Management of IPR in India

7/27/2019 Management of IPR in India

1/12


2/12

2Journal of Natural Science, Biology and Medicine | January 2011 | Vol 2 | Issue 1

Management of intellectual property rights in India:An updated review

Review Article

Abstract

The World Trade Organizations agreement on Trade-Related Aspects of Intellectual Property Rights set global minimum standards

for the protection of intellectual property, substantially increasing and expanding intellectual property rights, and generated cleargains for the pharmaceutical industry and the developed world. The present review elaborates all aspects of Intellectual Property

Rights in detail, along with their protection criteria.

Key words: Copyright, geographical indication, industrial design rights, infringement, patents, trade secrets, trademark, utility model.

R. Tiwari, G. Tiwari,

A. K. Rai,1Birendra Srivastawa

Department of Pharmaceutical Sciences, Pranveer Singh Institute of Technology, Kalpi Road, Bhauti,

Kanpur - 208 020, Uttar Pradesh, 1School of Pharmaceutical Science, Jaipur National

University, Jaipur, India

Address for correspondence:

Dr. Gaurav Tiwari, Department of Pharmaceutical Sciences, Pranveer Singh Institute of Technology,

Kalpi Road, Bhauti, Kanpur - 208 020, Uttar Pradesh, India. E-mail: [email protected]

Access this article online

Quick Response Code:

Website:

www.jnsbm.org

DOI:10.4103/0976-9668.82307

INTRODUCTION

As was the case with China, India too showed signsof resistance to quick enforcement of InternationalIntellectual Property Right (IPR) protection laws asdemanded by the developed countries, particularly theUnited States of America. China could get away ongrounds that it is not a member of the World TradeOrganisation (WTO), but India was required to comply.Under the terms of the WTO, India is required toimplement WTO-standard IPR protection laws by 2005.It must be acknowledged that there has been remarkableprogress in IPR protection in the field of software andcinema products. Indias general argument was that itdid acknowledge, in principle, the case for strict IPRprotection, but this can be done only in phases suitedby its own ground reality. The reality is that absenceof international IPR protection for some decades has

spawned employment for millions and, therefore, an

overnight clampdown on IPR violators would fomentsocial unrest.[1-3]

However, under pressure from its own domestic industryand the United States, India strengthened its copyright lawin May 1994, placing it at par with international practice.The new law, which entered into force in May, 1995,fully reflects the provisions of the Berne Convention oncopyrights, to which India is a party. Based on its improvedcopyright protection, Indias designation as a priorityforeign country under the United States Special301 listwas revoked and India was placed on the priority watchlist. Copyright enforcement is also rapidly improving.[4-5]

Classification of copyright infringements as cognizableoffenses expands police search and seizure authority.While the formation of appellate boards under the newlegislation should speed prosecution, local attorneys

indicate that some technical flaws in the laws, whichrequire administrative approval prior to police action,need to be corrected.[6-8] Processes for making drugsare patentable, but the patent term is limited to theshorter of 5 years from the grant of patent or 7 yearsfrom the filing date of the patent application. Productpatents in other areas are granted for 14 years from thedate of filing. However, as a signatory to the UruguayRound of GATT, including its provisions on Trade-Related Intellectual Property Rights (TRIPS), India must


3/12

Tiwari, et al.: Management of IPR in India

3 Journal of Natural Science, Biology and Medicine | January 2011 | Vol 2 | Issue 1

introduce a comprehensive system of product patents nolater than 2005.[9-11]

INTELLECTUAL PROPERTY RIGHT

IPR as a collective term includes the following independentIP rights, which can be collectively used for protecting

different aspects of an inventive work for multipleprotection: Patents Copyrights Trademarks Registered (industrial) design Protection of IC layout design Geographical indications and Protection of undisclosed information[12]

NATURE OF IPR

IPR are largely territorial rights, except copyright, which isglobal in nature in the sense that it is immediately availablein all the members of the Berne Convention. These rightsare awarded by the State and are monopoly rights, implyingthat no one can use these rights without the consent ofthe right holder. It is important to know that these rightshave to be renewed from time to time for keeping themin force, except in case of copyright and trade secrets.IPR have a fixed term, except trademark and geographicalindications, which can have an indefinite life providedthat these are renewed after a stipulated time specified inthe law by paying official fees. Trade secrets also have an

infinite life but they do not have to be renewed. IPR can beassigned, gifted, sold and licensed like any other property.Unlike other moveable and immoveable properties, theserights can be simultaneously held in many countries at thesame time. IPR can be held only by legal entities, i.e. thosewho have the right to sell and purchase property. In otherwords, an institution that is not autonomous may not bein a position to own an intellectual property. These rights,especially patents, copyrights, industrial designs, IC layoutdesign and trade secrets, are associated with something newor original and, therefore, what is known in public domaincannot be protected through the rights mentioned above.

Improvements and modifications made over known thingscan be protected. It would, however, be possible to usegeographical indications for protecting some agricultureand traditional products.[13]

COMMENTS ON THE SUBMISSION OF

PHARMACEUTICAL RESEARCH AND

MANUFACTURERS ASSOCIATION (PHRMA)

PhRMA has mentioned that India should adopt a patent

law that offers immediate product patent protection forpharmaceuticals in line with the highest internationalstandards, and offer protection for all products not yetavailable in the Indian market. It is submitted that this isa demand that goes beyond Indias obligations under theTRIPS agreement, as India is availing the full transitionperiod therein. The 10-year transition period available for

providing product patents to pharmaceutical products iswithin WTO rules, and a unilateral examination on the partof USA should not be allowed to overrule this multilateralunderstanding. Regarding the provision of the mailboxand Exclusive Marketing Rights (EMR) facility, PhRMAis aware that the issue has been taken up in the WTO andthat India has committed itself to implementation of therecommendations of the panel/appellate body.[14-16]

