After College Classroom Handout

LIST OF SUBJECTIVE TOPICS

INTELLECTUAL PROPERTY RIGHTS

INTRODUCTION

Property may be defined as an object over which the right of ownership extends. It may also include objects over
which one has the exclusive right of control and disposal.
Property can be classified into two broad categories:
• Tangible—(Movable and Immovable)
• Intangible—(Intellectual Property)

In Jilubhai Nanbhai Khachar v. State of Gujarat, the Supreme Court stated that property in the legal sense means
an aggregate of rights which are guaranteed and protected by law.

In R.C. Cooper v. Union of India, the Supreme Court defined property to mean “the highest right a man can have to
anything being that right which one has to lands or tenements, goods or chattels which does not depend on
another’s courtesy: it includes ownership, estates and interests in corporeal things, and also rights such as trade
marks, copyrights, patents and even rights in personam capable of transfer or transmission, such as debts; and
signifies a beneficial right to or a thing considered as having a money value, especially concerning transfer or
succession, and of their capacity of being injured.”

INTELLECTUAL PROPERTY
Intellectual property is the creative work of the human intellect. And, the right to intellectual property is an
invisible/intangible right to a product of a man’s brain, such as a new invented product, i.e. property of the
mind. Intellectual property relates to pieces of information which can be incorporated in tangible objects at the
same time in an unlimited number of copies at different locations anywhere in the world. The property is not in
those copies but in the information reflected in those copies.

Entry 49, List I (Union List) of the Seventh Schedule of the Constitution gives power to the Parliament to make laws
concerning patents, inventions and designs, copyright, and trademarks. The power to make laws concerning the
rest of the IPRs, e.g. geographical indications, plant varieties and layout designs of integrated circuits also lies with
the Parliament by way of Entry 49, List I read with residuary powers under Entry 97, List I.
According to Article 2(viii) of the Convention Establishing the World Intellectual Property Organization (WIPO)
1967, intellectual property includes right relating to
• literary, artistic and scientific works;
• performance of performing artists, phonograms and broadcasts;
• inventions in all fields of human endeavour;
• scientific discoveries;
• industrial designs;
• trade marks, service marks and commercial names and designations;
• protection against unfair competition; and all other rights resulting from intellectual activity in the industrial,
scientific, literary or artistic fields. The intellectual property thus, includes copyright, trade marks,
service marks, geographical indications, patents, utility models, plant varieties, industrial designs, trade
secret, layout designs of integrated circuits, etc.
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 The concept of intellectual property is not new as Renaissance northern Italy is thought to be the cradle of the
Intellectual Property system. A Venetian Law of 1474 made the first systematic attempt to protect inventions by a
form of patent,
which granted an exclusive right to an individual for the first time. In the same century, the invention of movable
type and the printing press by Johannes Gutenberg around 1450, contributed to the origin of the first copyright
system in the world.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral
agreement on intellectual property. The areas of intellectual property that it covers are:
• Copyright and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting
organizations);
• Trade marks including service marks;
• Geographical indications including appellations of origin;
• Industrial designs;
• Patents including protection of new varieties of plants;
• The lay-out designs (topographies) of integrated circuits;
• The undisclosed information including trade secrets and test data.

Theories for justification of Intellectual Property Rights

There are various theories for the justification of intellectual property rights as property. Per William Lisher, there
are mainly four theories as to the basis of intellectual property rights which are:
• Utilitarian Theory;
• Labour Theory;
• Personality Theory; and
• Social Planning Theory
• Ethics and Reward Theory

(i) Utilitarian Theory

Jeremy Bentham, an English philosopher, jurist and social reformer propounded the Utilitarian Theory. This theory
is based on the ideal of “the greatest good for the greatest number”. Thus, according to this theory, law should
guarantee maximum benefit for the maximum members of the society. Applying this theory to intellectual property
rights, it is stated that by allowing a creator to profit from his work, monetary incentives are afforded for
technological invention and artistic creation which typically benefit society and humankind at large. Further, the
proliferation of intellectual property rights, as a means to foster investment of temporal and financial resources in
innovation in the hope that the invention and works that result there from act to promote “general happiness” and
increase the standard, quality of living and thereby the net welfare benefit amongst the general population.

