Course File IPR - First 3 Units

TABLE OF CONTENT
S.NO. Content Page No.
1 Course Objectives & Outcomes
2 Syllabus
3 Lecture Plan
4 Unit wise course Material (As per given format)
Unit-I: Introduction to Intellectual Property Law
Unit-II: Introduction to Copyrights
Unit-III: Introduction to Patent Law
Unit-IV: Introduction to Trade Mark
Unit-V: Introduction to Trade Secrets
Unit-VI: Introduction to Cyber Law
5 Reference text books/web material etc.,
6 Mid Question Paper + Schemes of Evaluation.
7 Fast track material for Back-Log students.
8 Sample Question Papers with solutions
9 Virtual Labs if required
Mapping of Assignments / Question Papers with course objective learning

10
outcomes.
11 Bloom’s Taxonomy checklist

1. Course Objectives & Outcomes
1.1. Course Objectives
The objectives of the course are:
● To introduce and educate the engineering students about the intellectual property and the
law governing the same
● Get a holistic understanding of the complexities involved in the process of attributing
intellectual property rights to people.
● Learn the legalities of intellectual property to avoid plagiarism and other IPR relates
crimes like copyright infringements, etc.
● Develop a comprehensive knowledge base for the protection f intellectual property rights
● To update the students in technological advancements and their protection
● To preserve the technological inventions and innovations developed by students in the
subject area concerned
1.2. Course Outcomes

After completing this Course, the student should be able to:
● Give an outline of basics of intellectual property rights
● Explain about the legal aspects of intellectual property
● Extract the knowledge about the technological non corporeal property
● Elucidate the difference between misuse and overuse of intellectual rights
● Give the idea about Patents, Copyrights, Trademarks, Trade secrets and cyber law
● Debate on inventions and discovery of intellectual property rights
● Trace the importance of ownership of intangible property and their rights
● Bring out the entrepreneurial skills of the students with innovations
● Give the meaning of real intellectual property

2.
Syllabus
INTELLECTUAL PROPERTY RIGHTS AND PATENTS
UNIT I
-
Introduction to Intellectual Property Law – Evolutionary past – Intellectual Property Law Basics - Types of
Intellectual Property - Innovations and Inventions of Trade related Intellectual Property Rights – Agencies
Responsible for Intellectual Property Registration – Infringement - Regulatory – Over use or Misuse of
Intellectual Property Rights - Compliance and Liability Issues.
UNIT II
Introduction to Copyrights – Principles of Copyright – Subject Matters of Copyright – Rights Afforded by

Copyright Law –Copyright Ownership – Transfer and Duration – Right to Prepare Derivative Works –Rights of
Distribution – Rights of performers – Copyright Formalities and Registration
-
– Limitations – Infringement of Copyright – International Copyright Law-Semiconductor Chip Protection Act.
UNIT III
-
Introduction to Patent Law – Rights and Limitations – Rights under Patent Law – Patent Requirements –
Ownership and Transfer – Patent Application Process and Granting of Patent – Patent Infringement and
Litigation – International Patent Law – Double Patenting – Patent Searching – Patent Cooperation Treaty –
New developments in Patent Law- Invention Developers and Promoters.
UNIT IV
-
Introduction to Trade Mark – Trade Mark Registration Process – Post registration procedures – Trade Mark
maintenance – Transfer of rights – Inter parties Proceedings – Infringement – Dilution of Ownership of Trade
Mark – Likelihood of confusion – Trade Mark claims – Trade Marks Litigation – International Trade Mark
Law.
UNIT V
-
Introduction to Trade Secrets – Maintaining Trade Secret – Physical Security – Employee Access Limitation –
Employee Confidentiality Agreement – Trade Secret Law – Unfair Competition – Trade Secret Litigation –
Breach of Contract – Applying State Law.
UNIT VI
Introduction to Cyber Law – Information Technology Act - Cyber Crime and E-commerce – Data Security –
Confidentiality – Privacy - International aspects of Computer and Online Crime
-
3.
Unit-wise course material
3.1. Unit – I - Introduction to Intellectual Property Law
Syllabus
UNIT I
-
Introduction to Intellectual Property Law – Evolutionary past – Intellectual Property Law
Basics - Types of Intellectual Property - Innovations and Inventions of Trade related
Intellectual Property Rights – Agencies Responsible for Intellectual Property Registration –
Infringement - Regulatory – Over use or Misuse of Intellectual Property Rights - Compliance
and Liability Issues.
4.1.1 Unit Objectives:

After reading this Unit, you should be able to understand:
● To understand the importance of Intellectual property rights

● To equip the knowledge about inventions and their applicability
● To analyze the usage of Intellectual Property Rights in the real world
● To acquire the knowledge about the agencies responsible for registration of IPR’s
● To know about the possibilities regarding the complaints and issues of IPR’s
4.1.2. Unit Outcomes:
▪ List out the different intangible property rights
▪ Give an outline of Intellectual Property Right
▪ Explain about the importance of IPR’s in real world
▪ Extract the basic concepts of IPR and its usage
▪ Elucidate the difference between corporeal and non corporeal properties and its formalities.
▪ Give an idea about the registration process of IPR’s
▪ Debate on tangible and intangible property rights usage
▪ Trace the formalities required for ownership of Intellectual property

▪ Bring out the concepts of IPR’s into the usage for Professional Engineer’s
▪ Give the meaning of TRIPS role in formulating IPR’s
4.1.3 Unit Lecture Plan

Lecture no. Topic Methodology Quick reference
1 IPR INTRODUCTION & Chalk and talk NA
EVOLUTIONARY PAST,
INTELLECTUAL PROPERTY LAW
BASICS
2 TYPES OF IPR, INNOVATIONS, PPT and Chalk Web reference

INVENTIONS OF TRADE RELATED and talk
INTELLECTUAL PROPERTY RIGHTS
3 AGENCIES RESPONSIBLE FOR IP Chalk and talk Web reference

REGISTRATIONS INFRINGEMENT
REGULATORY
4 OVER USE OR MIS USE OF Chalk and talk Web reference

INTELLECTUAL PROPERTY RIGHTS
5 COMPLIANCES AND LIABILITY Chalk and talk Web reference

ISSUES AND CLASS TEST ON UNIT 1
4.1.4 Teaching Material / Teaching Aids as per above lecture plan.
4.1.4.2 Lecture-1
IPR INTRODUCTION & EVOLUTIONARY PAST, INTELLECTUAL PROPERTY LAW
BASICS
Introduction:
Any thing that can be owned is called as property. Property in its wider sense constitutes
all proprietary rights belonging to a person and does not include personal right. Important
characteristics of the property are possession, enjoyment and transferability.
– Kinds of property:
1. Corporeal Property (Tangible property)

- Movable
- Immovable (real and personal)
2. Incorporeal Property (Intangible property)
It is also called as “Intellectual Property” or Conventional property. It has

gained the importance in the recent trend.
Definition: What is Intellectual Property?

Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic
works; designs; and symbols, names and images used in commerce.
IP is protected in law by, for example, patents, copyright and trademarks, which enable people to
earn recognition or financial benefit from what they invent or create. By striking the right
balance between the interests of innovators and the wider public interest, the IP system aims to
foster an environment in which creativity and innovation can flourish.
What are intellectual assets?

Intellectual assets are what we call "intangible" assets. They include inventions, new
technologies, new brands, original software, novel designs, unique processes, and much more.
These assets have value in the marketplace very much like tangible assets, or assets that you can
hold in your hand.
In today's knowledge-based economy, it is crucial that you use your intellectual assets
strategically as you run your business. If you protect them, they can give your business a
competitive advantage over other players in the market. You intellectual assets have the potential
to make you a great deal of money.
How to protect your intellectual assets

Your competitors could be tempted to capture some of your intellectual assets, unless you
properly protect those assets.
In Canada, you can protect your intellectual property by submitting applications for a patent, a
trademark, an industrial design or for the registration of a copyright with us—whichever applies
to your situation. Contact us if you need help.
The Concept of Intellectual Property
● Intellectual property, very broadly, means the legal property which results from intellectual
activity in the industrial, scientific and artistic fields. Countries have laws to protect
intellectual property for two main reasons. One is to give statutory expression to the moral
and economic rights of creators in their creations and such rights of the public in access to
those creations. The second is to promote, as a deliberate act of government policy,
creativity and the dissemination and application of its results and to encourage fair trading
which would contribute to economic and social development.
● Generally speaking, IP law aims at safeguarding creators and other producers of intellectual
goods and services by granting them certain time- limited rights to control the use made of
those productions. These rights do not apply to the physical object in which the creation
may be embodied but instead to the intellectual creation as such. IP is traditionally divided
into two branches: “industrial property and copyright”. The convention establishing the
World Intellectual Property Organization (WIPO), concluded in Stockholm on July 14, 1967
(Art. 2(viii) provides that
“Intellectual property shall include rights relating to:
1) Literary, artistic and scientific works:
2) Performances of performing artists, phonograms and broadcasts;
3) Inventions in all fields of human behaviour;
4) Scientific discoveries;
5) Industrial designs;
6) Trademarks, service marks, and commercial names and designations;
7) Protection against unfair competition and all other rights resulting from intellectual
activity in industrial scientific, literary or artistic fields”.
Evolution of Intellectual property:
• The laws and administrative procedures relating to IPR have their roots in Europe.
• The trend of granting patents started in the fourteenth century. In comparison to other
European countries, in some matters England was technologically advanced and used to
attract artisans from elsewhere, on special terms.
• The first known copyrights appeared in Italy.
• Venice can be considered the cradle of IP system as most legal thinking in this area was
done here; laws and systems were made here for the first time in the world, and other
countries followed in due course.
• Patent act in India is more than 150 years old. The inaugural one is the 1856 Act, which
is based on the British patent system and it has provided the patent term of 14 years
followed by numerous acts and amendments.
History of the protection of intellectual property:
• The need for a system arose when foreign exhibitors refused to attend an International
Exhibition of Inventions in Vienna in 1873 because they were afraid that their ideas
would be stolen and will be emulated in other countries.
• 1883 - Paris Convention for the Protection of Industrial Property.
• 1886 - Berne Convention for the Protection of Literary and Artistic Works. It gave rights
to control, and receive payment for, the use of literary and artistic works.
• Both Conventions set up International Bureaus to carry out administrative tasks, such as
organizing meetings of the Member States.
• 1893 - United International Bureaus for the Protection of Intellectual Property - best
known by its French acronym, BIRPI.
BIRPI was the predecessor of what is today known as the World Intellectual Property
Organization or WIPO.
Treaties:
• There are 21 international treaties in the field of intellectual property, which are
administered by WIPO.
• The treaties fall into three groups namely
• treaties, which establish international protection
• treaties, which facilitate international protection and
• Treaties, which establish classification systems.
• 1994 Uruguay round - Agreement on Trade-Related Aspects of Intellectual Property

Rights (TRIPs) and Agreement on Trade Related Investment Measures (TRIMs) by
WTO (then GATT).
• 1996 - An Agreement between WIPO and the WTO provides for cooperation concerning
the implementation of the TRIPS Agreement, such as notification of laws and
regulations, and legislative assistance to member countries.
● Include / Attach PPT / Handout (typed) - Provided
● Provide Seminar details (Title, mode of student participation, duration, outcomes) – Interactive mode
of student participation is required
● Add a snapshot of models used
● Any other innovative teaching methodologies: PPT
● Include case study if applicable: NA
● Any internet links / video lecture links relevant to the lecture
● Any other relevant material / links / journal publications / videos / experiments etc.
4.2.1.1 Lecture-2
TYPES OF IPR, INNOVATIONS, INVENTIONS OF TRADE RELATED
INTELLECTUAL PROPERTY RIGHTS:
Types of Intellectual Property rights
Copyrights - a legal concept giving the creator of an original work exclusive rights to it, usually
for a limited time. In general, a copyright is the sole right to produce or reproduce a work or a
substantial part of it, in any form. It includes the right to perform the work or any substantial part
of it or, in the case of a lecture, to deliver it. If the work is unpublished, copyright includes the
right to publish the work or any substantial part of it. Copyright provides protection for literary,
artistic, dramatic or musical works (including computer programs) and other subject matter
known as performer's performances, sound recordings and communication signals.
Trademarks - a distinctive sign or indicator used by an individual, business organization, or
other legal entity to identify those products or services to consumers. A trademark may be one or
a combination of words, sounds or designs used to distinguish the goods or services of one
person or organization from those of others in the marketplace.
Patents - a set of exclusive rights granted by a sovereign state to an inventor for a limited period
of time in exchange for the public disclosure of an invention. Patents give you exclusive rights to
your innovations. A patent is granted to you by the government. It gives you the right to exclude
others from making, using or selling your invention. Your Canadian patent applies within
Canada for 20 years from the date you file the application. The patent application is available to
the public 18 months after you file it. Patents cover new inventions (process, machine, product,
composition of matter) or any new and useful improvement to an existing invention.
Industrial design rights - protects the visual design of objects that are not purely utilitarian. An
industrial design is the visual features of shape, configuration, pattern or ornament, or any
combination of these features, applied to a finished article. For example, the shape of a table or
the shape and decoration of a spoon may be industrial designs. An industrial design must have
features that appeal to the eye. To be eligible for registration, your design must be original.
Geographical Indication - place names (in some countries also words associated with a place)
used to identify the origin and quality, reputation or other characteristics of products
Trade Secrets: A trade secret includes any valuable business information that derives its value
from the secrecy. Trade secrets include various assets such as sales methods, distribution
methods, customer profiles, client lists, supplier lists, product ingredients and formulas, etc.
The benefits of registering a patent
Once you register a patent, apart from using the patent to prevent others from exploiting your
invention, you can employ it to raise funds for your business, license it to third parties for
commercial returns or sell the patented invention.
For an invention to be patentable, it must, in general, satisfy three key criteria:
1. New – The invention should not be publicly known in any way, anywhere in the world.
Owners of inventions should be careful to keep the invention secret until a patent application has
been successfully made. If the idea has already been talked about, commercially exploited,
advertised or demonstrated, then the novelty of the invention may be compromised.
If the invention needs to be disclosed to a third party before a patent application has been made,
a non-disclosure agreement should be drawn up.
Once a Date of Filing has been obtained for the patent application, the invention can claim a
"Patent Pending" status and the applicant can proceed to disclose the invention as indicated in
the patent application to interested parties. As part of the application process, the patent
application will be published after 18 months and if the statutory requirements are met. Once
published, details of the invention will be made available for public inspection.
2. Inventive step – The invention must be something that represents an improvement over any
existing product or process that is already available.
The improvement must not be obvious to someone with technical skills or knowledge in the
invention’s particular field. If an invention is new yet obvious to a person skilled in the art, the
invention would not fulfill the inventive step requirement.
3. Industrial application – The invention must be useful and have some form of practical
application. It should be capable of being made or used in some form of industry.
The following is not a patentable invention:

