Mukesh Kumar Narayan

7/29/2019 Mukesh Kumar Narayan

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MUKESH KUMAR NARAYAN

USER ID-MUKESH 25053

Ans 1.Important theories of protection of intellectual property rights

i ) MORAL DESERT THEORY : The theory explains that the invention/creation of a person

belongs to him and it is his labour and hard work and he must be surely permitted to use the

benefits which accrue from his invention/creation. This means that the physical and mentallabour of the person belongs to him and it is his prerogative to use his original work. This

approach centers on the proposition that a person who labours upon resources that are either

unowned or held in common has a natural property right to the fruits of his or her effortsand

that the state has a duty to respect and enforce that natural right. Thus these rights can only bejustified if they are implemented in such a way that rights of an individual are protected without

infringing on another.

ii) PERSONALITY THEORY: Personality theory is a principle of intellectual property that

gives importance to the point of view of the individual inventor, author, or artist rather than that

of society as a whole while analyzing intellectual-property rights. It holds that personal

expression is a form of self-actualization that gives the creator inalienable moral rights in the

creations. Personality theorists argue that private property rights should be recognised when they

promote human flourishing by protecting of fostering fundamental human needs or interests. The

problem here lies in identifying (and agreeing upon) the specific needs or interests that we wish

to promote.

iii)UTILITARIAN THEORY: This theory explains that the priority ,aim and objective of apolicy should be to give benefits and advantages to a large group of people and it should provide

greatest good for greatest number. One of the first tasks in developing a utilitarian theory of IP

is translating the idea of the greatest good for the greatest number into a more precise andadministrable standard. However utilitarian arguments can be cut for or against the claims of

intellectual property rights. The utility gains from increased incentives for innovation must be

weighed against the losses incurred from monopolization and their diminished diffusion. Thusthe problem arises as the benefits gained cannot be measured against the losses suffered.

Ans 2. The legal requirements to register a trade mark under the Legislation are: The selected mark should be capable of being represented graphically (that is in the

paper form).

It should be capable of distinguishing the goods or services of one undertaking fromthose of others.

It should be used or proposed to be used mark in relation to goods or services for thepurpose of indicating or so as to indicate a connection in the course of trade between the


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goods or services and some person have the right to use the mark with or without identity of that

person.

Depending on the stage of the application process and the nature of your trademark application,

you the following forms are prescribed:

For filing new applications- There are prescribed forms depending on the nature ofapplication such as Form TM-1, TM-2, TM-3, TM-8, TM-51, etc.

To file a Notice of Opposition to oppose an application published in the TradeMarks Journal- (FormTM-5). For Renewal of a Regd. Trademark- Form TM-12. Surcharge for belated renewal- Form -10. Restoration of removed mark- Form TM-13 Application for rectification of a registered trade mark- Form TM-26 _Legal Certificate- Form TM-46) Official search request for trademark- Form TM-54 Preliminary advice of the Registrar as to the registrability of a mark- Form TM-55

Copyright search request and issuance of certificate- Form TM-60

Trade mark registration can be refused on the grounds mentioned below:

Any trade mark that does not entail any distinctive character due to which it becomesdifficult to distinguish the goods and services that it relates to from those offered by

another provider.

If a trade mark comprises exclusively marks and indications that are regularly used in thecurrent language or in the established practices of trade.

If a trade mark causes confusion among the public or is of deceiving nature. If a trade mark contains any matter which may hurt religious sentimentalities of any

section of society.

If a trade mark contains anything that is scandalous or obscene. If it contains anything that is prohibited under the Emblem and Names Act, 1950. If a trade mark consists exclusively of the shape of goods that represents the nature of

those goods.

If it only represents a shape of goods necessary to get a technical result. If a trade mark consists only the shape assigning considerable value to the goods.

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Ans 3. The owner of copyright of work has right to assign copyright to any person. The personwho assigns the copyright is called assignor and the person to whom rights are assigned is called

assignee. The effect of assignment is that the assignee becomes entitled to all rights related to

sell the work reserving copyright amounts to publishing right and not assignment of copyright.The owner of the copyright in an existing work or the prospective owner of the copyright in a

future work may assign to any person the copyright either wholly or partially and either

generally or subject to limitations and either for the whole of the copyright or any part thereof:


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Provided that in the case of the assignment of copyright in any future work, the assignment shall

take effect only when the work comes into existence. Where the assignee of a copyright becomes

entitled to any right comprised in the copyright, the assignee as respects the rights so assigned,and the assignor as respects the rights not assigned, shall be treated for the purposes of this Act

as the owner of copyright and the provisions of this Act shall have effect accordingly.