PhRMA has mentioned that foreign companies experiencearbitrary pricing norms of the Bureau of Industrial Costsand Prices, arbitrary local Food and Drug Authority (FDA)

decisions, high (42%) import duties and complex importprocedures. It is submitted that these have no real basisand that specific cases need to be pointed out. The Bureauof Industrial Costs and Prices (BICP) pricing norms arebased on accepted principles of costing, viz. actual costplus a reasonable return of 14% on net worth and 22% oncapital employed. Four percent is added if the productionis undertaken from the basic stage. Further, FDA decisionsare based on provisions of the Drugs and Cosmetics Actand the rules made thereunder. In fact, the US-FDA hasstricter norms than those prevailing in India. With regardto import duties, for pharmaceutical products, they have

been brought down from 40% (plus 2%) to 30% (plus 5%)in the 199798 budget.[17-19]

PATENTS

A patent is an exclusive right granted by a country to theowner of an invention to make, use, manufacture andmarket the invention, provided the invention satisfiescertain conditions stipulated in the law. Exclusive rightimplies that no one else can make, use, manufacture ormarket the invention without the consent of the patentholder. This right is available for a limited period of time. In

spite of the ownership of the rights, the use or exploitationof the rights by the owner of the patent may not bepossible due to other laws of the country that has awardedthe patent. These laws may relate to health, safety, food,security, etc. Further, existing patents in similar areas mayalso come in the way. A patent in the law is a property rightandhence, which can be gifted, inherited, assigned, sold orlicensed. As the right is conferred by the state, it can berevoked by the state under very special circumstances evenif the patent has been sold or licensed or manufactured or


4/12



marketed in the meantime. The patent right is territorialin nature and inventors/their assignees will have to fileseparate patent applications in countries of their interest,along with necessary fees, for obtaining patents in thosecountries. A new chemical process or a drug molecule or anelectronic circuit or a new surgical instrument or a vaccineis a patentable subject matter provided all the stipulations

of the law are satisfied.[20]

The Indian Patent ActThe first Indian patent laws were promulgated in 1856.These were modified from time to time. New patent lawswere made after the independence in the form of the IndianPatent Act 1970. The Act has now been radically amendedto become fully compliant with the provisions of the TRIPS.The most recent amendment was made in 2005, whichwas preceded by the amendments in 2000 and 2003. Whilethe process of bringing out amendments was ongoing,India became a member of the Paris Convention, Patent

Cooperation Treaty and Budapest Treaty. The salient andimportant features of the amended Act are explained here.[21]

Novelty

An invention will be considered novel if it does not forma part of the global state of the art. Information appearingin magazines, technical journals, books, newspapers, etc.constitute the state of the art. Oral description of theinvention in a seminar/conference can also spoil novelty.Novelty is assessed in a global context. An invention willcease to be novel if it has been disclosed in the publicthrough any type of publications anywhere in the world

beforefi

ling a patent application in respect of the invention.Therefore, it is advisable tofile a patent application beforepublishing a paper if there is a slight chance that theinvention may be patentable. Prior use of the inventionin the country of interest before the filing date can alsodestroy the novelty.[22]

Inventiveness (non-obviousness)

A patent application involves an inventive step if theproposed invention is not obvious to a person skilledin the art, i.e. skilled in the subject matter of the patentapplication. The prior art should not point toward theinvention implying that the practitioner of the subjectmatter could not have thought about the invention prior tofiling of the patent application.[23] Inventiveness cannot bedecided on the material contained in unpublished patents.The complexity or the simplicity of an inventive step doesnot have any bearing on the grant of a patent.

Usefulness

An invention must possess utility for the grant of patent.No valid patent can be granted for an invention devoid ofutility. The patent specification should spell out various

uses and manners of practicing them, even if consideredobvious. If you are claiming a process, you need notdescribe the use of the compound produced thereby.Nevertheless, it would be safer to do so. But, if you claima compound without spelling out its utility, you may bedenied a patent.[24]

Non-patentable inventionsAn invention may sat isfy the conditions of nove lty,inventiveness and usefulness but may not qualify for apatent under the following situations:1. An invention that is frivolous or that claims anything

obviously contrary to well-established natural laws, e.g.different types of perpetual motion machines.

2. An invention whose intended use or exploitationwould be contrary to public order or morality or thatcauses serious prejudice to human, animal or plantlife or health or to the environment, e.g. a process formaking brown sugar will not be patented.

3. The mere discovery of a scientific principal orformulation of an abstract theory, e.g. Raman effectand Theory of Relativity cannot be patented.[25]

4. The mere discovery of a new form of a knownsubstance that does not result in enhancement of theknown efficacy of that substance or the mere discoveryof any new property or new use of a known substanceor the mere use of a known process, machine orapparatus unless such a known process results in anew product or employs at least one new reactant.

5. A substance obtained by a mere admixture resulting inonly aggregation of the properties of the componentsthereof or a process for producing such a substance.

6. The mere arrangement or rearrangement or duplicationof features of known devices each functioningindependently of one another in a known way. Ifyou put torch bulbs around an umbrella and operatethem by a battery so that people could see you walkingin the rain when it is dark, then this arrangement ispatentable as bulbs and the umbrella perform theirfunctions independently.[26]

7. A method of agriculture or horticulture. For example,the method of terrace farming cannot be patented.

8. Any process for medical, surgical, curative, prophylactic,diagnostic, therapeutic or other treatment of human

beings or any process for a similar treatment of animalsto render them free of disease or to increase economicvalue or that of their products. For example, a newsurgical technique for hand surgery for removingcontractions is not patentable.[27]

9. Inventions relating to atomic energy.10. Discovery of any living thing or non-living substance

occurring in nature.11. Mathematical or business methods or a computer

program per se or algorithms.


