Module 2

MODULE 2

REGULATION OF VARIOUS TYPES OF INTELLECTUAL
PROPERTY

Intellectual Property (IP) as a subject is getting complex in the world in
which we live. IP is the biggest asset class on the planet in terms of value,
estimated to be at least US $5.5 trillion in the United States alone. IP has
transformed from a sleepy area of law and business to one of the driving
engines of a high technology economy. Companies that do not protect
their vital IP assets in the future would one day realize that their
competitors own all their inventions and other forms of IP.

The main reason for having IP rights is to secure a monopoly or a near
monopoly position in the market in which an organization operates. The
method for achieving this depends on the legislative environment and, in
respect of certain forms of IP, whether registration is required or not. This,
however, is not always the most effective or convenient means of
protecting IP if the enterprise wishes to commercialize its product and
derive benefit to the fullest extent possible. Enterprises as well as
individuals should have a robust IP strategy in place in order to generate
maximum financial benefits and also to protect the same from their
competitors.

Protection of IP necessarily involves educating the staff of the enterprise
about the principles of IP and the risks of failing to adequately protect it.
This aspect is probably one area in which Indian enterprises fail either to
implement at all or implement inadequately. Staff are generally trained
about locking away files or keeping a ‘clean desk’. Far fewer are educated
about identifying IP and how to maintain records to enable its protection.

2.1 PATENTS

2.1.1 What is a patent?

A patent is a right granted to an individual who has invented something.
Inventions are characteristically protected by patents.1 The patent system
provides a framework for innovation and technological development by,
on the one hand, granting an exclusive right to the owner of a patent to
exploit an invention for a limited period2 and, on the other hand, balancing
this right with a corresponding duty to disclose the information concerning
the patented invention to the public. This information, which is classified
and stored in the patent documentation, is available to anyone and,
increasingly, is accessible through online, Internet-based systems.3 The
mandatory disclosure of the invention thus enriches the available pool of

1 Virtually every country that accords legal protection to inventions – and there are more than 155 such
countries – gives such protection through the patent system. In addition, inventions may also be protected by
other types of rights, such as utility models or trade secrets. The international protection conferred by a patent is
recognized in two multilateral treaties: the Paris Convention for the Protection of Industrial Property (the Paris
Convention), to which 156 States are party, and the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), by which 135 States are bound.
2 The exclusive right to exploit an invention is generally granted for a period of 15 to 20 years from the
date of filing a patent application. See Article 33 of the TRIPS Agreement.
3 A number of offices provide patent information on Internet: for example, the United States Patents and
Trademarks Office (http://www.uspto.gov), Japanese Patent Office (http://www.jpo-miti.go.jp), European Patent
Office (http://www.european-patent-office.org), Canadian Intellectual Property Office (http://cipo.gc.ca) and
Industrial Property Information Center in Thailand (http://www.ipic.moc.go.th). For a discussion of WIPO’s
plans to make public international patent data available online, see Chapter V (WIPOnet). See also the list of
national intellectual property offices (with corresponding Internet addresses) in Annex III.

technological knowledge, facilitates technology transfer, and enhances the
opportunities for creativity and innovation by others.4

The patent system has played a vital role in promoting the development of
the underlying technical infrastructure for electronic commerce.
Electronic commerce relies in a critical way on the various computer and
network technologies, both hardware and software. The market
exclusivity established through effective patent protection has provided a
reward for investment and has justified the expenditures on research and
development to achieve further technological progress. However, the new
technologies pose challenges to the conventional legal scheme for the
patent system. This section addresses several of the new issues associated
with digital media and electronic commerce in the context of patent
protection.

2.1.2 Patentable Subject Matter

In order to be eligible for patent protection, an invention must fall within
the scope of patentable subject matter. Article 27.1 of the TRIPS
Agreement provides that, subject to certain exceptions or conditions under
that Agreement, 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.
While limited exceptions are possible under the TRIPS Agreement – and
provided for in some national laws – the general rule is that patent

4 The patent system thus encourages the dissemination and transfer of technological knowledge by
granting a fixed-term, market exclusivity to an inventor in return for the clear and complete disclosure of the
invention. See TRIPS Agreement, Article 29.

protection for an invention will not be refused simply because of its field

of technology.

Patents have recently been granted to certain inventions concerning

financial services, electronic sales and advertising methods, business

methods, including business methods consisting of processes to be

performed on the Internet, and telephone exchange and billing methods.5

It is expected that the number of these eCommerce-type patents may

increase significantly, bearing in mind the significant potential of

electronic commerce to individuals, companies and national economies, as

well as to the global economy. Such patents are viewed as important for

creating incentives and spurring investment in new technologies. On the

other hand, this trend has been criticized by those who would stress that a

number of such patents concerning business practices and methods reflect

familiar ways of doing business which are not new or novel: the only

aspect that is different is that they occur in cyberspace.6 In Europe there is

5 A recent decision in the United States, for example, found a business method to be patentable subject
matter. State Street Bank & Trust v. Signature Financial Group, 47 USPQ 2d 1596 (CAFC 1998) (the decision
upheld a patent for a particular business model for managing an investment portfolio). See also AT&T Corp. v.
Excel Communications, Inc., No. 98-1338, 1999, WL 216234, __ F.3d __ (Fed. Cir. Apr. 14, 1999) (“[the focus
in determining whether an invention containing a computer algorithm recites patentable subject matter is] not on
whether there is a mathematical algorithm at work, but on whether the algorithm-containing invention, as a
whole, produces a tangible, useful, result”).
6 See, e.g., “Are Patents Good or Bad for Business On-Line,” The New York Times, Technology Law
Journal (August 28, 1998). Because the phenomena of cyberspace and electronic commerce are so new and still
emerging, it is argued that gauging the novelty of a business model in this area and whether it meets the
requirements of patentability is not easy. It is also contended that competition may be harmed in the digital
marketplace if companies are able to obtain patents for basic business methods that already exist in non-
cyberspace. On the other hand, others indicate that patent protection is merited given the technological
innovation reflected in such new business models and that this protection is needed in order to provide incentive
for further investment in new on-line businesses. A lawsuit filed in October 1999, in which Amazon.com, the
Internet bookseller, has sued its rival, Barnesandnoble.com, illustrates the stakes involved. Amazon.com, in
September 1997, started using a “one-click” technology to enable its online customers to make repeated
purchases from its web site without having to repeatedly fill out credit card and billing address information. It
received a patent for its one-click technology in September 1999 (United States Patent no. 5,960,411), and
alleged that Barnesandnoble.com’s one-click checkout system, known as “Express Lane,” infringes its patent.
See “Barnesandnoble.com faces suit by Amazon Over Patent,” New York Times: Technology (October 23,
1999), at http://www.nytimes.com/library/tech99/10/biztecharticles/23amazon.html. Recently, in what some
have considered to be a public relations move, Jeff Bezos, the Chairman of Amazon, has urged reform in the

a view that the subject matter of a patentable “invention” shall have a

“technical character” or involve “technical teaching,” i.e., an instruction
addressed to a person skilled in the art as to how to solve a particular
technical problem using particular technical means.7

A similar discussion concerning patentable subject matter has occurred in

respect of software patents, as the significance of software itself extends

well beyond the software industry. The TRIPS Agreement does not allow
the exclusion of software in general from patentability.8 In a recent

Communication from the European Commission, it was stated that the law

on patentability of computer programs in the United States of America has
had a positive impact on the development of the software industry there.9

In this context, the Commission proposed a draft Directive to harmonize
the conditions for the patentability of inventions related to computer

programs. Although some patent offices have established examination

guidelines for computer-related inventions, including software-related

inventions, very little international harmonization has been achieved in
this area.10

patent system to reduce the term of patent protection. “Chairman of Amazon Urges Reduction of Patent
Terms,” New York Times Technology section (March 11, 2000). The United States Patent and Trademark
Office has developed an action plan to respond to the new issues concerning business method patents. See
http://www.uspto.gov/web/offices/com/sol/actionplan.html.
7 See, e.g., Guidelines for Examination in the European Patent Office, Part C, Chapter IV, 1. General.
8 Article 27(1) of the TRIPS Agreement requires that patents be available “in all fields of technology,
provided that they are new, involve an inventive step and are capable of industrial application.” This broad
requirement of patentability has prompted a discussion on the subject of where to draw the line between
copyright and patent law protection for computer programs. See e.g., “The Relative Roles of Patent and
Copyright in the Protection of Computer Programs,” 17 J. Marshall J. Computer & Info. L. 41 (Fall 1998).
9 Communication of the European Commission to the European Council, the European Parliament and
the Economic and Social Committee, February 5, 1999 COM (1999) 42.
10 In 1996, the United States Patent and Trademark Office issued its Examination Guidelines for
Computer-Related Inventions, 61 Fed. Reg. 7478 (1996), which indicate that if the practical use of an abstract
idea is patentable, subject to the denial of protection for scientific principle, then its disembodied instruction
(expressed on a tangible media) is patentable, because patents provide control over the making of an invention
and functionally descriptive computer instruction serves that purpose. The Japanese Patent Office published, in

2.1.3 Patent Application – Key Questions to be Asked by the
Entrepreneur

2.1.3.1 Has The Inventor Kept “The Idea” Confidential?

An idea for the purposes of this chapter would mean an invention, which is
new and original.