● An invention of a method for the treatment of the human or animal body by surgery or
therapy, or of a diagnosis practiced on the human or animal body.
● An invention that could encourage offensive, immoral or anti-social behavior, even if it
satisfies the key criteria for patents.
Innovations and inventions of Trade related intellectual property rights:
Trade Related Intellectual Property Rights (TRIPs) was added to the General Agreement on
Tariffs and Trade (GATT) treaty at the end of the Uruguay Round of trade negotiations in 1994.
After the Uruguay round, the GATT became the basis for the establishment of the World Trade
Organization. Therefore, when GATT was succeeded by WTO in 1995, and all the members of
WTO had to sign an agreement related to Intellectual Property Rights if it was interested in
multi-lateral trading and also enact mandatorily some regulations related to it in the domestic
system. The TRIPs agreement is a special agreement which introduced intellectual property law
into the international trading system for the first time, and it remains the most comprehensive
and all inclusive international agreement on intellectual property to date.
The TRIPs Agreement tries to bring in uniformity in the standards of intellectual property rights
among the WTO irrespective of their development status. While this is expected to result in
technology transfer and flow of investment among the Members, the extent of benefits accruing
will depend on domestic industries and the status of development of the countries.
What is TRIPs?
Having defined and classified IP, let us now look at TRIPs: The Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPs) is an international treaty administered by the
World Trade Organization (WTO) which sets down minimum standards for most forms of
intellectual property (IP) regulation within all member countries of the World Trade
Organization.
TRIPs deals with the following IPRs
● Copyright and related rights;
● Patents;
● Trademarks;
● Geographical indications, including appellations of origin;
● Industrial designs;
● Integrated circuit layout-designs;
● Protection of undisclosed information
● Control of anti-competitive practices in contractual licenses
TRIPs also specifies enforcement procedures, remedies, and dispute resolution procedures.
WTO specifies the three main features of the Agreement as;
● Standards: In respect of each of the main areas of intellectual property covered by the
TRIPS Agreement, the Agreement sets out the minimum standards of protection to be
provided by each Member. Each of the main elements of protection is defined, namely
the subject-matter to be protected, the rights to be conferred and permissible exceptions
to those rights, and the minimum duration of protection.
● Enforcement: The second main set of provisions deals with domestic procedures and
remedies for the enforcement of intellectual property rights. The Agreement lays down
certain general principles applicable to all IPR enforcement procedures.
● Dispute settlement: The Agreement makes disputes between WTO Members about the
respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
Under TRIPs, all countries have to provide for protection of product patents from January 1,
1995. But developing countries like India, which did not have a regime of product patents, had a
transition period of ten years-until January 1, 2005, to affect the switch over. During this
transition period, it was decided that these economies would accept applications for patents
(which would be considered and granted after January 2005) and provide EMR (Exclusive
Marketing Rights) for the producers of patented drugs (in the pharmaceutical industry) and
agrochemicals.
Comparison of India's Patent Act and TRIPs
Indian Patent Act of 1970 TRIPs

Only process not product patents in food, Process and product patents in almost all
medicines, chemicals fields of technology
Term of patents 14 years; 5-7 in chemicals, Term of patents 20 years
drugs
Compulsory licensing and license of right Limited compulsory licensing, no license of
right
Several areas excluded from patents (method Almost all fields of technology patentable.
of agriculture, any process for medicinal Only area conclusively excluded from
surgical or other treatment of humans, or patentability is plant varieties; debate
similar treatment of animals and plants to regarding some areas in agriculture and
render them free of disease or increase biotechnology
economic value of products)
Government allowed to use patented Very limited scope for governments to use
invention to prevent scarcity patented inventions
Include / Attach PPT / Handout (typed) - Provided
Provide Seminar details (Title, mode of student participation, duration, outcomes)
Interactive mode of student participation
Add a snapshot of models used - NA
Any other innovative teaching methodologies PPT
Include case study if applicable: Discussed at the end of the Unit
Any internet links / video lecture links relevant to the lecture:
Any other relevant material / links / journal publications / videos / experiments etc.-
4.2.1.2 Lecture-3
AGENCIES RESPONSIBLE FOR IP REGISTRATIONS INFRINGEMENT

REGULATORY:
Agencies responsible for IP Registration:

Ministry of Commerce & Industry
Department of Industrial Policy and Promotion (DIPP)

The Department of Industrial Policy and Promotion under the Ministry of Commerce &
Industry is responsible for Intellectual Property Rights relating to Patents, Designs, Trade Marks
and Geographical Indication of Goods and oversees the initiative relating to their promotion and
protection. These include the outlining of policy and its implementation through the Office of the
Controller General of Patents, Designs and Trade Marks. It promotes awareness regarding
protection of the Intellectual Property Rights inherent in industrial property in conjunction
with the World Intellectual Property Organization (WIPO) and apex industry organizations
apart from similar initiatives involving regional industry associations. It also provides inputs on
various issues relating to the Agreement on Trade Related Aspects of Intellectual Properties
(TRIPS) related to World Trade Organization (WTO) in these fields. The Department
undertakes technical cooperation programs with the World Intellectual Property Organization
(WIPO), Geneva for the modernization and up gradation of intellectual property administration
relating to patents, designs, trademarks and geographical indications and the organization of
Human Resource Development and awareness generation activities in the country.
The major initiatives by the Department this year include modernization of IP infrastructure and
establishment of new integrated offices in Delhi, Kolkata, Chennai and Mumbai. A programme
costing Rs.153 crore has been implemented in the 10th Five Year Plan. The programme focused
on: Infrastructure development; computerization; human resource development; training and
awareness. Further modernization of IP Offices to provide additional human resources, higher
level of computerization to support on-line processing, strengthening of data-base and novelty
search facilities, awareness generation activities, accession to international treaties/conventions
is being taken up in 11th Five Year Plan. The Department has introduced e-filing facility for
patent and trademark applications. Along with the legislation, rules have also been amended to
install a user-friendly system for processing of IP applications. All rules and forms are available
on the website: www.ipindia.nic.in.
These initiatives along with the legislative reforms which were already in place have resulted in
increase in filing of patent applications from 4824 in the year 1999-2000 to 28,882 applications
in the year 2006-2007. The number of applications examined has also gone up to 14,119 in
2006-07 against the figure of 2824 in the year 1999-2000. A total of 7359 patents have been
granted in 2006-07.
Copy Right Office:
4th Floor, Jeevan Deep Building

Parliament Street
New Delhi - 110001
Telephone No. : +91-11-23362436
Patents Office:
Shri V. Ravi
Controller General of Patents, Designs & Trade Marks
Bhoudhik Sampada Bhavan,
Near Antop Hill Head Post Office,
S.M. Road, Antop Hill, Mumbai-400037,
Phones : 022-24123311, Fax : 022-24123322
Web site : www.ipindia.nic.in
Patent Offices
Address Contact Persons

The Patent Office,
i)Dr.P.C.Chakraborty
Intellectual Property Office Building, Deputy Controller of Patents
& Designs
CP-2 Sector V, Salt Lake City,Kolkata-700091,
ii) Dr. Amitava
Phone : 23671945, 1946, 1987, FAX-033-2367-1988,
Chakraborty
Email:- kolkata-patent@nic.in
Assistant Controller of
Patents & Designs
The Patent Office, i) Shri K.M.Viswanathan

Deputy Controller of
Intellectual Property Office Building, Patents & Designs
G.S.T. Road, Guindy, Chennai-600032,
ii) Shri V. Rengasamy
Phone: 044-22502081-84 FAX: 044-22502066,
Email: chennai-patent@nic.in Deputy Controller of Patents
& Designs
TThe Patent Office, i) Shri P.K. Patni
Intellectual Property Office Building,
Deputy Controller of Patents
Plot No. 32, Sector 14, Dwarka,
& Designs
New Delhi-110075,
Phone : 011-28034304, 28034305, 28034306 ii) Shri Hardev Karar
FAX:011-28034301, 28034302
Email: delhi-patent@nic.in Assistant Controller of
Patents & Designs
The Patent Office i) Dr. W. M. Dhumane,
Boudhik Sampada Bhawan,
Near Antop Hill Post Office, S.M.Road, Joint Controller of Patents
& Designs
Antop Hill, MumbaiI - 400 037.
Phone : 24137701, 24141026, 24150381, 24148165, 24171457 ii) Shri Rakesh Kumar
FAX : 24130387
EMAIL: mumbai-patent@nic.in Assistant Controller of
Patents & Designs
Designs Wing of the Patent Office
The Patent Office(Designs Wing),
Intellectual Property Office, i) Shri D.K.Rahut
CP-2 Sector V, Salt Lake City, Kolkata-700091 Deputy Controller of

Phone No. 033-23671945-46, 23671987 Patents & Designs
FAX-033-23671988, Email:- kolkata-patent@nic.in
ii) Shri G.P. Roy
Note : Application for Design can also be received by any of Assistant Controller of
the Patent Office located at New Delhi, Chennai & Mumbai. Patents & Designs
Trade Marks Registry

Office of the Trade Marks Registry, Smt. Ratan Shalya,
Asstt.Regisrar of Trade
Bhoudhik Sampada Bhavan, Marks
Near Antop Hill Head Post Office,
S.M. Road, Antop Hill, Mumbai-400037,
Phone: 022-24123366 Fax: 022-24123355
Email : tmrmum@bom5.vsnl.net.in
Trade Marks Registry, Shri M.H. Mahendra
Joint Registrar of Trade
Intellectual Property Office Building, Marks
CP-2 Sector V, Salt Lake City, Kolkata 700091,
Phone : 033-23675975, 23672848, 23677307,Fax :
033-23677311,
Email : tmrcalbr@cal2.vsnl.net.in
Trade Marks Registry, (1)Shri D.S. Bansod

Deputy Registrar of Trade
Intellectual Property Office Building, Marks
Plot No. 32, Sector 14, Dwarka, New Delhi 110 0075,
Phone: 011-28032406, 28031186, 28031208, (2) Shri G.L. Verma,
28031221, 28032382, 28032773 Deputy Registrar of Trade

Marks
Fax : 28032381
Email : tmrdel@ndf.net.in
Trade Marks Registry, Chennai N.D. Kastruri
Intellectual Property Office Building Deputy Registrar of Trade

Mark
G.S.T. Road, Guindy, Chennai 600032,
Direct. 044-22502041, Tele-Fax : 044-22502042
Email: tmrchennai@nic.in
Trade Marks Registry, Ahmedabad Shri Amar Prakash,
National Chambers, 15/27, 1st floor, Deputy Registrar of Trade

Ashram Road, Ahmedabad 380009, Marks
Phone: 079-26580567, 26587193, Fax :079-26586763,
Email : tmrahm@ad1.vsnl.net
Geographical Indications Registry

Geographical Indications Registry,
Shri. V. Natrajan
Intellectual Property Office Building,G.S.T. Road, Guindy, Assistant Registrar of
Chennai 600032, Geographical Indications
Phone : 044-22502091 - 93, 22502098,
Fax: 044-22502090
Email: gir-ipo@nic.in
National Institute for Intellectual Property Management (NIIPM)

National Institute for Intellectual Property Management
(NIIPM) 1. Dr. W.M. Dhumane
Joint Controller of Patents

CGO complex, C Block, Seminary Hills, Nagpur, Maharashtra - and Designs
440006
2. Smt. C. D. Satpute
Phone: (91) (0712) 2511380,2512040,2510088,2410535
Senior Documentation
Fax: (91) (0712) 2512040 / 2510186 Officer
3. Pankaj P. Borkar,
Email: niipm.ipo@nic.in , ipti-mh@nic.in ,
Examiner of Patents and
Designs
Trademarks:
Address of the Designated Officer Name and Phone No., Fax No. and
Office under RTI Designation e-mail id
Trade Marks Registry, Central Public Shri V. D. Abhyankar, Ph. No. 022-24123377
Boudhik Sampada Information Officer
Bhawan, S. M. Road, Hindi Officer Fax No. 022-24140808
Antop Hill, mumbai.tmr@nic.in

Central Assistant Shri H. A. Mhatre,
Mumbai - 400 037
Public Information
Officer Assistant Examiner of
Trade Marks and GI
Trade Marks Registry, Central Public Shri Y. K. Bali,, Ph. No. 011-28032406
Intellectual Property Information Officer Fax No. 011-28032381
Office Building, Senior Examiner of
Dwarka, Trade Marks and GI ykbali.tmr@nic.in
Central Assistant Shri F. Minj,
Plot No. 32, Sector
Public Information Administrative Officer
14, New
Officer
Delhi-110075
Trade Marks Registry, Central Public Smt. Ratan Shalya, Ph. No. 033-23675103
Intellectual Property Information Officer Assistant Registrar of Fax No. 033-23677311
Office Building, Trade Marks and GI
CP-2 Sector V, ratan.shalya@nic.in
Salt Lake City, Central Assistant Shri S. K. Nandy,
Kolkata-700091 Public Information Assistant
Officer Superintendent
Trade Marks Registry, Central Public Shri M. Mohammed Ph. No. 044-22502081
Intellectual Property Information Officer Habibulla, Senior Fax No. 044-22502046
Office Building, Examiner of Trade
G.S.T. Road, Guindy, Marks and GI mm.habibulla@nic.in
Chennai-600032
Central Assistant Shri K. Saravanan,
Public Information Stenographer Grade I
Officer
Trade Marks Registry, Central Public Shri S. B. Palo, Ph No. 079-26580567
15/27, National Information Officer Fax No. 079-26586763
Chambers, 1st Floor, Assistant Registrar of
Ashram Road, Trade Marks and GI sb.palo@nic.in
Ahmedabad-380009
Central Assistant Shri K. R. Raval,
Public Information
Officer Assistant Examiner of
Trade Marks and GI
Intellectual property regulation:
Trade Secrets:
Trade Secrets: Their position and protection in India
Position of Trade Secrets in India

Trade Secrets seems to be a neglected field in India, as there is no enactment or policy
framework for the protection of trade secrets. This form of intellectual property is a new entrant
in India, but is nevertheless a very important field of IP. Protection of trade secrets is a very
important and one of the most challenging tasks for the Indian government as this will enhance
the foreign investment in India giving a boost to the Indian economy. Foreign investors have to
be assured of the protection of their trade secrets, so that they can do business with our country.
A proper policy for trade secret protection will further enhance the security in our own industry.
Almost all the countries in the world have a policy for the protection of trade secrets and India
also being a signatory to the TRIPS is under an obligation to amend its laws or create a new law
in order to safeguard the trade secrets of various businesses. So a proper policy for the protection
of trade secrets in India is the need of the hour in order to provide a sense of security among the
foreign investors and the local businessmen regarding their trade secrets which will further boost
the Indian economy
Protection of Trade Secrets in India

