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Q :
What do you
mean by Patents?
Q : Do patent laws provide for grant of compulsory
licenses?
Q : What are the provisions included in TRIPS?
Q : Can a trademark be protected indefinitely?
Q : Which areas offer protection under the
Copyright Act?
Q : What remedies does the Copyright Act
offer?
Q : Can Computer Programmes qualify as Works
of Applied Art?
Q : How are Industrial Designs classified?
Q : How does the existing law prevent misuse
of geographical denominations?
Q : What is meant by an unfair trade practice?
Q : How are trade secrets protected in India?
Q : What is India's strategy on industrial
property?
Q : When is an invention patentable?
Q : Is the inventor given statutory right
to practice his invention?
Q : What criteria should an invention meet
to be eligible for patent protection?
Q : What are neighbouring
rights?
Q : When is the
certification mark used?
| Q : What do you mean by Patents? |
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| A: |
Indian
Patents Act, 1970 Historical Background: The first
Act relating to Patent rights was passed in India
in 1856. It granted exclusive privileges to inventors
of new products for a period of 14 years. It was
re-enacted in 1859 with revisions founded on
the British Patent Act of 1852. Subsequently the
Indian Patents and Design Act, 1911 replaced all
previous legislations. When India gained independence
in 1947, the Indian Government felt that Indian
laws,framed under the British rule required basic
changes to bring them in line with the aspirations
of an independent country whose economy was
rapidly transforming into a dynamic, industrial
economy. The Government appointed two committees,
Tek Chand Committee in 1948 and the Ayyangar Committee
in 1957, to review the Indian Patent System with
a view towards ensuring that the system was in line
with national interests. |
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| Q
: Do patent laws provide for grant of compulsory
licenses? |
| A: |
Most patent laws
provide for grant of compulsory licenses under
specified circumstances. Compulsory licenses are
also known as non-voluntary licenses, which clearly
shows that these are granted against the will
of the owner of the patent.
The grounds on which
compulsory licenses can be granted vary from one
country to another. In India, while considering request
for grant of compulsory license, regard is shown
to the following general considerations: -
(a) the invention is worked in India on a commercial
scale and to the fullest extent that is reasonably
practicable without undue delay; and
(b) patents are not granted merely to enable patentees
to enjoy a monopoly for the importation of the
patented article.
The patent law in India provides for an application
for a compulsory license to be made after three
years of the grant of patent
(i) if the reasonable requirements of the public
with respect of the patent invention have not
been satisfied or
(ii) if the patented invention is not available
to the public at a reasonable price.
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| Q : What are the provisions
included in TRIPS? |
| A: |
Protection
to be available for all inventions in all areas
of technology exceptions being only plants and animals
and biological processes for production of plants
and animals. If plants varieties excluded from patent
protection, effective sui-generis
system to be included
No discrimination with respect to place of invention
Compulsory licensing and government use permitted
but subject to 15 conditions
Minimum term of protection 20 years
Revocation to be subject to judicial review |
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| Q
: Can a trademark be protected indefinitely? |
| A: |
In
India, you can protect a trademark on the basis
of either use or registration. Both approaches have
developed historically in India, but
today trademark protection systems generally combine
both elements. A registration of a trademark is
always granted only for a limited period of time,
usually 10 years. But it is renewable without restriction
in time. Therefore, a trademark may be protected
indefinitely.
In fact the concept of trademarks can be said to
have grown out of passing off and trademarks were
protected in this way for several decades before
the legislation which first provided for their registration.
Unregistered trademarks can now be protected
only through the action for 'passing off'.
The principle of passing off can
be stated as "no one is entitled to pass off his
goods as those of another". Passing off is
concerned with misrepresentations made by one trader,
which damage the goodwill of another.
The registration under the statutory
trademark law does not confer any new right to the
mark claimed or any greater rights that what already
exists in common law and in equity without registration.
In fact, registration itself does not create
a trade mark. The trademark exists independently
of the registration, which merely affords further
protection under the statute. Common law rights
are left wholly unaffected. Priority in adoption
and use of trademarks is superior to priority
in registration. Therefore, it would be noted that
the statutory law on trademarks is cumulative. In
India, you can protect a trademark on the basis
of either use or registration. Both approaches have
developed historically in India, but
today trademark protection systems generally combine
both elements. A registration of a trademark is
always granted only for a limited period of time,
usually 10 years. But it is renewable without restriction
in time. Therefore, a trademark may be protected
indefinitely.