5/12



12. Plants and animals in whole or any part thereof otherthan microorganisms, but including seeds, varietiesand species, and essentially biological processes forproduction and propagation of plants and animals.

13. A presentation of information.14. Topography of integrated circuits.[28]

15. A mere scheme or rule or method of performing

mental act or method of playing games.16. An invention which, in effect, is traditional knowledge

or which is aggregation or duplication of a knowncomponent or components.

Computer programsper sehave not been defined in the Actbut would generally tend to mean that a computer programwithout any utility would not be patentable. Protection ofseeds and new plant varieties is covered under a differentAct, which provides a protection for a period of 10 years.Similarly, topography of integrated circuits is protectedthrough yet another different Act.[29]

Term of the patentThe term of the patent will be 20 years from the date offiling for all types of inventions.

Mail box provisionTRIPS requires that countries not providing productpatents in respect of pharmaceuticals and chemicalinventions have to put in a mechanism for acceptingproduct patent applications with effect from 1 January1995. Such applications will only be examined for grant ofpatents after suitable amendments in the national patentlaw have been made. This mechanism of accepting product

patent applications is called the mail box mechanism.This system has been in force in India and now suchapplications are being taken up for examination. [30]

EXCLUSIVE MARKETING RIGHTS

TRIPS requires that member countries of the WTO nothaving a provision in their laws for granting product patentsin respect of drugs and agrochemicals must introduce EMRfor such products if the following criteria are satisfied:1. A patent application covering the new drug or

agrochemical should have been filed in any of the

WTO member countries after 1 January1995.2. A patent on the product should have been obtainedin any of the member countries (which provides forproduct patents in drugs and agrochemical) after 1January 1995.[31]

3. Marketing approvals for the product should have beenobtained in any of the member countries.

4. A patent application covering the product should havebeen filed after January 1995 in the country where theEMR is sought.

5. The applicant should apply seeking an EMR by makinguse of the prescribed form and paying the requisite fee.

EMR is only a right for exclusive marketing of the productand is quite different from a patent right. It is valid up toa maximum period 5 years or until the time the productpatent laws come into effect. The necessary amendment to

the Patents Act, 1970 came into force on 26 March 1999.[32]The provision is applicable with retrospective effect from 1January 1995. As per the 2005 amendments in the PatentsAct, the provision of EMR is no longer required. However,these rights were awarded in India from time to time andthere have been some litigations as well where the courtscame up with quick decisions.

Timing for filing a patent applicationFiling of an application for a patent should be completedat the earliest possible date and should not be delayed. Anapplication filed with provisional specification, disclosing

the essence of the nature of the invention, helps to registerthe priority by the applicant. A delay in filing an applicationmay entail some risks, like (i) other inventors mightforestall the first inventor by applying for a patent for thesaid invention and (ii) there may be either an inadvertentpublication of the invention by the inventor himself/herselfor by others independent of him/her. The publication ofan invention in any form by the inventor before filing ofa patent application would disqualify the invention frombeing patentable. Hence, inventors should not disclosetheir inventions before filing the patent application. Theinvention should be considered for publication after apatent application has been filed. Thus, it can be seen thatthere is no contradiction between publishing an inventivework and filing of the patent application in respect of theinvention.[33]

COPYRIGHTS

Copyright is a right that is available for creating anoriginal literary or dramatic or musical or artistic work.Cinematographic films, including sound track and videofilms, and recordings on discs, tapes, perforated rollor other devices are covered by copyrights. Computer

programs and software are covered under literaryworks and are protected in India under copyrights. TheCopyright Act, 1957, as amended in 1983, 1984, 1992,1994 and 1999, governs the copyright protection inIndia. The total term of protection for literary workis the authors life plus 60 years. For cinematographicfilms, records, photographs, post-humous publications,anonymous publication, works of government andinternational agencies, the term is 60 years from thebeginning of the calendar year following the year in which


6/12



the work was published. For broadcasting, the term is 25years from the beginning of the calendar year followingthe year in which the broadcast was made.[34-36]

Coverage provided by copyright1. Literary, dramatic and musical work. Computer

programs/software are covered within the definition

of literary work.2. Artistic work3. Cinematographic films, which include sound track

and video films.4. Recording on any disc, tape, perforated roll or other

device.

Infringement of copyrightCopyright gives the creator of the work the right toreproduce the work, make copies, translate, adapt, sell orgive on hire and communicate the work to the public. Anyof these activities done without the consent of the author

or his assignee is considered infringement of the copyright.There is a provision of fair use in the law, which allowscopyrighted work to be used for teaching and researchand development. In other words, making one photocopyof a book for teaching students may not be consideredan infringement, but making many photocopies forcommercial purposes would be considered an infringement.There is one associated right with copyright, which isknown as the moral right, which cannot be transferredand is not limited by the term. This right is enjoyed by thecreator for avoiding obscene representation of his/herworks.[37] The following acts are considered infringement

of copyrights:

a. In the case of literary, dramatic or musical work, notbeing a computer program(i) To reproduce the work in any material form,

including storing it in any medium by electronicmeans.

(ii) To issue copies of the work to the public not beingcopies already in circulation.

(iii) To perform the work in public or communicate itto the public.

(iv) To make any cinematography film or soundrecording in respect of the work.

(v) To make any translation of the work or to makeany adaptation of the work.