As mentioned above, in India, no substantive authoritative text or case laws are available to
determine the nature or ambit of trade secrets. But the Indian courts have tried putting the trade
secrets of various businesses under the purview of various other legislations in order to protect
them and also they have tried to define what a trade secret is in various cases, some of them are
as follows:-
1. American Express Bank Ltd. v. Ms. Priya Puri [1] Delhi High Court, in this case defined trade
secrets as “… formulae, technical know-how or a peculiar mode or method of business adopted
by an employer which is unknown to others.”
2. Michael Heath Nathan Johnson v. Subhash Chandra And Ors[2] and John Richard Brady And
Ors v. Chemical Process Equipments P. Ltd. And Anr[3] took note of the contentions of the
counsels who referred to English decisions to define trade secrets
3. Mr. Anil Gupta and Anr. v. Mr. Kunal Dasgupta and Ors[4] the Delhi High Court held that the
concept developed and evolved by the plaintiff is the result of the work done by the plaintiff
upon material which may be available for the use of anybody, but what makes it confidential is
the fact that the plaintiff has used his brain and thus produced a result in the shape of a concept.
The legislations which are having a connection with the trade secrets can be summed up as
1. Copyright Act, 1957[Section 51,55 and 63]
2. The Designs Act,2000
3. The Information Technology Act, 2000[Section 65, 72]
4. Indian Penal Code [Section 408, 415]
5. The Indian Contract Act [Section 27]
6. The Competition Act, 2002 [Section 3]
7. Civil Procedure Code
8. Criminal Procedure Code
Intellectual property Regulation in India:
Besides to the most recent developments, in order to bring progressive changes towards a free
market society, rapid liberalization of international trade practices and demonstrating its
commitments to the WTO under the Trade Related Intellectual Property Rights Agreement
(TRIPS), the Government of India undertook a series of steps, to conform India IP legislation to
acceptable international standards. The regulations relating to all forms of IP have been amended
or reissued in recent years, mainly in response to India's accession to the WTO. Here are some of
these developments in IP legislation in India.
Trademark law brought at par with international practices
To bring Indian trademarks law in line with international practices and to ensure implementation
of India's commitments under the TRIPS Agreement, India replaced the Trade and Merchandise
Marks Act, 1958, with the Trade Marks Act, 1999. Some changes under the 1999 Act are as
follows:
* Service marks, for the first time, made protectable through registration.
* The definition of "trade mark" now includes graphic representations, shapes, packagings and
combinations of colours, thereby widening IPR protection.
* The procedure for registration of trademarks expedited by removing the earlier system of Part
A and B registration. In addition, only a single application need now be filed for registration of a
trademark in different classes. The 1999 Act also provides for the classification in conformity
with recognized International Classification of Goods and Services.
* The period of registration and renewal has been increased from seven to ten years.
* The definition of "trademark infringement" has been broadened to give protection beyond the
use of identical/deceptively similar marks in relation to goods for which they are registered.
* An action for infringement of trademark/passing-off can be filed in a district court within
whose jurisdiction the plaintiff ( trademark proprietor) resides or carries on business, as against
the earlier law which required the suit to be filed at the defendant's place.
* Under the new law, both registered and unregistered trademarks can be assigned with or
without the goodwill of the business.
Recently, by way of the Trademarks (Amendments) Rules, 2014, the fee with respect to
trademark filing has been increased in certain cases. The fee for an expedited examination have
also been increased. Further, the Trade Marks Registry recently issued an Office Order little with
respect to alterations that may be made to an application for trademark registration. This Order
enlists certain 'substantial alterations', which would not be allowed; and other alterations,
primarily clerical in nature that would continue to be accepted by the Registrar.
Protection to Geographical Indications Provided:
India has enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999
(the GIG Act). The GIG Act provides for registration and better protection of geographical
indications relating to goods to help identify the place of origin of goods, quality, reputation and
other distinctive characteristics of these goods. The GIG Act now helps in protecting unique
Indian products linked to some geographical region of India, such as Basmati Rice, Darjeerling
Tea, Alphonso Mangoes, Malabar Pepper, Cardamom and Hyderabad Grapes, which are all well
known in the international market. For many years, these products have been exported on a
regular basis, demonstrating India's reputation of high quality of these products and, therefore,
require such protection. Under the GIG Act, assignment of geographical indications is
prohibited, being public property. The GIG Act also lays down provisions for infringement
actions. The GIG Act helps prevent geographical indications of goods becoming generic which
may otherwise lead to a loss of distinctiveness and consequently loss of protection.
Copyright Law Modified:
The 2012 amendments in copyright law, which were made to make Indian copyright law
compliant with the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms
Treaty, introduced technological protection measures, ensured that fair use survives in the digital
era by providing special fair use provisions, made many author-friendly amendments, special
provisions for disabled, amendments facilitating access to works and other amendments to
streamline copyright administration.
The Government is considering further amendments to the Indian Copyright Act to help deter
continuing piracy. Future amendments would provide for greater deterrents against infringement
through more effective legislative and administrative frameworks. These amendments would
also offer the police wider powers to conduct secret raids, seize and destroy infringing products,
provide faster criminal proceedings and increased punishment for piracy.
4.2.1.3 Lecture-4
OVER USE OR MIS USE OF INTELLECTUAL PROPERTY RIGHTS
Patent Abuse – Overuse and Misusing Patent Rights:
Patent misuse is a patent owner's improper use of patent rights, speaking very generally, to
expand the scope or term of the patent. Examples of such patent misuse include forcing
customers to agree to pay royalties on unpatented products or to pay royalties on an expired
patent. This type of patent misuse can take place without a violation of antitrust laws.[3]
But it
violates such policies of US patent law as the monopoly of a patent is confined to what its claims
cover and once a patent expires the public has an unlimited right to practice the formerly claimed
subject matter. Patent misuse may also occur when the patentee's conduct is a violation of
antitrust laws. For example, a company buying all the patents in a given field (relevant market)
to stall competition would be misusing patents, and (assuming other statutory requirements are
met) also violating section 7 of the Clayton Act (15 U.S.C. § 18) and section 2 of the Sherman
Act (15 U.S.C. § 2). Other antitrust patent misuse includes (again assuming that other statutory
requirements are met) a licensor's exercising control over the price that several licensees charge
for a product or service; attempting to enforce a patent that the patentee knows to be invalid or
not infringed; and selling patented goods on the condition, agreement, or understanding that the
buyer will not deal in the goods of a competitor of the seller.
Misuse of trademark is a defense to trademark infringement. Misuse occurs when the
trademark owner uses the mark in violation of the law, such as canceling a trademark license on
the basis of illegal discrimination. The U.S. Patent and Trademark Office have never canceled a
mark based on trademark misuse. However, cancellation of patents and copyrights have occurred
based on misuse, and therefore, a similar precedent can be set in trademark law. The trademark
misuse theory is useful where a domain name owner is forced by a trademark owner to litigate or
arbitrate a frivolous claim of infringement.
Copyright misuse is an equitable defense against copyright infringement in the United States
allowing copyright infringers to avoid infringement liability if the copyright holder has engaged
in abusive or improper conduct in exploiting or enforcing the copyright. Copyright misuse is
comparable to, and draws from precedents under, the older doctrine of patent misuse, which
dates back to the early years of the 20th century and derives from the more general equity
doctrine of "unclean hands", which bars a party from obtaining equitable relief (such as an
injunction) against another when the party has acted improperly (though not necessarily illegally)
Misuse of Trade secrets:
The draft directive proposes to make it unlawful to intentionally or negligently acquire a trade
secret without the consent of the trade secret holder by way of unauthorised access to, or making
copies of, any documents or materials containing the trade secret or from which the trade secret
can be deduced. It would also be an offence to obtain trade secrets by way of theft, bribery,
deception, breach or inducement to breach a confidentiality agreement or any other duty to
maintain secrecy or by any other conduct which, under the circumstances, is considered contrary
to honest commercial practices. It would also be unlawful to use or disclose a trade secret that
has been acquired unlawfully, in breach of a confidentiality agreement or any other duty to
maintain secrecy; or in breach of a contractual or any other duty to limit the use of the trade
secret.
Finally and most notably, it would also be unlawful to engage in the conscious or deliberate
production, offering or placing on the market, or importing, exporting or storing of infringing
goods. Infringing goods are those goods whose design, quality, manufacturing process or
marketing significantly benefits from trade secrets unlawfully acquired, used or disclosed.
Include / Attach PPT / Handout (typed) - Provided
Interactive mode of student participation
Add a snapshot of models used: NA
Any other innovative teaching methodologies: NA
Include case study if applicable: Discussed at the end of the Unit
Any internet links / video lecture links relevant to the lecture:
Any other relevant material / links / journal publications / videos / experiments etc. –
1.1.1.1. Lecture-5
COMPLIANCES AND LIABILITY ISSUES AND CLASS TEST ON UNIT 1
IP Compliance and Liability Issues:

Organizations should create and implement programs to address IP issues in a way that will
enable them to both protect their own patents and avoid exposure to liability from the
infringement of a competitor’s.
These five steps are helpful to effectively managing patent issues:
1. Develop an IP policy. An IP policy should reflect the organization's business plan and
include uniform policies and procedures for filing patent applications and perfecting
other Intellectual Property rights. Consultation with IP counsel on all IP decisions is also
essential.
2. Know what competitors are doing. Organizations should monitor competitors’ new
products and services and the IP rights generated in connection with them so they will be
aware of potential infringement issues.
3. Audit patent rights. Conduct an audit to determine exactly what patent rights are owned
by the organization or in the process of being prepared and exactly what those patents
cover.
4. Address IP in employment agreements. Include provisions acknowledging that all
discoveries made during employment belong to the company and that the employee
agrees to cooperate fully in the prosecution of patent applications and litigation.
5. Educate all personnel involved in the patent process. Employees should be trained to
understand what patents are, how they need to be protected and how important proper
documentation is for creating a valuable patent portfolio.
Comprehensive IP policies can be very complex, and it’s critical that organizations tailor them to
their own particular needs. Providing intellectual property training to employees is an important
way for organizations to protect their IP assets and avoid violations in the face of increasing
litigation. Thomson Reuters' online training course on Intellectual Property covers the
fundamental principles of patents, trademarks and copyrights and provides employees with
guidance on recognizing issues that affect corporate intellectual-property rights
IPR faces multiple issues in contemporary India –
1. At the 51st Council Meeting of Asian Patent Attorneys Association, 2005, CJI Y. K.
Sabharwal gave the first official recognition to the importance of IPR cases and yet in
India TV v. Yashraj Films, on August 21st, 2012, the Delhi HC gave a judgement
discussing the legal maxim of de minimis non curat lex, i.e. the law will not resolve
unimportant and petty disputes leading to question the importance of IPR suits in India.
2. In India, we have very slow mechanism of legal system in resolving court cases. Pending
cases related to IPR amounts to hinder commercial use of IPR by the real owner. Hence,
it is very important to deal IPR cases with quick precision.
3. It has been a decade since the last amendment was made in the Indian Patents Act, 1970,
which included patent of food and pharmaceuticals products. There has since been a lot
of advancement introduced in this field that requires immediate recognition by the law
like nano-technology, biotechnology and surgical advancements, etc. IPR statutes also
need to be amended on the new and improved products and services in the market like
food, clothing, computer software, e-marketing, social networking sites and
smart-phones, etc.
4. IPR is a concern in the cyber world seeing as many net savvies use the means of
electronic transmission and e-publishing, etc. Copyright is infringed everyday due to web
piracy of movies and music through Torrent sites and nothing is being done to curb such
practices.
5. Soft law leads to ignoring the law. Business houses and individuals don’t seem to give
much importance to trademarks when it comes to their e-commerce websites. This
triggered the issuance of the Draft Trade Mark Rules, 2015 by the Ministry of Commerce
and Industry. The rules have however, failed to emphasize upon e-delivery of trademark
services which if not looked into will significantly sabotage the Digital India project.
There are very few large-scale IPR infringing players in India resulting in no
game-changing, financially impeding, fund-raising impacts on the nation which forces
the government and judiciary to see IPR in a new light. Huge penalties in isolated cases
(Rs 20 million by Rakesh Roshan to Mr. Sampat over thump music, Rs 2 crore suit
claimed by Suneet Varma over a blue poncho ‘stolen’ by Aki Narula in ‘Bunty Aur
Babli’) cannot create enough impact. Due to a lack of impact, most people are still
unaware of IPR and thus they don’t realise the infringement.
6. On December 12, 2014, the US Trade Representative (USTR) reviewed India’s IPR
system, impliedly stating India’s IPR laws need modifications in diverse areas like
pharma, IT and publishing, to cater for the concerns of US companies. It showed the
potential damage that the present IPR laws could cause to India-USA trade relations.
3.3 UNIT – II
Introduction to Copyrights – Principles of Copyright – Subject Matters of Copyright – Rights Afforded by
Copyright Law –Copyright Ownership – Transfer and Duration – Right to Prepare Derivative Works –Rights of
Distribution – Rights of performers – Copyright Formalities and Registration
-
– Limitations – Infringement of Copyright – International Copyright Law-Semiconductor Chip Protection Act.
3.3.1 Unit Objectives:

1. To understand the subject matter of copyrights

2. To equip the knowledge about the rights of copy right owner
3. To analyze the effect of international copy right law
4. To acquire the knowledge about copy rights and its legal formalities
5. To know about the protection of Semiconductor Chip Protection Act.
3.3.2 Unit Outcomes:

1. List out the different sections and clauses of copy right law
2. Give an outline of rights of a copy right owner
3. Explain about the importance of registration of copy rights for a real owner
4. Extract the basic concepts of duration, transfer and formalities of a copy right
5. Elucidate the difference between derivative works and co authorship
6. Give an idea about the registration process of copy right
7. Debate on semiconductor chip protection
8. Trace the formalities required for publishing a text book
9. Bring out the difference of copying a book on different owner and extracting the
topics for academic purpose
10. Give the meaning of infringement of copy right
1.1.2. Unit Lecture Plan
Lecture no. Topic Methodology Quick reference
1 INTRODUCTION TO COPY PPT Deborah
RIGHTS, PRINCIPLES OF E.Bouchoux and
COPY RIGHTS, SUBJECT Web reference
MATTERS OF COPY RIGHTS
2 RIGHTS AFORDED BY COPY Chalk and talk Deborah

RIGHT LAW, COPY RIGHT E.Bouchoux and
OWNERSHIP, TRANSFER AND Web reference
DURATION
3 RIGHT TO PREPARE Chalk and talk Web reference

DERIVATIVE WORKS, RIGHTS
OF DISTRIBUTION, RIGHTS
OF PERFORMERS
4 COPY RIGHT FORMALITIES Chalk and talk and Web reference

AND REGISTRATION, PPT
LIMITATIONS,
INFRINGEMENT OF COPY
RIGHT
5 INTERNATIONAL COPY Chalk and talk and Web reference

