Transcript introduction to intellectual property rights

INTRODUCTION TO
INTELLECTUAL PROPERTY
RIGHTS
at
Pharmexcil, Mumbai
22nd June, 2012
by
Dr. Gopakumar G. Nair
Advisor to Pharmexcil, India
Gopakumar Nair Associates
Url: www.gnaipr.net
Email: [email protected]
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IP Evolution
Property  Right
INTELLECT – PROPERTY – RIGHT
Idea  Expression  COPYRIGHT
Idea  Innovation  Invention  PATENT
Idea  Quality + Identity  TRADEMARK
Idea  Appearance  DESIGN
Idea  Keep Confidential
 TRADE SECRETS
No Disclosure
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What is Intellectual Property?
Definition by WIPO
Intellectual property (IP) refers to
creations
inventions,
literary
the
and
works,
and
symbols,
images,
and
designs
commerce.
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of
mind:
artistic
names,
used
in
Creativity (Creation Of The Mind)
Creativity is the ability to
– Think / come up with new idea
– Design new “inventions”
– Produce “works of art”
– Solve problems in new ways, or
develop a new idea based on an
“original” knowledge.
– Novel or unconventional approach.
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Think Away
From The
Box
Generate Ideas…..
And Own Them…..IPR !
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IP Portfolio
Novel &
Inventive
Patent US7395821
Brand Name
Copyright
Trademark
Multi-Haler™
Package Insert/
Information Leaflet
Trade Secret
Know-how
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External
Appearance
Confidential Informn
&
Undisclosed Tech
Design
No. 211208
Product Patents In India
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TRIPS
The TRIPS (Trade Related Aspects
of Intellectual Property Rights)
Agreement came into being with
the establishment of the WTO
(World
Trade
Organization)
effective from 1st January, 1995.
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WIPO
• UN organization dedicated to
promoting the use and protection of
works of the human spirit.
• Headquarters in Geneva, Switzerland.
• 185 nations as member states.
• Manages all IPs.
• Training through Academy and
Seminars
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TRIPS – Article 27
Patentable Subject Matter
1. Subject to the provisions of paragraphs 2 and 3, patents shall
be available for any inventions, whether products or processes,
in all fields of technology, provided that they are new, involve
an inventive step and are capable of industrial application.
[1] Subject to paragraph 4 of Article 65, paragraph 8 of
Article 70 and paragraph 3 of this Article, patents shall be
available and patent rights enjoyable without discrimination as
to the place of invention, the field of technology and whether
products are imported or locally produced.
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2. Members may exclude from patentability inventions, the
prevention within their territory of the commercial exploitation
of which is necessary to protect ordre public or morality,
including to protect human, animal or plant life or health or to
avoid serious prejudice to the environment, provided that such
exclusion is not made merely because the exploitation is
prohibited by their law.
TRIPS – Article 27
Patentable Subject Matter
3. Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment
of humans or animals;
(b) plants and animals other than micro-organisms, and
essentially biological processes for the production of plants or
animals other than non-biological and microbiological
processes. However, Members shall provide for the protection
of plant varieties either by patents or by an effective
sui generis system or by any combination thereof. The
provisions of this subparagraph shall be reviewed four years
after the date of entry into force of the WTO Agreement.
[1] For the purposes of this Article, the terms "inventive step"
and "capable of industrial application" may be deemed by a
Member to be synonymous with the terms "non-obvious" and
"useful" respectively.
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What is a Patent ?
A patent is a protection given to a patentee
for an invention for a limited term by the
government for disclosing the invention
Right to exclude others from using your
invention.
Owner has a qualified right to use the
invention.
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What is a Patent?
 A Conditional grant
 Balance of Rights and Obligations
 Subject to other laws of land
 Granted to owner of invention/
assignee
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Three Statutory Pillars of
PATENTABILITY
1. Novelty (new)
2. Inventive Step (non-obvious) (Sec 2(1)(ja))
3. Industrial Applicability (utility) (Sec 2(1)(ac))
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Patent - Patentability
An invention can be patented if it is
• NOVEL: Must be New,
Must DISTINGUISH from “State of the Art”
(PRIOR ART)
• Must have INVENTIVE STEP
Non-obvious to a person “Skilled in the Art”
• Must have INDUSTRIAL APPLICATION
Must be Useful
Must have Utility
• Must not be covered by Sec. 3 and Sec. 4.
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Non-Obvious
THE DIFFERENCES BETWEEN THE
CLAIMED INVENTION and the PRIOR
ART are such that the subject matter as a
whole WOULD NOT HAVE BEEN
OBVIOUS at the time the invention was
made to a PERSON SKILLED IN THE ART,
to which the subject matter pertains.
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Inventive Step
Section 2(1)(ja):
"inventive step" means a feature of
an invention that involves technical
advance as compared to the existing
knowledge
significance
or
or
having
both
economic
and
that
makes the invention not obvious to
a person skilled in the art.