(ii) Labour Theory/ Natural rights theory

The Labour theory was propounded by John Locke, who was of the opinion that a person who labors upon
resources that are held in common has a natural right to the fruits of his efforts and the state has to respect and
enforce that right. The Labour Theory works on the premise that the labour of a man increases the value of a thing
which was in common and therefore the outcome of his labour belongs to him as a natural right. In other words, if
a person applies his intellect, i.e. mental labour on knowledge or information which is in the public domain and
produces “knowledge goods”, he would be entitled to the protection of such goods.

(iii) Personality Theory

The Personality Theory has been propounded by Kant and Hegel. This theory centers on an individual’s personality
and the external extensions thereof. According to Hegel, man acquires an “absolute right of appropriation” by
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 “putting his will into any and every thing ... thereby making it his”. The Personality theory is described by Fisher
as justifying property rights “when and only when they would promote human flourishing by protecting or
fostering fundamental human needs or interests”.
Fisher identifies four such needs or interests appropriate for intellectual property: privacy; individual self-
realization; identity; and benevolence. The Personality theory to apply there must be an intimate and/or emotional
connection between the author/creator and his works or inventions.

(iv) Social Planning Theory

The Social Planning Theory is rooted in the proposition that property rights in general and intellectual property
rights in particular can and should be shaped to help foster the achievement of a just and attractive culture. This
theory has less of an established foundation. It differs from utilitarian theory in that it seeks to go beyond the
notion of “social welfare” to a much broader vision of society serviced by intellectual property. This theory is
criticized on the ground that it cannot achieve agreement on what are the goals that such “social planning” seeks
to achieve.

(v) Ethic and Reward Theory:

This theory justifies the exclusive rights of intellectual property with some moral and ethical aspect. Indeed, the
ethic requires a fair and proportional contribution for the effort that the creator has made for the social utility. The
exclusive rights are “an expression of gratitude to an author for doing more than society expects or feels that they
are obliged to do”.
However, since rewards are given to people who did something disagreeable and grievous for the benefice of the
whole society, we could question whether creators and inventors truly deserve it. By admitting that they do, it is
obvious that they definitively do not deserve it twice. Some consider that the inventor is already remunerated
considering that if the invention is really in advance, the time between the apparition of his invention and the first
copies will give him enough profit to reward him. In this case, the exclusive right is far more excessive.

DEVELOPMENT OF DIFFERENT LEGISLATION UNDER INTELLECTUAL PROPERTY RIGHT REGIME

Patents Act, 1970

After India became a signatory to the TRIPS agreement forming part of the Agreement establishing the World
Trade Organization (WTO) for reduction of distortions and impediments to international trade and promotion of
effective and adequate protection of intellectual property rights, the Patents Act, 1970 has been amended in the
year 1995, 1999, 2002 and 2005 to meet its obligations under the TRIPS agreement. The Patents Act has been
amended keeping in view the development of technological capability in India, coupled with the need for
integrating the intellectual property system with international practices and intellectual property regimes. The
amendments were also aimed at making the Act a modern, harmonized and user-friendly legislation to adequately
protect national and public interests while simultaneously meeting India’s international obligations under the
TRIPS Agreement.
Subsequently the rules under the Patent Act have also been amended and these became effective from May 2003.
These rules have been further amended by Patents (Amendment) Rules 2005 w.e.f 01.01.2005. Thus, the Patent
Amendment Act, 2005 is now fully in force and operative.

Trade Mark Act, 1999

The law of trademarks is also now modernized under the Trademarks Act of 1999. A trademark is a special symbol
for distinguishing the goods offered for sale or otherwise put on the market by one trader from those of another.
In India the trademarks have been protected for over four decades as per the provisions of the Trade and
Merchandise Mark (TMM) Act of 1958. India became a party to the WTO at its very inception. One of the
agreements in that related to the Intellectual Property Rights (TRIPS). In December, 1998 India acceded to the
Paris Convention

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 Meanwhile, the modernization of Trade and Merchandise Marks Act, of 1958 had been taken up keeping in view
the current developments in trading and commercial practices, increasing globalization of trade and industry, the
need to encourage investment flows and transfer of technology, need for simplification of trademark management
system and to give effect to important judicial decisions. To achieve these purposes, the Trademarks Bill was
introduced in 1994.

