Words: 5204
Intellectual Property Laws of India James Thanickan When India became a Republic in 1950, India had Intellectual Property legislations on copyrights, patents, designs and trade marks. These were mostly adaptations of the laws of Great Britain in each area and were of general international norms. Subsequently, India modified the Intellectual Property legislations to make them meet national needs and requirements.
Pursuant to the country’s joining the World Trade Organisation, India either modified the existing legislations or enacted new legislations in all the intellectual properties identified in the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement), as per the obligations it committed. There are now specific legislations on Copyrights and Related Rights, Patents, Trade Marks, Designs, Geographical Indications of Goods, Plant Varieties and Farmers’ Rights, and Semiconductor Integrated Circuits Layout-Designs.
In addition, India also has legislations on protection of biological diversity and competition. The Indian Intellectual Property legislations are now fully TRIPS compatible. A brief overview of these legislations is presented in the following paragraphs. Copyrights India has a long history of copyright law enactment. As early as 1857, India passed a law to protect copyrights. Later, another Act was passed in 1862. But the Act which became a milestone was the Copyright Act, 1914. This was based on the Copyright Act, 1911 of the United Kingdom with suitable modifications for India.
This Act remained in force until replaced by the present Copyright of 1957 on 21 January 1958. The present legislation was amended periodically in 1983, 1984, 1992, 1994 and 1999 to meet requirements of the times. Presently, a set of amendments is under consideration of the Parliament. Regulations regarding procedures and other matters are prescribed in the Copyright Rules, 1958 as amended from time to time. The Copyright Act extends copyright protection to the following classes of works: (a) Original literary, dramatic, musical and artistic works (b) Cinematograph films, and c) Sound recording. The definition of literary work in the Act is an inclusive definition stating specifically that computer programmes, tables and compilations including computer databases are literary works. Artistic works include architecture but the copyright subsists only in the artistic character and design and not in the process or methods of construction. Copyright will not subsist in any design registered under the Designs Act or an article to which the design has been applied is reproduced more than fifty times by an industrial process.
There shall be no copyright in a cinematograph film if a substantial part of the film is an infringement of copyright in any work. Similarly, if a sound recording contains infringing work, then it will not have any copyright. The law makes it also clear that that the separate copyright in any work incorporated in a cinematograph film or sound recording is not affected by the copyright in the cinematograph film or the sound recording. The following rights accrue to the owners of copyright: reproduction, issuing of copies, communication to the public, translation, and adaptation.
Similar rights are also available for translations and adaptations. For computer programmes, sale and commercial rental rights have also been provided. In the case of original artistic works, the author is eligible for a share of the resale proceeds also. The Indian law also provides for special rights to claim authorship of the work and to restrain or claim damages in respect of any distortion, mutilation, modification or such other acts on the work. The duration of copyright in India is life plus sixty years.
However, in case of cinematograph films, sound recordings, photographs, government works, works of public under takings and international organisations, the term of copyright is sixty years. The Act permits certain acts without specific permission of the copyright owner. These include a fair dealing with a literary (not being a computer programme), dramatic, musical or artistic work for the purposes of private use including research, and criticism or review and also for reporting of current events. Such works can also be reproduced for judicial proceedings and by legislature secretariats for use by members of a legislature.
Reproduction of literary, dramatic, musical and artistic works is also permitted by a teacher or pupil in the course of instruction and examination. In the case of a computer programme, making of backup copies by the lawful possessor is permitted. Decompilation and reverse engineering are also permitted under certain circumstances. Performance of a literary dramatic, or musical work or the communication to the public of such work or a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the government is also permitted.