(vi) To do, in relation to a translation or an adaptationof the work, any of the acts specified in relationto the work in sub-clauses (i) to (vi).

b. In the case of computer program[38]

(i) To do any acts specified in clauses(a).(ii) To sell or give on hire or offer for sale or hire

any copy of the computerprogram, regardless of

whether such copy has been sold or given on hireon earlier occasions.

c. In the case of an artistic work(i) To reproduce the work in any material form,

including depiction in three dimensions of atwo-dimensional work or in two dimensions of athree-dimensional work.

(ii) To communicate the work to the public.(iii) To issue copies of the work to the public not being

copies already in circulation.(iv) To include the work in any cinematographyfilm.(v) To make any adaptation of the work.(vi) To do, in relation to a translation or an adaptation

of the work, any of the acts specified in relationto the work in sub-clauses (i) to (vi).

d. In the case of a cinematographyfilm[39]

(i) To make a copy of the film, including a photographof any image forming a part thereof.

(ii) To sell or give on hire or offer for sale or hire anycopy of the film, regardless of whether such copyhas been sold or given on hire on earlier occasions.

(iii) To communicate the film to the public.

e. In the case of sound recording(i) To make any other sound recording embodying it.(ii) To sell or give on hire or offer for sale or hire any

copy of the sound recording, regardless of whethersuch copy has been sold or given on hire on earlieroccasions.

(iii) To communicate the sound recording to the public.

Transfer of copyright

The owner of the copyright in an existing work orprospective owner of the copyright in a future work mayassign to any person the copyright, either wholly or partially,in the following manner:1. For the entire world or for a specific country or

territory or2. For the full term of copyright or part thereof or3. Relating to all the rights comprising the copyright or

only a part of such rights.[40]

TRADEMARKS

A trademark is a distinctive sign that identifies certaingoods or services as those produced or provided by aspecific person or enterprise. Trademarks may be one ora combination of words, letters and numerals. They mayalso consist of drawings, symbols, three-dimensional signssuch as shape and packaging of goods, or colors usedas a distinguishing feature. Collective marks are ownedby an association whose members use them to identify


7/12



themselves with a level of quality. Certification marks aregiven for compliance with defined standards. (ExampleISO9000.) A trademark provides to the owner of the markby ensuring the exclusive right to use it to identify goodsor services or to authorize others to use it in return forsome consideration (payment). Well-known trademark inrelation to any goods or services means a mark that has

become so to the substantial segment of the public whichuses such goods or receives such services that the use ofsuch mark in relation to other goods or services would belikely to be taken as indicating a connection in the courseof trade or rendering of services between those goodsor services and a person using the mark in relation to thefirst-mentioned goods or services.[41]

Enactment of the Indian Trademarks Act 1999 is a big stepforward from the Trade and Merchandise Marks Act 1958and the Trademark Act 1940. The newly enacted Act hassome features not present in the 1958 Act, and these are:

1. Registration of service marks, collective marks andcertification trademarks.

2. Increasing the period of registration and renewal from7 years to 10 years.

3. Allowingfiling of a single application for registrationin more than one class.

4. Enhanced punishment for offences related totrademarks.

5. Exhaustive definitions for terms frequently used.6. Simplified procedure for registration of registered

users and enlarged scope of permitted use.7. Constitution of an Appellate Board for speedy disposal

of appeals and rectifi

cation applications which, atpresent, lie before the High Court.[42]

Well-known trademarks and associated trademarksA well-known trademark in relation to any goods orservices means a mark that has become known to thesubstantial segment of the public that uses such goodsor receives such services. Associated trademarks are, incommercial terms, marks that resemble each other and areowned by the same owner, but are applied to the same typeof goods or services. For example, a company dealing inreadymade garments may use associated marks for shirts,trousers etc., meaning trademarks deemed to be, or requiredto be, registered as associated trademarks under this Act.

Service marksThe Indian Act of 1958 did not have any reference to servicemarks. Service means service of any description that ismade available to potential users, and includes the provisionof services in connection with the business of industrialor commercial matters such as banking, communication,education, financing, insurance, chit funds, real estate,transport, storage, material treatment, processing, supply of

electrical or other energy, boarding, lodging, entertainment,amusement, construction, repair, conveying of news orinformation and advertising. Marks used to represent suchservices are known as service marks.[43]

Certification trademarks and collective marksA certification trademark means a guarantee mark that

indicates that the goods to which it is applied are of acertain quality or are manufactured in a particular way orcome from a certain region or use some specific materialor maintain a certain level of accuracy. The goods mustoriginate from a certain region rather than from a particulartrader. Certification marks are also applicable to services,and the same parameters will have to be satisfied. Further,these marks are registrable just like any other trademark.Agmark used in India for various food items is a kindof certification mark although it is not registered as acertification mark; the concept of certification mark wasnot in vogue at the time of introduction of Agmark. A

collective mark means a trademark distinguishing fromthose of others, the goods or services of members of anassociation of persons (not being a partnership within themeaning of the Indian Partnership Act, 1932), which is theproprietor of the mark.[44]

Term of a registered trademarkThe initial registration of a trademark shall be for a periodof 10 years, but may be renewed from time to time for anunlimited period by payment of the renewal fees.

TRADE SECRETS

Trade secret points toward a formula, pattern, anyinstrument or design that is kept confidential and throughwhich any business or trade can edge over its rival and canenjoy economic gain. Trade secrets can be anything froma chemical compound, manufacturing process, design orpreserving materials or even a list of consumers or clients.It is also known as confidential information or classifiedinformation. To be safeguarded under trade secrets, thematter should be secret. Although the definition oftrade secret is variable as per the jurisdiction, there are thefollowing elements that are found to be the same:

Is not known by the public. Provides some financial sort of gain to its holder. Involves reasonable efforts from the holder side for

maintaining secrecy. Importance of data or information to him or for his

rivals. The ease by which information could be learnt or

duplicated by others.