The Bill pointed towards the changes which were contemplated and were under consideration of the Government
of India, but it lapsed in 1994. A comprehensive review was made of the existing laws because of the developments
in trading and commercial practices, and increasing globalization of trade and industry. The Trademarks Bill of
1999 was passed by Parliament that received the assent of the President on 30th December, 1999 as Trade Marks
Act, 1999 thereby replacing the Trade and Merchandise Mark Act of 1958. The important salient features of the
Act inter-alia include:
• It broadens the definition of infringement of a registered trademark to include action against the unauthorized
use of a confusingly similar mark, not only in respect of the goods and services covered by registration, as was
previously the case, but also in respect of goods and services which are so similar that a likelihood of deception
or confusion exists.
• An action for infringement will also be available against the unauthorized use of a mark about dissimilar goods,
if such mark is similar to a registered mark that is well known in India and the interest of the owner is likely
to be affected adversely. The remedy for infringement of a trademark is also strengthened under the new law
by authorizing the police with the power to seize infringing articles without a warrant.

In the case of Macleoids Pharmaceuticals Ltd. Versus Tidal Laboratories P. Ltd., The acquiescence about the use of
a mark disentitles the proprietor of the mark to oppose it from being used. The case Macleods Pharmaceuticals Ltd
versus Tidal Laboratories P Ltd 2006 (32) PTC 221 (Bom) amply lays down the law in this matter. Also that
registration of a trademark is not a crucial factor in denying relief in a passing off action.

The Designs Act, 2000

The Designs Act of 1911 has been replaced by the Designs Act, 2000. In view of considerable progress made in the
field of science and technology, a need was felt to provide more efficient legal system for the protection of industrial
designs in order to ensure effective protection to registered designs, and to encourage design activity to promote
the design element in an article of production. In this backdrop, the Designs Act, 2000 has been enacted essentially
to balance these interests and to ensure that the law does not unnecessarily extend protection beyond what is
necessary to create the required incentive for design activity while removing impediments to the free use of
available designs.
The salient features of the act are as follows:
• Enlarging the scope of definition of the terms "article", "design" and introduction of definition of "original".
• Amplifying the scope of "prior publication".
• Introduction of provision for delegation of powers of the Controller to other officers and stipulating statutory
duties of examiners.
• Provision of identification of non-registrable designs.
• Provision for substitution of applicant before registration of a design.
• Substitution of Indian classification by internationally followed system of classification.
• Provision for inclusion of a register to be maintained on computer as a Register of Designs.
• Provision for restoration of lapsed designs.
• Provisions for appeal against orders of the Controller before the High Court instead of Central Government.
• Revoking of a period of secrecy of two years of a registered design.
• Providing for compulsory registration of any document for transfer of right in the registered design.
• Introduction of additional grounds in cancellation proceedings and provision for initiating the cancellation
proceedings before the Controller in place of High Court
• Enhancement of quantum of penalty imposed for infringement of a registered design.
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 • Provision for grounds of cancellation to be taken as defence in the infringement proceedings to be in any court
not below the Court of District Judge.
• Enhancing initial period of registration from 5 to 10 years, to be followed by a further extension of five years.
• Provision for allowance of priority to other convention countries and countries belonging to the group of
countries or inter-governmental organizations apart from United Kingdom and other Commonwealth
Countries.
• Provision for avoidance of certain restrictive conditions for the control of anticompetitive practices in
contractual licenses.

The Geographical Indications of Goods (Registration and Protection) Act, 1999

Until recently, Geographical indications were not registrable in India and in the absence of statutory protection,
Indian geographical indications had been misused by persons outside India to indicate goods not originating from
the named locality in India. Patenting turmeric, neem and basmati are the instances which drew a lot of attention
towards this aspect of the Intellectual property. Mention should be made that under the Agreement on Trade
Related Aspects of Intellectual Property Rights (TRIPS), there is no obligation for other countries to extend
reciprocal protection unless a geographical indication is protected in the country of its origin. India did not have
such a specific law governing geographical indications of goods which could adequately protect the interest of
producers of such goods.

To cover up such situations it became necessary to have a comprehensive legislation for registration and for
providing adequate protection to geographical indications and accordingly, the Parliament has passed a legislation,
namely, the Geographical indication of Goods (Registration and Protection) Act, 1999. The legislation is
administered through the Geographical Indication Registry under the overall charge of the Controller General of
Patents, Designs and Trade Marks.