Disclosure to others under a confidentiality agreement is broadly no bar to
patenting. if the inventor has described “the ideas” in print or verbally or
shown it at an exhibition, then patent protection cannot cover what was
disclosed. However, there may be a commercial value in filing an
application so that the marking “patent applied for” can be used.

“Patent applied for” means that the applicant (who files the patent
application) shall have the like privileges and rights as if a patent for the
invention had been granted on the date of publication of application.

2.1.3.2 Is “The Idea” a New Product (A Tangible Object); A New
Material (E.G. A New Plastic); A New Process For Making Something
(E.G. A Cheaper Way)?

• If so, it may be patentable.

• If the idea is a business plan, or an aesthetic creation, or a way of
presenting information, it is not patentable.

1997, the Implementing Guidelines for Inventions in Specific Fields, Chapter 1 of which contains examination
guidelines for computer software related inventions.

• If the idea is a computer program and it is a fundamentally new
concept, it may be patentable under special or exceptional
circumstances. Software is protected by Copyright under the
Copyright act 1957 and may also be protected by confidentiality.

2.1.3.3 Is “The Idea” a Variation in a Product or Material or
Process?

If so, it is still likely to be patentable; most patents protect improvements
of previous inventions. This has been provided under the Patents Act
section 54 read with section 3(f).

2.1.3.4 Is There a Written Description of “The Idea"?

This will be needed so as to prepare a Patent Application. A working
model is not necessary, but it is advisable that application should contain
more technical information along with sketches or drawings so as to make
the application more explanatory and understandable.

2.1.3.5 Who Generated “the idea?”

If an employee makes an invention, the rights often belong to the
employer. This principle has been derived from two landmark English
court cases. They are: Worthington Pumping Engine Co. v. Moore (1903)
20 RPC 41. And Triplex Safety Glass Co. Ltd. v. Scorah, (1938) Ch. 211.

It is also important to note that the inventor is always named as such, even
if it is the company/enterprise which applies for the Patent

2.1.4 Types of Patents

Patents are of various forms and at times it becomes really confusing and
difficult to know which Patent should be applied and which one should not
be applied. A standard patent may be either provisional or complete. An
application for a provisional patent is a method to ‘hold the line’ until the
applicant is better prepared to proceed with a complete application. A
grant of a standard patent in response to a complete application will
bestow the full patent rights on the grantee/inventor.

The second form of patent is an ‘innovation patent’. Innovation patent is a
‘lower form’ of patent protection as compared to a ‘standard patent’. If an
individual files for an innovation patent, he does not get the benefits of a
thorough analysis and examination by the Patents office prior to the grant
of the patent. He would get these benefits if he files a standard patent
protection. There are certain different tests which the Patents Office
applies on an innovation patent. The extent of an innovation patent
protection is also limited. The reason for this is because an enterprise can
apply for a maximum of five claims whereas with a standard patent an
enterprise can make as many claims as it wants. Claim here means the
description of the unique functionality embedded in the invention.

PATENTS

Standard Innovation
Patent Patent

Provisional Complete

It gets even murkier when your IP advisers refer to other forms of patent
applications. A ‘divisional application’ is essentially a child of an
application for either an existing standard or an innovation patent. One of
the basic principles for the examination of patent applications is that an
application must deal with only one invention. A divisional application is
usually used to cover an invention which has been rejected by an examiner
on the grounds that the main patent application (sometimes known as the
‘parent application’) deals with more than one invention.

The enterprise may also choose to apply for a ‘patent of addition’. ‘Patent
of addition’ is designed to enable additions to be made to an existing
patent in order to pick up single improvements or modifications of the
earlier patent. This is a cost-effective way to ensure protection for
improvements, although the duration of that protection is limited to the
same period that applies to the parent application.

2.1.5 Ownership of a Patent

The right to apply for a patent lies with the inventor or a person who has
derived title from the inventor. The inventor may well be an employee. If
this is so then the general principles of employment law will apply to
determine whether the employer actually owns the right to apply for the
patent or the employee. This involves looking at the entire relationship
between the employer and the employee to determine the nature and extent
of the duties of the employee and whether they encompass the task of
invention.

Sometimes it is not always clear as to who is the true inventor? The
principle for determining this has been set out in the case of Row Weeder
Pty Ltd. v. Nielsen (1997) 39 IPR 400 where the court held:

“A person has entitlement to an invention if that person’s contribution,
either solely or jointly with others, had a material effect on the final
concept of the invention. A secondary issue is whether that person’s
contribution involved a key inventive step.”

To identify the inventor is a fundamental and an important step in
commercialising inventions. The process to identify the inventor would
generally involve the entrepreneur, with the assistance of IP advisers,
getting as much information as possible about the contributions by various
persons involved in the project that resulted in the innovation.

The rules as to ownership have a range of other factors. There can be joint
owners of a patent who, without any other agreement to the contrary, will

own the patent as ‘tenants in common’ and share equally in the proceeds
of exploitation. Co-ownership as enshrined in Section 50 of the Patents
Act presents added complexities to the commercialisation of IP. Under
Indian law a co-owner is able to exercise the patent rights itself, without
seeking the consent of another co-owner, such as selling the patented
product or manufacturing it. However, a co-owner cannot bestow the
monopoly rights to a third party, such as through assignment or licence,
without the consent of that co-owner. But it is unclear as to whether a co-
owner can enforce a patent without the consent of another co-owner.

The implications for commercialisation are obvious. A disgruntled co-
owner can apply effective guerrilla tactics on the enterprise’s
commercialisation strategy and can have significant bargaining power
even though his inputs to the invention and the commercialisation may
have been minimal. In these circumstances the best approach is to secure
full ownership. If that is not possible the next best step is to secure as
many rights from the co-owner as early as possible when the bargaining
power of the disgruntled co-owner is at its minimum. The closer that the
project gets to successful commercialisation the greater degree of power
will be able to be exercised by the disgruntled co-owner.

2.1.6 Time Duration for Protection of a Patent

The time period of protection depends on the type of patent. It is also
complicated by the recent amendments to the Patents Act 1970 which
extend the period of protection for a standard patent from 15 years to 20
years, depending on when the grant of patent was made or when the
application was lodged. In essence, if an application for a standard patent

were to be accepted and granted today, the invention would be protected
for a period of 20 years from the date of lodgement of the application as
enshrined under Section 53 of the Act.

2.1.7 Monopoly Rights to the Owner

Given all of the effort and complexity involved in obtaining a patent it
would be reasonable to think that the Patents Act would set out a long list
of rights to the owner of the patent. In fact the statement is short and brief.
The owner of a patent has the exclusive right, during the term of the
patent, to exploit the invention and to authorise another person to exploit
the invention. The magic here is that the word ‘exploit’ has a broad
meaning. It covers hiring, selling, licensing, importing and using a process
to do any of those things.

2.1.8 Disclosure to the Patents Office

An important element in obtaining a patent is disclosing the invention to
the Patents Office, and eventually to the world at large. This is the trade
off for receiving the monopoly rights. From a commercialisation
perspective it presents the entrepreneur with a fundamental decision. Does
the entrepreneur apply for protection knowing that the invention will be
disclosed to its competitors or should the entrepreneur endeavour to keep it
a secret and not apply for a patent?11

The specification for a complete application for a standard patent will be
disclosed by the Patents Office 18 months after the earliest priority date.

11. Roger. E. Schechter and John R. Thomas, Intellectual Property at pp. 528-529.

This is known as ‘early publication’ and the date is known as the ‘OPI
date’ (open for public inspection). At this time any person can inspect the
specification plus any provisional application (although not the
correspondence that related to the application). It is common for an
application of a standard patent not to be accepted for a period longer than
18 months. This presents another dilemma for the enterprise wishing to
commercialise the invention. The applicant for a standard patent cannot
commence an action against an infringer until the patent has been
accepted, although once that acceptance has been granted the owner of the
patent will be entitled to seek damages or account of profits for
infringements after the OPI date.