Assignment of copyright (section 18)

1. The owner of the copyright in an existing work or the prospective owner of thecopyright in a future work may assign to any person the copyright either wholly

or partially and either generally or subject to limitations and either for the whole

of the copyright or any part thereof:Provided that in the case of the assignment of copyright in any future work , the

assignment shall take effect only when the work comes into existence.

2. Where the assignee of a copyright becomes entitled to any right comprised in thecopyright , the assignee as respects the rights so assigned, and the assignor as

respects the rights not assigned, shall be treated for the purposes of this Act as theowner of copyright and the provisions of this Act shall have effect accordingly.

3. In this section, the expression "assignee" as respects the assignment of thecopyright in any future work includes the legal representatives of the assignee, if

the assignee dies before the work comes into existence.

Mode of assignment (section 19)

4. No assignment of the copyright in any work shall be valid unless it is in writingsigned by the assignor or by his duly authorized agent.

5. The assignment of copyright in any work shall, identify such work, and shallspecify the rights assigned and the duration and territorial extent of suchassignment.

6. The assignment of copyright in any work shall also specify the amount of royaltypayable, if any, to the author or his legal heirs during the currency of the

assignment and the assignment shall be subject to revision, extension ortermination on terms mutually agreed upon by the parties.

7. Where the assignee does not exercise the rights assigned to him under any of theother sub-sections of this section within a period of one year from the date ofassignment, the assignment in respect of such rights shall be deemed to have

lapsed after the expiry of the said period unless otherwise specified in the

assignment.

8. If the period of assignment is not stated, it shall be deemed to be five years fromthe date of assignment.

9. If the territorial extent of assignment of the rights is not specified, it shall bepresumed to extend within India.

10.Nothing in sub-section (2) or sub-section (3) or sub-section (4) or sub-section (5)or sub-section (6) shall be applicable to assignments made before the coming into

force of the Copyright (Amendment) Act, 1994.


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Disputes with respect to assignment of copyright (section 19 A)

1. If an assignee fails to make sufficient exercise of the rights assigned to him, andsuch failure is not attributable to any act or omission of the assignor, then, the

Copyright Board may, on receipt of a complaint from the assignor and after

holding such inquiry as it may deem necessary, revoke such assignment.2. If any dispute arises with respect to the assignment of any copyright , theCopyright Board may, on receipt of a complaint from the aggrieved party and

after holding such inquiry as it considers necessary, pass such order as it maydeem fit including an order for the recovery of any royalty payable:

Provided that the Copyright Board shall not pass any order under this sub-section

to revoke the assignment unless it is satisfied that the terms of assignment are

harsh to the assignor in case the assignor is also the author:Provided further that no order of revocation of assignment under this sub-section,

shall be made within a period of five years from the date of such assignment.

Case Law:

a. Banker v. Stickneyb. Saregama India Ltd. V. Suresh Jindal and others

Licensing of copyright (section 30)

The owner of a copyright may grant a license to do any of the act in respect of which he has anexclusive right to do.The license can be classified into two categories-----

(i)Voluntary license

Section 30 of the copyright Act empowers the owner of copyright in any existing or the

prospective owner of the copyright in any future work to grant any interest in the right by licensewriting signed by him or his duly authorized agent .section 31 makes it clear that provision of

sections 19 and section 19 A will apply in relation to mode of granting license.

(ii) compulsory license

The copyright board is empowered to grant compulsory license under certain circumstances on

suitable terms and conditions in respect of an Indian work. The circumstances necessary for

grant of such compulsory license are the followings:

a. the work must have been published or performed in public.

b. the author must have refused to republish or allow republication of the work in public.

c. that by reason of such refusal the work is withheld from public ,


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d. the author must have refused to allow communication to the public of such work by

broadcast ,or in the case of a sound recording in such record ,on reasonable terms.

Exclusive And Non-exclusive license

An exclusive license is one where the licensee is given the right to commercialize the intellectualproperty (IP) to the exclusion of all others, including the licensor. Most IP licenses are given on

an exclusive basis.

A non-exclusive license also grants the right to use a given piece of intellectual property in a

specified manner; however, you can grant a non-exclusive license to several userssimultaneously.

Termination of license granted under section 32-A

The license granted for reproduction and the translation may be terminated by copyright board if

subsequent to grant license the owner himself has republished the work or has made translationof the work at a reasonable price. However the termination will not take effect until after theexpiry of three months from the date of service of notice.

Case Law:

a.M/s.Entertainment Network (India) Ltd. V. M/s.Super Cassette Industries Ltd.b. Music Choice India Pvt. Ltd. V. Phonographic Performance Ltd.