The salient features of this legislation are as under :

• Provision of definition of several important terms like "geographical indication", "goods", "producers",
"packages", "registered proprietor", "authorized user" etc.
• Provision for the maintenance of a Register of Geographical Indications in two parts-Part A and Part B and use
of computers etc. for maintenance of such Register. While Part A will contain all registered geographical
indications, Part B will contain particulars of registered authorized users.
• Registration of geographical indications of goods in specified classes.
• Prohibition of registration of certain geographical indications.
• Provisions for framing of rules by Central Government for filing of application, its contents and matters
relating to substantive examination of geographical indication applications.
• Compulsory advertisement of all accepted geographical indication applications and for inviting objections.
• Registration of authorized users of registered geographical indications and providing provisions for taking
infringement action either by a registered proprietor or an authorized user.
• Provisions for higher level of protection for notified goods.
• Prohibition of assignment etc. of a geographical indication as it is public property.
• Prohibition of registration of geographical indication as a trademark.
• Appeal against Registrar's decision would be to the Intellectual Property Board established under the Trade
Mark legislation.
• Provision relating to offences and penalties.
• Provision detailing the effects of registration and the rights conferred by registration.
• Provision for reciprocity powers of the registrar, maintenance of Index, protection of homonymous
geographical indications etc.

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 Copyright Act, 1957

Copyright in India is governed by Copyright Act, 1957. This Act has been amended several times to keep pace with
the changing times. As per this Act, copyright grants the author's lifetime coverage plus 60 years after death.
Copyright and related rights on cultural goods, products and services, arise from individual or collective creativity.
All original intellectual creations expressed in a reproducible form will be connected as "works eligible for
copyright protections". Copyright laws distinguish between different classes of works such as literary, artistic,
musical works and sound recordings and cinematograph films. The work is protected irrespective of the quality
thereof and also when it may have very little in common with accepted forms of literature or art.

Copyright protection also includes novel rights which involve the right to claim authorship of a work, and the right
to oppose changes to it that could harm the creator's reputation. The creator or the owner of the copyright in a
work, can enforce his right administratively and in the courts by inspection of premises for evidence of production
or possession of illegally made "pirated" goods related to protected works. The owner may obtain court orders to
stop such activities, as well as seek damages for loss of financial rewards and recognition.

A vital field which gets copyright protection is the computer industry. The Copyright Act, 1957, was amended in
1984 and computer programming was included with the definition of "literary work.' The new definition of
"computer programme" introduced in 1994, means a set of instructions expressed in works, codes or in any other
form, including a machine-readable medium, capable of causing a computer to perform a particular task or achieve
a particular result.

The greatest fear and challenges to the copyright industry is the piracy of works whether, books, musical works,
films, television programmes or computer software or computer database. The special nature of infringement of
copyrights in computer programmes has again been taken note of by the Copyright (Amendment) Act, 1994 by
inserting a new section 63 B. The new section provides that any person who knowingly makes use on a computer
of an infringed copy of a computer programme will be punishable with imprisonment for a term of not less than
seven days, which may extend to three years and with a fine of not less than Rs.50,000/- and which may extend to
Rs. 2,00,000/-. Proviso to section 63 B, however, provides that where computer programme has not been used for
gain or in the course of trade or business, the court may at its discretion and for reasons mentioned in the
judgement not impose any sentence of imprisonment and impose only fine upto 50,000/-.

The Copyright (Amendment) Act, 1999 makes it free for purchaser of a gadget/equipment to sell it onwards if the
item being transacted is not the main item covered under the Copyright Act. This means computer software which
is built in an integral part of a gadget/equipment can be freely transacted without permission of the copyright
owner. This amendment also ensures fair dealing of 'broadcasting' gaining popularity with the growth of the
Internet. With this amendment India has updated the Act to meet the concerns of the copyright industries mainly
consisting of Book Industry, Music Industry, Film and Television Industry, Computer Industry and Database
Industry.

The Protection of Plant Varieties and Farmers’ Rights Act, 2001

The concept of Plant Breeders’ Rights arises from the need to provide incentives to plant breeders engaged in the
creative work of research which sustains agricultural progress through returns on investments made in research
and to persuade the researcher to share the benefits of his creativity with society.
The issue of enacting a law relating to Plant Varieties Protection and Farmers’ Rights in India assumed importance
particularly in the wake of TRIPS agreement under WTO which seeks to promote effective protection of Intellectual
Property Rights in all fields of technology. Article 27 of TRIPS Agreement defines patentable subject matter and
requires member countries to provide for the protection of plant varieties whether by patenting or by an effective
sui generis system or by any combination thereof.

