Technology Transfers & Intellectual Property Rights
Trademark Law
Patent Law
Design Law
Copyright Law
Technology Transformation
Trademark Law
In today’s competitive world, when protecting the identity of a business is very tough, it is very crucial to protect distinctive identity of your business and protect your rights. To distinguish business from others, usage of Trade-Mark, Patents and Copyrights are used.
However, using a trademark does not give you exclusive rights over it unless you register the Trademark under Trade-Mark Act, 1999. Trade-Mark is a legally perceptible mark, such as word, logo, device, symbol, or label.
Any person (natural or artificial) can apply for a Trade-Mark registration, including a Body Corporate, Company, Association of People, Individual, Startups, Small Enterprises, Proprietorship Concern and many more. It is a distinctive character which gives its owner exclusive rights of usage and also safeguards the mark from others.
You can apply for Trademark under both on-line and off-line modes. There are 45 categories under which a Trademark can be registered. These categories represent the type of business for which Trademark will be registered. For the complete registration of your Trade-Mark, the department provides us with the following varied statuses:
- Formality Check Process: Once an application is filed, all the documents attached are first cross examined.
- Marked for Exam: after the formalities are passed, the application is marked for exam where the registrar checks on the similarities and other discrepancies arising among some relevant/alike registered marks.
- Objection: After scrutinizing the trade mark application, objections may be raised by the Registrar/Examiner under Sections 9 and 11 of the Trade Marks Act, focusing on the descriptive goods/generic/laudatory/indicating quality or nature of goods and identical/similar trade mark in respect of identical/similar goods/services already on record in the Trade Mark Registry.
- Advertised before Acceptance: When the mark is yet not accepted by the department but is not having any objections is advertised in the journal.
- Accepted & Advertised: This is shown when the mark is both accepted by the department and Advertised in the journal.
- Abandoned: When the reply for the examination report or any objection report isn’t filled within the time specified, then the Application shall be termed Abandoned.
- Opposition: If anyone is already using the similar Trademark, he may file an opposition letter. Registrar shall issue notice of hearing, both the parties shall present their case.
- Registered: When all the objections and requirements are fulfilled, then the Mark is registered.
- Withdrawal: When the applicant willfully withdraws the application filled.
In best Scenario, a Trademark gets registered in 8-12 months. The period may get extended based on the criticalities involved and objections raised against the Trademark.
Patent Law
A patent is a form of intellectual property. The person who has patented his work enjoys the protection of his invention from anyone to make, use, sell such invention for a limited period of time.
With the development of inventions, the inventors want to make their rights on their work to be exclusive. To do such the inventor has to get his work patented.
Patent law sees itself way back in 1911 when it was enacted, known as the Indian Patents & Designs Act, 1911. A new actis is known as the Patents Act, 1970 which was brought into effect by amending the old act. The present article will enlighten on the area of how the patent law works in India in safeguarding inventions of the inventors.
The object of the grant of Patent is to encourage research and development and innovation and to also provide protection to inventions.
Initially, the Act provided for a shorter term for the protection of medicine or drug substances. However, after the Amendment Act of 2005 came into effect the uniform period of 20 years was fixed for all the Patents. Thus, once the prescribed period of 20 years is over, then any person can exploit the patented invention i.e. the invention will become public property. The term of a patent begins from the date of application of patent Just like in the case of a patent.
- The application for grant of Patent shall be filed at the Indian Patent Office.
- Any person whether an Indian or a Foreigner, individual or a company, or the Government can file a Patent Application.
- The person who is applying for a Patent shall be the true and first inventor of the invention proposed to be patented.
- The patent application can also be made jointly.
- The patent application shall primarily disclose the best method of performing the invention known to the applicant for which he is entitled to claim protection.
- The applicant shall also define the scope of the invention.
- The invention desired to be patented shall be- new, should involve an inventive step, and must be capable of industrial application.
- A patent application can be made for a single invention only.
Legallands LLP provides efficient patent filing services to Indian and International Corporates, Individual inventors, and Law Firms. Legallands has proved itself as one of the fastest filing reporting to the respective clients. We are the best law firm in Delhi that is diligently monitoring all deadlines taking the necessary steps.
Types of Applications Being Filed at the Indian Patent Office
Ordinary Application- is the first application made for an invention without claiming any priority. This application should be accompanied by a complete specification and claims. (In India, a Provisional Application can be filed too.)