Any enterprise or an organization can safeguard itsconfidential data or information by entering into a non-


8/12



every minute detail about the trade secret applicability,like how the person will use a trade secret, what willhappen if he will pass over this agreement, etc.

All employees should consider trade secrets asconfidential data or information even if they areunaware about the trade secret.

Always keep your trade secret in a private and restricted

zone.

UTILITY MODEL

The utility model is the IPR for protecting the inventions.It is somehow described as the statutory monopoly that isbestowed upon for the fixed duration of time in exchangeto the inventor for the offering of the sufficient teaching ofthe invention and permitting the other person, possessingthe ordinary skills of the relevant art, of performing theinvention. The rights granted under the utility modelare somewhat identical to those conferred upon by thepatent, but are more considerable for using the termincremental inventions. Sometimes, words like pettypatent, innovation patent, minor patent and smallpatent are used in reference to the utility model. Suchmodels are considered to be more suitable, particularlyfor the small-scale enterprises, which in turn make theminor improvements with the adaption of the existingproducts. Utility models are more commonly used for themechanical innovations.

The utility model rights are recognized as the registeredrights, which provide the owner exclusivity protectionin terms of the invention.[48]

The utility model working in Indonesia and Finland istermed as Petty Patent. Such models are deemed to bemore suitable for small- and medium-sized enterprises thatmake few improvements. These are primarily found to beused for mechanical innovations also.

The origin of utility model goes back to the period of1891 in Germany, where it was enacted with a mottoof filling the gap. During that time, the patent office ofGermany provided patents only to those inventions that

were new and showed some degree of creativeness. But,it was found that there were a good number of technicalsolutions that consisted of the industrial creation havingsome technical or constructive complexity. Such smallinventions were not patented, but the German legislaturewas of the view that they deserved to be protected due tothe possession of their high-economic value. Therefore,it was decided to create the set of exclusive rights, otherthan the patents, which was appropriate for safeguardingsuch minor inventions. It comes in the form of the

disclosure agreement with its employees. Such law ofprotecting confidential matters offers monopoly in respectof any secret data and information. Trade secrets offerprotection for an indefinite time period. Unlike patent,this does not expire.[45]

Every company invests its time and resources into

discovering information regarding refinement of its variousactivities and operations. If other companies are to usethe same knowledge, then the chance of first companysurvival and dominance into the industrial arena would bevitiated. When trade secrets are recognized, the inventorof such knowledge is entitled to consider that as part ofthe intellectual property.[46]

Trade secrets protectionTrade secrets are kept secret and thus not disclosed tothe public at large. The owner or creator takes concurrentsteps and prevents his knowledge from slipping out of his

hands to its rival side. In exchange of getting the chanceto be appointed by the holder of trade secrets, a workerwill ready to sign a contract not to disclose any materialinformation and data of his employer. Any negligence orviolation of the same will mean an imposition offinancialpenalties. Other business associates or companies withwhom the inventor is engaged are often required to signa similar contract, and any negligence to do so will lead tofines or penalties.

Trade secrets infringement

Misappropriate use of trade secrets can be called an unfair

practice. The Uniform Trade Secrets Act of the USAdefines misappropriation as: Acquiring trade secrets related to another by a person

who has a strong belief or reason that it was acquiredby wrongful doings.

Disclosing or using trade secrets of another personwithout any implied consent of its owner.

As per the Uniform Trade Secrets Act, improper meansinclude theft, bribery, misrepresentation, breach orinducement of a breach of duty to maintain secrecy, orespionage through electronic or other means.[47]

Tips for safeguarding trade secrets Put a sign or any mark on various computer files

and documents related to trade secrets that you areintending to keep confidential.

Allow the accessibility of trade secrets only to thosepeople who have authentic reason to know theinformation. The reason should be material and shouldbenefit you in business.

Make it obligatory for everyone using trade secrets tosign a non-disclosure agreement. It should describe


9/12



utility model rights. Soon after, many other nations alsojoined up the club in providing a utility model in theirrespective territories, like Poland, Japan, Spain, Italy andPortugal. Afterwards, the list has also been extended withthe adoption of the utility model by Greece, Finland,Denmark and Austria.

GEOGRAPHICAL INDICATION (GI)

GI signifies the name or sign used in reference to theproducts corresponding to the particular geographicalarea or somewhat related to the origin, like town, regionor nation. Thus, GI grants the rights to its holder thatacts as the certification mark and shows that the specifiedproduct consists of the some qualities and is enjoyinga good reputation due to its origin from the specifiedgeographical location.[49]The TRIPs agreement has definedthe geographical indications rights as the exclusionaryrights for the indicator that identify the goods originated

within the member nation territories, or area or region ofthat territory, where the reputation or other attributes ofthe goods is essentially related to the geographic originof the place. GIs are a part of the intellectual propertylaw and, therefore, like any other law, the regulation andgoverning conditions of GI also vary from one country toanother as high differences have been found in the use ofgeneric terms across the world. Such a case is prominentfor food and beverages, which more commonly use thegeographic terms.