In relation to innovation patents, the specification is published upon the
grant which is within a few weeks or months of filing the application.
Again there is a potential difficulty for the entrepreneur. The specification
becomes public almost immediately. Yet the owner of an innovation patent
cannot sue on the basis of the innovation patent unless the Controller of
Patents has issued a certificate. The certificate involves an examination of
the patent and often this cannot be issued until some time after the
innovation patent specification has been published. The examination
generally involves a lot of time, which may prove to be hindrance for the
entrepreneur.

The practical implications for the gap between publication of the details of
the innovation and actual power to protect the innovation will depend very
much on the nature of the invention and the length of time involved. If the
invention is complex then the gap may not be of much practical relevance.

However, if it is simple and easily “re-engineered” then it may give the
competitor, who is willing to take the risk, the ability to compete directly
against the enterprise which has filed the publication. One of the critical
steps in commercialisation is, being able to capitalise on any competitive
advantage. An enterprise’s ability to enjoy any competitive advantage may
be lost if the competitor takes the advantage of the protection gap.

2.1.9 General Patent Procedure: A Checklist

The documents required during the initial filing process are as follows:

Ø The application in the prescribed Form 1, in duplicate, as modified
to suit the application;

Ø Provisional specification describing the nature of the invention
[Form 2] or the complete specification, in duplicate, describing the
essential and complete details of the invention;

Ø Drawings, if necessary, to illustrate the invention should accompany
the specification;

Ø Statement and Undertaking on Form 3 in appropriate cases if the
applicant intends to file the corresponding application outside India;

Ø Abstract of the invention in approximately 150 words, in duplicate.
This is not required when filing a provisional application.

Ø The prescribed fees for filing the application, accompanied by a
provisional or complete specification [Rupees 750 if the applicant is

an individual or Rupees 3000 if the applicant is a legal entity other
than an individual].

2.2 COPYRIGHT

2.2.1 Brief Initial History of the Copyright Regime

The concept of copyright first originated in the United Kingdom with the
enactment of “Statute of Anne (1710),” whereby the author of a work was
given a right to copy that work and the concept for a fixed duration. The
concept originally was to protect publishing of books and maps, which has
now so grown as to encompass a wide array of creative, intellectual,
scientific or artistic forms which include software, television and
broadcasts.

The first multilateral treaty that established copyrights between countries
was the Berne Convention 1886 which did not require the author to follow
any of the formalities for the creation of a copyright, such as “register” or
“apply for registration” or “incorporate symbol or legend,” in the work.12
The fixation of the work on to any physical modicum whereby the idea-
expression dichotomy was satisfied was sufficient to create a copyright in
the work or its derivatives, provided the author did not expressly disclaim
such a right or the copyright had not expired.

The Copyright Act, 1957 addresses the regime for copyright in India. It
should be noted with delight that there are no registration formalities in
order to protect copyright in India. This is a relief to enterprises as well as

12 Ibid.

individuals, as it would not involve a lot of paperwork as compared to the
filing of patent application. The Copyright Act has an entire array of
‘works’ for which a copyright can be registered, in particular, literary (that
includes software), dramatic, musical and artistic works as well as things
which are not ‘works’ that includes sound recordings, films and
broadcasts. Given the breadth of copyright this material does not deal with
the commercialisation of copyright in sound recordings, films or
broadcasts. These areas have their own rules, both from a commercial and
legal perspective, which have been addressed by other authors.

It is important to note that an ‘idea’ can not be protected under the
Copyright law Of India.13. The Gregory committee report which submitted
its report to the government of UK in 1952 as well as the Whitford
Committee report of 1977 both have stated that Copyright is concerned
with the material expression of the idea, whether it is in writing, in source
code or a drawing14. There have been various judgements on this aspect in
the UK courts of which some of them are:

Mirage Studio v. Counter Feat Clothing (1991) FSR 145

King Feature Syndicate Inc. v. Sunil Agnihotri (1997) PTC 303 (Del)

The Copyright Act does not give monopoly rights in relation to the end
result of the material expression. In fact, it is possible for a person to
create the same software or book independently of the enterprise. If this

13“There can be no copyright on an idea” R.G. Anand v. M/s. Delux Films & Ors., AIR 1978 SC 613; (1978) 4
SCC 118; William Hill (Football) v. Ladbroke (Football), [1980] RPC 539 (CA Lord Denning MR).
14 Gregory Committee Report 1952, para 9, quoted in Whitford Committee Report (1977), p.4.; Mirage Studio v.
Counter Feat Clothing [1991] FSR 145; King Feature Syndicate Inc. v. Sunil Agnihotri (1997) PTC 303 (Del).

occurs the same work may exist and have two separate copyright owners.
The dilemma for the copyright owners, in this case, is being able to
establish that the work that is later in time was created without reference to
the earlier work.

2.2.2 Who Owns the Copyright?

The basic premise for copyright is that the author will be the owner of the
copyright. This is the person who actually makes the work and was the
source of originality. A person who is merely acting as a scribe would not
be considered to be the author. A person who used the computer to
generate a work would not be the author if he or she were acting slavishly
under direction.

The usual exceptions to this basic premise apply. If the author was an
employee and the work was created in accordance with the terms of
employment then the employer will own the copyright. Alternatively, the
author can assign ownership of the copyright in writing.

It is possible to have joint ownership of copyright in which case the joint
owners will share the copyright equally and as ‘tenants in common.’ This
is subject to any agreement between the co-owners. A co-owner can
commence infringement action without joining the other co-owner,
although each co-owner may have to account to the other for any benefits
received arising from that infringement action.

2.2.3 Duration of the Copyright Protection

The general rule is that the owner of a copyright is entitled to the relevant
monopoly rights for a period of 60 years plus the life of the author. There
are exceptions to this relating to whether their work has already been
published (60 years after publication), which have been laid down under
Section 22 of the Copyright Act.

2.2.4 Monopoly Rights

The owner of a copyright has monopoly rights to do the following in
relation to a literary, dramatic or musical work:

• reproduce the work in a material form;

• publish the work;

• perform the work in public;

• communicate the work to the public;

• make an adaptation of the work.

In relation to an artistic work the copyright owner has the exclusive right
to:

• reproduce the work in a material form;

• publish the work;

• communicate the work to the public.

The right to ‘communicate’ the work is designed to enable exclusive rights
to be exercised in the era of the Internet

2.2.5 Publication, Communication and Making Available

Meaning of “publication” in relation to copyright has to be considered in
relation to the usage in national laws and various international instruments.
Literally, in its common English language usage, “to publish” in the
copyright sense means to give exclusive right to reproduce or authorize
others to reproduce artistic, dramatic, literary, or musical works and make
them available to the public. Accordingly, Professor Sterling summarizes
Conventional uses of the term “publication” and its related terms as
follows:

1. Under the Berne Convention expression ‘published works’ is
deemed to indicate the works published with the consent of their
authors irrespective of the means employed for manufacturing the
copies, provided that the availability of such copies has satisfied the
reasonable requirements of the public in relation to the nature of the
work. However, under Article 3(3) the performance of a dramatic,
dramatico-musical, cinematographic or musical work, the public
recitation of a literary work, the communication by wire or the
broadcasting of literary or artistic works, the exhibition of a work of

art and the construction of a work of architecture do not constitute
publication.15

2. Under Article VI of the Universal Copyright convention,
‘publication’ has been defined as reproduction in a tangible form and
the general distribution to the public of copies of a work from which
it can be read or otherwise visually perceived.16

3. Under Article 3(d) of the Rome Convention, ‘publication’ means
offering of copies of a phonogram in reasonable quantity.17

4. In Article 2(e) of the WIPO Performances and Phonograms Treaty,
‘publication’ of a fixed performance or a phonogram means the
offering of copies of the fixed performance or phonogram to the
public, with the consent of the right holder and is made available to
the public in a sufficient reasonable quantity.18

The internet has made it possible for artists’ works to be reproduced,
accessed, communicated and distributed in myriad ways through a virtual
communication network on the internet. Online streaming has been a new
way of distributing audio/video content to the listeners/viewers via the
internet, which has radically changed the structure and economics of the
business models under which copyrighted works are published and
distributed to the public.19 A virtual market place exists in cyberspace,
which is not constrained by existing national boundaries, which challenges

15 J.A.L Sterling, World Copyright Law 1124 (3rd Edition 2008).
16 Ibid., p.196.
17 Ibid.
18 Ibid.
19 Susanna H.S. Leong and Cheng Lim Saw, Copyright Infringement in a Borderless World – Does Territoriality
matter? International Journal of Law & Information Technology, 2007.

the traditional concept of copyright as most of the national laws of
copyright are territorial in nature. In the context of the Berne Convention,
the two requisites for something to be considered a ‘publication’ are the
presence of ‘copies’ and the ‘availability of copies’ to satisfy reasonable
requirements of the consuming public. However, in the digital era where
the technological advancements have done away with the need of having a
hard copy to satisfy the requirements of the Berne Convention, it is
generally agreed that by the act of transmitting a work to an internet
website, a copy is made by the simple fact that the work has been stored
on the website.