Ans 4. The procedure for filling and grant of patents is as under:

Any person, even if he or she is a minor, may apply for a patent either alone or jointly with anyother person. Such persons include the inventor, or his assignee or legal representative in the

case of an ordinary application or, in the case of a priority application, the applicant in the

convention country or his assignee or his legal representative. A corporate body cannot be named

as an inventor. Foreigners and nationals not living in India need an address for service in India

for this purpose. They may appoint a registered agent or representative whose address for service

can be the address for service in India.

Place of filling Patent:

An application for a patent must be filed at the Patent Office branch within whose

territorial jurisdiction the applicant resides or has his principal place of business or


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domicile. A foreign applicant must file at that Patent Office branch within whose

jurisdiction his/her address for service is located.

Priority:

Priority can be claimed from the earliest corresponding application in a convention

country, provided that the Indian application is filed within twelve months of the

priority date. Multiple and partial priorities are allowed.

Specification:

A priority application must be filed with a complete specification in the first instance

but a non-priority application may be filed with either a provisional specification or a

complete specification. Where a provisional specification is filed in the first instance,

a complete specification must be filed within twelve months. Where two or more

cognate provisional specifications have been filed, they may be combined and all their

subject matter may be incorporated into a single complete specification to be filed

within twelve months of the date of the earliest filed provisional specification.

Naming of inventor:

As regards non-priority applications, the inventor(s) must be named in the application

form. As regards priority applications, a declaration as to inventorship must be filed

with the application or within a period of one month.

Information of corresponding applications in other countries:

It is necessary at the time of filing a patent application in India, to inform the

Controller of the details of all corresponding applications in other countries and to

undertake to keep the Controller so informed up to the grant of the Indian application.

Failure to do so could result in the refusal of the application in case it is opposed, or

even revocation of a patent in proceedings before the High Court.


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PATENT PUBLICATIONPublication takes place 18 months from the date of the application. Urgent publication is possible

on request on payment of fees. From the date of publication of the application for a patent and

until the date of grant of the patent, the applicant will have the like privileges and rights as if a

patent for the invention had been granted on the date of publication of the application.

Pre-grant Opposition of Patent:

After publication but before the date of grant, anyone may file an opposition to the

grant of a patent, by way of representation.

PATENT EXAMINATIONExamination of patent application:

Both formal and substantive examinations are made by the Indian Patent

Office. Examination is by request.

Procedure:

An applicant is required to meet all the objections and requirements of the Patent

Office within a period of twelve months from the date of the first examination report

(FER) issued by the Controller. No extension of time is permitted. If a patent

application is not put in order in twelve months from the date of the FER, it lapses.

Amendment of application:

An applicant may, of his own accord, apply to the Controller for amendment of his

application or any document filed in respect thereof but such amendments must be

filed by way of correction, explanation, or disclaimer. An applicant may also amend

his application or specification at the instance of the examiner and file a separate

divisional application(s) for the other invention(s) which will be accorded the date of


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filing of the complete specification of the original application or such later date as the

Controller may fix. The divisional application must be filed prior to the grant of the

parent application.

GRANT OF PATENT:The grant of an application is published in the Official Journal and is notified therein for

post-Grant opposition. A patent can be revoked within one year after grant by post-Grant

opposition proceedings before the Controller of Patents.

RIGHTS OF PATENTEE:

a. Right to exploit Patent (section 48 and 50)Section 48 confers the rights to exploit the patent on patentee or his licensee orassignee or agent. It means the patentee or the person legally authorized by

him can make commercial use of the patented invention. However this right is

subject to the conditions laid down in section 47 which empower thegovernment to import or use the patent product for its own use .

b. Right to license (section 70)If a patentee is not able or willing to exploit the patent himself, he can grant

license to some other person and authorize him to exploit the patent and pay

him the consideration or royalty.

c. Right to assign (section 70 and 68)A patentee can fully or partially assign his patent to another person throughsale, gift or any other legal mode. Section 68 requires that such assignmentshould be in writing. In case of joint patent the co-owner can assign his share

in patent.

d. Right to surrender the patent (section 63)Under section 63 of the Act, the patentee has the right to surrender his patent.

A patentee, if he so wants may offer to surrender his patent, at any time

giving notice in prescribed manner. When such an offer is made, thecontroller should publish the offer with a view to notifying every person other

than the patentee whose name appears in the register as having an interest inthe patent.

e. Right to be issued duplicate Patent (section 154 and 118)If a patent is lost or destroyed or its non-production is explained satisfactorily

to the controller, the patentee has a right to apply for duplicate patent.

f. Right against infringement (section 104-108)


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The exclusive rights of patentee can be legally protected by excluding

unauthorized persons from exploiting patent of others. Violation of rights of

patentee amounts to infringement. Patentee has right to seek legal remediesincluding civil suit against infringer.