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Utility / Industrial Application
• Be Useful
• Must work / be workable
• At least one recognized,
verifiable and practical end-use
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Patentability Filter
 Prior use/ prior publication/ prior disclosure
 Industrial applicability
 Novelty
 Non-obviousness: inventiveness
 Sec. 3 - Not patentable
 Written description / enablement
requirements
 Application/ specification/ claims
 Patent prosecution
 Maintenance / Defense after grant
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Patents Act, 1970
What is not Patentable
(a) Frivolous, Contrary To Natural Laws
(b) Contrary To Public Order Or Morality,
Prejudice To Human, Animal Or Plant
Life Or Health Or To The Environment;
(c) Mere Discovery Of Scientific Principle,
Abstract Theory, Living Thing Or Nonliving Substances
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(d) Mere Discovery Of New Form, New
Property, New Use Of A Known
Process, Machine Or Apparatus
(EFFICACY)
Patents Act, 1970
What is not Patentable
(e) Mere Admixture (SYNERGY)
(f) Mere Arrangement, Re-arrangement,
Duplication of known devices.
(g) Omitted (Testing Methods)
(h) Method Of Agriculture Or Horticulture;
(i) Method Of Treatment.
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(j) Plants, Animals, Including Seeds
Varieties, Species, Biological
Processes.
Exception: Microorganisms
Patents Act, 1970
What is not Patentable
(k) Mathematical Or Business Method Or A
Computer Program Per Se Or
Algorithms;
(l) Literary, Dramatic, Musical Or Artistic
Work, Other Aesthetic Work
(m) Mere Scheme, Rule, Method Of
Performing Mental Act, Playing Game;
(n) A Presentation Of Information;
(o) Topography Of Integrated Circuits;
(p) Traditional Knowledge
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Trademarks
Word Mark
Device Marks
(Signs, Symbols, Logos)
Collective Marks
Certification Marks
Service Marks
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Trademarks
 Must be graphically represented
 Must be distinctive / distinguishable
 Must not be descriptive
 Must not be deceptively similar to
known /well-known marks /Generics
• ORS: ORS-L, ORZ
• Cefixime – ZIFI, CEFI, Cefixin
Avoid –
Geographical Indications / Deities
National Leaders / Heroes / Symbols /
Laudatory words
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Notification
dated 14th February, 2012
issued by CGPDTM regarding
Publication of list of
International Non Proprietary
Names declared by the WHO
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Copyrights & Related Rights
Copyright
is
a
legal
term describing rights
given to creators for
their
literary
artistic works.
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and
Copyright - Extension
IT Revolution !
Recordings
Broadcastings
Audio visual works
Computer programs
Digital databases
Internet/web
Cable and Satellite T.V.
Indian Copyright Amendment Bill
Passed by Rajya Sabha on 17th May, 2012
Passed by Lok Sabha on 22nd May, 2012
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IPR And Copyright
Quoting Medical References from Journals and Books
“Copyright” / “All rights reserved”
“Do not use, reprint, reproduce or distribute without prior permission”
 Avoid verbatim reproduction (Plagiarism) -
Likely to cause Copyright violations.
 Always acknowledge / obtain prior permission.
 Abstract / Summary may be written in one’s
own language / quote the source.
Copyright violations could lead to criminal/civil suits
Could lead to imprisonment too !
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Therapeutic Goods Legislation
Amendment (Copyright), 2011
Australia
To block frivolous
Copyright
infringement suits in
Pharma / Medicine
product inserts.
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Be Aware / Beware of the Web /
Domain in the new global regime.
× Use of internet for selling / marketing
× Downloading from Internet (except for
personal use)
MUST ALWAYS HONOUR IPRs
(Copyrights, Patents, Trademarks etc.)
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G.I.
(Geographical Indications)
Name or sign used on
goods originating from
specific geographical origin
or location and possess
qualities, reputation or
characteristics that are
essentially attributable to
that place of origin.
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Geographical Indication
India, as a member of the World Trade Organization
(WTO), enacted the Geographical Indications of Goods
(Registration & Protection) Act, 1999 has come into
force with effect from 15th September 2003.
 Geographical Indications of Goods
(Registration & Protection) Act, 1999
 Geographical Indications of Goods
(Registration & Protection) Rules, 2002
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Industrial Designs
 Ornamental or Aesthetic aspect of
an article.
 3-D or 2-D features such as shape or
surface, patterns, lines or color.
 Industrial designs are applied to
products of industry and handicraft,
technical and medical instruments,
watches, jewelry, house wares,
electrical appliances, luxury items,
vehicles, architectural structures,
textile designs.
 Does not protect any technical
features of the article to which it is
applied to.
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Khale Sangeeta
Designs
 Indian Designs Act, 2000 & Rule, 2001
(amended upto 2008).
 To promote and protect the design element of
industrial production.
 Aimed to enact a detailed classification of
design to conform to the international system
and
 To take care of the proliferation of design
related activities in various fields.
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