RIGHT LAW, SEMI PPT
CONDUCTOR CHIP
PROTECTION ACT
6 CLASS TEST ON UNIT 2 NA NA
1.1.3. Teaching Material / Teaching Aids as per above lecture plan.
Lecture-1
INTRODUCTION TO COPY RIGHTS, PRINCIPLES OF COPY RIGHTS, SUBJECT MATTERS OF COPY
RIGHTS
Introduction:
Copyright is a legal right created by the law of a country that grants the creator of an original
work exclusive rights to its use and distribution, usually for a limited time. The exclusive rights
are not absolute; they are limited by limitations and exceptions to copyright law, including fair
use.
Copyright is a form of intellectual property, applicable to any expressed representation of a
creative work. Under US copyright law, however, legal protection attaches only to fixed
representations in a tangible medium. It is often shared among multiple authors, each of whom
holds a set of rights to use or license the work, and who are commonly referred to as rights
holders. These rights frequently include reproduction, control over derivative works, distribution,
public performance, and "moral rights" such as attribution.
Copyrights are considered territorial rights, which mean that they do not extend beyond the
territory of a specific jurisdiction. While many aspects of national copyright laws have been
standardized through international copyright agreements, copyright laws vary by country.
Copyright is an automatic right that applies to the following types of work:
● Literary: song lyrics, manuscripts, manuals, computer programs, commercial documents,
leaflets, newsletters & articles etc.
● Dramatic: plays, dance, etc.
● Musical: recordings and score.
● Artistic: photography, painting, sculptures, architecture, technical drawings/diagrams,
maps, logos.
● Typographical arrangement of published editions: magazines, periodicals, etc.
● Sound recording: may be recordings of other copyright works, e.g. musical and literary.
● Film: video footage, films, broadcasts and cable programmers.
Copyright automatically exists under law whenever an individual creates any type of work listed
above provided it is original (not directly copied or adapted from an existing work), and exhibit
some degree of labour, skill or judgement in its creation.
Normally the individual or collective who authored the work will exclusively own the work and
is referred to as the ‘first owner of copyright’. However, if a work is produced as part of
employment then the first owner will normally be the company that is the employer of the
individual who created the work.
Freelance or commissioned work will usually belong to the author of the work, unless there is an
agreement to the contrary, (i.e. in a contract for service).
Just like any other asset, copyright may be transferred or sold by the copyright owner to another
party.
Rights cannot be claimed for any part of a work which is a copy taken from a previous work. For
example, in a piece of music featuring samples from a previous work, the copyright of the
samples would still remain with the original author.
Principles of Copyrights:
1. Creators and producers of creative works should receive meaningful protection, recognition
and compensation for their contributions to economic and cultural development.
2. Copyright law should reflect an appropriate balance between the rights of creators and
copyright owners and the interests of consumers and other users of works.
3. Copyright law should be regularly reviewed and updated as appropriate to respond to new
technologies and uses.
4. Copyright systems should enable rights to be meaningfully, practically, cost-effectively, and
proportionally enforced.
5. A wide range of means should be available for creative works to reach the public, as enabled
by Internet and other technologies—maximizing choice for both rights holders and users. It is
desirable to have as much quality content as possible available in as many formats as
possible.
6. Licensing should be streamlined in a content-appropriate manner and simplified to be as easy
and efficient as possible, including for different types of content and across national
boundaries.
7. The public should be educated about the purpose, scope and nature of copyright protections,
including exceptions, and the reasons for proposed changes or government action.
8. Formulating specific copyright policy approaches can be complex, messy work. But the
principles above can help guide that process, and can serve as a reminder that all of us share
an interest in copyright systems that both incentivize creativity and provide balanced
frameworks for accessing the resulting works.
Formulating specific copyright policy approaches can be complex, messy work. But the
principles above can help guide that process, and can serve as a reminder that all of us share an
interest in copyright systems that both incentivize creativity and provide balanced frameworks
for accessing the resulting works.
SUBJECT MATTER OF COPYRIGHT: IN GENERAL
(a) Copyright protection subsists, in accordance with this title, in original works of authorship
fixed in any tangible medium of expression, now known or later developed, from which they can
be perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device. Works of authorship include the following categories:
(1) Literary works;
(2) Musical works, including any accompanying words;
(3) Dramatic works, including any accompanying music;
(4) Pantomimes and choreographic works;
(5) Pictorial, graphic, and sculptural works;
(6) Motion pictures and other audiovisual works;
(7) Sound recordings; and
(8) Architectural works.
(b) In no case does copyright protection for an original work of authorship extend to any idea,
procedure, process, system, method of operation, concept, principle, or discovery, regardless of
the form in which it is described, explained, illustrated, or embodied in such work.
Examples include (Repeat the below for all lectures)
● Include / Attach PPT / Handout (typed): Handout (typed)
● Provide Seminar details (Title, mode of student participation, duration, outcomes):

Participatory mode of student participation
● Add a snapshot of models used: NA
● Any other innovative teaching methodologies: PPT
● Include case study if applicable: NA
● Any internet links / video lecture links relevant to the lecture:

● Any other relevant material / links / journal publications / videos / experiments etc.:
Lecture-2
RIGHTS AFORDED BY COPY RIGHT LAW, COPY RIGHT OWNERSHIP, TRANSFER AND DURATION
Copyrights grant certain exclusive rights to the owner of a copyright in a work. These exclusive
rights are different from the rights given to a person who merely owns a copy of the work. For
example, when a person purchases a book at a bookstore, they have received a property right in a
copy of a copyrighted work (namely, the book). The book owner may then resell the book, or
even destroy it, since they own the book. However, the book's owner did not receive any
copyright rights when they purchased the book. All copyright rights are held by the book's author
until the author specifically transfers them. Consequently, the book owner may not make any
copies of the book, since the right to copy a work is one of the exclusive rights granted under the
Copyright Act. This distinction allows a copyright owner to sell copies of a work, or even the
original work itself (such as a sculpture), without forfeiting her rights under the Copyright Act.
The Copyright Act grants five rights to a copyright owner, which are described in more detail
below.
● The copyrighted work

● The right to prepare derivative works based upon the work
● The right to distribute copies of the work to the public
● The right to perform the copyrighted work publicly
● The copyrighted work publicly
Ownership of copyright:
(a) INITIAL OWNERSHIP. — Copyright in a work protected under this title vests initially in the
author or authors of the work. The authors of a joint work are coowners of copyright in the work.
(b) WORKS MADE FOR HIRE. — In the case of a work made for hire, the employer or other
person for whom the work was prepared is considered the author for purposes of this title, and,
unless the parties have expressly agreed otherwise in a written instrument signed by them, owns
all of the rights comprised in the copyright.
(c) CONTRIBUTIONS TO COLLECTIVE WORKS. — Copyright in each separate contribution to a
collective work is distinct from copyright in the collective work as a whole, and vests initially in
the author of the contribution. In the absence of an express transfer of the copyright or of any
rights under it, the owner of copyright in the collective work is presumed to have acquired only
the privilege of reproducing and distributing the contribution as part of that particular collective
work, any revision of that collective work, and any later collective work in the same series.
(d) TRANSFER OF OWNERSHIP. —
(1) The ownership of a copyright may be transferred in whole or in part by any means
of conveyance or by operation of law, and may be bequeathed by will or pass as personal
property by the applicable laws of intestate succession.
(2) Any of the exclusive rights comprised in a copyright, including any subdivision of
any of the rights specified by section 106, may be transferred as provided by clause (1) and
owned separately. The owner of any particular exclusive right is entitled, to the extent of
that right, to all of the protection and remedies accorded to the copyright owner by this title.
(e) INVOLUNTARY TRANSFER. — When an individual author's ownership of a copyright, or of
any of the exclusive rights under a copyright, has not previously been transferred voluntarily by
that individual author, no action by any governmental body or other official or organization
purporting to seize, expropriate, transfer, or exercise rights of ownership with respect to the
copyright, or any of the exclusive rights under a copyright, shall be given effect under this title,
except as provided under title 11.2
Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an
instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by
the owner of the rights conveyed or such owner's duly authorized agent.
(b) A certificate of acknowledgment is not required for the validity of a transfer, but is
prima facie evidence of the execution of the transfer if
(1) In the case of a transfer executed in the United States, the certificate is issued by a
person authorized to administer oaths within the United States; or
(2) In the case of a transfer executed in a foreign country, the certificate is issued by a
diplomatic or consular officer of the United States, or by a person authorized to administer
oaths whose authority is proved by a certificate of such an officer.
Recordation of transfers and other documents:

(a) CONDITIONS FOR RECORDATION. — Any transfer of copyright ownership or other document
pertaining to a copyright may be recorded in the Copyright Office if the document filed for
recordation bears the actual signature of the person who executed it, or if it is accompanied by a
sworn or official certification that it is a true copy of the original, signed document. A sworn or
official certification may be submitted to the Copyright Office electronically, pursuant to
regulations established by the Register of Copyrights.
(b) CERTIFICATE OF RECORDATION. — The Register of Copyrights shall, upon receipt of a
document as provided by subsection (a) and of the fee provided by s ection 708, record the
document and return it with a certificate of recordation.
(c) RECORDATION AS CONSTRUCTIVE NOTICE. — Recordation of a document in the Copyright
Office gives all persons constructive notice of the facts stated in the recorded document, but only
if —
(1) The document, or material attached to it, specifically identifies the work to which it
pertains so that, after the document is indexed by the Register of Copyrights, it would be
revealed by a reasonable search under the title or registration number of the work; and
(2) Registration has been made for the work.
(d) PRIORITY BETWEEN CONFLICTING TRANSFERS. — As between two conflicting transfers, the
one executed first prevails if it is recorded, in the manner required to give constructive notice
under subsection (c), within one month after its execution in the United States or within two
months after its execution outside the United States, or at any time before recordation in such
manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner,
and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay
royalties, and without notice of the earlier transfer.
(e) PRIORITY BETWEEN CONFLICTING TRANSFER OF OWNERSHIP AND NONEXCLUSIVE LICENSE. — A
nonexclusive license, whether recorded or not, prevails over a conflicting transfer of copyright
ownership if the license is evidenced by a written instrument signed by the owner of the rights
licensed or such owner's duly authorized agent, and if
(1) The license was taken before execution of the transfer; or
(2) The license was taken in good faith before recordation of the transfer and without
notice of it.
● Include / Attach PPT / Handout (typed):
● Provide Seminar details (Title, mode of student participation, duration, outcomes)
● Any other innovative teaching methodologies
● Include case study if applicable
Lecture-3
RIGHT TO PREPARE DERIVATIVE WORKS, RIGHTS OF DISTRIBUTION, RIGHTS
OF PERFORMERS:
A “derivative work” is a work based upon one or more pre-existing works, such as a translation,
musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in which a work may be recast,
transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or
other modifications which, as a whole, represent an original work of authorship, is a “derivative
work”.
Right to prepare derivative works:
In copyright law, a derivative work is an expressive creation that includes major
copyright-protected elements of an original, previously created first work (the underlying
work). The derivative work becomes a second, separate work independent in form from the first.
The transformation, modification or adaptation of the work must be substantial and bear its
author's personality to be original and thus protected by copyright. Translations, cinematic
adaptations and musical arrangements are common types of derivative works.
Most countries' legal systems seek to protect both original and derivative works.[1] They grant
authors the right to impede or otherwise control their integrity and the author's commercial
interests. Derivative works and their authors benefit in turn from the full protection of copyright
without prejudicing the rights of the original work's author.
Berne:
The Berne Convention for the Protection of Literary and Artistic Works, an international
copyright treaty, stipulates that derivative works shall be protected although it does not use the
term, "Translations, adaptations, arrangements of music and other alterations of a literary or
artistic work shall be protected as original works without prejudice to the copyright in the
original work".
The copyright in a compilation or derivative work extends only to the material contributed by the
author of such work, as distinguished from the pre-existing material employed in the work, and
does not imply any exclusive right in the pre-existing material. The copyright in such work is
independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of,
any copyright protection in the pre-existing material.
Example:
A typical example of a derivative work received for registration in the Copyright Office is one
that is primarily a new work but incorporates some previously published material. This
previously published material makes the work a derivative work under the copyright law. To be
copyrightable, a derivative work must be different enough from the original to be regarded as a
"new work" or must contain a substantial amount of new material. Making minor changes or
additions of little substance to a preexisting work will not qualify the work as a new version for
copyright purposes. The new material must be original and copyrightable in itself. Titles, short
phrases, and format, for example, are not copyrightable.
Exclusive rights in copyrighted works

The owner of copyright under this title has the exclusive rights to do and to authorize any of the
following:
(1) To reproduce the copyrighted work in copies or phonorecords;
(2) To prepare derivative works based upon the copyrighted work;
(3) To distribute copies or phonorecords of the copyrighted work to the public by sale or other
transfer of ownership, or by rental, lease, or lending;
(4) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion
pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) In the case of literary, musical, dramatic, and choreographic works, pantomimes, and
pictorial, graphic, or sculptural works, including the individual images of a motion picture or
other audiovisual work, to display the copyrighted work publicly; and
(6) In the case of sound recordings, to perform the copyrighted work publicly by means of a
digital audio transmission.
The Performer's Right under the 2012 Act
The definition of a performance in Section 2(q) of the Copyright Act is: ‘performance’, in
relation to performer's right, means any visual or acoustic presentation made live by one or more
performers. The words ‘made live’ are not defined in the statute, and unless a ‘live performance’
is construed extremely broadly, and the statute is interpreted purposively, it is not clear how it
could apply to the recorded performance of an actor in a film. However, the provisions of the
statute have been widely interpreted to mean that film actors are intended to be able to benefit
from the performer’s right, especially in light of the amendment to Section 2(qq) of the existing
Act which defines a performer. As such, there appears to be a technical infirmity in the copyright
statute insofar as requiring a recorded performance to be considered to be a live performance, so
as to enable a film actor to be considered to enjoy the performer’s right as contemplated by the
statute, is concerned.
The definition of a ‘performer’ in Section 2(qq) of the existing Act was amended by the 2012
Act. Under the existing Act, the Section contained an inclusive definition which stated that a
performer ‘includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer,
a person delivering a lecture or any other person who makes a performance’. The 2012 Act
amended this definition by appending a Proviso to the Section which would disable those
performers not mentioned in a film’s credits (including film ‘extras’) from being able to claim all
but one of the rights granted to performers by the Act. This Proviso states:
‘Provided that in a cinematograph film a person whose performance is casual or incidental in