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 Intending to provide for the establishment of an Authority to give an effective system of protection of the rights of
plant breeders and farmers, and to encourage the development of new varieties of plants and to give effect to the
provisions of TRIPS Agreement, the Government enacted the Protection of Plant Varieties and Farmers’ Right Act,
2001. This Act seeks to stimulate investment for research and development both in the public and private sectors
for the development of new plant varieties by ensuring appropriate returns on such investments. It also seeks to
facilitate the growth of the seed industry in the country through domestic and foreign investment to ensure the
availability of high quality seeds and planting material to Indian farmers. It also recognizes the role of farmers as
cultivators and conservers and the contribution of traditional, rural and tribal communities to the country’s agro
biodiversity by rewarding them for their contribution through benefit sharing and protecting the traditional rights
of the farmers. The Act also provides for setting up of the Protection of Plant Varieties and Farmer’s Rights
Authority to promote and develop new varieties of plants and promotes rights of the farmers and breeders.

Electronics and Information technology is one of the fastest growing sectors that have played a significant role in
world economy. This is primarily due to the advancements in the field of electronics, computers and
telecommunication. Microelectronics, which primarily refers to Integrated Circuits (ICs) ranging from, Small Scale
Integration (SSI) to Very Large Scale Integration (VLSI) on a semiconductor chip - has rightly been recognized as a
core, strategic technology world-over, especially for Information Technology (IT) based society. Design of
integrated circuits requires considerable expertise and effort depending on the complexity. Therefore, protection
of Intellectual Property Rights (IPR) embedded in the layout designs is of utmost importance to encourage
continued investments in R & D to result in technological advancements in the field of microelectronics.

The practice of protecting the methods of Copyright, Patents did not appropriately accommodate the requirements
of Intellectual Property Rights protection for the Layout-Designs of Integrated Circuits. This was because in the
context of Layout Designs, the concept of “originality” is of utmost significance, whether it is a “novelty or not”.
While the Patent Law requires that the idea should be original as well as novel, the copyright law is too general to
accommodate the original ideas of scientific creation of Layout-Designs of Integrated Circuits. Because of the
above, the necessity for protecting Layout-Designs of Integrated Circuits was felt to reward and encourage an
adequate level of investment of human, financial and technological resources.

The Majority of countries that attach significance to protection of Intellectual Property Rights in the Semiconductor
Integrated Circuits provides for sui generis system of protection of Layout-Designs of Integrated Circuits, which is
usually contained in a separate Act.

Trade Related Intellectual Property

Rights (TRIPS) Agreement under WTO contains provisions concerning setting up of standards concerning
availability, scope and use of Intellectual Property Rights, Geographical Indications, Layout- Design of Integrated
Circuits etc. Therefore, the Government enacted the Semiconductor Integrated Circuit Layout Designs Act, 2000
providing for protection of Semiconductor Integrated Circuits Layout- Designs by process of registration,
mechanism for distinguishing Layout-Designs which can be protected, rules to prohibit registration of Layout-
Designs which are not original and/or which have been commercially exploited, period for protection, provisions
concerning infringement, payment of royalty for registered Layout-Design, provisions for dealing with willful
infringement by way of punishment, appointing a Registrar for registering the Layout Designs and mechanism of
Appellate Board.

To conclude, the various modifications and amendments to earlier Intellectual Property Laws are an indication of
India's move towards new I PR regime to prepare ourselves for the global trade competition.

Trade Secrets

It may be confidential business information that provides an enterprise a competitive edge. Usually these are
manufacturing or industrial secrets and commercial secrets. These include sales methods, distribution methods,

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 consumer profiles, and advertising strategies, lists of suppliers and clients, and manufacturing processes. Contrary
to patents, trade secrets are protected without registration.

A trade secret can be protected for an unlimited period of time but a substantial element of secrecy must exist so
that, except by the use of improper means, there would be difficulty in acquiring the information. Considering the
vast availability of traditional knowledge in the country, the protection under this will be very crucial in reaping
benefits from such type of knowledge.

Utility Models

A utility model is an exclusive right granted for an invention, which allows the right holder to prevent others from
commercially using the protected invention, without his authorization for a limited period of time. In its basic
definition, which may vary from one country (where such protection is available) to another, a utility model is
similar to a patent. In fact, utility models are sometimes referred to as "petty patents" or "innovation patents."
Only a small but significant number of countries and regions provide the option of utility model protection. At
present, India does not have legislation on Utility models.

