IP and Employment Considerations of Doing Business in India

7/28/2019 IP and Employment Considerations of Doing Business in India

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LawQuest 2010. All Rights Reserved


Presented by

Poorvi Chothani, Esq.LawQuest, Mumbai

www.lawquestinternational.com

Intellectual Property and

Employment Considerations ofDoing Business in India

2nd International Business Conference

at Tallinn, Estonia

May 26 28, 2010


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Doing Business in India

Some Forms of Doing Business Agent

Distribution

Representative Office

Liaison Office

Branch Office

Project Office

Joint Venture

Wholly Owned Subsidiary

Private Limited Companies

Public Limited Companies

Limited Liability Partnerships


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Some Important Issues

Intellectual Property Laws

Employment Laws

Issues Related to Expatriates


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IP India and Global Laws

Member of the World Trade Organization (WTO)

Trade Related Aspects of Intellectual Property RightsTRIPS Compliant

Berne Convention

Paris Convention

Universal Copyright Convention

Patent Cooperative Treaty


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Relevant Indian IP Laws

The Copyright Act, 1957 and the Copyright Rules, 1958

The Patents Act, 1970 and the Patents Rules, 2003* with relevant

Rules and Amendments

The Trademarks Act, 1999 and the Trademarks Rules, 2000

The Biological Diversity Act, 2002

The Geographical Indication of Goods (Registration and Protection)

Act, 1999

The Designs Act, 2000and the Designs Rules, 2001* with relevant

Rules and Amendments


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Trademarks

Common Law Protection

First to Use

Proposed to Be Used

Similar Marks

Phonetic Similarity


7/22 LawQuest 2010. All Rights Reserved

Protection of International Trademarks

Famous Marks - Statutory Protectionsince 2003

earlierprotected under common law Needs to be well known in at least one relevant

section of the public in Indiaimportant criteriaamong many others

Registration of Trademarks Takes aboutTwo years

Madrid Protocol



Copyrights Significant Provisions

Protection give to qualifying international and workspublished in India International protection in Berne Convention countries

Work For Hire Employer-employee relationship

Consultant or contractor relationship

Joint ownership joint working

Compulsory Licensing Lack of working copyright

Contd



Copyrights Significant Provisions

Version Recordings

Broad fair use exceptions

Non-commercial personal use deemed as fair use anddoes not constitute infringement.

Inalienable moral rights

Waiver Concept does not apply to computer software



Indian Patent Applications

Patent Applications for: inventions originating in India; or

involving an Indian resident inventor

must first be filed in India, unless a foreign filing licensehas been granted by the Indian Patent Office

Registration takes three to four years

PCT Applications two to three years

First to File vs. First to Invent



Patents - Some Special Provisions

Compulsory licenses for export of medicines to countries whichhave lack of infrastructural or production capacity for meeting

public health emergencies

Patents need to be worked Reporting requirement every

calendar year

Compulsory licensing of patents that have not been worked

In case of Infringement - Only civil remedy of injunction,

damages, and accounts for profits

Research and Experimental Use



Patents - Significant Provisions

Patents Joint Owners

- Consent

- Accounting

- Rights

- Infringement

- Responsibilities

Computer Programs and business methodsper

se not patentable

Protection of computer programs as trade secrets



Assignment of IP Rights

Of Copyright

Territory

Term

Lapse

Consent

Of Patents

Joint Owner Needs Consent of other owner(s) toassign rights

Valid only if in writing and registered in India



Data Privacy and Protection

No Specific Statute

Existing legislation provides limited protection

Information Technology Act - limited protection againstcertain types of data misuse or computer offencesinvolving unauthorized access to data on computers andnetworks

E.g. hacking, damage to computer source code, virusintroduction

Civil and criminal remedies available



Legal Framework for Data Privacy

The Constitution of India

The Information Technology Act, 2000 Protects against computer offences

Provides for both civil and criminal remedies

The Specific Relief Act, 1963 To enforce specific performance provisions in the contract

against the Indian service provider

The Indian Penal Code, 1860 andCriminal Procedure Code of 1973 (corporealproperty)

To prosecute incidents of theft and criminal breach of trust andfraud



Other Protection

Specific Relief Act to Enforce Protective ContractualProvisions

Indian Penal Code: Limited criminal recourse available:

To prosecute incidents of theft, criminal breach of trust and fraudinvolving data

Laws extend to offenses against corporeal property only

Common Law Remedies: Civil damages and injunctive

relief available: Breach of contract

Breach of confidence



Enforcement

In India, the enforcement system for IP rightsincludes: Civil remedies

Criminal penalties

Settlement out of court without trial

Compensatory damages

No punitive damages

Criminal prosecution in trademark and copyrightand in certain cases for patents, but not in designscases



Introduction to Employment Laws

Industrial Laws

Social Security

Limited Social Security Schemes

Executives and Managers

Concept of Employment-At-Will

Employing Foreign Nationals

Termination of Employment

Winding Up a Business



Other Issues

Taxation of Employees

Tax Deduction at Source

Repatriating Funds

Taxation of Salary Paid Abroad

Double Taxation Agreements and Tax Credits

C f



IPR, Confidentiality, Negative

Covenants, Non-Compete Clauses

Ownership and Management of Intellectual

Property Rights

Confidentiality, Data Protection, Privacy

Non-Compete Clauses

Restrictive Covenants

Dispute Resolution



LawQuests Areas of Practice

Areas of Practice

Corporate Law

Intellectual Property Law

Real Estate Law

Employment Law

Global Work Permits and

Business Visas

The U.S. The U.K.Canada India

Poland Mauritius

Australia New Zealand

Singapore The Philippines

About LawQuest

Provides Client Centric Legal Solutions

Member of the NY State Bar Association, the

ABA, IBA

Member of the American Immigration

Lawyers Association

Founder Member of the Global Migration

Action Group in AILA

Former Member of the Alliance of Business

Immigration Lawyers (ABIL) Member of the European Association of

Attorneys A Worldwide Network of Lawyers


22/22 L Q 2010 All Ri h R d

Thank You

522 Maker Chambers V

221 Nariman Point

Mumbai 400021

Tel: +91 22 6615 6555

Fax: +91 22 2287 2080

Email: [email protected]

URL: www.lawquestinternational.com
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Documents

IP and Employment Considerations of Doing Business in India