While copyright accrues without any formality, facility for voluntary registration is available. The registration is made by the Registrar of Copyrights. The registration certificate is prima facie evidence of copyright. There is a copyright Board to appeal against the decisions of the Registrar of Copyrights. A person can also relinquish his copyright with the Registrar of Copyrights. All acts which are the exclusive rights of the owner when done without his permission are infringements. Similarly, importing into India, exhibiting for sale, etc. f infringing copies of a work are also infringements. Civil and criminal procedures are available to the owners in cased of infringement of copyrights. Civil suits can be filed in the district courts of the place where the owner is ordinarily resident or where his business is. Damages and accounts can be claimed in civil suits. Indian courts have now started imposing punitive damages also. All acts of infringement are criminal offences. Mandatory minimum punishments of six months imprisonment and Rs. 0,000 fine for the first offence and double that which can go upto three years imprisonment and Rs. 200,000 fine are prescribed in the Act. Knowing use of an infringing copy of a computer programme is an offence. Police have powers to seize infringing copies of copyrighted works and the machinery and equipment used for such infringement without a warrant. The Indian Act also provides for compulsory licences in certain circumstances such as non-republication and non-permission for translation after certain number of years. For administering the copyrights, the Act provides for copyright societies.
There are separate societies for performing rights, sound recordings, cinematograph films and reprography rights. The Copyright Act has also provisions for extending copyright to foreign works. This is done through a special notification. At present citizens of all countries who are members of the Berne Union or the World Trade Organisation get copyright for their works in India. Related Rights Related Rights are also governed by the Copyright Act. The two categories of related rights provided are for broadcasters and performers. Broadcasters et the broadcast reproduction right which entails that no person shall re-broadcast or cause the broadcast to be heard or seen by the public on payment of any charges, make any sound or visual recording of the broadcast, or sells or rents to the public any recording without licence from the broadcaster concerned. These rights last for twenty-five years. Performers get performers’ right over their performance which means no one can make a sound or visual recording of his performance, or reproduce any such recording or broadcast such recording without the performer’s permission. This right lasts for fifty years.
Both broadcasters and performers rights extend to the importation of copies of sound or visual recordings made without permission. There are exceptions to the enjoyment of the related rights on the lines of exceptions for copyright. Civil and criminal remedies are available for infringement of the related rights, again on similar lines as for copyright infringement. Patents History of patent protection in India also goes back to the late nineteenth century. The first Patent Act was that of the year 1856. This law gave certain exclusive privileges to inventors for a period of 14 years. The Act was replaced by another Act in 1859.
This was patterned after the British Act of 1852. Later, the Protection of Inventions Act was passed in the year 1883. The Inventions and Designs Act of 1888 replaced all the existing Acts in these two areas. Subsequently the Patents and Designs Act of 1911 replaced all the previous Acts. This Act really established a system for proper administration of the Act by appointing Controller of Patents. Later the Patents Act 1970 was enacted on 20th April 1972. This Act was amended in 1999, 2002 and 2005 with a view to making it compatible with the provisions of the TRIPS Agreement and is now fully TRIPS compatible.
Prior to 2005 amendment, products in the field of pharmaceuticals and food items were not patentable. New Patent Rules were notified in 2003. Patents are available for all new inventions, both products and processes in all fields of technology which satisfy the patentability criteria, that is, novelty, inventiveness and industrial application. The Act defines invention as a new product or process involving an inventive step and capable of industrial application and further defines ‘new invention’ as “any invention or technology which has not been anticipated by publication in any document or sed in the country or elsewhere in the world before the date of filing of patent application with complete specification, i. e. , the subject matter has not fallen in public domain or that it does not form part of the state of the art. ” The Indian Act provides an elaborate list of what are not patentable inventions. These, inter alia, include frivolous inventions or inventions which claim anything obviously contrary to well established natural laws or which are meant primarily for use which could be contrary to public order or morality or which cause prejudice to human, animal or plant life or health or to the environment.
Mathematical or business methods or a computer programme per se is also not patentable. Methods of treatment of humans, animals or of agriculture or horticulture are also not patentable. Traditional knowledge, literary, dramatic, musical or artistic works, topographies of integrated circuits, presentation of information, a mere scheme or rule or method of performing mental act or method of playing games and plants and animals in whole or in any part thereof are certain other non-patentable items. However, microorganisms are patentable.
