyrights
• Berne convention (1886)
Work is protected by the fact of its creation
• TRIPS Agreement (WTO, 1995)
Minimum Standards of Protection

• Economic vs. Moral rights (Transferability)

• Right of Reproduction, Translation and Adaptation

Prof. Sudhir K. Jain 103

 Related Rights
Rights of persons* or legal entities* who
contribute to making literary works available to
public (through non-print means)

*Performers: Singers, Dancers, Musicians, …

*Producers of sound recordings
*Broadcasters

Prof. Sudhir K. Jain 104

105
GEOGRAPHICAL
INDICATIONS (GI)

Prof. Sudhir K. Jain 106

 Geographical Indications
• Indications which identify a good as originating in the
territory or region or locality where a given quality,
reputation or other characteristic of the goods is
attributed to the geographical origin e.g. Champagne,
Darjeeling Tea, Alphonso Mango etc.
• Geographical Indication is used to identify goods having
special characteristics originating from a definite
geographical territory.

•Geographical Indications in India (GI Act 1999)

Prof. Sudhir K. Jain 107
• Any association of persons, producers,
organization established by or under the law can
apply representing & protecting the interests of
the producers.

• In case of manufactured goods one of the

activities of either the production or processing
or preparation of the goods concerned takes
place in such territory, region or locality.

• Valid for 10 years; renewable ad nauseum

• Registration prima facie evidence of validity

Prof. Sudhir K. Jain 108

 Plant Varieties Protection
• Article 27 (3)(b) of TRIPS: “..members shall provide
for the protection of plant varieties either by patents
or an effective sui generis system or by any
combination thereof”

• Union internationale pour la protection des

obtentions végétales (The International Union for the
Protection of New Varieties of Plants) - 1961

• UPOV’s Eligibility Requirements for Protection

– New, Useful, Distinct & Stable varieties

11/9/2020 Prof Sudhir K Jain 109

 WHY IS IT IMPORTANT TO PROTECT
NEW PLANT VARIETIES?
• World population continues to grow
• Agricultural productivity needs to be increased - arable land
and other resources are scarce
• Improved quality - less waste, higher value
• Better resistance to pests and diseases
- higher yields, less inputs
• More efficient use of inputs
• Economic development
• Protection of Plant Varieties & Farmers Rights Act (2004)
of India
11/9/2020 Prof Sudhir K Jain 110
Need for Protection of Plant Breeders’ IP

courtesy of WARDA

11/9/2020 Prof Sudhir K Jain 111

 IPR
Enforcement
 Courts and IP Offices in India

• Four Patent Offices

• Five Trademark Offices
• Separate Copyright Registry
• Intellectual Property Appellate
Board (IPAB)
• District Courts
• High Court in every State
• Supreme Court at New Delhi
 Court’s Hierarchy

Supreme Court

High Court

District Court IPAB

Controller/Registrar
 Intellectual Property Appellate Board
(IPAB)
• IP Tribunal established in 2003
• Handles all matters appealable
under the Patents Act, 1970, Chairman
Trademarks Act, 1999 and
Geographical Indications of
Goods (Registration and
Protection) Act, 1999 including
revocation of patents and Vice Chairman
rectification of register of Patents
and Trademarks
• Headquarters in Chennai, Technical Technical
sittings in Delhi, Mumbai, Kolkata Member Member
and Ahmedabad as well. (Patents) (Trademarks)
 IPR Enforcement

• Enforcement is ◼ Patent
generally prevalent • Suit for infringement
in following IPs: ◼ Trademark
• Trademark • Suit for infringement
• Suit for passing-off
• Patent
◼ Design
• Design • Suit for infringement

◼ Copyright
• Copyright
• Suit for infringement
• Trade Secret: • Suit for passing-off
Emerging litigations
IPR General Remedies: An Overview