nature and, in the normal course of practice of the industry, is not acknowledged anywhere
including in the credits of the film, shall not be treated as a performer except for the purpose of
clause (b) of section 38B.’
Section 38B is a new provision in the Act which deals with the moral rights of performers. This
particular provision — Section 38B(b) of the Act — states that ‘the performer of a performance
shall, independently of his right after assignment, either wholly or partially of his rights, have the
right to restrain or claim damages in respect of any distortion, mutilation or other modification of
his performance that would be prejudicial to his reputation’. The other right which a performer
would have — under Section 38B(a) of the Act — is the right to claim to be identified as the
performer of his performance except where omission is dictated by the manner of the use of the
performance. This right under the proposed Section 38B(a) obviously cannot apply to extras in
films as they are not credited by definition.
The two rights enumerated under the proposed Section 38B of the Act comprise the ‘Moral
Rights’ intended to be accorded to performers, and are analogous to the ‘Moral Rights’ which are
accorded to the authors of works protected by copyright. It is pertinent to note that the provision
also contains a safeguard against abuse of moral rights in the form of an Explanation which
would state that ‘the mere removal of any portion of a performance for the purpose of editing, or
to fit the recording within a limited duration, or any other modification required for purely
technical reasons shall not be deemed to be prejudicial to the performer's reputation’. This too is
analogous to the rights granted to authors: the moral right of an author would not be considered
to have been violated merely because his work has, for example, not been displayed to his or her
satisfaction.
In addition to this, the provisions regarding the violation of the ‘Performer’s Right’ have been
significantly restructured in the Bill, and have been transposed to a new Section: 38A of the Act.
Section 38(3) of the Copyright Act before the coming into force of the 2012 amendments
enumerated a number of acts the performance of which would have been a violation of the
performer’s right. Thus, it was been drafted in proscriptive sense. Section 38A of the Act now
enumerates acts similar to those listed in Section 14 (which defines the ‘Meaning of Copyright’)
of the copyright statute, but instead of stating that performing them without consent would cause
one to violate the performer’s right, it states that these it is the exclusive right of the performer to
perform or authorize the performance of these acts or any substantial part thereof. As such, the
new Section 38A in the Act may be considered to be prescriptive in nature.
Finally, under Section 38A of the Act, the rights of performers in films have been considerably
widened. Under the copyright statute, once a performer consents to the incorporation of his
performance in a cinematograph film, no performer’s right would apply to that particular
performance.
The Act, however, does not completely do away with the performer’s right. Firstly, it
contemplates that the consent of a performer for the incorporation of his performance in a
cinematograph film would be in writing, and would not merely be oral.
Further, once a performer gives valid consent for the incorporation of his performance in a film,
he would not generally be able to object to the enjoyment by the film’s producer of his
performer’s right in it. There are two important caveats under the Act though: firstly, the
performer may enter into an agreement to the contrary i.e. there would be no statutory
prohibition to his entering into an agreement which stated that he could object to the producer
enjoying his performer’s right in the film. Secondly, the producer’s enjoyment of the performer’s
right in the film may be interpreted to be limited to the film, so that the producer would not be
able to enjoy the performer’s right for the purpose of retaining all the revenues generated through
the commercial use of a performance (assuming the performance was live).
Further, the prohibition on the producer’s enjoyment of the performer’s right in respect of
commercial use is buttressed by a Proviso which states that ‘notwithstanding anything contained
in Section 38A(2), the performer shall be entitled for royalties in case of making of the
performances for commercial use’. It thus appears that a performer would be entitled to
continuing royalties for any commercial use of their performance. Although this Proviso is not a
model of clarity, it would appear that the intention is to accord to performers the benefits
analogous to those which the 2012 Act accords to the authors of underlying works incorporated
in films and sound recordings for live performances. This would make available to performers
revenue stream which has thus far not been known to have been accorded to them, particularly
since applying the provisions of Sections 18 and 19 to the performers right would give
performers an ‘equal share of revenues’ for live performances analogous to the ones which the
authors of underlying works in films and sound recordings enjoy.
In its report, the PSC broadly supported the provisions restructuring the performer's right and
according moral rights to performers. However, it highlighted an observation of the Association
of the Radio Operators of India stating that if a ‘performance’ were to be defined in a manner
which included communication by any means to public of any sound recordings, current judicial
deliberations on whether free broadcast through radio constitutes performance would be virtually
overruled. Noting the Association’s observation that the ‘playing of recorded songs cannot be
construed as performance and this matter is currently under review of courts,’ the PSC
recommended the modification of the proposed amendments in the light of court rulings — this
proposal of the PSC, however, did not appear to find mention in the 2012 Act.
As such, a continuing question is whether performers in films i.e. actors would be considered to
have a performer’s right as all — this is because Section 2(q) of the Act which defines a
performance states that, in relation to performer's right, a performance is any visual or acoustic
presentation made live by one or more performers, as discussed earlier. Although a live
performance has not been separately defined, it is not entirely clear how the recording of an
actor’s performance in a film could be attended by the performer's right, unless the term live
performance were to be interpreted extremely enthusiastically and broadly.
● Include / Attach PPT / Handout (typed)

Lecture-4
COPY RIGHT FORMALITIES AND REGISTRATION, LIMITATIONS,

INFRINGEMENT OF COPY RIGHT
Copyright formalities:
Copyright formalities are legal, generally statutory, requirements needed to obtain a copyright in
a particular jurisdiction. Common copyright formalities include copyright registration, copyright
renewal, copyright notice, and copyright deposit.
Copyright formalities had certain benefits to users and holders of copyrights. First, they made
determination of copyright status fairly easy. Copyright notice requirements—such as placing a
notice of copyright on the work itself, along with the copyright holder, and the date of
copyright—meant that any work could readily be determined to be in copyright simply by
looking for the copyright notice. Copyright registration and renewal requirements meant that
records of copyright owners were centrally located and made available; this facilitated licensing
arrangements, and contacting the holders. It also provided authoritative records about who
owned the copyright, in case of disputes.
However, copyright formalities were viewed as an unnecessary burden on creators—mostly
authors at the end of the 19th century. Authors who failed to comply with some particular aspect
of a formality—for instance, placing the notice in the wrong place or in the wrong order, or
failing to renew a copyright in a timely fashion—would lose their copyright.
Consequently, Victor Hugo and other authors agitated for the elimination of copyright
formalities toward the end of the 19th century. In response to their efforts, the 1908 Berlin text of
the Berne Convention forbade treaty signatories from conditioning copyright on
formalities,[1] shifting copyright from a system of application (registration) to automatic
copyright on fixation.
Shift away from formalities:
Requirements for meeting copyright formalities were largely eliminated in many countries with
the adoption of the Berne Convention, which granted a copyright for a creative work
automatically as soon as the work was "fixed". Berne was first adopted in 1886 by eight
countries, mostly in Europe. Acceptance grew over the course of the 20th century. (See List of
parties to the Berne Convention.) The United States, a notable late holdout, joined Berne
effective March 1, 1989, with the passage of the Berne Convention Implementation Act of 1988;
China, another notable holdout, joined Berne in 1992.
With the adoption of Berne and its successor treaties, requiring formalities to obtain a copyright
has fallen out of practice around the world.
The following are the instructions for the registration of copyright in India through online:
1. Enter your valid User ID and Password to login.
2. Click onto New User Registration, if you have not yet registered.
3. Note down User ID and Password for future use.
4. After login, click on to link “Click for online Copyright Registration”.
5. The online “Copyright Registration Form” is to be filled up in four steps
I. Complete the Form XIV, then press SAVE button to Save entered details, and press Step
2 to move to Next Step.
II. Fillup the Statement of Particulars, and then press SAVE button to Save entered details,
and press Step 3/4 to move to Next step
III. Fillup the Statement of Further particulars. This form is applicable for “LITERARY/
DRAMATIC, MUSICAL AND ARTISTIC” works, and then press SAVE button to Save
entrered details, and press Step 4 to move to Next Step.
IV. Make the payment through Internet Payment gateway
6. After successful submission of the form, Diary Number will be generated (Please note it for
future reference).
7. Please take hard copy(print) of “Acknowledgement Slip” and “Copyright Registration
Report”, and send it by post to the following address:
Copyright Division
Department of Higher Education, Ministry of Human Resource Development
4th Floor, Jeevan Deep Building, Parliament Street, New Delhi : 110001
Email Address:
Telephone No.: (Office) 91-11-23362436
Limitations and Exceptions of copyright:
In order to maintain an appropriate balance between the interests of right holders and
users of protected works, copyright laws allow certain limitations on economic rights, that is,
cases in which protected works may be used without the authorization of the right holder and
with or without payment of compensation.
Limitations and exceptions to copyright and related rights vary from country to country due to
particular social, economic and historical conditions. International treaties acknowledge this
diversity by providing general conditions for the application of exceptions and limitations and
leaving to national legislators to decide if a particular exception or limitation is to be applied and,
if it is the case, to determine its exact scope. Due to the development of new technologies and the
ever-increasing worldwide use of the Internet, it has been considered that the above balance
between various stakeholders’ interests needs to be recalibrated.
Limitations and exceptions is an issue considered in the agenda of the WIPO Standing
Committee for Copyright and Related Rights (SCCR) and, recently, its debate has been focused
mainly on three groups of beneficiaries or activities in relation to exceptions and limitations – on
educational activities, on libraries and archives and on disabled persons, particularly visually
impaired persons.
Infringement of Copyright
INTRODUCTION
Only human beings are capable of creativity. They can be authors, composers, artists and
designers for creating their original works. Generally, it is they alone who will be entitled to
enjoy the exclusive rights to do or authorize others to do certain acts in relation to rights vests
with them. Copyright was the first intellectual property which received legal recognition in the
world. “The right which a person acquires in a work which is the result of his intellectual labour
is called copyright.”
In ancient days, creative writers, musicians and artists wrote, composers and made their work for
fame and recognition rather than to earn a living. The importance of copyright was recognised
only after the invention of printing press in 15th century which enabled the reproduction of books
in large number practicable. The first copyright Act in England which was in fact first copyright
Act in the world was passed in 1709 called the “Statute of Anne” which provided that the author
of any book already printed will have sole right of printing. Donaldson V. Beckett, 1774 is the
ruling by the United Kingdom House of Lords that denied the continued existence of
a perpetual common law copyright and held that copyright was a creation of statute and could be
limited in its duration.
Copyright is a kind of intellectual property the importance of which has increased enormously in
this era of modernization where rapid changes are taking place in the field of printing,
entertainment, film, media and music and computer industries.
As an intellectual property right, copyright has a great advantage that it arises automatically. It
comes into existence as soon as the work is created. There is no registration form or fee.It is
noteworthy that there are strict limits to the protection copyright affords. Unlike a patent,
copyright is not a true monopoly. It does not protect the idea as such. What copyright protects is
the form in which the work is expressed.
As regards the aspect enforcement, Indian enforcement agencies are now working very
effectively and there has been a notable decline in the levels of piracy in India. In addition to
intensifying raids against copyright infringers, the government has taken a number of measures
to strengthen the enforcement of copyright law. It include setting up of Copyright Enforcement
Advisory Council, organization of seminars/workshops to create greater awareness about
copyright law among the enforcement personnel and the general public, setting up of collective
administrative societies and creation of separate cells in state police headquarters. Copyright
enforcement can be enforced through court of law and the copyright Act is now fully conformity
with the TRIPs obligations.
The Act provides not only civil but also criminal remedies, in case of infringement of copyright,
against infringer. The two remedies are distinct and independent and can be availed of
simultaneously. The Copyright Act, 1957 prescribes mandatory punishment for piracy of
copyrighted matter commensurate with the gravity of the offense with an effect to deter
infringement, in compliance with the TRIPs agreement.
INTERNATIONAL CONVENTIONS DEALINGS WITH COPYRIGHT INFRINGEMET
There is no such thing as “international copyright” that will automatically protect an author’s
writing throughout the entire world. Protection against unauthorized use in a particular country
depends, basically, on national laws of the country. However, most countries do offer protection
to foreign works under certain conditions, and these conditions have been greatly simplified by
international treaties and conventions. As the worldwide economy and international trade has
grown, it has become crucial that copyright property be protected on international basis poses
substantial problems because each country operates independently with its own laws. There is no
such thing as an international copyright law that would provide copyright protection on world
basis. Instead most countries have their own copyright laws, which are not applicable outside of
their borders. The US copyright Act, for instance has no effect outsides of their borders of the
US. If a work copyrighted under US copyright law is infringed in another country, the US has no
jurisdiction over that infringement
INFRINGEMENT OF COPYRIGHT IN INDIA
Copyright law confers upon the owner of the work a bundle of rights in respect of reproduction
of the work and the other acts which enables the owner to get financial benefits by exercising
such rights. If any of these rights relating to the work is carried out by a person other than the
owner without the license of the owner or a competent authority under the act, it constitutes
infringement of copyright in the work. Since copyright is granted for a limited period, there will
be no infringement if the reproductions of the work or other acts concerned are carried out after
the term of the copyright has expired. The exclusive rights conferred on the owner depends on
the nature of the work in which copyright subsists. Accordingly the type of acts which will
constitute infringement will also depend on the nature of work. Section 51 defines infringement
of copyright generally. Section 52 defines a long list of acts which do not constitute infringement
of copyright. These are in nature of exceptions to the exclusive rights conferred up on the
copyright owner. They also serve as defenses in an action for infringement of copyright.
The exclusive right granted under the Act extends also a translation or adaptation of the work or
to a substantial part thereof. Thus copyright will be infringed if the substantial part of the work
was reproduced. What amounts to substantial part of work will depends on the circumstances of
the case.
Meaning and types of infringement
Copyright infringement issue has raised an alarm in today’s world. When a person intentionally
or unintentionally copies or uses the work of another creator, without his prior consent or
permission, or any contract or license or assignment with the author as covered by the copyright
law, it amounts to infringement. Infringement can be broadly classified into two:-
1. Primary infringement;
2. Secondary infringement.
Lecture-5
INTERNATIONAL COPY RIGHT LAW, SEMI CONDUCTOR CHIP PROTECTION
ACT
International copyright treaties

Several international treaties encourage reasonably coherent protection of copyright from
country to country. They set minimum standards of protection which each signatory country then
implements within the bounds of its own copyright law.
Berne Convention
● Oldest and most important treaty
● Signed in 1886 (but has been revised many times since)
● Ratified by nearly 180
● Establishes minimum standards of protection
o Types of works protected
o Duration of protection
o Scope of exceptions
o Limitations
o Principles such as “national treatment” (works originating in one signatory
country are given the same protection in the other signatory countries as each
grants to works of its own nationals)
o Principles such as “automatic protection” (copyright inheres automatically in a
qualifying work upon its fixation in a tangible medium and without any required
prior formality).
WIPO Copyright Treaty
● Signed in 1996
● Makes clear that computer programs and databases are protected by copyright
● Recognizes that the transmission of works over the Internet and similar networks is an
exclusive right within the scope of copyright, originally held by the creator.
● Categorizes as copyright infringements both
o The circumvention of technological protection measures attached to works
o The removal from a work of embedded rights management information.
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
● Signed in 1996
● Signed in 1996
● Administered by the World Trade Organization
● Includes a number of provisions related to the enforcement of IP rights.
● Says that national laws have to make the effective enforcement of IP rights possible, and
describes in detail how enforcement should be addressed.
Semiconductor Chip Protection Act of 1984:
The Semiconductor Chip Protection Act of 1984 (or SCPA) is an act of the US Congress that
makes the layouts of integrated legally protected upon registration and hence illegal to copy
without permission.
Back ground:
Prior to 1984, it was not necessarily illegal to produce a competing chip with an identical layout.
As the legislative history for the SCPA explained, patent and copyright protection for chip
layouts, chip topographies, was largely unavailable.[1]This led to considerable complaint by U.S.
chip manufacturers—notably, Intel, which, along with the Semiconductor Industry Association
(SIA), took the lead in seeking remedial legislation—against what they termed "chip piracy."
During the hearings that led to enactment of the SCPA, chip industry representatives asserted
that a pirate could for $10,000 copy a chip design that had cost its original manufacturer upwards
from $100,000 to design.
Enactment of US and other national legislation

In 1984 the United States enacted the Semiconductor Chip Protection Act of 1984 (the SCPA)
to protect the topography of semiconductor chips. The SCPA is found in title 17, U.S. Code,
sections 901-914 (17 U.S.C. §§ 901-914).
Japan[2] and European Community (EC) countries soon followed suit[3] and enacted their own,
similar laws protecting the topography of semiconductor chips.[4]
Chip topographies are also protected by TRIPS, an international treaty.
The operations of the law:
Sui generis law