While submitting an application for patent, the applicant has to clearly indicate the source from which the biological material from India has been obtained and also that the necessary permission from the competent authority will be submitted. Such permission is to be obtained from the National Biodiversity Authority. A patent grants the exclusive right to the patentee to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing the patented product or process.
The Indian Patent Act makes it clear that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and not merely to enable the patentee to enjoy a monopoly for the importation of the patented article. With a view to keep a balance of the rights of owners and public interest, the Act also provides for compulsory licences in certain circumstances such as an epidemic or for government use. Provisions also exist for granting compulsory licence in cases of application from countries that do not have adequate manufacturing capacity.
However, so far no compulsory licence has been granted in India. Patent is granted on application to and after examination by the Patent Office. The application can be made by the true and first inventor of the invention or by any assignee or by the legal representative of any deceased person who was the true and first inventor or his assignee. As per the Act, the first person to apply gets the patent, if other conditions are satisfied. Provisional application can be made. However, in such case the complete application should be made within one year of the date of the provisional application.
Ordinarily, patent applications are published in the Patent Journal 18 months after receipt of the application. However, in case the applicant applies for early publication, it will be done. After publication, the applicant or any third party can request for examination of the same. Decisions of the Controller of Patents are appealable to the Intellectual Property Appellate Board. Pre-grant representation against grant of a patent can be made upto six months from the date of publication. Opposition can also be made after grant of a patent. The grounds for opposing a patent clearly enunciated in the Patents Act.
These mostly pertain to the patentability criteria and the non-patentable subject matter specified in the Act itself. The term of a patent is 20 years from the date of application or priority date, whichever is earlier, subject to annual renewal. In case of infringement of a patent right, civil action can be initiated by the patentee. Designs Industrial design protection in India can be traced back to the Patterns and Designs Protection Act, 1872. This was later incorporated in the Patents and Designs Act, 1888 which was later replaced by the Patents and Designs Act, 1911.
So far as designs were concerned, this law remained in force till 11th May 2001, when the Designs Act 2000, along with the Designs Rules 2001, was brought into force. As per the Design Act, protection is extended to all registered designs. The definition of design makes it clear that only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article by an industrial process or means, which in the finished article appeal to and are solely judged by eye are registrable. It does not include any mode or principle of construction or anything which is in substance a mere mechanical device.
Nor does it include trade marks or artistic works which are protected under copyright. Both two dimensional and three dimensional articles are protectable. In order to get registration, the design must be original or novel. Original includes designs which though old in themselves yet are new in their application. A design which has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the date of filing date or the priority date are not eligible for registration.
Similarly designs which is not significantly distinguishable from known designs or combination of known designs or which comprises or contains scandalous or obscene matter are also not eligible registration. A design may be registered in more than one class. Registration of design is to be done in the Design Office at Kolkata, but application can be submitted in any one of the Patent offices at Chennai, Delhi or Mumbai. Appeals against the decisions of the Controller of Designs are to be made in a High Court.
When a design is registered, the registered proprietor of the design gets copyright on that design for a period of ten years. The registration can be renewed once only for five years. Registration of a design makes it illegal for any person to apply or use the design on any article for sale or import of an article on which the design has been applied, without the licence of the registered proprietor. The penalty for piracy of design is payment of a sum not exceeding Rs. 25,000 to the registered proprietor and damages. Civil proceedings are to be instituted in a court not below that of a District Court.
Design copyrights can be assigned or licensed. Trade marks The history of trade mark protection in India can be traced back to the Indian Merchandise Marks, Act 1889. Like similar legislations in the field of intellectual property rights, this was based on a British statute, in this case, the U. K. Merchandise Marks Act, 1887. A proper trade mark law was introduced with the enactment of the Trade Marks Act, 1940. This was later repealed when the Trade and Merchandise Marks Act, 1958 was brought into force on 25th November 1959.