The main differences between utility models and patents are the following:
The requirements for acquiring a utility model are less stringent than for patents. While the requirement of
"novelty" is always to be met, that of "inventive step" or "non-obviousness" may be much lower or absent
altogether. In practice, protection for utility models is often sought for innovations of a rather incremental
character which may not meet the patentability criteria.

The term of protection for utility models is shorter than for patents and varies from country to country (usually
between 7 and 10 years without the possibility of extension or renewal).
In most countries where utility model protection is available, patent offices do not examine applications as to
substance before registration. This means that the registration process is often significantly simpler and faster,
taking on an average six months.

Utility models are much cheaper to obtain and to maintain. In some countries, utility model protection can only be
obtained for certain fields of technology, and only for products but not for processes.

Utility models are considered suitable particularly for SMEs that make "minor" improvements to, and adaptations
of, existing products. Utility models are primarily used for mechanical innovations.

The "Innovation patent," launched in Australia some time back was introduced as a result of extensive research
into the needs of small and medium-sized enterprises, to provide a "low-cost entry point into the intellectual
property system."

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 INTERNATIONAL CONVENTIONS PERTAININIG TO INTELLECTUAL PROPERTY RIGHTS

PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY

The Paris Convention was concluded in 1883, was revised at Brussels in 1900 at Washington in 1911, at The Hague
in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and it was amended in 1979
The Convention applies to industrial property in the widest sense, including patents, marks, industrial designs,
utility models, trade names, geographical indications and the repression of unfair competition. The substantive
provisions of the Convention may be divided into three main categories namely national treatment, right of
priority, common rules.

National Treatment

Under the provisions on national treatment, the Convention provides that, as regards the protection of industrial
property, each contracting State must grant the same protection to nationals of the other contracting States as it
grants to its own nationals. Nationals of non-contracting States are also entitled to national treatment under the
Convention if they are domiciled or have a real and effective industrial or commercial establishment in a
contracting State.

Right of Priority

The Convention provides for the right of priority in the case of patents, marks and industrial designs. This right of
priority denotes that on the basis of a regular first application filed in one of the contracting States, the applicant
may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and
marks), apply for protection in any of the other contracting States and these later applications are regarded as if
they had been filed on the same day as the first application. In other words, these later applications have priority
over applications which may have been filed during the said period of time by other persons for the same invention,
utility model, mark or industrial design. Moreover, these applications, since based on the first application, are not
affected by any event that may have taken place in the interval, such as any publication of the invention or sale of
articles bearing the mark or incorporating the industrial design. One of the major practical advantages of right of
priority is that, when an applicant desires protection in several countries, he is not required to present all his
applications at the same time but has six or 12 months at his disposal to decide in which countries he wishes
protection and to organize with due care the steps needed to secure protection.

Common Rules

The Convention lays down a few common rules which all the contracting States must follow. The more important
are the following:
• Patents granted in different contracting States for the same invention are independent of each other.
• The granting of a patent in one contracting State does not oblige the other contracting States to grant a patent.
• A patent cannot be refused, annulled or terminated in any contracting State on the ground that it has been
refused or annulled or has terminated in any other contracting State.
• The inventor has the right to be named as such in the patent.
• The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that the sale of
the patented product, or of a product obtained by means of the patented process, is subject to restrictions or
limitations resulting from the domestic law.
• Each contracting State that takes legislative measures providing for the grant of compulsory licenses to
prevent the abuses which might result from the exclusive rights conferred by a patent may do so only with
certain limitations. Thus, a compulsory license based on failure to work the patented invention may only be
granted pursuant to a request filed after three or four years of failure to work or insufficient working of the
patented invention and it must be refused if the patentee gives legitimate reasons to justify his inaction.
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 • Forfeiture of a patent may not be provided for, except in cases where the grant of a compulsory license would
not have been sufficient to prevent the abuse. In the latter case, proceedings for forfeiture of a patent may be
instituted, but only after the expiration of two years from the grant of the first compulsory license.