The Semiconductor Chip Protection Act of 1984 was an innovative solution to this new problem
of technology-based industry. While some copyright principles underlie the law, as do some
attributes of patent law, the Act was uniquely adapted to semiconductor mask works, in order to
achieve appropriate protection for original designs while meeting the competitive needs of the
industry and serving the public interest."
In general, the chip topography laws of other nations are also sui generis laws. Nevertheless,
copyright and patent case law illuminate many aspects of the SCPA and its interpretation.
Acquisition of protection by registration:
Chip protection is acquired under the SCPA by filing with the US Copyright Office an
application for "mask work" registration under the SCPA, together with a filing fee. The
application must be accompanied by identifying material, such as pictorial representations of the
IC layers so that in the event of infringement litigation, it can be determined what the registration
covers. Protection continues for ten years from the date of registration.
Mask works:
The SCPA repeatedly refers to "mask works." The term is a relic of the original form of the bill
that became the SCPA and was passed in the Senate as an amendment to the Copyright Act. The
term mask work is parallel to and consistent with the terminology of the 1976 Copyright Act,
which introduced the concept of "literary works," "pictorial works," "audiovisual works," and the
like and protected physical embodiments of such works, such as books, paintings, video game
cassettes, and the like against unauthorized copying and distribution. The terminology became
unnecessary when the House of Representatives insisted on the substitution of a sui generis bill,
but the SCPA as enacted still continued its use.[6] The term "mask work" is not limited to actual
masks used in chip manufacture but is defined broadly in the SCPA to include the topographic
creation embodied in the masks and chips. Moreover, the SCPA protects any physical
embodiment of a mask work.[7]
Enforcement:
The owner of mask work rights may pursue an alleged infringer ("chip pirate") by bringing an
action for mask work infringement in federal district court. The remedies available correspond
generally to those of copyright law and patent law.
Functionality unprotected:
The SCPA does not protect functional aspects of chip designs, which is reserved to patent law.
Although EPROM and other memory chips topographies are protectable under the SCPA, such
protection does not extend to the information stored in chips, such as computer programs. Such
information is protected, if at all, only by copyright law.
Reverse engineering allowed:
The SCPA permits competitive emulation of a chip by means of reverse engineering. The
ordinary test for illegal copying (mask work infringement) is the "substantial similarity" test of
copyright law, but when the defence of reverse engineering is involved and supported by
probative evidence (usually, the so-called paper trail of design and development work), the
similarity must be greater. Then, the accused chip topography must be substantially identical
(truly copied by rote, so-called slavish copying) rather than just substantially similar for the
defendant to be liable for infringement. Most world chip topography protection laws provide for
a reverse engineering privilege.
Unit-wise course material
3.3.2Unit – III
-
Introduction to Patent Law – Rights and Limitations – Rights under Patent Law – Patent Requirements –
Ownership and Transfer – Patent Application Process and Granting of Patent – Patent Infringement and
Litigation – International Patent Law – Double Patenting – Patent Searching – Patent Cooperation Treaty –
New developments in Patent Law- Invention Developers and Promoters.
1.1.1. Unit Objectives:

1. To understand the importance of patents rights

2. To equip the knowledge about the requirements for patenting a project of a professional
student
3. To analyze the rights and limitations of a patent
4. To acquire the knowledge about litigation process of a patent
5. To know about the list of promoters and developers for inventions
1.1.2. Unit Outcomes:
1. List out the promoters and developers of inventions in India regarding the technological
advancements
2. Give an outline of registration process of patents
3. Explain about the double patenting process
4. Extract the basic concepts of patents
5. Elucidate the importance of pre grant and post grant oppositions in the registration of the
patents
6. Give an idea about the patent co operation treaty
7. Debate on ownership and transfer of a patent right
8. Trace the opportunities for a student to convert a project idea into patent
9. Bring out the knowledge about new developments in patent law
10. Give the meaning of international patent law and the effect on Indian patent registrations
i. Unit Lecture Plan

Lecture Topic Methodology Quick reference
no.
1 INTRODUCTION TO PATENT Lecture Deborah
LAW, RIGHTS AND E.Bouchoux
LIMITATIONS, RIGHTS
UNDER PATENT LAW
2 PATENT REQUIREMENTS, Chalk and talk Deborah
OWNERSHIP AND TRANSFER E.Bouchoux
3 PATENT APPLICATION Chalk and talk Web reference
PROCESS AND GRANTING OF
PATENT
4 PATENT INFRINGEMENT, Chalk and talk Web reference
AND LITIGATION
5 INTERNATIONAL PATENT PPT Web refence
LAW, DOUBLE PATENTING
6 PATENT SEARCHING,, Chalk and talk Journals
PATENT CO OPERATION
TREATY
7 NEW DEVELOPMENTS IN PPT Web refence
PATENT LAW
8 INVENTION DEVELOPERS Chalk and talk Prabhuddha Ganguli
AND PROMOTERS
9 CLASS TEST ON UNIT 3 Discussing a case let Cyber Law. Texts &
Cases
10 REVISION ON UNIT 1 NA NA
ii. Teaching Material / Teaching Aids as per above lecture plan.
1. Lecture-1
INTRODUCTION TO PATENT LAW, RIGHTS AND LIMITATIONS, RIGHTS UNDER PATENT LAW
A patent is a set of exclusive rights granted by a sovereign state to an inventor or assignee for a
limited period of time in exchange for detailed public disclosure of an invention. An invention is
a solution to a specific technological problem and is a product or a process.[1]:17 Patents are a
form of intellectual property.
The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive
rights vary widely between countries according to national laws and international agreements. Typically,
however, a granted patent application must include one or more claims that define the invention. A patent
may include many claims, each of which defines a specific property right. These claims must meet
relevant patentability requirements, such as novelty, usefulness, and non-obviousness. The exclusive right
granted to a patentee in most countries is the right to prevent others, or at least to try to prevent others,
from commercially making, using, selling, importing, or distributing a patented invention without
permission.[2][3]
Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual
Property Rights, patents should be available in WTO member states for any invention, in all fields of
technology,[4] and the term of protection available should be a minimum of twenty years.[5] Nevertheless,
there are variations on what is patentable subject matter from country to country
Rights of an applicant
The applicant or the owner of the invention has the following rights: -
1. To be granted the patent, where the relevant requirements are fulfilled;
2. After the grant of the patent and within the limits defined below to preclude any person from
exploiting the patented invention in the manner referred to in section 53; and
3. To conclude licence contracts as provided for in the Act.
Limitations:
At any time during the patent term, as the owner of a Swedish or European patent valid in
Sweden, you can request a so-called patent limitation. That means you limit the scope of
protection of your patent claims, for example, to avoid a dispute in court.
Together with your request, you file the new patent claims which you would like to apply. If we
approve the patent limitation, the new claims are then regarded as those which have applied
throughout the whole patent term. At the same time as filing the new claims, you can file an
amended description, if the changes in the claims make that necessary.
You must clearly state how the reworded patent claims differ from the previous patent claims. If
you have introduced new characteristics into the claims, you must state where the corresponding
information is in the basic documents.
The new patent claims must be in the same language as the previous granted patent claims.
You can also request that the patent be revoked in full.
A rejection of the request for patent limitation or revocation of the patent can be appealed against
to the Court of Patent Appeals.
Rights of owner of a patent
The owner of the patent has the right to preclude any person from exploiting the protected
invention by any of the following acts -
1. When the patent has been granted in respect of a product -making, importing, offering for sale,
selling and using the product; or
2. Stocking such product for the purposes of offering it for sale, selling or using the product;
3. When the patent has been granted in respect of a process -using the process or doing any of the
acts referred to in paragraph (1), in respect of a product obtained directly by means of the
process.
2. Lecture-2
PATENT REQUIREMENTS, OWNERSHIP AND TRANSFER
Patent Requirements:
An invention must meet two main requirements at the time of filing of the patent application:
1. It must be new
2. It must be not-obvious (involving an "inventive step")
There are further important requirements, but these are normally met per se; so generally that’s
it. Both the above mentioned requirements apply for the US as well as the rest of the world and
they are assessed by the (each) patent authority on the basis of the prior art, i.e. "what is known".
Regarding patent requirement #1:
The invention may not have been disclosed (or made available) in ANY way to the public. That
is in writing, orally, as drawings or in electronical form ….. no-matter the language !……
Another way to say this is, that the invention may not be part of any prior art. That is to be
understood as a requirement for global and absolute novelty! However, this requirement is
interpreted differently in the US and in "the rest of the world". In the US the inventor himself
may disclose his invention before filing the patent application (for up till one year before filing).
It's called "grace period". Only other peoples disclosure will be novelty-destroying. In almost all
other countries ALL disclosure is novelty destroying. For safety reasons: NEVER EVER
DISCLOSE YOUR INVENTION TO ANYONE (but people under secrecy-agreement or your
patent attorney) BEFORE FILING THE PATENT APPLICATION!
One of the reasons for the differences in practice is the US-tradition of "the true and rightful
inventor" as owner of the right to a patent and the European tradition of being practical rather
than ethical saying "first filed patent application gets the rights". (Of course we've got methods
of solving problems regarding the true and rightful owner of a patent as well, but we think that’s
more a matter to be decided in court than a matter to be decided by the patent office or patent
law). Normally the two underlying principles are referred to as "first to invent" and "first to file"
respectively. Both systems offers pro’s and con’s.
Regarding patent requirement #2:
The invention must be not-obvious in view of the "closest prior art". This is in European patent
practice called involving an "inventive step". In practice it means that combining trivial details in
a new way doesn’t make it an invention. You might for instance mix beer with a pain-killer and
call it an invention. But all you get is the mere effect of each of the beer and the pain-killer. In
fact, thinking about it, you might not even get that. (Bad example...).
You probably think your invention is very inventive, however, what you need is a good objective
argument that a person skilled in the art would not arrive at the invention without being inventive
and/or without undue burden (experimentation).
The closest prior art may be determined in two ways:
● It is the prior art which is closest to solving the same "problem" as the invention and/or
● It is the prior art having the most features in common with the invention
Preferably the closest prior art is both. The prior art used by the patent authorities are typically
prior published patents and patent applications, but it may also be articles from magazines and/or
books and the like. Anything, in any form goes! By the way - US patent applications are
normally not publicly available, but all other countries publish patent applications after 18
months from the priority date.
Patent Ownership and Transfer
In most countries, both natural persons and corporate entities may apply for a patent. In the
United States, however, only the inventor(s) may apply for a patent although it may be assigned
to a corporate entity subsequently[19] and inventors may be required to assign inventions to their
employers under an employment contract. In most European countries, ownership of an
invention may pass from the inventor to their employer by rule of law if the invention was made
in the course of the inventor's normal or specifically assigned employment duties, where an
invention might reasonably be expected to result from carrying out those duties, or if the inventor
had a special obligation to further the interests of the employer's company.[20]
The plate of the Martin ejector seat of a military aircraft, stating that the design is covered by
multiple patents in Britain, South Africa, Canada and "others". Dübendorf Museum of Military
Aviation.
The inventors, their successors or their assignees become the proprietors of the patent when and
if it is granted. If a patent is granted to more than one proprietor, the laws of the country in
question and any agreement between the proprietors may affect the extent to which each
proprietor can exploit the patent. For example, in some countries, each proprietor may freely
license or assign their rights in the patent to another person while the law in other countries
prohibits such actions without the permission of the other proprietor(s).
The ability to assign ownership rights increases the liquidity of a patent as property. Inventors
can obtain patents and then sell them to third parties.[21] The third parties then own the patents
and have the same rights to prevent others from exploiting the claimed inventions, as if they had
originally made the inventions themselves.
Patent Application Filing Procedure/Process in India
Filing a patent application in the Indian Patent Office is the first step towards securing a patent to
your invention in India. To file a patent application, a set of forms has to be submitted to the
patent office. The forms can be submitted online
(http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin) if you have a class 3 digital
certificate. Alternatively, you can send true copies (hard copies) to the patent office. The patent
office charges 10% additional fee if applications are filed offline.
Please note that, the most important factor in filing a patent application is preparing a patent
specification. Drafting a patent specification is a highly skilled job, which can be only preformed
by persons who have both technical as well as patent law expertise. If a person or company is
serious about protecting their intellectual property, it is highly recommended to use the services
of professional patent practitioners. To know more about this, you can read our article on this:
● Should an inventor take professional help to draft and file patent applications?
● Why should patent specifications be drafted by patent professionals?
Further, we have provided this article for knowledge purposes only. It is recommended to avail
services of professionals to file patent applications, as mistakes will prove costly. Thorough
understanding of the Indian Patent Act is essential for filing patent applications. Patent agents
have understanding of the Indian Patent Act and are the only persons (other than the applicant
themselves) authorized by the Patent office to file patent applications on behalf of the applicant.
Inventers employs patent agents.
Include / Attach PPT / Handout (typed)
provided
Add a snapshot of models used
Any other innovative teaching methodologies

Include case study if applicable
Any internet links / video lecture links relevant to the lecture
https://www.youtube.com/watch?v=i3jipS9niz8
Any other relevant material / links / journal publications / videos / experiments etc.
http://www.wsj.com/video/opinion-journal-trade-deal-drug-patent-problems/B8A074EC-3AE4-4
068-8D44-CF95F0898602.html
Title ; Presentation
Mode of student participation : Group
Duration : 20 mins
Outcomes : students will be acknowledged with sections relating to ownership of the patent
Any other innovative teaching methodologies:
Include case study if applicable: NA
https://www.upcounsel.com/blog/how-to-transfer-a-patent/
3. Lecture-3
Patent Application Process and Granting of Patent

Chart presentation by three students for 15 min
Outcome is through this procedure students can remember the process for application and
grant of patent easily which will be useful for acquiring a patent in future
Any other innovative teaching methodologies:
http://www.ssrana.in/Intellectual%20Property/Patents/Patents_FilingPatent.aspx
Lecture-4
Patent Infringement and Litigation
Patent infringement is the act of making, using, selling, or offering to sell a patented invention,
or importing into the United States a product covered by a claim of a patent without the
permission of the patent owner. Further, you may be considered to infringe a patent if you import
items into the United States that are made by a patented method, unless the item is materially
changed by subsequent processes or becomes a trivial and nonessential component of another
product. A person “infringes” a patent by practicing each element of a patent claim with respect
to one of these acts. Further, actively encouraging others to infringe patents, or supplying or
importing components of a patented invention, and related acts can also give rise to liability in
certain cases.
A patent owner can sue you in federal court for patent infringement. If the patent owner is able to
prove infringement, the court may order you to pay monetary damages and/or stop infringing one
or more patent claims. A court can also find that (1) you do not need a license to the patent
because you don’t practice the invention, (2) one or more of the patent claims are not valid, or
(3) there are other reasons why the patent owner is not entitled to prevail against you.
The court may conclude that the patent claim is not valid if it is shown that the claimed invention
was disclosed in a prior patent or patents, a book, a magazine, a newspaper, a television show or
movie, a webpage or other published work before the date of the claimed invention. Also the
court may conclude that the patent claim is not valid if it is shown that the claimed invention was
offered for sale in this country or was disclosed to the public more than one year before the
application for the patent was filed. In addition, the court could find the patent invalid because it
does not meet other statutory requirements, such as a sufficient written description of the
invention, or because it does not describe subject matter that is patent eligible.
Further, in “exceptional” cases, the costs of your attorney’s fees may be awarded to you if you
win the patent case. But if you lose the patent case, you may be held responsible for the
attorney’s fees of the patent owner. A court may take all of the facts and circumstances of the
case into consideration in deciding whether it will find that one party must pay the attorney’s
fees of the other party. The courts may only award attorney’s fees in cases that are out of the
ordinary, for example, where the positions of the patent owner are unusually unreasonable.
Different Types of Patent Infringement