Patent Trademark
• Opposition • Opposition Copyright
• Pre-grant • Rectification • Rectification
• Post-grant • Suit for • Civil Suit for
infringement infringement
• Revocation and/or passing off
• Criminal action • Criminal
• Threats action action
• Suit for
infringement Design
• Cancellation
• Civil Suit for
infringement
 Reliefs
• Interim Relief
• Ex-parte or interim injunction Factors for Granting
• Appointment of commissioner Interim Injunction
to search and seize infringing
products (Anton Pillar order) 1. Prima-facie case
• Final Relief
• Perpetual/permanent injunction 2. Irreparable damage
• Damages or account of profits
3. Balance of
• Delivery and destruction of convenience
infringing materials
• John Doe order and Mareva
injunction possible
WIPO Administered
International
Treaties &
Conventions

119
 Categories of International
Treaties/Conventions
• IP Protection
• Global Protection System
• Classification

All of these are WIPO administered treaties

120
 UPDATES ON MEMBERSHIP OF
TREATIES/CONVENTIONS (1/2)
Treaties/Conventions Contracting Parties
(Oct’12 & Jan’19)
S. (A) IP PROTECTION
No.
1 Berne Convention (Copyright) 176
Madrid Agreement
2 (Indication of Sources) 36
3 Nairobi Treaty (Olympic Symbol) 52
4 Paris Convention (Industril Property) 177
5 Patent Law Treaty 40
6 Phonograms Convention 79
7 Rome Convention 93
8 Singapore Treaty 47
9 Trademark Law Treaty 54
10 WIPO Copyright Treaty 99
WIPO Performances &
11 Phonograms Treaty 99 121
 UPDATES ON MEMBERSHIP OF
TREATIES/CONVENTIONS (2/2)
S.
No. Treaties/Conventions Contracting Parties
(January 2019)

(B) GLOBAL PROTECTION

1 Budapest Treaty 81
2 Hague Agreement 70
3 Lisbon Agreement 28
4 Madrid Agreement for Marks 55
5 Madrid Protocol 103
6 Patent Cooperation Treaty 152
(C) CLASSIFICATION
1 Locarno Agreement 56
2 Nice Agreement 85
3 Strasbourg Agreement 62
4 Vienna Agreement 33
122
 IP Protection (1/4)
• Berne Convention (1886)
(Copyright)

• Brussels Convention (1974)

(Satellite-based Transmission)
• Madrid Agreement (1891)
(Indication of Source on Goods: Deceptive Indication)
• Nairobi Treaty (1981)
(Olympic Symbol for Commercial Use)

123
 IP Protection (2/4)
▪ Paris Convention (1883)
(Industrial Property)

• Patent Law Treaty (2000)

(for harmonizing procedures between National, Regional &
International Patent Systems)

• Phonograms Convention (1971)

(Protection against unauthorized duplication)

• Rome Convention (1961)

(Protection of Performers, Phonogram Producers & Broadcasters)

124
 IP Protection (3/4)
• Singapore Treaty on Law of Trademarks (2006)
(Harmonization of Administrative Procedures of
Trademarks Registration)

• Trademark Law Treaty (1994)

(Harmonization of National & Regional Trademarks)

125
 IP Protection (4/4)
• WIPO Copyright Treaty (1996)
(Protection of computer program & compilations of data in
any form)

• WIPO Performances & Phonograms Treaty (1996)

(Protection to Performers & Producers of Phonograms)

• Washington Treaty(1989)
(in Respect of Integrated Circuits)

126
 Global Protection System
• Budapest Treaty (1977)
(for deposit of micro-organisms)
• Hague Agreement (1967)
(for deposit of Industrial designs)
• Lisbon Agreement (1958)
(Protection of appellations of origin)
• Madrid Agreement (1891)
(For protection of TM in other countries)
• Madrid Protocol (1989)
(Harmonization of domestic legislation of TM)
• PCT (1970)
(a single window for filing patent in multiple countries)
127
 Treaties on Classification
• Nice Agreement (1967) : Trademarks

• Locarno Agreement (1968): Industrial Designs

• Strasbourg Agreement (1971): Patents (IPC)

• Vienna Agreement (1973): Figurative Elements of Trademark

128
PATENTING
OF
TRADITIONAL
KNOWLEDGE

129
 Traditional Knowledge
• Traditional Knowledge (TK) means group oriented
and tradition based, past, present and future
manifestations of groups or individuals of their
social and cultural identity.