In fact the concept of trademarks
can be said to have grown out of passing off and
trademarks were protected in this way for several
decades before the legislation which first provided
for their registration. Unregistered trademarks can
now be protected only through the action for 'passing
off'.
The principle of passing off can be stated as "no
one is entitled to pass off his goods as those of
another". Passing off is concerned with misrepresentations
made by one trader, which damage the goodwill of
another.
The registration under the statutory
trademark law does not confer any new right to the
mark claimed or any greater rights that what already
exists in common law and in equity without registration.
In fact, registration itself does not create
a trade mark. The trademark exists independently
of the registration, which merely affords further
protection under the statute. Common law rights
are left wholly unaffected. Priority in adoption
and use of trademarks is superior to priority
in registration. Therefore, it would be noted that
the statutory law on trademarks is cumulative and
not an alternative to protection of marks at common
law. and not an alternative to protection of marks
at common law. |
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| Q
: Which areas offer protection under the Copyright
Act? |
| A: |
India
has one of the most modern copyright laws in the
world, which was amended in the year 1994. The origin
of a strong Copyright Act in India also stems
from the fact that India has a top quality Information
Technology and Computer Software Industry.
The Act provides strong protection not only for
authors but also for protection of the rights
of other people like music record producers and
performing artists. These are called neighbouring
rights.
Section 13 of the Act affords separate
and exclusive copyright protection to the following
7 clauses of work:
1. Original Literary Work; 2. Original
Dramatic Work; 3. Original Musical Work; 4. Original
Artistic Work; 5. Cinematographs Films: 6.
Sound recording; 7. Computer Programme |
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| Q : What remedies does the Copyright Act
offer? |
| A: |
The Copyright Act
has made tough provisions for copyright infringement
and provides both civil and legal remedies.
Civil Remedies:
The owner of copyright is entitled to all such
remedies by way of injunction, damages, accounts
and otherwise.
Criminal Remedies : The Act
provides that any person who knowingly infringes
or abets the infringement shall be punishable
with imprisonment and fine.
The General Provision also contains a well-known
general principle in Copyright Law, namely, that
Copyright Protection extends to expressions
and not to ideas, procedures, methods of operation
or mathematical concepts as such. This means
that ideas as such and facts would not be protected
and what is protected is individual expression
of ideas.
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| Q
: Can Computer Programmes qualify as Works of Applied
Art? |
| A: |
Computer Programmes
whether in source or object code shall be protected
as Literary Works under the Berne Convention.
This means that Computer
Programs cannot be considered as Artistic Works
and in particular, as Works of Applied Art.
This provision was
presumably provided for, since the Berne Convention
does not explicitly mention Computer Programs.
Thus, in practice, this means that limitation
on the Right must be kept within the framework
of the Berne Convention, that the
Term of Protection
would be 50 years and that the National Treatment
principle shall apply.
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| Q
: How are Industrial Designs classified? |
| A: |
Generally speaking,
an industrial design is the ornamental or aesthetic
aspect of a useful article. Traditionally, design
(shape or pattern) have an aesthetic or ornamental
purpose (as with jewellery) which was opposed
to the utilitarian function (or the technical
effect). Now-a-days, the notion of industrial
aesthetic calls this distinction into question
since a shape may have both a technical effect
and an artistic purpose.
A two fold distinction, therefore, has to be made
between an industrial design and a work or art
on the one hand and between an industrial design
and a patent on the other.
Scope of Exclusive Rights : The registered
proprietor of the design shall have the exclusive
right to apply the design to any article
in the class in which the design is registered.
Term of Protection : In most countries, registration
gives protection for an initial term of five years,
and it is renewable, against payment,
for two consecutive periods of five years, giving
a possible maximum term of 15 years.