There are different ways another party may infringe on your patent, including:
● Direct Infringement: This occurs when a product covered by a patent is manufactured without
permission.
● Indirect Infringement: An indirect infringer may induce infringement by encouraging or aiding
another in infringing a patent.
● Contributory Infringement: This occurs when a party supplies a direct infringer with a part that
has no substantial non-infringing use.
● Literal Infringement: This exists if there is a direct correspondence between the words in the
patent claims and the infringing device.
Even if an invention does not literally infringe the patent, it may still infringe under the doctrine
of equivalents. A device that performs the substantially same task in substantially the same way
to achieve substantially the same result infringes the patent under this doctrine. If the court finds
infringement, it must still determine whether the infringement was willful.
Willful Infringement
Willful infrigement involves intentional disregard for another's patent rights and encompasses
both direct and intentional copying and continued infringement after notice. Patent users and
inventors should employ patent attorneys to ensure that the use of a patent is valid and
noninfringing. Even if infringement is later found, the attempt to secure a legal opinion is
evidence that the infringement was not willful.
If the court finds that the infringement was willful, the infringer faces a substantial financial
penalty; a willful infringer may end up paying triple the amount of actual damages suffered by
the patent holder, as well as the plaintiff's attorneys' fees.
Patent Infringement: Penalties
When a court finds infringement, the infringer usually must pay damages to the patent holder,
either in the form of actual damages or a reasonable royalty for the unauthorized use. Actual
damages include lost profits the patent holder would have realized but for the infringement,
while a reasonable royalty depends on the type of product, other royalty arrangements, time
remaining on the patent, and other issues. In addition to damages, the prevailing party is also
entitled to costs. Costs include court filing fees and related litigation expenses.
In addition to infringement damages, a patent owner may stop the infringer from continuing to
produce infringing products. The court typically, as a matter of course, issues a permanent
injunction after the infringer is held liable for violating the patent.
In some instances, the patent holder will seek a preliminary injunction at the outset of the lawsuit
where he or she can show no detriment to the public interest if the injunction is granted, a
substantial likelihood of success on the merits of the case, and more compelling hardship for the
patent holder if the infringer continues his or her activities while the case proceeds. The patent
holder will find it difficult to get a preliminary injunction unless a prior adjudication proved the
validity of the patent.
11. Include / Attach PPT / Handout
Handout Provided
12. Provide Seminar details
Title: Patent Infringement
mode of student participation: seminar
duration: 20 min
outcomes: student will understand about the transactions which lead to infringement of a
patent.
13. Add a snapshot of models used

The Graphical User Interface (Apple Computer, Inc. v. Microsoft Corporation)

Apple is no stranger to the courtroom — in 1988, Apple Computers filed a lawsuit seeking to
stop Microsoft and Hewlett-Packard from selling computers with graphical user interfaces
similar to Apple’s LISA computer and its Macintosh OS. Apple did actually license Microsoft to
use many of the 189 individual elements they claimed were taken, but Microsoft’s decision to
add features to its own OS that closely mirrored the Macintosh OS was what lead to the six-year
long court battle. Apple tried to claim that the ‘look and feel’ of Microsoft’s OS should be the
focus of the copyright infringement, but the court disagreed, and instead focused on the
individual elements of the GUI, thereby avoiding setting a precedent for ‘look and feel’
copyright claims and making analytical dissection the basis for UI cases. Apple lost the case as
the court felt all of the similarities sprung from licensing or obvious expression, though the bad
blood between the two companies did not last long — by 1997, they had agreed to work together
and entered into a patent cross-licensing agreement.
- See more at:

http://smallbusiness.findlaw.com/intellectual-property/patent-infringement-and-litigation.html
#sthash.nGA6pQNA.dpuf
https://www.youtube.com/watch?v=YP9HxDULQ64&list=UUL1n8Wupq5xZA8C74gC
cw0w&spfreload=10
Lecture-5
International Patent Law – Double Patenting
PCT – The International Patent System

The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection
internationally for their inventions, helps patent Offices with their patent granting decisions, and
facilitates public access to a wealth of technical information relating to those inventions. By
filing one international patent application under the PCT, applicants can simultaneously seek
protection for an invention in 148 countries throughout the world.
Overview of the PCT System
14. Include / Attach PPT / Handout (typed)
The PCT is an international treaty with more than 145 Contracting States.1 The PCT
makes it possible to seek patent protection for an invention simultaneously in a large
number of countries by filing a single “international” patent application instead of filing
several separate national or regional patent applications. The granting of patents remains
under the control of the national or regional patent Offices in what is called the “national
phase”.
The PCT procedure includes:
Filing: you file an international application with a national or regional patent Office or
WIPO, complying with the PCT formality requirements, in one language, and you pay
one set of fees.
International Search: an “International Searching Authority” (ISA) (one of the world’s
major patent Offices) identifies the published patent documents and technical literature
(“prior art”) which may have an influence on whether your invention is patentable, and
establishes a written opinion on your invention’s potential patentability.
International Publication: as soon as possible after the expiration of 18 months from
the earliest filing date, the content of your international application is disclosed to the
world.
Supplementary International Search (optional): a second ISA identifies, at your
request, published documents which may not have been found by the first ISA which
carried out the main search because of the diversity of prior art in different languages and
different technical fields.
International Preliminary Examination (optional): one of the ISAs at your request,
carries out an additional patentability analysis, usually on an amended version of your
application.
National Phase: after the end of the PCT procedure, usually at 30 months from the
earliest filing date of your initial application, from which you claim priority, you start to
pursue the grant of your patents directly before the national (or regional) patent Offices of
the countries in which you want to obtain them.
Doctrine of double patenting is implemented to prevent unjustified extension of term of a
patent. For patents to be rejected under doctrine of double patenting, the patents must
satisfy following criterion:
1.Two or more patents or patent applications must have at least one common inventor
and/or should have been assigned to a common inventive entity. Alternatively, they can
be-commonly assigned but in this case they should be subject to a joint research
agreement, i.e., different inventive entities working together. A joint research agreement
is defined by 35 U.S.C. 103 c (2) and (3) as “a written contract, grant, or cooperative
agreement entered into by two or more persons or entities for the performance of
experimental, developmental, or research work in the field of the invention”. For
example, a patent application being examined and a patent application or a granted patent
cited by the examiner may be owned by different inventive entities but inventions
covered by them may be subject to joint research agreement by these inventive entities.
In this case, the granted patent or the patent application will be considered for rejecting
the patent application being examined on grounds of double patenting.
.
2.Two or more patents or patent applications cover same or substantially the same
invention. To determine occurrence of double patenting, claims of a patent application
being examined are compared with claims of some granted patents and/or patent
applications, which may be cited by an examiner. During the comparison it is checked
whether the claims of the patent application being examined conflict with the claims of
the granted patents and/or published patent applications by covering the same invention
or obvious subject matter.
Double patenting rejections are typically raised based on either statutory or non-statutory
grounds. Accordingly, there are two typesof double patenting
:
● Statutory Double Patenting
● Non-Statutory Double Patenting
STATUTORY DOUBLE PATENTING
A statutory double patenting is raised solely basedon statutory grounds and is governed
by 35 U.S.C. 101 that says Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter or any new and useful improvement
thereof, may obtain a patent therefo subject to the conditions and requirements of this
title.” Therefore, when a claimed subject matter of a patent application exactly
corresponds to a claimed subject matter of another granted patent or a patent application
then the claimed subject matter is rejected under 35 U.S.C. 101 on a statutory basis.
Statutory double patenting is also referred to as “Same Invention Type Double
Patenting”as this is based on 35 U.S.C. 101 that defines that a single patent is granted for
an invention.
NON-STATUTORY DOUBLE PATENTING
A non-statutory double patenting rejection is based on a judicially created

doctrine specifically proposed to avoid extension of patent term beyond 20 years. This
rejection is raised to prevent grant of claims of a patent application that are not patentably
distinct from claims of a granted patent or a patent application cited by an examiner. The
subject matter of the claims is analyzed based on obviousness or anticipation.
Title : international patent law
Mode of student participation: presentation
Duration : 10 min
Outcomes : idea about rules and regulations of international patent law

15. Include case study if applicable
16. Any internet links / video lecture links relevant to the lecture
17. Any other relevant material / links / journal publications / videos / experiments etc.
http://www.powershow.com/view1/d8afa-ZDc1Z/Double_Patenting_powerpoint_ppt_pre
sentation
1. Lecture-6
Patent Searching – Patent Cooperation Treaty
The Patent Cooperation Treaty (PCT) is an agreement for international cooperation in the
filing, searching and examination of patent applications and the dissemination of
information contained in the applications.
The treaty implements the concept of filing a single international patent application
which will have a legal effect of filing in the different countries bound by the treaty.
The PCT system is a patent filing system and should not be mistaken for a patent granting
system. Therefore, no PCT patent or international patent is granted. The task and
responsibility of granting patents remains exclusively in the hands of the patent offices of
the countries where patent protection is sought.
The PCT system consolidates and streamlines patenting procedures by facilitating the
filing of an international application in a single office, in one language and a single set of
forms and thus reduces the costs of having to file separate applications in different
countries and provides the applicant the flexibility to assess the value and export potential
of his invention before committing to the national requirements and costs in each country.
Only inventions may be protected via the PCT. Design and Trademark cannot be
obtained via the PCT route. A PCT application may be filed by anyone who is a national
or a resident of a PCT contracting state.
When a PCT application is filed, it is then subjected to an “international search”. This

search is carried out by an International Search Authority (ISA). The search results in an
International Search Report (ISR) and contains details of published documents that have
an effect on the patentability of the invention claimed. The ISA also prepares a written
opinion on patentability.
The international search report and the written opinion are communicated by the ISA to
the applicant. During this time the applicant may decide to withdraw his application if
opinion in the said report makes the granting of patents unlikely. If the international is not
withdrawn, it is published together with the International Search Report by the
International Bureau.
The procedure under the PCT has great advantages for the applicant, the patent offices
and the general public:
Under the PCT, the applicant has up to 18 months more than he has in a procedure
outside the PCT to reflect on the desirability of seeking protection in foreign countries.
He has enough time to appoint local patent agents in each foreign country,prepare the
necessary translations and pay the national fees. An applicant can be assured that his
international application which is in the form prescribed by the PCT, cannot be rejected
on formal grounds by any designated Office during the national phase of the processing
of the application. On the basis of the international search report or the written opinion,
the applicant can evaluate the chances of his invention being patented. Furthermore,the
applicant has the oppurtunity to amend the international application during the
international preliminary examination before processing by the designated Offices.
Search and examination work of patent offices can be considerably reduced or virtually
eliminated due to the international search report, the written opinion and, where
applicable, the international preliminary examination report that accompany the
international application
And lastly, since each international application is published together with an international
search report, third parties are in a better position to formulate a well-founded opinion
about the patentability of the claimed invention.
Provided
Provide Seminar details
Title: patent searching
mode of student participation
duration: 10 min for all the students
outcomes: students will get an idea about the patents in the market
https://www.youtube.com/watch?v=YFoCXBs4lL4
https://www.youtube.com/watch?v=K4Yww8rHWx4
Lecture-7
New developments in Patent Law
Recent Developments in Patent Policy/Law:

