MODULE 2: FUNDAMENTALS 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
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.
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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 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
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.
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.
2
– the general rule is that patent 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 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
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
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.
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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
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.
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
1997, the Implementing Guidelines for Inventions in Specific Fields, Chapter 1 of which contains examination
guidelines for computer software related inventions.
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“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.
· 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
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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.
6
PATENTS
Standar Innovatio
d Patent
n
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
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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-
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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. This is known as ‘early publication’
11. Roger. E. Schechter and John R. Thomas, Intellectual Property at pp. 528-529.
9
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:
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● The application in the prescribed Form 1, in duplicate, as modified to suit the
application;
● 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;
● Drawings, if necessary, to illustrate the invention should accompany the specification;
● Statement and Undertaking on Form 3 in appropriate cases if the applicant intends to
file the corresponding application outside India;
● Abstract of the invention in approximately 150 words, in duplicate. This is not
required when filing a provisional application.
● 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.
12 Ibid.
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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 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 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.
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).
12
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;
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· 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
15 J.A.L Sterling, World Copyright Law 1124 (3rd Edition 2008).
14
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 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
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.
15
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 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.
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.
22 Ibid.
23 Ibid.
24 Supra fn 11 at p. 472.
16
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, 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
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.
29 Ibid.
17
‘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 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
30 Supra, fn 11 at p. 1251.
31 Ibid., p. 455.
32 Ibid., p. 456.
18
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 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
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
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
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.
19
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
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.
20
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
40 Section 3 of the International Copyright Order, 1999.
21
development were primarily funded by the public sector. These investments took place
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 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,
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).
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).
22
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 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,
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).
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).
23
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
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 resistant
varieties. Pulses, millets, oilseeds, rice, wheat, vegetables provide the diverse basis of our
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).
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).
24
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 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
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).
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).
25
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 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
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).
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).
26
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 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.”
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).
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).
27
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:
· 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.
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).
28
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
29
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.
30
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.
31
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.
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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
77 Scott W. Cooper and Fritz P. Grutzner, Tips and Traps for Marketing Your Business, McGraw-Hill
Professional, 2008 p.38
33
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.
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
34
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 services. Accordingly,
the description of those goods or services and the choice of classes is a critical element in
establishing protection and forming a basis for commercialisation.
The advent of the Internet presents some special issues in relation to enforcement of a
registered trademark particularly in respect of domain names, meta tags and hyperlinks.
2.7 CONFIDENTIAL INFORMATION
There is no act which has been enacted by parliament to govern confidential information. The
law relating to confidential information has been built up over many decades and emanates
from English Common Law. There is no registration system.
Confidential information may be the only way of protecting an idea. Although colloquial use
often involves stating that confidential information is ‘owned', Indian law has yet to conclude
that this is so. This is because the courts have yet to commit to the proposition that
confidential information is a form of ‘property’. It is essentially a question of who has the
ability to control the release of the information. Nonetheless, English cases have held that it is
possible to have ‘co-ownership’ and that each co-owner is entitled to use the information for
their own benefit. This was laid down in Murray v. Yorkshire Fund Managers Ltd.78
The great advantage for the commercialisation process is that there is no limit to the period of
protection. If the enterprise can maintain confidentiality then it essentially holds monopoly
rights in relation to the use of that confidential information forever. Of course, the downside
is significant. Release of the information into the public domain, even if done in an
unauthorised manner, means that protection is potentially lost forever. For this reason the
mechanisms and processes employed by the enterprise to retain confidentiality are critical.
78 Murray v. Yorkshire Fund Managers Ltd., [1998] 2 All ER 1015.
35
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