Intellectual Property Rights
(Part I: Patent System)

Subodh Mahanti

A patent system, like other kinds of intellectual and industrial property, is one of a variety of incentive devices used by governments to correct the situation in sectors of economy where there is judged to be a tendency towards undercommitment of resources to knowledge protection and innovation.

The above was stated by the Economic Council of Canada in its Report in 1971 on Intellectual and Industrial Property.

Intellectual property will no longer be seen as distinct or self-contained domain, but rather as an important and effective policy instrument that would be relevant to a wide range of socio-economic, technological and political concernes. The development of skills and competence to manage IPR and leverage its inflruence will need increasing focus; in particular, among the developing countries...One of the concerns of the developing world is that the process of globalisation is threatening the appropriation of elements of this collective knowledge of societies into proprietary knowledge for the commercial profit of a few. An urgent action is needed to protect these fragile knowledge systems through national policies and international understanding linked to IPR, while providing its development and proper use for the benefit of its holders.


R.A. Mashelkar, Director General, CSIR, in his preface to the book, Intellectual Property Rights : Unleashing the Knowledge Economy by Prabuddha Ganguly (2001)

 

Following the emergence of strong global and national intellectual property regimes the subject of intellectual property rights (IPRs) and their protection has become a central issue in economic development, scientific and technological development, protection of traditional knowledge and scientific and economic coperation between industrialised and developing countries. There is a strong opposition or apprehension particularly in developing countries to the very idea of the necessity of strong intellectual property regimes. It is believed that only the developed countries will profit from it. But then on the other side it is believed that 'establishing ownership of intellectual assets, arriving at acceptable frameworks for fair and equitable sharing of benefits for social good and providing harmonised legal structures to encourage continuous flow of innovation are bare necessities to fuel a vibrant global econmyy.' The subject of intellectual property rights is rather complex. Our intention is not to go into the merits and demerits of the evolving global economic intellectual property regimes. Here we intend to describe briefly the basic aspects of intellectual property rights. The present article will be concluded in four parts:
Part I: A brief description of general aspects of intellectual propery rights and discussion on the patent system.
Part II: Copyrights, Trade Marks and Industrial Designs
Part III: World Intellectual Property Organisation (WIPO); Trade Related Intellectual Property Rights (TRIPS) and other internations agreements on intellectual proprty rights.
Part IV: IPR related technical terms and relevant sources.

Intellectual property essentially includes the products or creations of the mind, and intellectual property laws aim at 'safeguarding creators and other producers of intellectual goods and services by granting them certain time-limited rights (intellectual property rights) to contol the use made of those productions.' Traditionally intellectual property is divided into two groups:

Group I: Industrial Property

Industrial property includes inventions (process, products and apparatus); Industrial designs (shapes and ornamentation); and Marks and Trade-names to distinguish goods. Recently the scope of industrial property has been expanded to include 'among others, the protection of distinctive geographical indications (in particular, appellations of origin), plant varieties, and the layout designs (topographies) of integrated circuits, as well as the repression of unfair competition, including the protection of trade secrets.'

Group II: Copyrights

Copyrights broadly include Literary works; Musical works, including any accompanying words; Dramatic works, including any accompanying music; Pantomimes and choreographic works; Pictorial, graphic, and sculptural works; Motion picture and other audiovisual works; Sound recordings; and Architectural works.

Recently an expression called 'neighbouring rights' has been added to the concept of copyrights. The expression "neighbouring rights" is the abbreviated form of "rights neighbouring on copyright". The following three types of rights are covered by the concept of neighbouring rights :

The convention Establishing the World Intellectual Property Organization (WIPO) concluded in Stockham a July 14, 1967 (Article 2 (viii) provides that "Intellectual property" shall include rights relating to :

1. Literary, artistic and scientific works
2. Performances of performing artists, phonagrams and broadcasts
3. Inventions in all fields of human endeavour
4. Scientific discoveries
5. Industrial designs
6. Trademarkes, service marks, and commerical names and designations.
7. Protection against unfair competion and all other rights resulting from intellectual activity in the industrial scientific, literacy or artistic fields."

Intellectual property like any other form of conventional forms of property is an asset. Just like real and personal property the intellectual property can also be brought, sold, licensed, exchanged or gratuitously given away. Intellectual property owner has laso the right to prevent the unanthorised use or sale of the property. The most striking difference between intellectual property and other form of property is that it is intangible that is it cannot be defined or identified by its own physical parameters. So intellectual property must be expressed in some discernible way for enabling it to be protected. Unlike a physical object an intellectual property like an idea for invention, a piece of music or a trademark cannot be protected against other person's use of them by simply possessing the object. Hence the necessity of enacting intellectual property laws distinct from conventional laws protecting personal property.