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| Q
: How does the existing law prevent misuse of geographical
denominations? |
| A: |
Under the existing
Trade and Merchandise Marks Act, 1958, there is
no specific provision which has the purpose of
controlling
the use of geographical
names in trade. This does not of course mean that
there is no legal protection
for such names, or that they can be used in a
way which would deceive consumers or enable traders
to benefit without justification by famous
names. There are many ways in which the existing
Indian law can be used to control or prevent the
misuse of geographical denominations, one of which
is Consumer Protection Law :
The principal legislations in the field of consumer
protection are the following:
(a) The Consumer Protection Act of 1986
(b) Sections 36-A to 36-D of the Monopolies and
Restrictive Trade Practices Act, 1969. The said
sections pertain to unfair trade practices and
these were inserted in the MRTP Act by an Amending
Act of 1984 with effect from August 1, 1984.
Under India's obligation to TRIPS, it has to put
in place a geographical indications, legislation
by the year 2001. The proposal to being this
new legislation prior to that date to ensure reciprocal
protection of India's geographical indications
overseas is being debated.
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| Q
: What is meant by an unfair trade practice? |
| A: |
Section 36-A of the Consumer Protection Act defines
"unfair trade practice" to mean a trade practice
which, for the purpose of promoting the sale, use
or supply of any goods or for the provision of any
services, adopts one or more of the following practices
and thereby causes loss or injury to the consumers
of such goods or services whether by eliminating
or restricting competition or otherwise, namely:
1.The practice of making any statement,
whether orally or in writing or by visual representation
which,
(i)alsely represents that the goods
are of a particular standard, quality, grade, composition,
style or model;
(ii)falsely represents that the services are of
a particular standard, quality or grade;
(iii)represents that the goods or services have
sponsorship, approval, performance, characteristics,
accessories, uses or benefit which such goods
or service do not have.
It should be borne in mind the primary
purpose of the consumer protection legislation is
to protect consumers. In is in a sense incidental
that they also protect producers against misuse
of their designations, including geographical indications.
In India, the process of legislation
for protection of geographical indications is in
progress, in consultation with WIPO. |
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| Q : How are trade secrets protected in
India? |
| A: |
Trade
secrets are protected in India either through contract
law or through the equitable doctrine of breach
of confidentiality. It is common to insert
clauses in a technology transfer or other license
agreement that state that the technology transferred
is of a confidential nature and the licensee is
obliged to maintain the confidentiality, not only
during the pendency of the agreement but also after
its termination. The licensee may also be required
to enter into appropriate secrecy agreements
with its employees, subcontractors and visitors
to its factory. It is also advised to insert a cautionary
notice on all the technical manuals clearly stating
that the information contained therein is of a
proprietary and confidential nature. The skill,
knowledge and experience of a particular calling
can also be protected in certain circumstances from
misuse through contractual obligations. |
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| Q : What is India's strategy
on industrial property? |
| A: |
India
has adopted a two-pronged strategy to meet with
the new challenges
Review of laws and regulations to
conform to recent national and international developments.
Under the Legal Framework
Action is being initiated to examine laws to
check consistency with TRIPS and to provide incentives
to encourage inventions
Laws and regulations are being developed
in new areas of industrial property like geographical
indications, lay-out designs of integrated circuits,
trade secrets, plant variety protection etc. Modernisation
and restructuring of the industrial property administration.
Under the Administrative Framework
Project completed in 1996 for modernisation of the
Patent Information System (PIS)
Upgradation and mechanisation of procedures
relating to Collection
Retrieval
Storage and
Dissemination of patent information
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| Q : When is an invention
patentable? |
| A: |
A
patent is a document, issued, upon application,
by a government office (or a regional office acting
for several countries), which describes an
invention and creates a legal situation in which
the patented invention can normally only be exploited
(manufactured, used, sold, imported) with the authorization
of the owner of the patent. 'Invention' means
a solution to a specific problem in the field of
technology. An invention may relate to a product
or a process.An invention is 'patentable' if it
is new, involves an inventive step (i.e., it is
not obvious) and is industrially applicable. The
protection conferred by the patent is limited in
time (generally 15 to 20 years). |
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| Q : Is the inventor given
statutory right to practice his invention? |
| A
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Patents
are frequently referred to as "monopolies", but
nowhere, in most laws, is the inventor or the owner
of a patented invention given the right to
make, use or sell anything. The effects of the grant
of a patent are that the patented invention
may not be exploited in the country by persons other
than the owner of the patent unless the owner agrees
to such exploitation. Thus, while the owner is not
given a statutory right to practice his invention,
he is given a statutory right to prevent others
from exploiting his invention, which is frequently
referred to as a right to exclude others from
making, using or selling his invention. The right
to take action against any person exploiting the
patented invention in the country without his
agreement constitutes the patent owner's most important
right, since it permits him to derive the material
benefits to which he is entitled as a reward for
his intellectual effort and work, and compensation
for the expenses which his research and experimentation
leading to the invention have entailed.