GIs are aimed toward identifying the source of the

product and are considered a valuable business tool. Theglobal trade has made it crucial to harmonize the variousapproaches and methods that the governments use forregistering the GIs in their respective territories.[50]

GI Act in IndiaIn India, the GIs regime is regulated by the GeographicalIndications of Goods (Registration and Protection)Act, 1999 and the Geographical Indication of Goods(Regulation and Protection) Rules, 2002.[51] However,registering of the GI is not compulsory in the India as theowner of the unregistered GI can also enforce the actions

with the help of passing off against the infringer, but itis recommendable to register the GI as the registrationcertificate acts as the prima facie evidence in the courtat the time of arising of any dispute, and no additionalevidence is required to prove the validity. Examples ofsome of the popular GIs are Basmati Rice, Kanjeepuramsarees and Darjeeling tea. In the Indian act, GI is used foridentifying goods from a particular geographical locationand its origin. It encircles the agriculture goods and naturalgoods and is extended up to the manufactured goods

also. In order to register the GI, the goods should possessunique characteristics and reputation with other qualitiesattributed to its geographical origin, e.g. climate, quality ofsoil, processing methods, etc.[52-55]

INDUSTRIAL DESIGN RIGHTS

Industrial design rights are defined as the part of theintellectual property rights that confers the rights ofexclusivity to the visual designs of objects which aregenerally not popularly utilitarian. It safeguards theappearance, style and design of the industrial object, suchas spare parts, textiles and furniture. According to theIndustrial Design Society of America, Industrial Design(ID) is the professional service of creating and developingconcepts and specifications that optimize the function,value and appearance of products and systems for themutual benefit of both user and manufacturer. As these

designs consist of esthetic features, they therefore do notprovide any protection to the technical features of thearticle. The origin of design rights can be traced back inthe United Kingdom as Designing and Printing of LinenAct (1787).

Designs are used in different products and across variousindustries like medical, handicrafts, jewelry, electricalappliances, etc. It precludes any trademark or artistic typeof work. In India, the first-ever design-related legislationwas enacted by the British Government, and was popularlynamed as the Designs Act, 1911.[56]

Advantages of industrial design rightsIndustrial designs help in making any product or itemmore beautiful and appealing and, therefore, they helpin increasing the commercial viability of the productand in increasing its market potentiality. The industrialdesign registration helps in safeguarding the ornamentalor esthetic elements of the article.[57-60]Wheneveran industrial design is being registered, it gives anexclusionary rights to the owner against unauthorizeduse, like copying or imitation, by a third party without hisconsent. This in turns facilitates a fair flow of investment.An effectual system also helps in benefiting the public by

encouraging fair and effective competition and tradingpractices, which, at large, bolster the creativity, and thefinal result comes in the form of attractive and beautifulproducts. Safeguarding of industrial designs help in theoverall economic development, which promote creativityin the industrial arena.

The essential requirements for the registration of design

i. The design should be new or original, not previouslypublished or used in any country before the date of


10/12



application for registration. The novelty may residein the applicationof a known shape or pattern toa new subject matter. However, if the design forwhich the application is made does not involve anyreal mental activity for conception, then registrationmay not be considered.

ii. The design should relate to features of shape,

configuration, pattern or ornamentation applied orapplicable to an article. Thus, designs of industrialplans, layouts and installations are not registrableunder the Act.[61]

iii. The design should be applied or applicable to anyarticle by any industrial process. Normally, designsof an artistic nature, such as painting, sculpturesand the like, which are not produced in bulk by anyindustrial process, are excluded from registrationunder the Act.

iv. The features of the designs in the finished articleshould appeal to and are judged solely by the

eye. This implies that the design must appearand should be visible on the finished article forwhich it is meant. Thus, any design in the insidearrangement of a box, money purse or almirah maynot be considered for showing such articles in theopen state, as those articles are generally put in themarket in the closed state.

v. Any mode or principle of construction oroperation or any thing which is, in substance, amere mechanical device, would not be a registrabledesign. For instance, a key having its novelty onlyin the shape of its corrugation or bend at the

portion intended to engage with levers inside thelock it is associated with cannot be registered as adesign under the Act. However, when any designsuggests any mode or principle of constructionor mechanical or other action of a mechanism, asuitable disclaimer in respect thereof is requiredto be inserted on its representation, provided thatthere are other registrable features in the design.

vi. The design should not include any trademark orproperty mark or artistic works.

vii. It should be significantly distinguishable fromknown designs or a combination of knowndesigns. [62]

viii. It should not comprise or contain scandalous orobscene matter.

Duration of the registration of a designThe total term of a registered design is 15 years. Initial ly,the right is granted for a period of 10 years, which canbe extended by another 5 years by making an applicationand by paying a fee of Rs. 2000/- to the Controllerbefore the expiry of the initial 10-year period. Theproprietor of the design may make the application for

such extension even as soon as the design is registered.[63]

Strategy for protectionFirst to file rule is applicable for registrability of design. Iftwo or more applications relating to an identical or a similardesign are filed on different dates, the first application willbe considered for registration of design. Therefore, the

application should be filed as soon as you are ready with thedesign. After publication in the official gazette on paymentof the prescribed fee of Rs. 500/- all registered designsare open for public inspection. Therefore, it is advisableto inspect the register of designs to determine whetherthe design is new or not. There is yet another importantprovision for ensuring that the design is different fromanything published anywhere in the world. This is quite astrict condition.[64-65]

CONCLUSION

Intellectual property is a strategic asset for industry andpublic health. The growth of new global publicprivatepartnerships, such as the malaria vaccine initiative, haveshown that the management of an intellectual propertysystem is essential for development of, and subsequentaccess to, medicines. Work, including that done by WHOCommission on Intellectual Property and innovation,also shows that the creative management of intellectualproperty is required to help product development anddissemination.

REFERENCES

1. Blouin C. Trade in health goods. New Delhi: WHO SEARO meeting

on trade and health; March 6-7, 2007.

2. PIRIBO. Pharmaceutical market trend: Key market forecasts and

growth opportunities. London: URCH Publishing; 2007.

3. Wilbulproprasert S. Mobilization of domestic resources in

developing countries. Workshop on differential pricing of essential

drugs. Norway: World Health Organization and World Trade

Organization Secretariats, Norwegian Foreign A. Airs Ministry,

Global Health Council; April 8-11, 2001.

4. IMS International. Available from: htp://www.imsworld.org/

[accessed on 2008 Jun 14].