The practice of defining intellectual property started in the Italian City States. it has been reported that the first patent was granted to Filippo Brunelleschi in the Republic of Florence in 1421. Brunelleschi was given a three year monopoly for his invention concerning special hoisting gear used on barges. An ordinance relating to patents was first enacted in a Venetian law of 1474.From the Italian City States the practice spread to other western European countries. In England during the reign of Elizabeth I (1533-1603), her minister, Lord Burghley (1520-98), granted a series of patents with a view to encouraging foreign inventors to import their inventions and work them in England. It was also intended to stimulate inventions by domestic producers. In India the basic elements of intellectual property rights were first introduced by enacting the Act on Protection of Inventions in 1856. This Act, which was based on the British Patent Law of 1852, was the origin of patent legislation in India. A chronological perspective of the development of Indian IPR is given in Box-I. A lest of international and regional aggrements and treaties is given in Bos-II.

Acts/Laws and Their Ammendments Related to IPR Enacted by India

1856 The Act on Protection of Invention based on the British Patent Law of 1852.
1858 The Act modified as Act XV; patent monopolies called exclusive priviledges (making, selling and using invention in India and anthorising others to do so for 14 years from date of filing specification.
1872 The Patents and Designs Protection Act
1883 The protection of Invention Act
1888 Consolidated as the Invention Designs Act.
1911 The Indian Patents & Designs Act (Under the mangement of the controller of Patents & Designs). This came into force from 15 August 1947.
1914 Copy of the British copyuright Act of 1911 with suitable modification for British India.
1957 Adopted many principles of the British copyright Act of
1958 This came into force to cope with new problems in the low fo copyright created by teachnological advances in the fields of communication, broadcasting, microfilming, photolithography, movies cinemas and talkies.
1959 The Act of 1940 ammended as the Indian Trade & Merchan dise Marks Act, 1958 on 25 November 1959
1967 The patent Bill introduced in Parliament
1970 The Indian patents Act, 1970. The Design Act of 1911 retained without changes
1972 The Patents Act (Act 39 of 1970) came into force on 20 April 1972.
1983 Ammendments of availing the benefits arising from the revision of the Berne Convention and the Universal Copyright Convention to which India adheres.
1984 Ammendments to discourage and prevent piracy prevailing in the video film and records
1992 Ammendment to increase protection time to Author's lifetime 60 years.
1992 Ammendment proposed for a "New Act" in line with internationally accepted norms. Dabates continuning.
1994 On 31 December, 1994, Ordinance framed to amend the Patents Act, 1970, and the concept of exclusive marketing rights introduced as pipeline protection.
1994 Ammendment to give effect to the obligation arising from the GATT. Copyright protection extended to new areas of creative work, including the computer industry. Special rights introduced to cover the per forming arts.

Most of the countries give legal protection to inventions through patents. However, in a few countries the protection to patents may also be given by means other than patents. A patent is a property right granted by the State to a patentee, excluding others, for a limited period, from using the patented invention without the proper authorisation of the owner of the patented invention. An invention without a patent is not necessarilly a property right. After the expiry of the term of the patent , the invention passes into the public domain. The purpose of a patent is to provide an incentive to the inventor/investor so as to promote inventive activity and commercialisation of invention. Another purpose is to encourage the disclosure of the invention.

List of International and Regional Agreements/Treaties in Intellectual Property Rights.

(1886) Berne convention for the Protection of Literacy and Artistic Works
(1891) Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods .
(1891) Madrid Agreement Concerning the International Registration of Marks
(1891) Registration of Marks
(1925) Hague Agreement concerning the International Deposit of Industrial Designs
(1957) Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks
(1958) Lisbon Agreement for the Protection of Appellations of Origin and their International Registration
(1961) Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations
(1968) Locarno Agreement Establishing an International Classi fication for Industrial Design
(1970) Patent convension Treaty ("PCT")
(1971) Strasbourg Agreement Concerning the International Patent Classification
(1971) Geneva Conventin for the Protection of Producers of Phanagrams Against Unauthorised Duplication of Their Phonograms
(1973) Vienna Agreement Establishing an International Classi fication of the Figurative Elements of Marks
(1974) Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite
(1977) Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the purpose of Patent procedure
(1981) Nairobi Treaty on the Protection of the Olympic Symbol
(1989) Washington Treaty on Intellectual Property in Respect of Integrated Circuits
(1989) Protocol Relacting to the Madrid Agreement Concerning the International Registration of Marks
(1994) Trademark Law Treaty ("TLT") (1994)
(1994) Trade Related Intellectual property Rights ("TRIPs")
(1996) Community Trademarks (1996)
(1996) Documents of the Diplomatic Conference on Certain Copyright and Neighbouring Rights Questions (Geneva, December 2-20,)
(1996) WIPO Copyright Treaty (WCT)
(1996) WIPO performance and phonagrams Treaty (WPPT)

An invention may be defined as the idea of making a new and useful article, method or substance. The WIPO Model Law for Developing Countries on Inventions (1979) defines invention 'as an idea of an inventor which permits in pactice the solution of a specific problem in a field of technology.' The basic root of the word 'invention' comes from the Latin word 'invenire' which means 'to come upon'. With most imventions there is a sense of surprise. There may be many reasons for making invention. The most obvious ones are:

* For personal satisfaction.
* For solving a poblem faced in everyday life
* For being recognised by others.
* For the desire to take up a challenging/interesting task.
* For the desire to make money

In industry the demand for the development of new technology, that is the demand for 'inventive activity' is generally influenced by the expected rates of returns to that activity compared with rates of return that can be achieved by investing in non-inventive activity including the adoption of alternative existing technologies.