Patents are a government-granted right that allows individuals or companies to exclude others
from making, using, selling or importing inventions for a set amount of time, typically 20 years.
By imitating a number of key features of real property, patents have allowed innovators to reap
the gains of their effort.[1] The United States has a highly-successful system for issuing patents;
indeed observers are now concerned that too many patents are issued and too many activities are
protected.
This concern spurred significant changes to patent law in 2011. Despite this recent legislation,
Congress is again considering reforms, with the focus on so-called patent trolls. Patent trolls are
entities that earn income off their patents from suing others for infringement. These companies
then issue letters demanding payments to those others for violating their patents. Because the
licensee fee that these firms demand is cheaper than going to trial, which can cost nearly $3
million to complete, most companies opt to pay.[2] The extent and cost of this practice has been
widely debated. This primer reviews the current literature on patent trolls, documents changes
made to the law in 2011 with the America Invents Act (AIA), explains the current five areas of
proposed reform, and finishes with a discussion on software patents.
As Marc Andreessen, co-founder of Netscape Communications, first said, software is eating the
world. Getting the contours of patent law right is important for this highly productive industry.
However, ensuring that it succeeds must not come at the expense of others, like those in the high
tech manufacturing industry and the medical sciences.
The Trouble With “Trolls”
Patent trolls fall under the umbrella of patent assertion entities (PAE), which is included under
the broader class of non practicing entities (NPE). Because the licensee fee that these firms
demand is cheaper than going to trial most companies opt to pay.
Reform proponents point to an explosive increase in these kinds of lawsuits in recent years.
According to a number of reports, abusive claims accounted for over half of all patent litigation
in 2012, while there was a nearly 40 percent increase in suits by NPEs between 2007 and 2011.[3]
Thus, there has been pressure to change some of the aspects of patent laws to stop firms from
engaging in this kind of behavior.
At first blush, anecdotal evidence supports the reformers’ case. Famously, Innovatio IP Ventures
sent demand letters to a number of small businesses like coffee shops and bakeries for their use
of off the shelf Wi-Fi equipment, because they violated patents that Innovatio bought from
Broadcom, a semiconductor company. In reality, many of the largest Wifi router manufacturers
already retained licenses for those patents, so consumers were protected from any litigation.
Because the original demand letters called for those small businesses to pay between $2,500 and
$5,000, many in the hardware industry like Cisco, Netgear, and Motorola Solutions intervened.
Cisco eventually settled with the company for 3.2 cents per infringement.[4]
Ultimately, the patents that Innovatio IP Ventures were filing claims with were used within an
industry standard. To use these patents, the owner typically allows others to obtain a license if it
has fair, reasonable, and non-discriminatory terms (FRAND). Under these terms, Innovatio IP
Ventures should have gotten at most 9 cents for each of the infringement, which makes their
settlement all that more interesting.[5] Broadly speaking, the cost and structure of FRAND
agreements has been a serious point of content for those in the software industry, which now
encompasses the vast majority of patent cases.
In practice, empirical evidence of the pervasiveness of abuse in sectors other than the software
industry needs to be firmly established. For example, one of the most highly cited reports, the
NPE Litigation Report, counts not just patent assertion entities, but also every other NPE. This
other category includes a number of organizations many would not consider abusive, like
universities, research institutions, individual inventors, and non-competing entities, a term to
describe companies that assert patents outside their areas of products or services.[6] So, it is
unclear how much of this is abusive as compared to a development within the market.
Knowledge and innovative ideas are in demand, so firms are likely then to specialize in order to
meet this demand, which includes NPEs. Even still, with the decision in Alice v. CLS Bank, an
important and recent case detailed later, estimates have charted a decline in patent cases from
their high in 2012 with 2014 seeing over 1,000 fewer patent cases over the previous year.[7]
Courts can and have had an impact. Yet, many of the provisions in a recently passed piece of
patent legislation have not been worked through the courts. In order to understand current calls
for action, it is important to understand those changes as well.
The America Invents Act
The 2011 America Invents Act (AIA) was designed to improve patent quality and reduce strain
on the judicial system. Among the most notable changes was the move away from a
first-to-discover standard towards a first-to-file standard, thus coordinating US law with most
international laws. To help reduce abusive claims, the Act provided new ways to challenge
questionable patents through the Patent and Trademark Office’s (PTO) newly created Patent
Trials and Appeals Board (PTAB). Proponents argued that if dubious patents could be
invalidated through new, faster review processes, then trolls could not assert them against
vulnerable producers who are unable to fight the patent themselves. The Act thus established a
way for anyone to challenge any claim of any patent through a process called inter partes review
(IPR). In this proceeding, the challenger presents evidence that a patent should be considered
invalid. After agreeing to hear the petition, the PTAB must render its decision within twelve
months, acting as a cheaper, faster alternative to the courts with a lower burden of proof.
The covered business method review (CMBR) works in a similar way. This process subjects
patents on financial “business methods,” a controversial field of patents, to additional scrutiny as
they are vulnerable to challenge by any party with standing. AIA instituted proceedings have cut
down on the patent caseload of courts by 18 percent, but they are not without critics.[8]
As of November 2014, the PTAB cancelled 80 percent of claims challenged under IPR and 96
percent of claims challenged under CBMR.[9] Some have argued that the structure of the review
process also lends itself to abuse as the system can be and is being gamed by petitioners to keep
patents tied up in review.[10] For example, a patent can be challenged again and again even once
the PTAB has ruled in its favor. CMBR rules are even weaker and allow for evidence to be
withheld only to be introduced in later challenges. While there was an 18 percent decrease in
patent litigation in courts, trials by PTO increased by 212 percent.[11] Thus, the AIA has clearly
affected patents, but in ways that have not fully discernible since it takes nearly 2.5 years to
bring a case to trial.[12]
Patent Reform Proposals in 2015
Five changes to the current patent law regime have been proposed to reduce the ability of firms
to engage in abusive behavior: fee shifting, customer stay provisions, heightened pleading
standards, transparency, and demand letter reform.
Fee shifting would change U.S. law so that the loser in a patent infringement lawsuit would have
to pay for the attorneys’ fees of the winner as well. Only in those instances where the court
determines that the loser advanced objectively reasonable positions would they be able to escape
the attorneys’ fees. Currently, each part must pay their own fees, and only in exceptional cases is
the loser expected to pay. Both versions of the rule have their rightful critics. While there could
be more frivolous lawsuits when each party must pay for their legal costs, small but meritorious
claims are just as likely when the loser pays for all of the fees.[13] If the goal of the legislation is
to undercut those claims that don’t have merit, but are still paid for by small businesses, then it is
unlikely that fee shifting would be the most direct solution.[14] By most accounts only 4 to7
percent of cases go to trial. [15] The other 93 to 96 percent of cases never reach a judgement,
and thus would never test a new fee shifting standard. Thus, changes in the standards that would
make loser pays less exceptional would likely be a better interim path and have garnered far
wider support because it is seen as a middle road between the two.
Customer stay protections make it easier for the manufacturer of an allegedly infringing good to
step in to defend its product while putting a temporary halt to proceedings against an end
customer. For example, if a company begins litigation against a cafe for its use of a refrigerator
which the PAE thinks it holds the patent, then the refrigerator manufacturer can halt the case
against the cafe while it defends its patent against the PAE. This change would allow the larger
manufacturing firm with more resources and, perhaps, patent lawyers at its disposal to defend its
product while protecting end customers, who tend to be smaller, more vulnerable businesses.
Pleading standards are also another area slated for reform. At the beginning of a lawsuit, each
side must formally submit their claims and defenses. The information required in patent cases is
far less than in other parts of law. (This is due to the loophole called Rule 84, which allows for
complaints that follow Form 18 to be sufficient.) Changes to pleading standards are already
underway within in the courts.[16] Late last year, the Judicial Conference, which establishes
uniform policy for the U.S. courts, suggested that Rule 84 be abolished. In all likelihood, the
Supreme Court will approve the changes and it will be sent to Congress. Thus, Congress will
likely have to address pleading standards one way or another. The question for Congress is
whether it should issue a new standard or be subject to the broader standard.
Because many of the worst offenders have created shell corporations to shelter the identity and
nature of the plaintiff, transparency has been another goal for legislators. New requirements
would require that parties having a financial interest the patents asserted in a court action are
disclosed. While this does create a burden for large integrated firms and could potentially reveal
proprietary information, many court proceedings already require this under seal to protect
confidential information.
Demand letters mark the beginning of an infringement claim and have garnered attention in the
press. A couple years back, a company called MPHJ sent over 16,000 of these letters demanding
payment for a “scan to email” patent.[17] While there have been various bills designed to deal
with this behavior, the Federal Trade Commission (FTC) brought a suit against MPHJ which
resulted in a consent agreement that restricted it from sending deceptive letters. While these
actions by the FTC have lessened the need for a directed bill, the agency has been restrained on
this issue, so a bill clarifying the exact purpose of the FTC’s authority and giving them clear
guidance on the kinds of behaviors that need to be curbed could deter abusive demand letters.
Patents and Software Post Alice
More than any other, the software industry has been at the heart of recent patent debates.
Software patents are controversial, with some even calling for their abolishment.
The patentability of software was brought to the forefront in last summer’s Supreme Court ruling
in Alice Corp. v. CLS Bank International.[18] Alice held patents on computer operated escrow
services. CLS sued to have those patents declared invalid. In a 9-0 decision the Court ruled that
Alice’s service was merely using a computer to carry out the already well known practice of
intermediated settlement. That practice, the Court held, is an abstract idea, and using a computer
to implement it does not transform it into a patentable invention.
The fallout of the Alice decision is ongoing, but it has sparked renewed debate over software
patents in general. Even though it is still early, these patents have been invalidated more often,
which has led some to hail the new legal standard as a victory. It is important to note that the
Court’s decision did not rule out all software patents; it applies only to patents on art that is only
innovative insofar as it carries out an abstract idea with a computer. Some have interpreted the
ruling as teeing up a later invalidation of all software patents because all software is, at its core,
merely feeding abstract information into a machine which can read it. While some of the most
vocal opponents of this approach acknowledge that computer code is probably more suitable for
copyright rather than patent protection, software is more than specific code.[19] The real value of
a piece of software is in its function, and the invention of new functionality is no less patentable
when it is implemented by a computer than when it is implemented by a mechanical device.
Lecture-08
Invention Developers and Promoters
National Innovation Foundation (NIF)

Drawing upon the Honey Bee Network (HBN) philosophy, the National Innovation Foundation
(NIF) - India was set up in March 2000 with the assistance of Department of Science and
Technology, Government of India. It is India's national initiative to strengthen the grassroots
technological innovations and outstanding traditional knowledge. Its mission is to help India
become a creative and knowledge-based society by expanding policy and institutional space for
grassroots technological innovators.
NIF scouts, supports and spawns grassroots innovations developed by individuals and local
communities in any technological field, helping in human survival without any help from formal
sector. NIF helps grassroots innovators and outstanding traditional knowledge holders get due
recognition, respect and reward for their innovations. It also tries to ensure that such innovations
diffuse widely through commercial and/or non-commercial channels, generating material or
non-material incentives for them and others involved in the value chain.
With major contribution from the Honey Bee Network volunteers, NIF has pooled a database of
over 225,000 technological ideas, innovations and traditional knowledge practices (not all
unique, not all distinct) from over 585 districts of the country. NIF has till date recognised 816
grassroots innovators and school students at the national level in its various National Biennial
Grassroots Innovation Award Functions and annual Dr A P J Abdul Kalam Ignite Children
Award functions. In collaboration with various research & development (R&D) and academic
institutions, agricultural & veterinary universities and others institutions, NIF has helped in
getting several hundred grassroots technologies validated and/or value added.
NIF has also set up an augmented Fabrication Laboratory (Fab Lab) with the help of
Massachusetts Institute of Technology (MIT), Boston, for product development and
strengthening in-house research. Likewise, for initial validation of herbal technologies,
laboratory facilities at Society for Research and Initiatives for Technologies and Institutions
(SRISTI) have been augmented. Pro bono arrangement with patent firms has helped NIF file
over 743 patents, including eight filed in the USA and 27 Patent Cooperation Treaty (PCT)
applications, on behalf of the innovators and outstanding traditional knowledge holders. Of
these, 39 patents have been granted in India and five in the USA in collaboration with the HBN.
NIF has also filed applications for 38 plant varieties developed by farmers at the Protection of
Plant Varieties & Farmers' Rights Authority. Of these, five have successfully been registered.
Micro Venture Innovation Fund (MVIF) at NIF, with support from Small Industries
Development Bank of India (SIDBI), has provided risk capital of more than Rs 3.84 crore to 193
projects, some of which are at different stages of incubation. Majority of these have already been
closed after receiving full repayment. As of 31st March 2016, NIF has received over 950 product
inquiries from 108 countries for various technologies. It has also succeeded in commercialising
products across countries in six continents, apart from being successful in materialising 89 cases
of technology licensing, many with the support of Grassroots Innovation Augmentation Network
(GIAN).
NIF has proved that Indian innovators can match anyone in the world when it comes to solving
problems creatively. They perform better than others in generating greater sustainable
alternatives by using local resources frugally. Those who see poor only as the consumers of
cheap goods, miss the richness of knowledge at grassroots level and their potential as provider of
ideas and innovations. The grassroots to global (G2G) model that NIF is propagating is all set to
change the way the world looks at creativity and innovations at/from grassroots.
The Society for Innovation and Development (SID):
The Society for Innovation and Development (SID) was founded in the year 1991, in close
collaboration with the Indian Institute of Science (IISc) Bangalore. IISc is premier research
institute which has contributed in a significant way towards the scientific and technological
growth of the country as well as producing outstanding intellectuals to manage Industries,
Business houses, and Institutions.
The mission of SID is to enable Innovations in science and technology by creating a purposeful
and effective channel to help and assist industries and business establishments to compete and
prosper in the face of global competition, turbulent market conditions, and fast moving
technologies. SID strives to bring the leading intellectuals of IISc and the fruits of their research
and development efforts closer to industries and business establishments in a cordial way with
prosperity of the Nation as the ultimate goal.
SID is a society registered under the Karnataka Societies Act, with a symbiotic relationship with
IISc. It primarily draws from and provides access to the intellectual and infrastructural resources
of IISc.
HOW CAN SID HELP?
SID undertakes research and development projects based on individual or joint proposals from
the faculty and scientists of IISc in collaboration with industries, business establishments, and
national and international organizations. Such organizations are welcome to enter into an
agreement through SID with an intention to collaborate with IISc Departments to sponsor
research projects.
SID has set up program units which are workgroups in identified areas that can undertake
activities on a sustained basis. These units undertake multiple projects with varying degrees of
flexibility to facilitate and expedite execution of the project.
SID promotes joint R & D programmes and R & D centres between IISc and National and
International organizations.

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TABLE OF CONTENT

S.NO. Content Page No.

1 Course Objectives & Outcomes

4 Unit wise course Material (As per given format)

Unit-I: ​Introduction to Intellectual Property Law

Unit-II: ​Introduction to Copyrights

Unit-III: ​Introduction to Patent Law

Unit-IV: ​Introduction to Trade Mark

Unit-V: ​Introduction to Trade Secrets

Unit-VI: ​Introduction to Cyber Law

5 Reference text books/web material etc.,

6 Mid Question Paper + Schemes of Evaluation.

7 Fast track material for Back-Log students.

8 Sample Question Papers with solutions

9 Virtual Labs if required

Mapping of Assignments / Question Papers with course objective learning

11 Bloom’s Taxonomy checklist

1.2. Course Outcomes

● Give an outline of basics of intellectual property rights

● Explain about the legal aspects of intellectual property

● Extract the knowledge about the technological non corporeal property

● Elucidate the difference between misuse and overuse of intellectual rights

● Debate on inventions and discovery of intellectual property rights

● Trace the importance of ownership of intangible property and their rights

● Bring out the entrepreneurial skills of the students with innovations

● Give the meaning of real intellectual property

Introduction to Copyrights – Principles of Copyright – Subject Matters of Copyright – Rights Afforded by

4.1.1 Unit Objectives:

● To understand the importance of Intellectual property rights

4.1.2. Unit Outcomes:

▪ List out the different intangible property rights

▪ Give an outline of Intellectual Property Right

▪ Explain about the importance of IPR’s in real world

▪ Extract the basic concepts of IPR and its usage

▪ Give an idea about the registration process of IPR’s

▪ Debate on tangible and intangible property rights usage

▪ Trace the formalities required for ownership of Intellectual property

▪ Give the meaning of TRIPS role in formulating IPR’s

4.1.3 Unit Lecture Plan

2 TYPES OF IPR, INNOVATIONS, PPT and Chalk Web reference

3 AGENCIES RESPONSIBLE FOR IP Chalk and talk Web reference

4 OVER USE OR MIS USE OF Chalk and talk Web reference

5 COMPLIANCES AND LIABILITY Chalk and talk Web reference

4.1.4 Teaching Material / Teaching Aids as per above lecture plan.

1. Corporeal Property (Tangible property)

- Immovable (real and personal)

2. Incorporeal Property (Intangible property)

It is also called as “Intellectual Property” or Conventional property. It has

Definition: What is Intellectual Property?

What are intellectual assets?

How to protect your intellectual assets

• The first known ​copyrights​ appeared in ​Italy.

History of the protection of intellectual property:

• 1883 - Paris Convention for the Protection of Industrial Property.

• The treaties fall into three groups namely

• treaties, which establish international protection

• treaties, which facilitate international protection and

• Treaties, which establish classification systems.

• 1994 Uruguay round - Agreement on Trade-Related Aspects of Intellectual Property

● Include / Attach PPT / Handout (typed) - Provided

● Add a snapshot of models used

● Any other innovative teaching methodologies: PPT

● Include case study if applicable: ​NA

● Any internet links / video lecture links relevant to the lecture

Unit-I: Introduction to Intellectual Property Law

Unit-II: Introduction to Copyrights

Unit-III: Introduction to Patent Law

Unit-IV: Introduction to Trade Mark

Unit-V: Introduction to Trade Secrets

Unit-VI: Introduction to Cyber Law

• The first known copyrights appeared in Italy.

● Include case study if applicable: NA

Include / Attach PPT / Handout (typed) - Provided

Add a snapshot of models used - NA

Any other innovative teaching methodologies PPT

Include case study if applicable: Discussed at the end of the Unit

Intellectual Property Office, i) Shri D.K.Rahut

Phone: 022-24123366 Fax: 022-24123355

28031221, 28032382, 28032773 Deputy Registrar of Trade

National Chambers, 15/27, 1st floor, Deputy Registrar of Trade

Add a snapshot of models used: NA

Any other innovative teaching methodologies: NA

Include case study if applicable: Discussed at the end of the Unit

Examples include (Repeat the below for all lectures)

● Include / Attach PPT / Handout (typed): Handout (typed)

● The copyrighted work