Marks
• The Paris Convention does not regulate the conditions for the filing and registration of marks which are
therefore determined in each contracting State by the domestic law. Consequently, no application for the
registration of a mark filed by a national of a contracting State may be refused, nor may a registration be
invalidated, on the ground that filing, registration or renewal has not been affected in the country of origin.
Once the registration of a mark is obtained in a contracting State, it is independent of its possible registration
in any other country, including the country of origin; consequently.
• The lapse or annulment of the registration of a mark in one contracting State does not affect the validity of
registration in other contracting States.
• Where a mark has been duly registered in the country of origin, it must, on request, be accepted for filing and
protected in its original form in the other contracting States.
• The registration may be refused in well-defined cases, such as when the mark would infringe acquired rights
of third parties, when it is devoid of distinctive character, when it is contrary to morality or public order, or
when it is of such a nature as to be liable to deceive the public.
• If, in any contracting State, the use of a registered mark is compulsory, the registration cannot be cancelled
until after a reasonable period, and only if the owner cannot justify his inaction.
• Each contracting State must refuse registration and prohibit the use of marks which constitute a reproduction,
imitation or translation, liable to create confusion, of a mark considered by the competent authority of that
State to be well known in that State as being already the mark of a person entitled to the benefits of the
Convention and used for identical or similar goods.
• Each contracting State must likewise refuse registration and prohibit the use of marks which consist of or
contain without authorization, armorial bearings, State emblems and official signs and hallmarks of
contracting states, provided they have been communicated through the International Bureau of WIPO.
• The same provisions apply to armorial bearings, flags, other emblems, abbreviations and names of certain
inter-governmental organizations.
• Collective marks must be granted protection.

PATENT COOPERATION TREATY (PCT)

The PCT created a Union. The Union has an Assembly. Every State party to the PCT is a member of the Assembly.
Some of the most important tasks of the Assembly are –

The amendment of the Regulations issued under the Treaty, the adoption of the biennial program and budget of
the Union, and the fixing of certain fees connected with the use of the PCT system. The development of the PCT
system is shown by the fact that in 1979, 2,625 international applications were received by the International
Bureau, while the corresponding number was 110,065 in 2003. The average number of designations per
application was 6.66 in 1979 and 132 in 2003.

The PCT was concluded in 1970, amended in 1979 and modified in 1984 and 2001. It is open to States party to the
Paris Convention for the Protection of Industrial Property (1883). Instruments of ratification or accession must be
deposited with the Director General of WIPO. The Patent Cooperation Treaty makes it possible to seek patent
protection for an invention simultaneously in each of a large number of countries by filing an international patent
application. The application may be filed by anyone who is a national or resident of a contracting State, with the
national patent office of the contracting State of which the applicant is a national or resident or, at the applicant’s
option, with the International Bureau of WIPO in Geneva. If the applicant is a national or resident of a contracting
State which is party to the European Patent Convention, the Harare Protocol on Patents and Industrial Designs
(Harare Protocol) or the Eurasian Patent Convention, the international application may also be filed with the
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 European Patent Office (EPO), the African Regional Industrial Property Organization (ARIPO) or the Eurasian
Patent Office (EAPO), respectively.

Advantages of PCT Filing

The advantages of PCT filing for the applicant, the patent offices and the general public are given below
• The applicant has up to 18 months more than in a procedure outside the PCT to reflect on the desirability of
seeking protection in foreign countries,
• to appoint local patent agents in each foreign country,
• to prepare the necessary translations and to pay the national fees. The PCT filing assures the applicant that if
his international application is in the form prescribed by the PCT, it cannot be rejected on formal grounds by
any designated Office during the national phase of the processing of the application. Based on the international
search report, the applicant can evaluate with reasonable probability the chances of his invention being
patented. On the basis of the international preliminary examination report, that probability is even stronger;
the applicant has the possibility to amend the international application to put it in order before processing by
the designated Offices.

Berne Convention for the Protection of Literary and Artistic Works

The Berne Union has an Assembly and an Executive Committee. Every country member of the Union which has
adhered to at least the administrative and final provisions of the Stockholm Act is a member of the Assembly. The
members of the Executive Committee are elected from among the members of the Union, except for Switzerland,
which is a member ex officio in 1971, and was amended in 1979.
The Convention rests on three basic principles and contains a series of provisions determining the minimum
protection to be granted, as well as special provisions available to developing countries. Basic Principles
The three basic principles are the following:
• Works originating in one of the contracting States must be given the same protection in each of the other
contracting States as the latter grants to the works of its nationals.
• Such protection must not be conditional upon compliance with any formality.
• Such protection is independent of the existence of protection in the country of origin of the work. If, however,
a contracting State provides for a longer term than the minimum prescribed by the Convention and the work
ceases to be protected in the country of origin, protection may be denied once protection in the country of
origin ceases.