‘Communication’ and ‘making available’ are definitely two distinct
concepts in this age of digital communications and their original meanings
as encapsulated in the Berne Convention have also undergone substantial
variations. The latest version of these rights can be found in the wordings
of Article 8 of the WIPO Copyright Treaty 1996 (‘WCT’).20 The wording
clearly shows that there are two separate and distinct rights conferred on
the right holder, namely, the right of ‘communication’ and the right of
‘making available’. The act of ‘communicating’ can be equated with the
act of ‘transmitting’, which means that there is a starting point and an end
point of the whole process. What it implies is that the communicating
process cannot be deemed to be complete without the means of proper
transmission and reception.21 Any ISP which has helped in transmitting

20 Article 8 WCT states that “. . . authors of literary and artistic works shall enjoy the exclusive right of
authorising any communication to the public of their works, by wire or wireless means, including the making
available to the public of their works in such a way that members of the public may access these works from a
place and at a time individually chosen by them.” See also, Article 10 of the WIPO Performance and
Phonogram Treaty 1996 which states: “Performers shall enjoy the exclusive right of authorizing the making
available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that
members of the public may access them from a place and at a time individually chosen by them.”
21 Supra fn 15 at pg 43.

digital material on the internet from a host website/server to an end user
has participated in acts of communication and the same holds true for
those engaged in broadcasting and cable casting.22 The distinguishing
feature of ‘making available’ is that there is only one point of reference to
the act, that is, a work is made available to the public once the consumers
can access the work from a place and at a time individually chosen by
them. Therefore, the act of ‘making available’ is complete as soon as the
act of providing access to the work in question is performed. It shows that
a content provider who uploads digital content on to a web server would
have made the necessary information available to the public at the point of
uploading regardless of the fact of recipients and their location.23 It was for
this reason that Professor Sterling stated that ‘making available’ of content
on the internet can take place at any of the following places:24

1. a place where the content provider transmits to a server site or
provides material for online transmission to an end user;

2. the server site;

3. the point(s) of reception where the subject matter which is
available online is or may be accessed.

22 Ibid.
23 Ibid.
24 Supra fn 11 at p. 472.

2.2.6 Reproduction

‘Reproduction’ may mean the action of repeating in a copy or “a
representation in some form or by some means of the essential features of
a thing” or the action of bringing it into existence again.25

Information in digital form is intangible and can be reproduced accurately
and instantaneously without any difference from that of the original work.
Article 226 of the Directive 2001/29/EC of the European Parliament and
the Council of 22 May 2001 “on the Harmonization of Certain aspects of
Copyright and Related Rights in the Information Society” (“InfoSoc
Directive”)27 harmonizes the broadly defined right of reproduction.28
Although most of the international conventions and treaties consist of
provisions regarding the right of reproduction, the InfoSoc directive
harmonizes the broadly defined exclusive right of reproduction and can be
used as a basis for understanding the concept of reproduction in the
context of the digital age.

The means and kind of carrier material become irrelevant when a
reproduction is created; it can also occur if the form is substantially
changed during the copying process, for example, photographs,

25 http://www.oxfordreference.com
26 Article 2 stipulates: “Reproduction Right: Member States shall provide for the exclusive right to authorise or
prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in
part.
(a) for authors, of their works;
(b) for performers, of fixations of their performances;
(c) for phonogram producers, of their phonograms;
(d) for the producers of the first fixations of films, in respect of the original and copies of their films;
(e) for broadcasting organisations, of fixations of their broadcasts, whether those broadcasts are transmitted by
wire or over the air. Including by cable or satellite.”
27 OJL167,22.6.2007, p. 10-19.
28 Peter Mukascsi, The Reproduction Right and Collective Management in the Context of the Information
Society, Ankara Law Review, Vol. 3, No.1 (Summer 2006), pp 67-87.

photocopies, CD or DVD burning as well as copies of works in the RAM
memory of a computer.29 The reproduction may be direct or indirect,
temporary or permanent, whole or partial. The ‘right of reproduction’ is
broader than the ‘right of communication’ in the sense that the right of
reproduction can be infringed upon irrespective of the fact that there has
not been any communication of the work to the public in the course of
reproduction. Therefore, an unauthorized service which allows for digital
download without the consent of the author of the copyrighted work would
infringe both the ‘reproduction’ and ‘making available’ rights of the
respective right holders, unless such download falls within any of the
exceptions or limitations provided by national or international laws of the
place where the supposed infringement is ascertained to have taken place.

2.2.7 Transmission on the Internet

Transmission, in the context of wireless or cabling, may be defined as “the
act of sending signals or the signals being sent in a particular act of
sending.”30 Transmission in the context of the internet and other online
services may be classified, according to Professor J. A. L. Sterling, on the
basis of four characteristics. The first characteristic would relate to the
content of the transmission in determining whether the content of such
transmission consists of static material (i.e., visual material perceptible in a
static form, such as texts, charts, photographs, etc., which can be perceived
otherwise than in moving images) or whether the content is one of audio
and/or moving image material (i.e., material perceptible in sound, like live
performance of music, sound recording, or material perceptible in moving

29 Ibid.
30 Supra, fn 11 at p. 1251.

images without sound, film with soundtrack), or is the content one of
composite nature (i.e., combining static, audio and/or moving image
material like a website on which text, audio and moving image material
are all perceptible).31

The second characteristic conveys the classification on the basis of the
mode of transmission, that is, whether such content is ‘non-streamed’
where the sound or moving images are perceptible as such on the receipt
of the transmission, or ‘streamed’ where sounds or moving images are
perceptible as such on the receipt of the transmission.32 Both streamed and
non-streamed transmissions incorporate a degree of reproduction in the
process of transmission and reception of the data.

The third characteristic on which a transmission may be classified is on the
basis of whether the content has originated at the server site or has been
retransmitted from another transmission point (which means, it originates
from another server site or from a wireless broadcast or some other
alternative source).33 When streamed transmissions originate at the server
site in the sense that they are available on the internet for distribution to
the public, it can be termed as “Webcasts.” Webcasting is defined as
“delivery of content as real-time and recorded audio and video signals by
broadcasting them over the internet.”34 Streaming software creates a
‘buffer’ of memory in the RAM of the computer which then allows it to
download video and audio a few seconds at a time, which in turn allows

31 Ibid., p. 455.
32 Ibid., p. 456.
33 Ibid.
34David Wittgenstein and M. Lorraine Ford, “The Webcasting Wars 91999) 2 J.I.L.1, available at
http://www.gwcf.com/articles/journal/jil_feb99_2.html

for real-time playback of the music or video files by a continuous
refreshing of the buffer facilities.35

The final characteristic on which a transmission may be classified is on the
basis of its access mode in its digital form, which means, depending on
whether or not the transmission process permits access to a particular
digital content “on demand.”36 “On demand” webcasting allows the
transmission of compressed audio or video content most commonly
employed in viewing live events, which allows the user to control the
scheduling and appearance of the webcast and to have features and effects
which are analogous to the effects, such as fast-forward, rewind, stop,
pause, replay, record, which are obtained on a Video Cassette Recorder.37

The classification of types of transmission over the Internet is fundamental
to the determination of the subject matter, the rights involved, the rules to
be applied in assessing the rights involved and the consequent liability.38
When the question would relate to the origination of work in relation to the
server, such classification of transmission and retransmission would be
helpful in determining issues of unauthorised use and appropriate licensing
(meaning, as to whether the license is applicable for world-wide
accessibility), and when the classification is on the basis of the access
mode, such determination would directly affect the applicable right.39

35 Lorna E. Gillies and Alex Morrison, Securing Webcast Content in the European Union: Copyright, Technical
Protection and Problems of Jurisdiction on the Internet, E.I.P.R 2002, 24(2) 74-80.
36 Supra fn 11 at p. 456.
37 Peggy Miles, Internet World Guide to Webcasting: the Complete Guide to Broadcasting on the Web (1998).
38 Supra fn 11 at p. 457.
39 Ibid.