This Act consolidated the provisions of the 1889 Merchandise Marks Act and the 1940 Trade Marks Act. The present Act is the Trade marks Act 1999 which was enacted keeping in view the obligations under the TRIPS Agreement. This Act, along with the Trade Marks Rules, 2002, was brought into force from 15 September 2003. As per the Trade Marks Act, for registration, a trade mark should be capable of being represented graphically and also of distinguishing the goods and services of one person from those of others and may include shape of goods, their packaging and ombination of colours. The Act provides for registration of certification trade marks and collective trade marks. Registration can be made in any one or more classes prescribed in the Rules. India follows the Nice classification of goods and services. India also recognises the concept of well known trade marks. A Trade Marks Registry with headquarters at Mumbai with branches at Kolkata, Delhi, Chennai and Ahmedabad exists for registration of trade marks.
Application is to be submitted at the appropriate office depending on which part of the country the registered office of the applicant is situated. Marks which are devoid of any distinctive character or which may serve to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services, or which have become customary in the current language or in the bona fide and established practices of the trade will be refused registration.
Further, marks which are of such nature as to deceive the public or cause confusion, or which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India, or which comprises or contains scandalous or obscene matter or which are national emblems or names will also not be registered. In addition a mark consisting exclusively of shape of goods which results from the nature of the goods themselves or the shape of goods which is necessary to obtain technical result or the shape which gives substantial value to the goods will also be refused registration.
The registration is done after due examination and comparison with existing registered trade marks and after publication. Aggrieved persons can represent to the Registrar of Trade Marks before registration. The decisions of the Registrar of Trade Marks are appealable to the Intellectual Property appellate Board. Registration of a trade mark is valid for ten years, but it can be renewed from time to time. Registration gives the exclusive right to use that trade mark on the specific classes of goods or services to the registered proprietor.
Use of a registered trade mark by an unauthorised person is infringement of the rights in that trade mark. Civil and criminal remedies akin to those of copyrights are available to the owners of the trade mark. In the case of trade mark, prior use claim is recognised by the Indian law. However, in the case of an unregistered trade mark, the court action will be for passing off the goodwill under the common law of torts. Geographical Indications India enacted a sui generis legislation for the protection of geographical indications through a registration process in fulfilment of its obligations under the TRIPS Agreement.
The Geographical Indications of Goods (Registration and Protection) Act, 1999, along with the Geographical Indications of Goods (Registration and Protection) Rules, 2002, was brought into force on 15th September 2003. The Act provides for registration of geographical indication of agricultural, natural or manufactured goods which identifies such goods as originating or manufactured in the territory of a country or a region or locality in that territory, where a given quality, reputation or other characteristic of such goods is essentially attributable to its geographical origin.
Through an explanation, the Act clarifies that any name which is not the name of country, region or locality of that country shall also be considered as the geographical indication if it relates to a specific geographical area and is used upon or in relation to particular goods originating from that country region or locality , as the case may be. The application for registration of a geographical indication is to be made to the Registrar of Geographical Indication.
Any association or persons or producers or any organisation or authority established by or under any law for the time being in force representing the interests of the producers of the goods concerned, can apply for registration. The application will be examined, if necessary in consultation with a consultation group consisting of experts, and the accepted applications are advertised in the Geographical Indications Journal inviting objections if any. Opposition has to be filed within three months. The objections will be examined through a quasi judicial process and depending on the outcome, a geographical indication is registered or not.
Decisions of the Registrar of Geographical Indication are appealable to the Intellectual Property Appellate Board. The registration of a geographical indication is for a period of ten years but is renewable from to time without any limit. The Act also provides for registration of the authorised users of the goods in question. These registrations are also for ten year periods. Registration confers on the authorised user the exclusive right to the use of the geographical indication in relation to the goods in respect of which the geographical indication is registered.
Any unauthorised use is an infringement. No infringement action can be taken against an unregistered geographical indication. The registered proprietor and authorised user can initiate the action for getting relief against infringement . The Government can notify the goods which are entitled for higher level of protection as per the TRIPS Agreement. Civil and criminal remedies, on the lines of such remedies for trade mark infringement are available for geographical indication infringements. Geographical Indication rights are not assignable.