• It encompasses the cultural, intellectual, religious

and spiritual properties.

130
 Non-availability of TK Abroad

• What is obvious in native country becomes non-

obvious abroad
• Patents may be filed & awarded due to
ignorance.
• Information not available in International
languages & through International data bases

131
 Famous Turmeric (Haldi) Patent
• Single Herb for Known use:
- Use of turmeric in wound healing
- Suman K. Das, Harihar P. Cohly
- US Patent No. : 5,401,504; March 28, 1995

• Claim: Use of Turmeric at the site of an injury by

topical application and/or oral intake of turmeric will
promote healing of wounds.

132
US Patent for Turmeric
 Turmeric Case (2/2)
• Patent granted in 1996 by the USPTO on a method
of promoting healing of wounds by administering
“effective amounts” of turmeric powder
• Case contested by India with the help of extensive
documentation to establish lack of patentability in
this patent
• Millions of rupees spent in getting the patent
revoked
• On re-examination, USPTO came to the conclusion
that it was not a Patentable invention; therefore
cancelled the patent 134
Prior Art for Turmeric in Urdu
Prior Art: English Translation
 Indian Initiatives on TK
•GoI Task Force Report → FM’s announcement in 2001 Budget
•TKDL Library
•Database in 40 languages incl. all Indian national languages
•Digitizing images of 20,441 shlokas identified from Ayurvedic texts
•Ayurvedic information from 35000 shlokas (verses & prose) &
formulations transcribed into about 4 pages
•TK Resource Classification: translation in Hindi, Spanish, German,
French, Japanese & some other languages completed
•Interdisciplinary team of 28 Ayurveda experts, 2 Patent examiners, 5
IT experts, 4 NASSCOM scientists & 4 technical officers
•TKDL Website of 1,40,000 pages
137
IPR Infringements

Prof. Sudhir K. Jain 138

PERFETTI AMAN

Prof. Sudhir K. Jain 139

 GATT
(1947 to 1986-94)

(TRIPS Agreement)

WTO
(1995)
Prof. Sudhir K. Jain 140
 Background of General Agreement on
Tariffs & Trade (GATT)
• World War II → Damage to several European nations

• Bretton Woods Conference

At Bretton Woods, New Hampshire, USA, to regulate the
international monetary and financial order after the
conclusion of World War II)

• 01-22 July 1944 (44 countries) → IMF, IBRD & GATT

• General Agreement on Tariffs & Trade (GATT):

30th October 1947; 23 Founder Members incl. India

141 Prof. Sudhir K. Jain 141

 Less Developed Countries
• Infant Industry Argument for LDCs
• Low customs duties for protection of yet-to-grow
domestic industry. How long?
• Review of Indian Patent & Designs Act (1912)
• Indian Patent Act (1970)
• Removal of Product Patent for “Chemicals, Pharma,
Food” → Impact on Pharma MNCs
→ Proposal of TRIPS Agreement in
Uruguay Round of GATT Negotiations
142 Prof. Sudhir K. Jain 142
 GATT Negotiations
1947, Geneva (23)
1949, Annecy (13)
1951, Torquay (38)
1956, Geneva (26)
1960-1961, Dillon Round (26)
1964-1967, Kennedy Round (62)
1973-1979, Tokyo Round (102)
1986-1994, Uruguay Round* (123)
*What was special about Uruguay Round
TRIPS, TRIMS, GATS, Agriculture, Market Access
143 Prof. Sudhir K. Jain 143
 International Trade & TRIPS
• Importance of IPRs in international trade
• Lack of product patent universally
• Different terms of patent in different countries
• Parallel Importation

TRIPS Agreement
• Not a harmonization agreement
• Minimum Standards Agreement
(Term of IPR, Product patent etc.)