Convention Application- is an application that claims a priority based on the same or substantially same invention(s) filed in one or more of the convention countries in accordance with the Paris convention. The application must be filed within 12 months from the date of the first application in the convention country.
PCT International Application- is an application which is filed in accordance with the Patent Cooperation Treaty (PCT). A PCT application can be filed within 12 months of the Indian Filing (Priority) Date or directly without filing in India, by filing Foreign Filing License in accordance with Section 39 of the Indian Patent Act.
PCT National Phase Application- is an international application which can enter the Indian National Phase within 31 months from the Priority Date or International Filing Date whichever is earlier.
Non-patentable inventions are enumerated under Section 3 and 4 of the Patent Act. Such inventions are delineated below:
- Inventions which are contrary to public order or morality is not patentable.
- An idea or discovery cannot be a subject matter of a patent application.
- Inventions pertaining to known substances and known processes are not patentable i.e. mere discovery of a new form of a known substance that does not enhance the known efficacy of that substance is not patentable.
- An invention obtained through a mere admixture or arrangement is not patentable.
- A method of agriculture or horticulture cannot be a subject matter of the patent.
- A process involving medical treatment of humans and animals or to increase their economic value cannot be the subject matter of a patent.
- Plants and animals in whole or in part are not patentable.
- A mathematical or business method or a computer program per se or algorithms is excluded from patent protection.
- Matters that are the subject matter of copyright protection like literary, dramatic, musical or artistic work is not patentable.
- Any scheme or rule.
- Presentation of information
- The topography of integrated circuits.
- Traditional knowledge.
- Inventions relating to atomic energy.
- Drafting of provisional and complete specifications (Ordinary/ PCT / Convention applications);
- Filing and Prosecution of applications (including Attending to the technical objections raised by foreign Patent offices);
- Filing and prosecuting National phase entry in all PCT designated states;
- Maintenance of patents (post-registration services);
- Oppositions & Revocation;
- PCT- third party observations;
- Monitoring Patent Gazette (Journal);
- Searches & Opinions: Novelty Searches; Patentability, Invalidity and Infringement/freedom to operate(FTO) searches;
- Licensing and Assignment agreements, Due Diligence and all other related activities.
Design Law
The Design law Act, 2000 Contains the provisions regarding the industrial design Registration Process in India. and also tells about the Colour, Shape, Continues, Structure, and Material Registration Services, that the particular design should possess.
According to the Industrial Design law, a design is a two or three-dimensional appearance of a whole product or a part of the product. A design is made up of features such as lines, Contours, Colors, Shape, Surface Structure, and Material registration of the product which makes it more attractive & distinguishable from the product of it’s competitors.
Design” means only the features of shape, configuration, pattern, ornament or composition of lines or colors applied to any article whether in two dimensional or three dimensional or in both forms, by Any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a merely mechanical device.
- The design should be new or original, not previously published or used in any country before the date of application for registration.
- The pattern of the design should relate to features of shape, configuration, pattern or ornamentation applied or applicable to an article.
- The design should be applied or applicable to any article by any industrial process.
- The features of the designs in the finished article should appeal to and are judged solely by the eye.
- The design should not include any trademark or property mark or artistic works.
- The Design should be significantly distinguishable from a known design or a combination of known designs.
Here’s the process for the Registration of industrial design in India.
Check for previous registration:
Check if you have registered your design in the past. For that purpose, you have to file an application to the Patent Office. It is wise of you to register designs as soon as possible because the system works on the basis of the first-to-file rule.
- 1. Application
Write an application and provide information like Name and address. whether you are a Company or an individual, details related to the article and its class, etc.
- Scrutiny And Approval
The Patent Office later examines it. If it is all together,
it gets approved and registered and a later certificate of registration is issued to the applicant.
- Registration Of Design
Once your design is registered it makes an entry into the Register of Designs. It’s a document that the Patent office maintains. It consists of the design number, date of filling, class number, address, and name of the proprietor.
Design Registration lasts up to 10 years which can be extended for five years.
25,000/- to the registered proprietor subject to a limit of Rs. 50,000/- recoverable as agreement obligation in regard to anyone plan.
LEGALLANDS offers the following services in design search, registration, infringement, and litigation!