5. Smith RD, Chanda R, Tangcharoensathien V. Trade in health-related

services. Lancet 2009;373:593-601.

6. Kraus L. Medication misadventures: The interaction of international

reference pricing and parallel trade in the pharmaceutical industry.

Vanderbilt J Transnat Law 2004;37:L527-50.7. Kinnon C. World trade: Bringing health into the picture. World

Health Forum 1998;19:397-405.

8. Burrill Life Sciences Media Group. Burrill Quarterly India Life

Sciences. San Francisco: Burrill Life Sciences Media Group, 2007.

Available from: htp://www.burrillandco.com. [accessed on 2008

Jun 14].

9. Steinbrook R. Closing the ordability gap for drugs in low-income

countries. N Engl J Med 2007;357:1996-9.

10. Smith RD, Beaglehole R, Woodward D, Drager N. Global public

goods for health: A health economic and public health perspective.

Oxford: Oxford University Press; 2003.

11. Smith RD, Thorsteinsdtir H, Daar A, Gold R, Singer P. Genomics


11/12



knowledge and equity: a global public goods perspective of the

patent system. Bull World Health Organ 2004;82:385-9.

12. Schaer G. Defending interests. Public-private partnerships in WTO

litigation. Washington DC: Brookings Institution Press; 2003.

13. Correa CM. Implications of bilateral free trade agreements on access

to medicines. Bull World Health Organ 2006;84:399-404.

14. Oxfam International. All costs, no benefits: how TRIPS-plus

intellectual property rights in the US-Jordan FTA affect access to

medicines, 2007. Available from: htp://www.oxfam.org/en/policy/

brie. ngpapers/bp102_jordan_us_fa. [accessed on 2008 Jun 14].15. KEI. KEI research note 2007. Recent examples of compulsory

licensing of patents. Available from: htp://www.keionline.org/

index.php?option=com_contentandtask=viewandid=41.[accessed on

2008 Jun 14].

16. Federal Trade Commission. Generic drug entry prior to patent

expiration, 2002. Available from: htpp://www.fc.gov. [accessed on

2008 Jun 14].

17. Basu S. Patents and pharmaceutical access. Z Net global economics,

May 29, 2003. Available from: htp://www.zmag.org. [accessed on

2008 Jun 14].

18. Endeshaw A. Asian perspectives on post-TRIPS issues in intellectual

property. J World Intellect Prop 2005;8:211-2.

19. Dzung N. Vietnam patent law. Substantive law provisions and

existing uncertainties. Chicago Kent J Intellect Prop 2007;6:138-56.

20. USTR. Special 301 Report. Washington DC: Office of the United

States Trade Representative,2007. Available from: htp://www.ustr.gov/assets/Document_Library/Reports_Publications/2007/2007_

Special_301_Review/asset_upload_. le230_11122.pdf. [accessed on

2008 Jun 14].

21. Priapantja P. Trade secret: how does this apply to drug registration

data? ASEAN Workshop on the TRIPS Agreement and its Impact

on Pharmaceuticals. Department of Health and World Health

Organization, May 2-4, 2000.

22. Abbot F, Correa C. World Trade Organization accession agreements:

intellectual property issues. Geneva: QUNO; 2007. Available from:

http://www.quno.org/geneva/pdf/economic/Issues/WTO-IP-

English.pdf. [accessed on 2008 Jun 14].

23. Commission on Intellectual Property Rights. Integrating intellectual

property rights and development policy. Available from: htp://

www.iprcommission.org. [accessed on 2008 Jun 14].

24. Babar ZU, Ibrahim MI, Singh H, Bukhari NI, Creese A. Evaluating

drug prices, availability, affordability and pricecomponents:implications for access to drugs in Malaysia. PLoS Med 2007;4:e82.

25. Ando G. Pharma market in Malaysia grows by 11%, government

outlines niche drug vision in IMP3. Boston: World Markets Research;

2006.

26. Azmi IM, Alavi R. TRIPS, patents, technology transfer, foreign direct

investment and the pharmaceutical industry in Malaysia. J World

Intellect Prop 2001;4:947-74.

27. Mytad IPO, Calculations from patent statistics of Intellectual

Property Corporation of Malaysia. Kuala Lumpur: Intellectual

Property Corporation of Malaysia, 2008. Available from: htp://www.

mipc.gov.my. [accessed on 2008 Jun 14].

28. ASEAN Secretariat. Regional reportthe ASEAN-Rockefeller

foundation project on intellectual property laws review and capacity

building on intellectual property rights related to public health in

the ASEAN region. Jakarta: ASEAN Secretariat; 2005.

29. Oh C. Compulsory licences: Recent experiences in developingcountries. Int J Intellect Prop Manage 2006;1:22-36.

30. Deepti R. Malaysian firm to establish plant in India. Chem Week;

2007. p. 169.

31. WHO. Commission on intellectual property, innovation and public

health. Geneva: World Health Organization; 2006.

32. Milstien J, Kaddar M. Managing the effects of TRIPS on availability

of priority vaccines. Bull World Health Organ 2006;84:360-5.

33. Haakonsson SJ, Richey LA. Trips and public health: the Doha

Declaration and Africa. Dev Pol Rev 2007;25:71-90.

34. Kerry VB, Lee K. TRIPS, the Doha declaration and paragraph 6

decision: What are the remaining steps for protecting access to

medicines? Global Health 2007;3:3.

35. Musungu SF, Villanueva S, Blaseti R. Utilizing TRIPS flexibilities for

public health protection through south-south regional frameworks.

South perspectives report, April, 2004. Geneva: South Centre; 2004.

36. Amsden, A.H, Asias Next Giant: South Korea and Late

Industrialization, Oxford: Oxford University Press; 1989.