It
should be emphasized, however, that while the State
may grant patent rights it does not automatically
enforce them,and it is up to the owner of a patent
to bring an action, usually under civil law, for
any infringement of his patent rights. The
patentee must therefore be his own "policeman."
Simply
put, a patent is the monopoly granted by the State
to an inventor for a limited period, in return for
the disclosure of the invention, so that others
may gain the benefit of the invention. The disclosure
of the invention is thus an important consideration
in any patent granting procedure.
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| Q : What criteria should
an invention meet to be eligible for patent rotection? |
| A
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An invention must meet several criteria
if it is to be eligible for patent protection. These
include, most significantly,that the invention must
consist of patentable subject matter, the invention
must be industrially applicable (useful), it must
be new (novel), it must exhibit a sufficient "inventive
step" (be non-obvious), and the disclosure of the invention
in the patent application must meet certain standards.
(a)
Patentable Subject Matter
In
order to be eligible for patent protection, an invention
must fall within the scope of patentable subject
matter. Patentable subject matter is established
by statute, and is usually defined in terms of the
exceptions to patentability, the general rule
being that patent protection shall be available
for inventions in all fields of technology.
Examples
of fields of technology which may be excluded from
the scope of patentable subject matter include the following:
discoveries
of materials or substances already existing in nature;
scientific
theories or mathematical methods;
plant
or animal varieties, or essentially biological processes
for the production of such plant or animal varieties, other
than microbiological processes;
schemes,
rules or methods, such as those for doing business,
performing purely mental acts or playing games;
methods of treatment for humans or animals, or diagnostic
methods practised on humans or animals (but not
products for use in such methods).
schemes,
rules or methods, such as those for doing business,
performing purely mental acts or playing games;
methods of treatment for humans or animals, or diagnostic
methods practised on humans or animals (but not
products for use in such methods).
In
addition, temporary exclusions from patent protection
may be provided for certain kinds of products or
processed for reasons of public interest, such
as, for example, pharmaceuticals, agricultural chemicals
or inventions in the nuclear field. The current
trend is away from such temporary exclusions.
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| Q : What are neighbouring
rights? |
| A : |
There exist rights related to, or "neighbouring
on" copyright. These rights are generally referred
to as "neighbouring rights," in an abbreviated
expression.
There are three kinds of rights which are called
neighbouring rights: the rights of performing
artists in their performances, the rights
of producers of phonograms in their phonograms,
and the rights of broadcasting organizations
in their radio and television programs. Protection
of those who assist intellectual creators in communicating
the message of the author or creator of a work
and help to disseminate works intended by their creators
and authors to be conveyed to, and enjoyed by,
the public at large, is sought to be provided
by what areknown as neighbouring rights or rights
neighbouring on copyright.
Protection of neighbouring rights was established
at the international level by the Rome Convention.
Called neighbouring rights because they have
developed in parallel with copyright, the exercise
of these rights is very often linked with
the exercise of copyright. The development of
technology resulted in the need not only to ensure protection
of literary, artistic and scientific works by
means of copyright, but also to establish effective
protection for the various intermediaries
associated with the dissemination and broadcasting
of works.
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| Q
: When is the certification mark used? |
| A: |
The certification
mark may only be used in accordance with the defined
standards. The main difference between collective
marks and certification marks is that the former
may be used only by particular enterprises, for
example, members of the association which
owns the collective mark, while the latter may
be used by anybody who compiles with the
defined standards. Thus, the users of a collective
mark form a "club" while, in respect of certification marks,
the "open shop" principle applies.
An
important requirement for the registration of
a certification mark is that the entity which
applies for registration is "competent to
certify" the products concerned. Thus, the owner
of a certification mark must be the representative for
the products to which the certification mark apples.
This is an important safeguard for the protection
of the public against misleading practises.
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