However, legal heirs, who produce or manufacture the goods in question as per the requirements, can inherit the rights. Semiconductor Integrated Circuits Layout-Designs The Semiconductor Integrated Circuits Layout-Design Act, 2000 was enacted by India in pursuance of its obligations under the TRIPS Agreement. The Act, along with, the Semiconductor Integrated Circuits Layout-Design Rules 2001 was brought into force partially on 1st May 2004. The Act provides for registration of layout designs of semiconductor integrated circuits.
A layout-design which is not original or which has been commercially exploited anywhere in India or in a convention country, or which is not inherently distinctive or which is not inherently capable of being distinguishable from any other registered layout-design will not be registered. Any person claiming to be the creator of a layout-design can apply to the Registrar of Layout-Designs for registration. Accepted applications will be advertised and any person can file opposition to the registration within three months of the advertisement.
Thereafter, after due quasi judicial proceedings only the application is registered. Decisions of the Registrar of Layout—Design are appealable to the Layout-Design Appellate Board. Registration of a layout-design is valid for ten years from the date of filing or from the date of first commercial exploitation anywhere in any country whichever is earlier. The Act also provides for registration of authorised users. However, the authorised users do not have the right of assignment but only of use of the layout=design.
Registration grants to the registered proprietor the exclusive right to the use of the layout-design and to obtain relief in respect of infringement. Infringement of layout-design occurs when any person not being the registered proprietor or a registered user thereof, does any act of reproducing, whether by incorporating in a semiconductor integrated circuit or otherwise, a registered design in its entirety or any part thereof. Infringements of the rights of a registered proprietor or authorised user are infringements which are punishable offences.
The quantum of penalties and punishments are similar to those of trade marks. Protection of Plant Varieties In order to provide for the establishment of an effective system for protection of plant varieties, the rights of farmers and plant breeders and to encourage the development of new varieties of plants, the Protection of Plant Varieties and Farmers’ Rights Act,2001 was enacted. The Act provides for registration of any new variety of plant which is novel, distinctive, uniform and stable. Extant varieties can also be registered subject to certain conditions.
Applications for registration can be made by plant breeders or their assignees. Registration confers an exclusive right on the breeder or his successor, his agent or licensee, to produce, sell, market, distribute, import or export the variety. However, researchers are free to use the variety for conducting experiment or research. Any person is also free to use the variety as an initial source of variety for the purpose of creating other varieties. A farmer who has bred or developed a new variety is also entitled for registration and other protection in like manner as a breeder of a variety under the Act.
Registration of a new plant variety is valid for eighteen years from the date of registration in case of trees and vines and for fifteen years in other cases. Registration of an extant variety is valid for fifteen years only. Civil suit can be filed against infringers of the rights conferred by registration in district courts. Courts can grant relief such as injunction and at the option of the plaintiff, either damages or a share of the profits. False application of the denomination of a registered variety is an offence.
First time such offences are punishable with imprisonment for a term which shall not be less than three months but which may extend to two years, or with fine which shall not be less than Rs. 50,000 but which may extend to Rs. 500,000. A person who has already been convicted of an offence under the Act is punishable for second and for every subsequent offence with imprisonment for a term which shall not be less than one year but which may extend to three years or with fine which shall not be less than Rs. 00,000 but which may extend to Rs. 2,000,000. Protection of Biological Diversity and Associated Traditional Knowledge In pursuance to the United Nations Convention on Biological Diversity, 1992, India enacted the Biological Diversity Act, 2002 with the objective of conservation of biological diversity, sustainable use of its components and fair and equitable sharing of the benefits arising out of the utilisation of genetic resources. The Act, along with the Biological Diversity Rules, 2004, was brought into force fully on 1st July 2004.
The Act contains detailed procedures and guidelines for accessing biological diversity and associated traditional knowledge occurring in India, including about Prior Informed Consent for Access and Fair and Equitable Benefit Sharing Agreements. The Act provides for prior approval of the National Biodiversity Authority for making any application for any intellectual property right, in or outside India, for any invention based on any research or information on a biological resource obtained from India.