37. Bercovitz-Rodriguez, Alberto, Historical trends in protection of

technology in developedcountries and their relevance for developing

countries, United Nations: UNCTAD/ITP/TEC/18.1990.

38. Bosworth, Derek L. The transfer of US technology abroad. Res Policy

1980;9:378-88.39. Cohen WM, Levinthal DA. Innovation and learning: The two faces of

R and D. Eco J 2005;99:569-96.

40. Cohen WM.. Empirical studies of innovative activity. In: Stoneman P,

editor. Handbook of the Economics of Innovation and Technological

Change. Oxford: Blackwell; vol. 5. 2005. p. 182-264.

41. Correa DE, The TRIPs Agreement: New Intellectual Standards for

Intellectual Property: Impact on Technology Flows and Innovation

in Developing Countries. Sci Pub Policy 2007;24:79-92.

42. Correa, Carlos. Review of the TRIPS Agreement: Fostering the

Transfer of Technology to Developing Countries, Third World

Network 1999. Available from: www.twnside.org.sg/title/foster.

htm. Correa, Carlos. Intellectual Property Rights, the WTO and

Developing Countries, The TRIPSAgreement and Policy Options,

Zed Books: London and New York: 2000a.

43. Corre RL. Reforming the intellectual property rights system in Latin

America. World Eco 2006;23:851-72.44. Chamarik, Saneh, Goonatilake S, editors. Technological

independence: The Asian experience. UNU: Tokya, New York, Paris;

2010.

45. Desai AV. The Origin and Direction of Industrial R and D in India.

Res Policy 1980;9:74-96.

46. Dutfield, Graham. Intellectual Property Rights and Development.

Policy Discussion Paper, UNCTAD/ICTSD capacity building project

on Intellectual Property Rights and Sustainable Development; 2001.

47. Easterly, William, King R, Levine R, Rebelo S. Policy, technology

adoption and growth. NBER Working Paper No. 4681, March 1994.

48. Easterly, William. Explaining Miracles: growth Regressions Meet the

Gang of Four (forthcoming T. Ito and A. Krueger eds. NBER-East

Asia Seminar Economics, Volume 4), PRE Paper World Bank.1999.

49. Eaton, Jonathan, Kortum S. Trade in ideas: Patenting and

productivity in the OECD,NBER Working Paper No. 5049, NBER:

Boston and Washington, D.C: 1995.50. Ferrantino MJ. The effect of intellectual property rights on

international trade and investment. Weltwirtschafliches Arch

1993;129:300-31.

51. Ginarte, Juan C, Walter GP. Determinants of patent rights: A cross-

national Study. Res Policy 2009;2:283-301.

52. Hall EA. The impact of a weakened patent policy on development

incentives. Quart Rev Econ Business 1999;31:79-88.

53. Yang G, Keith EM. Intellectual property rights and licensing: An

econometric investigation. Weltwirtschafliches Arch 2009;13:99-105.

54. Young A. The tyranny of numbers: Confronting the statistical realities

of the East Asian growth experience. Quart Jf Econ 2006;110:641-80.

55. Watal J. The TRIPS agreement and developing countries--strong,

weak or balanced protection. J World Intellect Prop 2004;5:282-307.

56. The Patents Act, 1970 as amended by Patents (Amendment) Act

2005, Commercial LawPublisher (India) Private Ltd.; 2005.

57. The Protection of Plant Varieties and Farmers Rights Act, 2001 alongwith Protection of Plant Varieties and Farmers Rights Rules; New

Delhi: Akalank Publications; 2003

58. The Copyright Act 1957 as amended up to 1999 along with Copyright

Rules 1958 and International Copyright Order 1999; 2005.

59. The Design Act 2000 along with Design Rules 2001. New Delhi:

Universal Law Publishing Co. Ltd.; 2004

60. The Trademarks Act 1999 along with trade Marks Rules 2002;

Commercial Law Publisher (India) Private Ltd.; 2004.

61. The Geographical Indications of Goods (Registration and Protection)

Act, 1999 alongwith Geographical Indications of Goods (Registration

and Protection) Rules 2002; Universal Law Publishing Co. Ltd., New

Delhi; 2004.


12/12


12J l f N t l S i Bi l d M di i | J 2011 | V l 2 | I 1

62. The Semiconductor Integrated Circuits Layout Design Act 2000

along with Semiconductor Integrated Circuits Layout Design Rules

2001. New Delhi: Universal Law Publishing Co. Ltd.; 2005.

63. R and D statistics department of science and technology. Government

of India, May, 2002

64. Instructions for Technology Transfer and Intellectual Property

Rights, Department of Science and Technology, March 2000.

65. Research and Development in Industry: An Overview; Department

of Scientific andIndustrial Research, Government of India, 2002.

QUICK RESPONSE CODE LINK FOR FULL TEXT ARTICLES

The journal issue has a unique new feature for reaching to the journals website without typing a single leer. Each arcle

on its first page has a Quick Response Code. Using any mobile or other hand-held device with camera and GPRS/other

internet source, one can reach to the full text of that parcular arcle on the journals website. Start a QR-code reading

soware (see list of free applicaons from hp://nyurl.com/yzlh2tc) and point the camera to the QR-code printed in the

journal. It will automacally take you to the HTML full text of that arcle. One can also use a desktop or laptop with web

camera for similar funconality. See hp://nyurl.com/2bw7fn3 or hp://nyurl.com/3ysr3me for the free applicaons.

Announcement

How to cite this article: Tiwari R, Tiwari G, Rai AK, Srivastawa B.

Management of intellectual property rights in India: An updated review.

J Nat Sc Biol Med 2011;2:2-12.

Source of Support: Nil, Conflict of Interest: None declared.

Documents

Management of IPR in India