Transmission and retention of content from a server site may involve the
traditional economic rights of reproduction, distribution, communication,
and so on, depending on the definition of the particular right involved in
the act of transmission and retention. The categories of persons in respect
to internet transmission on the factual basis of the activity may include
content providers, site operators, general service providers and location
tool providers.

2.2.8 Moral Rights

Copyright refers to the intellectual Property Right which provides the
exclusive rights to the copyright holder to make copies of the original
work. These exclusive rights involve Moral Rights also. These Rights
refers to the rights that allow for the protection of the relationship between
yourself and the work you have created. Rights Protected under copyright
are:-

WORK PROTECTED IN COPYRIGHT ACT

LITERARR MUSICA ARTISTI DRAMATIC
Y L C

According to Section 57 of Copyright Act,1957 it states that “copyright
and even after the assignment either wholly or partially of the said
copyright, the author of a work shall have the right to claim authorship of
the work and to restrain or claim damages in respect of any distortion,
mutilation, modification or other act in relation to the said work which is
done before the expiration of the term of copyright if such distortion,
mutilation, modification or other act would be prejudicial to his honor or
reputation.”

Rights in Moral Rights:-

• Right of attribution:- This right provides the author full entitlement
of his/her work.

• Right to integrity:- This right provides right to respect and honor to
the author.

Section 57 of the Copyright Act, 1957 which is given under the heading of
Author’s Special Rights is also known as Moral Rights. The same is
mentioned in Article 6b is of the Berne Convention as right to claim
authorship of the work and right against distortion.

Recent Case Laws:-

Phoolan Devi v Shekar Kapoor, (1995-PTC Del):- In this case the
plaintiff claimed that the basis of the film, being a novel dictated by the
illiterate plaintiff herself had been considerably mutilated by the film
producer. The plaintiff sought a restraint order against the defendant, from

exhibiting publicly or privately, selling, entering into film festivals,
promoting, advertising, producing in any format or medium, wholly or
partially, the film Bandit Queen in India or else where. Granting an
injunction Vijendra, Jain J. held, that the defendant had no right to exhibit
the film as produced violating the privacy of plaintiff’s body and person.
The balance of convenience is also in favour of restraining the defendants
from exhibiting the film any further as it would cause further injury to the
plaintiff. No amount of money can compensate the indignities, torture, and
feeling of guilt and shame which has been ascribed to the plaintiff in the
film. Therefore, the defendants were refrained from exhibiting the film in
its censored version till the final decision of the suit.

• KPM Sobharam v M/s Rattan Prakashan Mandir AIR 1983 Del.
461 (468, 469) :-In this case the plaintiff, an author of certain books
instituted the suit against the defendants for injunction, restraining
them from printing, publishing and selling the specified books,
rendition of accounts for the illegal gains made by the defendants for
all unauthorized publications, and, for damages under the provisions
of sections 55 and 57 of the Act. The plaintiff claimed that the
defendants mutilated and distorted the original works of the plaintiff
by publishing various books in modified form in gross violation of
the plaintiff’s copyright. The plaintiff alleged that the defendants had
changed the original works’ title and made a distortion and
mutilation of the plaintiff’s work prejudicial to the plaintiff’s
Reputation. The plaintiff claimed that he never gave any authority to
the defendants to print and publish the books in that manner. The
court granted injunction restraining the defendants from printing,

publishing and selling the goods written by the plaintiff till final
disposal of the suit.

It is clear from the above that copyright act provides exclusive rights to the
author and these rights are moral rights also which is the main benefit
provided by the act to the copyright holder and through these rights
government can provide more and more encouragement to the authors.

The Copyright Act was recently amended to enable an author to exercise
his or her ‘moral rights’ in relation to any literary, dramatic, musical or
artistic work and cinematograph films created by him or her. These moral
rights belong to the individual author. They cannot be transferred to
another person, although the author may elect to consent to another person
infringing his or her moral rights.

There are three essential moral rights bestowed by the Copyright Act:

1. the right to be attributed as the author of a work [droit a la paternity];

2. the right not to have authorship of the work falsely attributed to
someone else;

3. the right for the work not to be subject to derogatory treatment [droit
au respect de louvre].

The impact of moral rights on the commercialisation of IP remains to be
seen. In essence the moral rights regime is aimed at giving the individual
author a ‘non -commercial’ benefit. Many authors will, having become
aware of their moral rights, nevertheless choose not to make a scene about

those rights in a way that would upset a commercial environment. An
enterprise would be foolish to disregard the power that the Copyright Act
gives an individual author to exercise those moral rights. This will be
discussed in more detail in Chapter 4 IP Enforcement. The easiest solution
for the enterprise is to seek consent to use the works in a manner which
may otherwise constitute infringement of those moral rights.

2.2.9 Software: Can it be Protected Under the Copyright Act?

Computer programs are expressly addressed in the Copyright Act and
comprise a ‘literary work'. Computer programs are defined as ‘a set of
statements or instructions to be used directly or indirectly in a computer in
order to bring about a certain result.

Generally the copyright in relation to computer programs is expressed in
the source code. A source code is a computer programme written in any of
the several programming languages employed by computer programmes.
Indian cases have yet to decide as to whether the ‘look and feel’ of the
results of a computer software application would be protected by copyright
or not.

2.2.10 Commercialisation of a Copyright

The commercialisation of copyright presents the following general issues
that are distinctive to it:

● a competitor may independently create the same product or service
in which copyright may subsist. In those circumstances the

enterprise has little recourse unless it can establish that the
competitor’s product or service was created by reference to the
enterprise’s works;

● copyright may be the only formal IP on which an enterprise can rely
where its business is based on ‘know-how'. This know-how can be
easily captured in the enterprise’s operational manuals and the like.
Although this does not give a robust foundation for
commercialisation, but it can at least present a starting point for
asserting that competitors are leveraging off that copyright work in
an unauthorised manner;

● copyright presents probably the most favourable conditions for

international commercialisation. This is because

the international treaties40 which have been adopted by India provide

for true reciprocal rights and do not require an Indian enterprise to

go through the registration systems of other countries in order to

obtain the same rights that it has already achieved in India.

2.3 PLANT BREEDER’S RIGHTS

One of the most pressing issues of our times is the development of crops
that can enable farmers to feed the increasing world population in a
sustainable fashion without causing environmental degradation. In the
past, significant investments in crop breeding and development were
primarily funded by the public sector. These investments took place

40 Section 3 of the International Copyright Order, 1999.

through national and international research systems.41 Thanks to various
factors, the funding for these systems has grown enormously. There is,
therefore, increasing reliance throughout the world upon crop breeding
research and product development that is funded by the private sector.42
Strong intellectual property protection will encourage the investment
needed to maintain continued crop improvement required to feed the world
and add value to agriculture and society through new products. Formal
seed sector in India throughout the 1960s was dominated by the public
sector.43 In 1961, the National Seeds Corporation (NSC) was established
under the Ministry of Agriculture. The NSC was at the centre of seed
production for breeders, foundation and certified seeds and their quality
control. In 1967, the Indian government put together a National Seeds
Project (NSP) with the assistance of the World Bank. The National Seeds
Project set up seed processing plants in 17 states. These huge processing
plants were supposed to provide ‘certified’ seeds of food crops, mainly
self-pollinating crops, to farmers.44 These processing of plants operated
mostly below capacity, and for all practical purposes, turned into white
elephants. It was primarily due to the lack of demand for the certified
seeds that a majority of the seed processing plants were deep in the red and
often burdened with carryover stocks.45 In fact, if we were to reason out
the causes that led to this disastrous effect of the new seeds, it would be

41 William Lesser, Intellectual Property Rights and Concentration In Agricultural Biotechnology, available at <
http://www.agbioforum.org/v1n2/v1n2a03-lesser.pdf> accessed on (17th October, 2012).
42 G. Moschini, Intellectual property rights and the welfare effects of agricultural R & D, American Journal of
Agricultural Economics vol. 79, 1235 (1242).
43India's new Seed Bill, 12 July 2005, available at <http://www.grain.org/article/entries/457-india-s-new-seed-
bill#_ftn33>, accessed on (1st October, 2012).
44 G. Moschini, Competition Issues In The Seed Industry and the Role Of Intellectual Property, available at
<http://www.farmdoc.illinois.edu/policy/choices/20102/2010203/2010203.pdf> accessed on (17th October,
2012).
45 Ashish Kothari and Anuradha R.V., 'Biodiversity, Intellectual property Rights, and GATT Agreement: How
to Address the Conflicts ?', Economic and Political Weekly (October 25 1997 issue) 2814 (2820).

