IPR for Jain Advocates

8/14/2019 IPR for Jain Advocates

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http://genericpharmaceuticals.blogspot.comhttp://genericpharmaceuticals.blogspot.com 11

Intellectual PropertyIntellectual Propertya brief overviewa brief overview

& professional opportunities for Advocates and Chartered& professional opportunities for Advocates and CharteredAccountants in this fieldAccountants in this field

Presentation by:Presentation by:

Sandeep K. RathodSandeep K. Rathod

Patent AttorneyPatent Attorney

Head: Formulations and Corporate IP,Head: Formulations and Corporate IP,

Matrix Laboratories Limited, IndiaMatrix Laboratories Limited, India[Subsidiary of Mylan Laboratories Inc.][Subsidiary of Mylan Laboratories Inc.]

Email:Email:

rathodsandeep@gmailrathodsandeep@gmail

.

.comcom

Blog:Blog: genericpharmaceuticalsgenericpharmaceuticals..blogspotblogspot..comcom


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Intellectual Property: An introductionIntellectual Property: An introductionThe property or product of oneThe property or product of ones mind or intellect.s mind or intellect.

Difference between intellectual property and otherDifference between intellectual property and other

forms of property:forms of property:

Intellectual property is intangible i.e. it cannot beIntellectual property is intangible i.e. it cannot be

defined or identified by physical parameters but itdefined or identified by physical parameters but itneeds to be expressed in some discernible way toneeds to be expressed in some discernible way to

be protected.be protected.

In business termsIn business terms --proprietary knowledgeproprietary knowledge


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Intellectual Property & itIntellectual Property & its Typess TypesIPIP can be traded/ protected/ enforced usingcan be traded/ protected/ enforced using

legal means.legal means.

Types of Intellectual Property in India:Types of Intellectual Property in India:

TrademarksTrademarks [including geographical indications][including geographical indications]

PatentsPatents CopyrightsCopyrights

DesignsDesigns

Undisclosed InformationUndisclosed Information


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IPR Laws in IndiaIPR Laws in India

The Patents Act, 1970The Patents Act, 1970

[Act last amended in 2005][Act last amended in 2005]The Designs Act, 2000.The Designs Act, 2000.

The Copyright Act, 1957The Copyright Act, 1957

Trade & Merchandise Marks Act, 1999 (in force from Sep.Trade & Merchandise Marks Act, 1999 (in force from Sep.2003).2003).

The Geographical Indications of Goods Act, 1999The Geographical Indications of Goods Act, 1999


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PatentPatent

A patent is:A patent is:

a grant of a limited time monopolya grant of a limited time monopoly by the State to an inventor to use, sell, distribute,by the State to an inventor to use, sell, distribute,

license his inventionlicense his invention

in return of itin return of its full disclosure which can be useds full disclosure which can be usedby the public after the expiry of its term.by the public after the expiry of its term.

A patent provides protection for the inventionA patent provides protection for the invention

to the owner of the patent for a limited period.to the owner of the patent for a limited period.

Duration: 20 years.Duration: 20 years.


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CopyrightCopyright

The right of a person over an original work of art is called asThe right of a person over an original work of art is called as

Copyright.Copyright.For e.g. Books/ Paintings etc.For e.g. Books/ Paintings etc.

Duration: Life of author + 60 years.Duration: Life of author + 60 years.


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DesignDesign

Copyright in the external shape of an object isCopyright in the external shape of an object is

protected by Design Rights. The shape must beprotected by Design Rights. The shape must benovel and possess artistic merit.novel and possess artistic merit.

Duration: 14 yearsDuration: 14 years


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Undisclosed InformationUndisclosed Information

Information that is kept and used as a secret by aInformation that is kept and used as a secret by a

person and not open to public is undisclosedperson and not open to public is undisclosedinformation. E.g. Cocainformation. E.g. Coca--Cola Formula.Cola Formula.

Duration: Till the information is kept a secret.Duration: Till the information is kept a secret.


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TrademarksTrademarksThe name by which an entityThe name by which an entity

sells a good or delivers asells a good or delivers aservice is calledservice is called TradeTrade--markmark..

Duration:Duration:

Continuous protection till theContinuous protection till the

proprietor uses the same.proprietor uses the same.


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Geographical IndicationsGeographical IndicationsSimply put, a GI is similar to a trade mark.Simply put, a GI is similar to a trade mark.

Just like a TM indicates origin, a GI too assures a buyer that tJust like a TM indicates origin, a GI too assures a buyer that theheparticular product has come from a particular region [i.e.particular product has come from a particular region [i.e.indicates origin].indicates origin].

But unlike a TM which is owned by one person/ company, a GIBut unlike a TM which is owned by one person/ company, a GIis usually owned by the Govt. or a society/ group ofis usually owned by the Govt. or a society/ group ofproducers.producers.

Darjeeling tea

Scotch whisky


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Comprehensive Approach to theComprehensive Approach to the

Protection of Intellectual PropertyProtection of Intellectual Property

Suppose you launch a new pressure cooker in the market,Suppose you launch a new pressure cooker in the market,

then the possibilities are:then the possibilities are:

A Patent for any new technology underlying it,A Patent for any new technology underlying it,

Design for the appearance,Design for the appearance,

Trade Mark for its brand &Trade Mark for its brand &Copyright for the accompanying literature.Copyright for the accompanying literature.

Now you will be in a position to comprehensively coverNow you will be in a position to comprehensively cover

your product by IP rightsyour product by IP rights..


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IPR protection in INDIAIPR protection in INDIAIPR awareness among the judiciary is not equally high for allIPR awareness among the judiciary is not equally high for all

forms offorms ofIPRsIPRs;;

India has excellent conditions for protection on tradeIndia has excellent conditions for protection on trade--marks.marks.

International reputation for well known trade marks is alsoInternational reputation for well known trade marks is also

protected;protected;

However, the same is not the case for Patents. The judiciaryHowever, the same is not the case for Patents. The judiciary

as well as the legal fraternity is inexperienced as regards pateas well as the legal fraternity is inexperienced as regards patentnt

litigation due to the low number of cases.litigation due to the low number of cases.


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Professional opportunities forProfessional opportunities for

Advocates andAdvocates and CAsCAs in the IPR domainin the IPR domain

Advocates can register as Trademark agents and help inAdvocates can register as Trademark agents and help inprosecuting trademark applications at the Trademark registry;prosecuting trademark applications at the Trademark registry;

Patent litigation is a field that will open in a big way, presePatent litigation is a field that will open in a big way, presentntfield is more of trademark litigation only;field is more of trademark litigation only;

Advocates with a Science degree can also register as PatentAdvocates with a Science degree can also register as Patent

Agents and advise on patent prosecution;Agents and advise on patent prosecution;CAsCAs can look at brands/ goodwill valuation exercises fromcan look at brands/ goodwill valuation exercises fromthe trademarks arena as well as patent/ technology valuationthe trademarks arena as well as patent/ technology valuationfrom the patents arena.from the patents arena.

Royalty estimation and royalty audits is anotherRoyalty estimation and royalty audits is another practisepractise area.area.Franchising and the entire gamut associated with itFranchising and the entire gamut associated with itbrandbrandlicensing, fee payments etc is an area to watch out for!licensing, fee payments etc is an area to watch out for!

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IPR for Jain Advocates