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Ans 5. The rationale behind grant for patent protection are as follows:

( i) The exclusive right to commercially exploit an invention provides the patent owner with thelegal right to stop others from making, using, or selling the patented (i.e. claimed) invention and

the right to collect damages for any such unlawful activity - so long as the patent (i.e. the claims)

is not found invalid. Obtaining this exclusive right is the fundamental motivation for seeking apatent and affords several benefits to the patent owner.

( ii) Most inventions involve considerable research and development (R&D)investment and

efforts. Patenting an invention serves to prevent competitors from simply copying or reverseengineering the invention and thereby appropriating those R&D efforts for their own benefit.

Furthermore, even if a competitor independently develops the same invention at a later stage, the

patent may be used to stop the competitor's entry into the market. Thus, a patent helps insure that

the payoff from R&D and the patent owner's competitive advantage are maximized.

(iii) Patents are also valuable for generating interest and investment in new and growing

businesses. This is particularly important for companies attempting to establish themselves inhigh-tech industries. Start-up companies are often based on the development of a specific new,

sometimes potentially ground-breaking, technology. Without securing rights for their

technology, these companies may find themselves unable to obtain sufficient resources to bring

that technology to market. Patents may also be licensed to other parties allowing these parties toexploit the invention in exchange for royalty payments.

( iv) A patent serves as a readily accessible public record of the innovative developments madeand owned by the patent owner. The existence of a patent may serve as a warning to competitors

to stay clear of a protected technology. In addition, a patent stakes out a patentee's technological

territory, precluding others who develop technology at a later stage from attempting to claim or

patent that technology as their own.

Intellectual Property Law Rights is one of the fastest growing concepts in modern world.

Today each and every proprietor, user is trying to protect his intellectual property by some wayor the other. IPR in India has flourished tremendously in the last ten years. In order to take

optimum advantage of the rights attached to Intellectual property Rights it is extremely necessary

to register it.It is obvious that management of IP and IPR is a multidimensional task and calls for many

different actions and strategies which need to be aligned with national laws and international

treaties and practices. It is no longer driven purely by a national perspective. IP and its associated

rights are seriously influenced by the market needs, market response, cost involved in translatingIP into commercial venture and so on. In other words, trade and commerce considerations are

important in the management of IPR. Different forms of IPR demand different treatment,

handling, planning, and strategies and engagement of persons with different domain knowledge

such as science, engineering, medicines, law, finance, marketing, and economics. Each industryshould evolve its own IP policies, management style, strategies, etc. depending on its area of

specialty.

In India, the most important and technical concept of Intellectual property rights is thepatents. The patent law in India is governed by the Indian Patents Act, 1970. The patent law


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in India has its source from the English law.

In India, patent is granted for a period of twenty years. However it is required to be renewed

every year. After the expiry of twenty years, the monopoly rights ceases to exist and thepatent in question is available for each and every one to benefit. The Patent Act which was

earlier governing the patent laws in India had a lot of loopholes. However it was replaced

by the Indian Patent (Amendment) Act, 1999.The best clause introduced by the new Act wasthe implementation of the exclusive marketing rights which allowed the applicant todistribute and market his products in India from the date of filing of the application without

waiting for the whole procedure concerning grant of patent. Paten ts are lega l ri gh ts

granted for new inventions employing scientif ic and technical knowledge. Apatent confers on i ts holder certain exclusive right for a limited period for

the new inventions disclosed in the patent . Examples: TV, new drugs,

process for preparation of a new substance, new pigment composition, etc.

The subject of Patent , which involves scientif ic & legal issues, is relat ively

complicated as compared with the o ther species of intel lectual property l ike

designs, t rade marks & copyrights . Moreover the grant of patent r ights hasto str ike a balance between different confl ict ing interests such as: between

keeping valuable technical information as trade secrets and disclosing suchinformation, between public and private interests of the inventor / industry,between exclusive rights and promoting competit ion and part icularly in

developing countries between the interests of indigenous industry and

transnational corporations.

Patent documents can provide three main types of information. They are the

following: ( i) Commercial ( i i ) Technical and ( i i i ) Legal .

A subject matter search of patents helps to identify the owner of apart icular piece of technology. To learn more about the product or toidentify i ts owner with a view for collaboration, a patent subject matter

search can give valuable information.

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Mukesh Kumar Narayan