quite obvious that these seed plants were not required in the first place.
Thus, it was a classic example of a faulty technology being pushed onto
India.46

“Currently there are several ways that intellectual property resulting from
such investment and risk taking can be protected by an inventor.”47 One
avenue is to rely on trade secret protection coupled with either licenses or
use agreements. Unlike other forms of protection, as long as trade secrets
are maintained, the intellectual property never enters the public domain. A
second way to protect intellectual property is through utility patents.
“Utility patents, which in most countries are granted for a term of 20 years
from application, provide a broad and strong form of protection that in
many ways is preferential to license or use agreements.”48 However, plant
varieties are ineligible for patent protection in countries other than the
United States, Japan, and Australia. Another approach to protection,
limited to plant varieties, is through specialized Plant Variety Protection
laws, like those In India. The current UPOV system as enacted in 1991
provides exclusive marketing rights for varieties, their harvested material,
and, optionally, for products made directly from them.49 These rights
extend for a fixed period of not less than 20 years from the date of the
grant of the right.50 In certain circumstances, PVP also provides exceptions

46 Devinder Sharma, India’s New Seed Bill, available at < http://www.grain.org/es/article/entries/457-india-s-
new-seed-bill> accessed on (17th October, 2012).
47 Dick Crowder, American Seed Trade Association Position Statement on Intellectual Property Rights for The
Seed Industry, available at < http://www.amseed.com/newsDetail.asp?id=97> accessed on (17th October, 2012).
48 Position Statement On
Intellectual Property Rights for the Seed Industry, available at
<http://cuke.hort.ncsu.edu/cucurbit/wehner/541/hs541readings/IPR10ASTA.pdf> accessed on (17th October,

2012).
49 Gauri Sreenivasan, Intellectual Property, Biodiversity, and the Rights of the Poor, available at
<http://www.ccic.ca/_files/en/what_we_do/002_global_trade_paper_3.pdf> accessed on (17th October, 2012).
50 P. Sadashivappa and M. Qaim, Bt Cotton in India: Development of Benefits and the Role of Government

Seed Price Interventions, available at <http://www.agbioforum.org/v12n2/v12n2a03-sadashivappa.htm>
accessed on (1st October, 2012).

for experimental use by third parties for the purpose of plant breeding and
new variety development. An optional exception for farmers permits them
to save seed for propagating use on their own holdings within reasonable
limits and subject to the safeguarding of the legitimate interests of the
breeder.51 Protection of intellectual property through utility patents and a
UPOV-based Plant Breeders’ Rights (PBR) system ultimately puts the
protected invention in the public domain because the protection of the
invention is of limited duration. In 1961, the International Convention for
the Protection of the Plant Varieties was held in Paris, and it resulted in the
creation of the International Union for the Protection of New Plant
Varieties (UPOV).52 It is a multilateral agreement with norms for the
recognition and protection of the intellectual property of the breeders on
the new varieties by certificates of Plant Varieties Protection (PVP) in
local legislations.53 When plant variety protection (PVP) was first
standardized by the UPOV convention in the 1960s, it was a mostly
copyright-like form of intellectual property. The variety owner had a
monopoly on the commercial propagation and marketing of the variety,
but little control over other uses. Farmers were free to multiply seeds for
their own use for as long as they wished. Other breeders could freely use
protected varieties to develop their own material.54

51 Anil K Gupta, Rewarding Conservation of Biological and Genetic Resources and Associated Traditional
Knowledge and Contemporary Grassroots Creativity, available
atwww.sristi.org/day2/D2S1R1%20Rewarding%20Conservation.rtf accessed on (17th October, 2012).
5243 Suri Sehgal, IPR Driven Restructuring of the Seed Industry, available at
<http://biotechmonitor.nl/2907.htm>, accessed on (1st October, 2012).
53 Ajeet Mathur, Missing Markets In World Trade: The Case for ‘Sui Generis’ Protection Of Traditional
Knowledge, available at < http://www.icrier.org/pdf/wp141.pdf> accessed on (17th October, 2012).
54 Roht-Arriaza, 'Of Seeds and Shamans: The Appropriation of the Scientific and Technical Knowledge of
Indigenous and Local Communities', Michigan Journal of International Law, vol. 17, 919 ( 932).

This changed dramatically with the 1991 revision of UPOV. Based on
successful lobbying from the private players in the seed industry, the
revision turned PVP into something very close to a patent though in a
diluted manner.55 Seeds saved by farmers were allowed only as an optional
exception, but additional restrictions were put on further breeding, and
monopoly rights were extended all the way to harvest products.56 This is
the version of UPOV which is now being rapidly rolled out across
developing countries as a result of the WTO TRIPS agreement. The
industry, however, is still not content.57 Over the past few years, the
private sector seed industry has started gearing up its lobby machine for a
final attack on the remaining loopholes in the PVP system. If it succeeds, it
will certainly spell the end of farm-saved seed, probably the end of free
access to PVP-protected material for plant breeding, and a general
tightening of the ropes with longer terms, stricter enforcement, and wider
scope for monopoly rights.58

Eighty percent of all seeds in India are still saved by farmers for further
use. Farmer’s indigenous varieties are the basis of our ecological and food
security. For example, the coastal farmers of southern India have evolved
salt resistant varieties. Bihar and Bengal farmers have evolved flood
resistant varieties, farmers of Rajasthan and the semi-arid Deccan have
evolved drought resistant varieties, Himalayan farmers have evolved frost

55 Proposed seed laws to Restrict Farmers’ Rights, available at <http://www.thegreentimes.co.za/stories/news-
from-other-sources/item/1152-proposed-seed-laws-to-restrict-farmers%E2%80%99-rights>, accessed on (17th

October, 2012).
56René
Royon, Plant Variety Protection, available at

<http://www.ciopora.org/fileadmin/assets/pageDownloads/2004/05/CIOPORA_Greenpaper_en.pdf>, accessed
on (17th October, 2012).
57 A. J. C. Visser, E. H. Nijhuis, J. D. Elsas, and T. A. Dueck, Crops of Uncertain Nature? Controversies and

Knowledge Gaps Concerning Genetically Modified Crops. An Inventory available at
<http://www.psrast.org/visserabstr.htm>, accessed on (1st October, 2012).
58 Vandana Shiva, The Indian Seed Act and Patent Act: Sowing The Seeds of Dictatorship, available at
<http://www.countercurrents.org/gl-shiva150205>, accessed on (1st October, 2012).

resistant varieties. Pulses, millets, oilseeds, rice, wheat, vegetables provide
the diverse basis of our health and nutrition security.59 These seeds are
indigenous farmers varieties of diverse crops – thousands of rice, hundreds
of wheat, oilseeds such as linseed, sesame, groundnut, coconut, pulses
including aghast, arrange, raja, rued, mooing, maser, turn, vegetables and
fruits. The Seed Act is designed to “enclose” the free economy of farmer’s
seed varieties.60 Once farmers’ seed supply is destroyed through
compulsory registration by making it illegal to plant unlicensed varieties,
farmers are pushed into dependency on the corporate monopoly of
patented seeds. The Seed Act is thus the precursor to the Patent
Amendment Acts, which have introduced patents on seed.61

Methods of agriculture and plants were excluded from patentability in the
Indian Patent Act 1970 in order to ensure that the seed, the first link in the
food chain, was held as a common property resource in the public
domain.62 In this manner, it ensured that the farmers' inalienable right to
save, exchange and improve upon the seed was not violated. But recently,
two amendments have been made in the 1970 Patent Act.63 The second
amendment makes changes in the definition of what is NOT an invention.
This has opened the floodgates for patenting of genetically engineered
seeds. According to Section 3 (j) of the Indian Patent Act, the following is

59 Melinda Smale, Local Markets, Local Varieties, Rising Food Prices and Small Farmers’ Access to Seed,
available at < http://www.ifpri.cgiar.org/sites/default/files/publications/ib59all.pdf> accessed on (17th October,

2012).
60 Jayashree Watal,
Intellectual property rights in Indian agriculture, available at
<http://www.icrier.org/pdf/jayashreeW.pdf> accessed on (1st October, 2012).
61

62 J. M. Spectar, “Patent Necessity: Intellectual Property Dilemmas in the Biotech Domain and Treatment Equity
for Developing Countries,” HOUS. J. INT’L L, vol. 24, 227 (234).