The National Biodiversity Authority may, while granting the approval, impose benefit sharing fee or royalty or both or impose conditions including the sharing of financial benefits arising out of the commercial utilisation of such rights. Further, all foreign nationals, non-resident Indians and firms, associations and organisations with non-Indian participation require approval of the National Biological Diversity Board for accessing biological resources or knowledge associated thereto for research or for commercial utilisation.
For transfer of biological resource and associated knowledge also prior permission of the National Biodiversity Authority is required. The benefit sharing arrangements, inter alia, include grant of joint ownership of the intellectual property rights to the National Biodiversity Authority, or where benefit claimers are identified, to such benefit claimers. Intellectual Property Administration In India, the intellectual property laws are administered by different Departments of the Central Government. The table below presents the departments which handle various intellectual property laws. Law| Department|
Copyright Act| Higher Education| Patents Act| Industrial Policy ; Promotion| Designs Act| Industrial Policy ; Promotion| Trade Marks Act| Industrial Policy ; Promotion| Geographical Indications of Goods (Registration and Protection) Act| Industrial Policy ; Promotion| Semiconductor Integrated circuits Layout-Design Act| Information Technology| Protection of Plant Varieties and Farmers’ Rights Act| Agriculture and Cooperation| Biological Diversity Act| Environment and Forests| Consequently, the administrative set ups for the different Intellectual Property laws are also different.
The Copyright Act is administered by the Copyright Registry at New Delhi. It is headed by the Registrar of Copyrights who is assisted by Deputy Registrars of Copyrights. A copyright Board exists for hearing appeals against the decisions of the Registrar of Copyright. The Patents Act, Designs Act, Trade Marks Act and the Geographical Indications of Goods (Registration and Protection) Act are administered by the Controller General of Patents, Designs and Trade Marks (CGPDTM), Mumbai. Under the Controller General are the Patents Office, the Design Wing, the Trade Marks Registry and the Geographical Indications Registry.
The headquarters of the Patent Office is at Kolkata and there are branch offices at Chennai, New Delhi and Mumbai. The headquarters of the Trade Marks Registry is at Mumbai. It has branch offices at Ahmedabad, Chennai, Kolkata and New Delhi. The Design Wing of the Patent Office is at Kolkata. The Geographical Indications Registry is at Chennai. The Controller General is assisted by different levels of Controllers of Patents and Designs and Examiners in the patents and designs office and different levels of Registrars and Examiners in the trade mark and geographical indications registries.
The Intellectual Property Appellate Board hears the appeals against the decisions of the Controller General of Patents, Designs and Trade Marks. The Protection of Plant Varieties and Farmers’ Rights Act is administered by the Plant Varieties and Farmers’ Rights Authority headed by a Chairperson and consisting of fifteen Members. A Plant Varieties Registry headed by a Registrar General of Plant Varieties has been set up under the Authority to register the plant varieties. Decisions of the Authority or the Registrar can be appealed to the Plant Varieties Protection Appellate Tribunal.
The Registrar of Semiconductor Integrated Circuits layout-Design administers the Semiconductor Integrated Circuits Layout-Design Act. Appeals against the decisions of the Registrar can be preferred at the Layout-Design Appellate Board. The National Biodiversity Authority in Chennai administers the Biological Diversity Act and Rules. Under the Authority, State Biodiversity Boards and at local body level Biodiversity Management Committees exist. Membership of International Treaties and Conventions on Intellectual Property India is a member of all major international treaties and Conventions on Intellectual Property.
These include the Berne Convention for the Protection of Literary and Artistic Works, the Paris Convention for the Protection of Industrial Property, Agreement on Trade Related Aspects of Intellectual Property, Convention on Biological Diversity, Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, Nairobi Treaty on the Protection of the Olympic Symbol, Patent Cooperation Treaty, Phonograms Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms, WIPO Convention and Universal Copyright Convention. ——————————————- [ 2 ]. Section 3(l) of the Patents Act, 1970.