Box-III : What is non-patentable in India

* Frivolous claims contrary to well-established natural laws.
* Anything contrary to law or morality, or injurious to public health.
* Mere arrangement or rearrangement or duplication of known devices, each functioning independently of one another in a known way.
* A method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.
* A method of agriculture or horticulture.
* Inventions related to atomic energy.
* Computer software
* Aesthetic creations
* Discoveries, scientific theories, mathematical methods .
* Schemes, rules or methods for performing mental acts playing games or doing business.
* Presentation of information
* Methods of treating humans or animals through surgery, or therapeutical diagnostics.
* Animals and plants, and biological methods for rearing/growing them(hoever, microorganism is patentable in India.
* Products made by chemical synthesis_foods, medicines.

Source: Gearing up for Patents:The Indian Scenario by Prabudha Ganguli, Universities Press (India) Limited, 1998.

Normally a distinction is made between inventions that concern with products and inventions that concern with processes. For example an invention that consists of a new drug is a product invention but an invention that consists of a new method or process of making a known or new drug is a process invention. The corresponding patents are usually called as a 'product patent' and a 'process patent' respectively.

Not all inventions are patentable. The basic criteria for an invention to be patentable (as required by the patent laws of almost all the countries) are: it must be novel, it must involve an inventive step (or it must be non-obvious), and it must have some industrial application. But then even if the invention is new it may not be patentable as according to the patent laws of certain countries certain articles, processes or ideas which just cannot be protected even if they are new. Things which are non-patentable in India is given in Box-III

For every invention there should be a separate patent application. However, if a group of inventions are so-linked to form a single general inventive concept one application will suffice. The language in which a patent application is to be filad is also fixed. It can not be wrtten in any language. In India a patent application must be drafted in English. The complete specification of a patent application should include the following :

* In the object or title of the invention.
* Prior art or cross-refrences to related applications, if any.
* Brief summery of the invention.
* Brief description of several views of the drawing, if there are drawings.
* Detailed description of the invention.
* Claim or claims.
* Abstract of the disclosure.

In India, the controller General of Patents, Designs and Trademarks (CGPDT) functioning under the control of the Department of Industrial Development controll patents, designs and trademarks. The Ministry of Human resources is in charg of the copyright Board.

Address of Patent Offices in India

1. The Controller of Patents The Patents Office Branch Todi Estates, III Floor Lower Parel (W) Mumbai - 400 013
2. The Controller of Patents The Patents Office, Branch Unit No. 401 to 405, III Floor Municipal Market Building Saraswathi Marg, Karol Bagh New Delhi - 110 005
3. The Controller of Patents The Patent Office (Head office) "Nizam Palace" 2nd M.S.O. Bldg 5th, 6th, 7th Floor, 243/4 Acharya Jagdish Bose Road Calcutta - 700 020
4. The Controller of Patents The Patents Office, Branch 61, Wallajah Road Chennai - 600 002
5.Patents Information System 3rd Floor, Block- C CGO Complex, Seminary Hills Nagpur - 400 006
6Office of the Controller General of Patents, Designs & Trademarks 101, Maharishi Karve Road Mumbai - 400 020

 

 

The title of the invention should be as short and specific as possible. The specification must bring out the precise invention.

A patent application or patent document is a technical literature and it must be formulated in such a way that it conforms to the requirements of patent law of the country in which the patent application is filed. The conventions are more-or-less similar in all the countries. Only a skilled person familiar with patent law will be able to draft a patent claim. It is a normal practice to engage the services of a patent agent/patent attorney when seeking to make an application for obtaning a patent. The patent agent's skill and experience play a crucial role in drafting the claims. The drafting should cover the invention in the broadest possible way so that the inventor's right are properly protected. It is the patent agent who advises whether an invention is patentable or not.

The concept of the right conferred by a patent right is often misunderstood. The grant of a patent carries with it no positive right. This is contrary to our common experience of ownership in case of most personal property where one enjoys a positive right. The right of ownership in a patent is a negative right - the negative right to exclude others from making, using or selling the patented invention. The mere granting of a patent does not ensure that it would enable the inventor to make, use or sell the invention. Thus, while the owner of a patent is not given a stautory right to practice his/her invention, he/she is given a statutory right to exclude others from practicing their patented invention. The exlusionary priviledge given to the owner of a patent is a negative right. In fact, in making, using or selling his or her own invention, the inventor may find that he or she infringes the patent right of others. Only in those cases when the invention is very basic to art does the grant of a patent take on the characteristics of a positive right. A patent is the monopoly grtanted by the State to an inventor for a fixed period in exchange for the disclosure of the invention so that others may profit from the invention. The disclosure of an invention is considered of vital importance in any patent granting procedure.

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