63 Denis Borges Barbosa, Exclusions from Patentable Subject Matter and Exceptions and Limitations to the
Rights, available at <www.wipo.int/edocs/mdocs/scp/en/scp_15/scp_15_3-annex3.doc>, accessed on (17th
October, 2012).

not an invention: “Any process for the medical, surgical, creative,
prophylactic or other treatment of human beings or any process for a
similar treatment of animals or plants or render them free of disease or to
increase their economic value or that of their products.”64

However, in the second amendment, the mention of “plants” has been
deleted from this section. This deletion implies that a method or process
modification of a plant can now be counted as an invention and therefore
can be patented.65 Thus the method of producing Bt. cotton by introducing
genes of a bacterium thuringiensis in cotton to produce toxins to kill the
bollworm can now be covered by the exclusive rights associated with
patents. The second amendment has also added a new section (3j) which
allows for the production or propagation of genetically engineered plants
to count as an invention.66 But this section excludes as inventions “plants
and animals including seeds, varieties and species and essentially
biological processes for production or propagation of plants and animals.”
Since plants produced through the use of new biotechnologies are not
technically considered “essentially biological,” section 3j has found
another way to create a path for biotechnology companies to acquire for
extreme profitability seeds which are most important for human
consumption or cottage industry.67 This loophole, which is couched in the

64 Susan K. Sell, “Industry Strategies for Intellectual Property and Trade: The Quest for TRIPS, and Post-TRIPS
Strategies,” CARDOZO J. INT’L & COMP. L., vol. 10, 79 (87).
65 Simon Walker, The TRIPS Agreement, Sustainable Development and the Public Interest, available at <
http://data.iucn.org/dbtw-wpd/edocs/EPLP-041.pdf> accessed on (17th October, 2012).
66 Carl E. Pray, Liberalization’s Impact on the Indian Seed Industry: Competition, Research, and Impact on
Farmers, available at <http://ageconsearch.umn.edu/bitstream/34217/1/02030407.pdf>, accessed on (17th
October, 2012).
67 Henrique Freire de Oliviera Souza, Genetically Modified Plants: A Need for International Regulation, ANN.
SURV. INT’L & COMP. L., vol. 6, 129 (138).

guise of scientific development, thus allows patents on GMOs and thus
opens the floodgates for patenting transgenic plants and crops

What causes much concern is how the language of section 3j is a verbatim
transposition into Indian patent law of Article 27.3 (b) of TRIPS
Agreement. Article 27.3 (b) of TRIPS states: Parties may exclude from
patentability 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.68 However,
parties 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 the TRIPS Agreement have widened the scope of
protection of intellectual property rights relating to agriculture through
plant variety protection.69 A reference to Article 27 of the TRIPS
Agreement will show that all inventions, regardless of the field of
technology, are eligible for protection. Member countries will have to
provide a legal framework for the protection of inventions relating to plant
varieties. Indian Patent Act 1970 does not permit the patenting of plant
varieties and animal breeds which are existing in nature or, in other words,
falls under the category of discoveries.70 To protect the rights of the
breeders and farmers, the Government of India has enacted the Plant
Varieties Protection and Farmers Rights (PPVFR ACT, 2001) which took
effect from January 2006. It has become imperative on the part of the

68 P. P. Rao. “Private Research and Public Benefit: The Private Seed Industry for Sorghum and Pearl Millet in
India.” Research Policy, vol. 20, 315 (325).
69 Lara E. Ewens, Seed Wars: Biotechnology, Intellectual Property, and the Quest for High Yield Seeds, 23 B.C.
INT’L & COMP. L. REV., vol. 23, 285 (295).
70 Latha Nagarajan, Local Seed Systems for Millet Crops in Marginal Environments of India: Industry and
Policy Perspectives,available at < http://www.ifpri.org/sites/default/files/publications/eptdp151.pdf> accessed
on (17th October, 2012).

Government of India to develop our own sui-generis (a Latin phrase
meaning, ‘of their own kind’) system to provide a framework for Plant
Variety Protection and Farmers Right.71 Plant variety rights are a form of
intellectual property protection granted to breeders of new varieties of
plants. In a very general sense, a plant variety is a strain of a plant (or,
more often, a crop) that is a pure breed. In other words, for a plant variety
to be protected, it must produce the same type of plant in every generation,
and should be distinct in appearance and distinguishable from others.72
Plant variety rights include, inter alia, royalty rights over a certain
identified time period and restrictions on the propagation and subsequent
use of seeds derived from such varieties.73

The protection of plant varieties around the world is guided by Article 27
(3) (b) of the World Trade Organization’s Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPs).74 This sub-clause contains
three conditions binding on sovereign states.

It States: “may exclude from patentability plants, animals and essentially
biological processes for the production of plants and animals must allow
patents for micro-organisms and non-biological and microbiological
processes for the production of plants or animals must provide protection
for plant varieties, either by patents or by an effective sui generis system
or a combination.”

71 United States Department of Agriculture, Agriculture Biotechnology FAQ’s (April 2001), available at
<http://www.nal.usda.gov/bic/>, accessed on (2nd October, 2012).
72 P. P. Rao, Private Research and Public Benefit: The Private Seed Industry for Sorghum and Pearl Millet in
India, Research Policy, vol. 20, 315 (326).
73 Samantha M. Ohlgart, “The Terminator Gene: Intellectual Property Rights v. The Farmers’ Common Law
Right to Save Seed, DRAKE J. AGRIC. L., vol. 7, 473 (474).
74 Samantha M. Ohlgart, The Terminator Gene: Intellectual Property Rights vs. the Farmers’ Common Law
Right to Save Seed, available at < http://nationalaglawcenter.org/assets/bibarticles/ohlgart_terminator.pdf>,
accessed on (17th October, 2012).

The PPV & FR Act is "more than UPOV," and "looks at India's lasting
requirement for food.75 There have been concerted efforts at promoting
information about the rights and protection offered under the Act. NGOs
representing communities and State Agricultural Universities had all been
roped in to disseminate information at the local level. Modes of awareness
generation include direct awareness campaigns via handouts, regular
participation in farmers' Agricultural Fairs and workshops, advertisements
in newspapers and other media.76

2.3.1 Who Owns It?

The ‘breeder’ means a group of persons or a farmer or group of farmers or
any institution, which has bred, evolved or developed any variety, who is
nominally entitled to apply for PBRs. If the variety has been bred or
discovered and developed during the course of employment the employer
will be the breeder. As with other forms of IP there may be co-owners of
PBRs.

2.3.2 Duration for Protection

A grant of PBR will entitle the owner of the PBR to exercise monopoly
rights for a period of 20 years after the date of the grant. However, it is not
possible to renew registration.

Monopoly rights: The grant of a PBR gives to the owner, the exclusive
rights in relation to the propagating material for the plant variety to:

75 Susan K. Sell, “Industry Strategies for Intellectual Property and Trade: The Quest for TRIPS, and Post-TRIPS
Strategies,” CARDOZO J. INT’L & COMP. L., vol. 10, 79 (91).
76 Debra L. Blair, Intellectual Property Protection and Its Impact on the US Seed Industry, DRAKE 1.
AORIC. L. vol. 4, 297 (310) (1999).

• produce or reproduce the material;
• condition the material for the purposes of propagation;
• offer the material for sale;
• sell the material;
• import or export the material;
• stock the propagating material for any of the above purposes.

Unlike patents, PBRs are exhausted when the propagating material is sold,
unless the purchaser uses the propagating material to further produce the
resulting crop. This exhaustion of rights is confined to one production
cycle. The ‘exhaustion of rights’ principle will also not apply if the
propagating material is exported to a country which is not subscribed to
the convention relating to plant breeder’s rights and the propagating
material is to be used for purposes other than final consumption.

There are certain express exemptions specified in the PBR Act. These
include:

• the private non-commercial use of the propagating material or use
for experimental purposes or breeding of other plant varieties;

• if the farmer harvests a crop and saves the propagating material and
uses it for conditioning that propagating material for reproductive
purposes or reproduction;

• use of propagating material as food, food ingredients or fuel.

Reasonable steps must be taken by the owner of the PBR to ensure there is
a reasonable access of the plant variety to the public. Reasonable steps
include, a) the making of plant variety available at cheap prices and in
sufficient quantities to meet its demand. The withholding of a plant variety
to achieve a strategic position in the market is consequently limited.