TRIPS Agreement is a part of WTO now

144 Prof. Sudhir K. Jain 144
 GATT to WTO
• TRIPS, TRIMS, GATS, Agriculture, Market Access
• Differences among nations on major issues
• Arthur Dunkel (DG, GATT Secretarial) → Dunkel Draft
• Dunkel Draft passed on 15th December 1993
• GATT 1994: signed at Marakkesh (Morocco) on 15 April
• → 1st January 1995: Independent Legal Body
World Trade Organization (WTO)

145 Prof. Sudhir K. Jain 145

 Some Important Features of WTO

• Dispute Settlement System

(Consultations, Panel Proceedings & Appeals)

• National Treatment
• Reduction in Customs Duties
• GATT, TRIPS, GATS etc.
• All substantive provisions of TRIPS
by 1.1.2000 & Product Patent by 1.1.2005

146 Prof. Sudhir K. Jain 146

 Implications of WTO

• Reduction in customs duties

→ Global competition & Global opportunities

• International trade

• International Joint Ventures (IJVs)

• International Technology Transfer

• Technology-led trade
147 Prof. Sudhir K. Jain 147
 Emerging Scenario

• Globalization of industry
• Lesser meaning of national boundaries
• Outsourcing: a general norm
• Price & cost cutting → Opportunities for SMEs
• Higher R&D → More Inventions → More Patents

→ Increasing Importance of IPRs

148 Prof. Sudhir K. Jain 148
 IPR knowledge
can help in meeting the
challenge of
increasing competition
in the WTO Era ?

Prof. Sudhir K. Jain 149

Commercialization & Use

of Patents for Business

 Commercializing Patented
Technology (1/2)
• A patent on its own is no guarantee of
commercial success
• It needs to be exploited effectively in the
market place
 Commercializing Patented
Technology (2/2)
• To take a patented invention to market, a
company has a range of options:

– Commercializing the patented invention directly

– Selling the patent to someone else

– Licensing the patent to others

– Establishing a joint venture or other strategic

alliance with others having complementary assets
 Commercialization of Patents:
Important Areas
• Patents: Application & Grant
• Technology Transfer, Negotiation & Licensing
• Assignment
• Costs of Maintenance
• Enforcement, Infringement & Litigation
• Valuation
• R&D Agreements → Future Patents
 Uses of Patents for Business

• New Business Ideas

• New R&D Ideas

• Inward Technology Transfer/Licensing

• Technology Marketing/Licensing

• Caution in Exports Destinations

 Importance of IPRs (Patents)
in International Trade
• Export & import of goods → Search for Patent status
• Setting up an enterprise abroad
• Technology Transfer: Inward or outward
• Protection of own technology: India & abroad
• Selling via internet

155
 Conclusion
• We are in an Era of ‘Knowledge Economy’
• Knowledge Management is the key to success
• Information on patents can be used to meet the
challenge of growing competition
• Our industry needs to become IPR savvy
• We can meet the challenge of growing competition in the
WTO era through knowledge of Patents & other IPRs
• Basic knowledge of IPRs is essential for Engineers,
Scientists & Managers

Prof. Sudhir K. Jain 156

 In the WTO era,
Speed of R&D, Patenting &
Commercialization of Patents
are the Keys to Success

157 Prof. Sudhir K. Jain 157

 Thank you
Prof. Sudhir K. Jain

I.I.T. Delhi

Prof. Sudhir K. Jain, IIT Delhi

158 11/9/2020 Prof. Sudhir K. Jain I.I.T. Delhi 11/9/2020
158
158
Aerial View of
SMVDU
Thank You
- Sudhir K Jain

159