DURATION OF PROTECTION

The general rule is that protection must be granted until the expiration of the 50th year after the author’s death.
There are, however, exceptions to this general rule. In the case of anonymous or pseudonymous works, the term
of protection expires 50 years after the work has been lawfully made available to the public, except if the
pseudonym leaves no doubt as to the author’s identity or if the author discloses his identity during that period; in
the latter case, the general rule applies.
In the case of audiovisual (cinematographic) works, the minimum term of protection is 50 years after the making
available of the work to the public (“release”) or—failing such an event—from the creation of the work.
In the case of works of applied art and photographic works, the minimum term is 25 years from the creation of
such a work.
TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS) AGREEMENT
With the establishment of the world trade Organization (WTO), the importance and role of the intellectual property
protection has been Crystallized in the Trade-Related Intellectual Property Systems (TRIPS) Agreement. It was
negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) treaty in 1994.

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 The general goals of the TRIPS Agreement are contained in the Preamble to the Agreement, which reproduces the
basic Uruguay Round negotiating objectives established in the TRIPS area by the 1986 Punta del Este Declaration
and the 1988-89 Mid-Term Review. These objectives include the reduction of distortions and impediments to
international trade, promotion of effective and adequate protection of intellectual property rights, and ensuring
that measures and procedures to enforce intellectual property rights do not themselves become barriers to
legitimate trade.

The TRIPS Agreement encompasses, in principle, all forms of intellectual property and aims at harmonizing and
strengthening standards of protection and providing for effective enforcement at both national and international
levels. It addresses applicability of general GATT principles as well as the provisions in international agreements
on IP (Part I). It establishes standards for availability, scope, use (Part II), enforcement (Part III), acquisition and
maintenance (Part IV) of Intellectual Property Rights. Furthermore, it addresses related dispute prevention and
settlement mechanisms (Part V). Formal provisions are addressed in Part VI and VII of the Agreement, which cover
transitional, and institutional arrangements, respectively.

The obligations under TRIPS apply equally to all member states. However developing countries were allowed extra
time to implement the applicable changes to their national laws, in two tiers of transition according to their level
of development. The transition period for developing countries expired in 2005. For least developed countries, the
transition period has been extended to 2016, and could be extended beyond that.

The TRIPS Agreement, which came into effect on 1 January 1995, is to date the most comprehensive multilateral
agreement on intellectual property. The areas of intellectual property that it covers are:
• Copyright and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting
organisations);
• Trade marks including service marks;
• Geographical indications including appellations of origin;
• Industrial designs;
• Patents including protection of new varieties of plants;
• The lay-out designs (topographies) of integrated circuits;
• The undisclosed information including trade secrets and test data.

Features of the Agreement

The main three features of the TRIPS Agreement are as follows-

• Standards: The TRIPS Agreement sets out the minimum standards of protection to be provided by each
Member.
• Enforcement: The second main set of provisions deals with domestic procedures and remedies for the
enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to
all IPR enforcement procedures.
• Dispute settlement: The Agreement makes disputes between WTO Members about the respect of the TRIPS
obligations subject to the WTO's dispute settlement procedures.

In addition the Agreement provides for certain basic principles, such as national and most favoured-nation
treatment (non-discrimination), and some general rules to ensure that procedural difficulties in acquiring or
maintaining IPRs do not nullify the substantive benefits that should flow from the Agreement.

The TRIPS Agreement is a minimum standards agreement, which allows Members to provide more extensive
protection of intellectual property if they so wish. Members are left free to determine the appropriate method of
implementing the provisions of the Agreement within their own legal system and practice.

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 The TRIPS Agreement provides for protection of various kinds of intellectual property rights to ensure that
adequate standards of protection exist in all member countries. The starting point is the obligations of the main
international agreement of the World Intellectual Property Organization (WIPO) that already existed before the
WTO was created; namely, the Paris Convention for the Protection of Industrial Property (patents, industrial
designs, etc.) and the Berne Convention for the Protection of Literary and Artistic Works (copyright). However,
some areas were not covered by these conventions while in some cases; the standards of protection prescribed
were thought inadequate. So the TRIPS agreement adds a significant number of new or higher standards for the
protection of intellectual property rights. Part II of the Agreement addresses, in its various sections, the different
kinds of IPR and establishes standards for each category.

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