2.4 REGISTERED DESIGNS

Historically, the emergence of protection for industrial designs is
intimately connected with the growth of industrialization and methods of
mass production. In the United Kingdom, the first law giving protection to
industrial designs was the Designing and Printing of Linens, Cotton,
Calicoes and Muslins Act of 1787, which gave protection for a period of
two months to “every person who shall invent, design and print, or cause
to be invented, designed and printed, and becomes the Proprietor of any
new and original pattern or patterns for printing Linens, Cottons, Calicoes
or Muslins.” The contribution and importance of design in the growing
textile industries was thereby recognized. Industrial design, in a lay or
general sense, refers to the creative activity of achieving a formal or
ornamental appearance for mass-produced items that, within the existing
cost constraints, satisfies both the need for the item to appeal visually to
potential consumers, and the need for the item to perform its intended
function efficiently. In a legal sense, industrial design refers to the right
granted in many countries, pursuant to a registration system, to protect the
original ornamental and non-functional features of an industrial article or
product that result from design activity. The subject matter of the legal

protection of industrial designs is not articles or products, but rather the
design which is applied to or embodied in such articles or products.

The regime for registration of designs is aimed at protecting the
‘appearance’ of an article. In India it is governed by the Designs Act,
2000. There is a formal registration process to obtain the monopoly rights
bestowed by the Designs Act. The process is similar to that set out in the
Trade Marks Act.

The designs regime concerns features of ‘shape, configuration, pattern or
ornamentation’. The Act is designed to protect the appearance of an
article, not its function, although the article may well have a function, such
as a jug. There is a significant overlap between designs and copyright. The
policy intended to be reflected in the Copyright Act, 1957 is that copyright
protection should not apply where a copyright work, that would otherwise
qualify for registration as a ‘design, is applied to an article for industrial
purposes. Unfortunately it is not easy to interpret the Copyright Act to
determine whether in fact copyright protection is lost or not.

A design is defined as the features of shape, configuration, pattern,
ornament, or composition of lines in two dimensional or three dimensional
or in both forms by any industrial process or means.

2.4.1 Ownership of a Design

The author of the design is the person who is entitled to apply for
registration. This is the person who conceives the design and reduces it to
material form. Exceptions to this rule are:

• if the design is commissioned for valuable consideration;

• if the design was made in the course of employment;

• if the design is transferred by way of assignment.

As with other forms of IP it is possible to have co-owners who hold the
registered design as tenants in common. However, a co-owner may license
the registered design without the consent of other co-owners.

2.4.2 Duration

Registration of a design entitles the owner to exercise monopoly rights for
a period of 12 months and to renew for three terms, each of which accrue
five years from the date of lodging the application. This means that the
maximum protection available for a registered design is 15 years. The
exposure draft designs bill proposes a maximum period of 10 years’
protection for a registered design, which is consistent with the protection
for designs in other countries.

2.4.3 Monopoly Rights

The owner of a registered design has the exclusive right to apply the
design to the article in respect of which it is registered, import such an
article or sell or hire such an article or authorise a person to do any of
those things.

2.5 CIRCUIT LAYOUTS

Simply put, integrated circuit design has to do with the meticulous logic
and techniques applied to the design of integrated circuits.

Integrated circuits (IC) are "miniature electronic components built into an
electrical network on a monolithic semiconductor substrate by
photolithography", which in more layman's terms, essentially means they
are dozens or even billions of tiny inter-connecting electrical paths
meticulously arranged onto a single piece of material, such as silicon.

In the past few decades the development of IC has arguably been the main
driving force behind a majority of advances in technology. We find them
in everyday goods, controlling the spin cycles of washing machines,
keeping time in digital watches, and crunching whatever processes we are
running on computers.

As markets drive toward smaller, faster, better electronics products, new
IC chips must be produced to meet these demands. Due to the nature of IC,
the majority of progress arises from the new, more effective and efficient
designs and arrangements of the circuits. As a result, IC design is one of
the most important fields in modern electronics.

The regime for protection of circuit layouts is addressed by the
Semiconductor Design Act, 2000. This legislation is designed to give
protection to the layout of integrated circuits which form the engineering
basis of the wealth of electronic equipment and gadgets that are found in

our daily life. Like the Copyright Act, there is no formal registration
system required to obtain the protection under this Act.

2.5.1 Who Owns the Rights?

The person who makes the circuit layout is usually the person who will be
the owner of the monopoly rights. Exceptions to this are where the eligible
layout (or ‘EL rights’ as it is known in the Act) is made in the course of
employment, in which case the employer will own the EL rights. If the
circuit layout was commissioned by another person, then the person who
commissioned the making of the circuit layout will own the EL rights.

2.5.2 Duration of the Right

The ‘protection period’ varies depending on whether the circuit layout has
been commercially exploited. The general rule is that the protection
applies for 10 years.

2.5.3 Monopoly Rights

The Act gives the owner of the EL rights the exclusive right to:

• copy the layout in a material form;

• make an integrated circuit in accordance with the layout or a copy of
the layout;

• exploit the layout commercially in India.

2.6 TRADEMARKS

Trademarks already existed in the ancient world. Even at times, when
people either prepared what they needed themselves or, more usually,
acquired what they needed from local craftsmen, there were already
creative entrepreneurs who marketed their goods beyond their localities
and sometimes over considerable distances. As long as 3,000 years ago,
Indian craftsmen used to engrave their signatures on their artistic creations
before sending them to Iran. Trademarks started to play an important role
with industrialization, and they have since become a key factor in the
modern world of international trade and market-oriented economies. “A
trademark is any sign that individualizes the goods of a given enterprise
and distinguishes them from the goods of its competitors.” This definition
comprises two aspects, which are sometimes referred to as the different
functions of the trademark, but which are interdependent, and for all
practical purposes, should always be looked at together. In order to
individualize a product for the consumer, the trademark must indicate its
source. This does not mean that it must inform the consumer of the actual
person who has manufactured the product or even the one who is trading
in it. It is sufficient that the consumer can trust in a given enterprise, not
necessarily known to him, being responsible for the product sold under the
trademark. The function of indicating the source as described above
presupposes that the trademark distinguishes the goods of a given
enterprise from those of other enterprises. Only if it allows the consumer
to distinguish a product sold under a particular trademark from the goods
of other enterprises offered on the market, can the trademark fulfill this
function.

Trademarks are the principal form of IP that is used in the branding or
marketing of an enterprise and its products or services. In many respects
the trademarks can be of greater value to the business than the actual
services or products supplied. The value of the trademarks of Coca Cola,
Microsoft and IBM are US$ 65 billion, US $59 billion and US $57 billion
respectively. The value of the Coke Brand is nearly half of the company’s
market capitalization. In the words of Roberto Goisuetta, the former CEO
of Coca Cola “if all of Coca Cola’s physical assets went away, they could
still go to the bank and borrow more that US $ 6o billion because they own
the Coke trademark.”77

Trademarks can be protected without recourse to the formal registration
process under the Trade Marks Act, 1999 if the enterprise has established a
reputation in relation to its trademarks. In these circumstances the
enterprise can also rely on the Competition Act, 2000 or the tort of passing
off. The great advantage of registering the trademarks is that when seeking
to enforce its monopoly position the enterprise is not required to present
evidence of reputation. It can merely rely upon its certificate of
registration. This has significant implications in terms of costs and time in
protecting its position.

The trademark regime is focused on a mark that designates the origin of
the goods or services that are branded with the mark. The mark can be a
‘sign’ of any description and now includes shapes, colours and forms of
packaging.

77 Scott W. Cooper and Fritz P. Grutzner, Tips and Traps for Marketing Your Business, McGraw-Hill
Professional, 2008 p.38

Protection under the Trade Marks Act should be compared with business
names registration which merely identifies who runs the business and does
not provide any protection for the enterprise against use of the trademark
by third parties. Similarly domain names are registered for the purpose of
identifying a domain website and its registration does not provide any
rights per se against third parties using the trademark without the
authorisation of the owner of the mark.

2.6.1 Ownership of a Trademark

An applicant for registration of a trademark must claim to be the owner
and must have an intention to use the mark or an intention to authorise
somebody else to use the mark.

2.6.2 Duration of Protection

A trademark is registered for a period of 10 years and can be renewed
perpetually for periods of 10 years.

2.6.3 Monopoly Rights of the Owner

The owner of a registered trademark has the exclusive right to use the
trademark as a trademark in respect of the goods or services in which the
mark has been registered. The trademarks register contains 42 classes of
goods or services. When submitting its application, the enterprise must
describe the nature of its goods or services against which the mark is, or
will be, applied. The monopoly rights extend to only those goods or