- Filing and prosecuting applications for registration of Designs
- Searches locally and internationally
- Infringement and validity opinions
- Litigation: cancellation proceedings, appeals, civil suits for infringement
- Journal watch services
- Post Registration Services
- Renewals
- Assignment and Licensing
- Portfolio Management
COPYRIGHT
Copyright law is governed by the Copyright Act, 1957, in India. It is formed to protect the original works of the creator. The owner of such rights can limit the rights to himself or can also assign such rights to some other person or entity. Detailed understanding about how Copyright Law is Different from Trademark law and Patent law, the Copyright Registration process, assignment of copyright, and remedies for infringement of copyright is discussed in the present article.
A copyright is a form of intellectual property that gives someone the sole right/authority to reproduce creative work. It describes the legal rights of the owner of Intellectual Property. The person who is in the possession of a copyright is the only person who can grant permission to some other person to use it by assigning the rights.
As per Section 13 of the Copyright Act, 1957, copyright law protects the classes of work, that is to say, original literary, dramatic, musical, and artistic works, cinematograph film, and sound recording.
Copyright Law refers to a bundle of exclusive rights as stated under Section 14 of the Act to the owner of the copyright. These rights can only be exercised by the copyright owner or by any other person who is licensed by the copyright owner in this respect. These rights include the right to adapt, the right to copy, the right to print, the right to translate, the right to communicate.
Copyright protection is a very unique form of protection provided to the copyright holder. It commences the moment the original work is created. Thus, the registration of copyright is optional. However, copyright protects the expression of an idea and not the idea in itself.
For example, if an author has a theme in her mind but it is not present in the expressed form it cannot be copyrighted as it is intangible thoughts. Thus, copyright protection can be availed only when the original work is present in the expressed form.
The protection of creativity and the works of mind is not only limited to the borders of India. To safeguard the original work of creators India has entered into many International Conventions of Copyright, they are :
- Berne Convention for the Protection of Literary and Artistic works
- Universal Copyright Convention
- Convention for the Protection of Producers of Phonograms against Unauthorized Duplication of their Phonograms
- Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties
- Trade-related Aspects of Intellectual Property Rights (TRIPS) Agreement.
The aim of being part of such conventions/ treaties is to protect the original works of the mind, being the subject matter of copyright law, regardless of their national borders.
- Writings: Books, articles, reviews, poems, essays, blogs, plays, movies, and broadcasts.
- Website contents: Text, pictures, graphics, and even the page layout.
- Computer programs: Business, personal, and entertainment.
- Motion pictures or audio: Movies, TV programs, and podcasts.
- Music: Lyrics and instrumentals both recorded and performed.
- Artistic works: Paintings, drawings, sculptures, graphics, maps, charts, and photography.
- Original architectural designs: Designs for municipal, commercial, and residential buildings, bridges, highways, and tunnels.
Copyright Registration makes sure that the creative work of the owner is not copied by someone else. No person will be granted permission to use the same without obtaining prior approval of the owner once registered.
It is not mandatory for the owner to get the Copyright Registration done. But it is always advised to get the original work of the creator to be registered. It gives a certain level of protection and security to the work of the owner. It provides motivation to the holder to create more work.
: Designs for municipal, commercial, and residential buildings, bridges, highways, and tunnels.
In B.K. Dani v/s State of M., 2005 CriLJ 876, it was held that once it is so registered the author is deemed to acquire an intellectual property right in it. The right arising from the registration of the book can be the subject matter of civil or criminal remedy so that without it the author can have no rights nor remedies though his work may be the original one.
The documents that are required from Copyright Registration are:
- In case of published work, 3 copies of the work;
- 2 copies of manuscripts, if the work is not published;
- Special power of attorney or vakalatnama signed by the attorney and the party, if the application is being filed by an attorney;
- Authorization in respect of work, if the work is not the work of the applicant;
- Information regarding the title and language of the work;
- Documents regarding the name, address, and nationality of the applicant;
- Mobile number and email address of the applicant;
- In case the applicant is not the author, a document containing the name, address, and nationality of the author, and if the author is deceased, the date of his death;
- If the work is to be used on a product, then a no-objection certificate from the trademark office is required;
- If the work is published, the year and address of first publication is also required;
- Information regarding the year and country of subsequent publications;
- No-objection certificate from the author, if the applicant is not the author;
- In case the publisher is not the applicant, a no-objection certificate from the publisher is required;
- In the case of copyright is for software, then source code and object code are also required
Copyright protects the original work of the owner like artistic work, literary works, etc. while a patent protects inventions or discoveries. Trademark law protects words, phrases, symbols, or designs identifying the goods or services of one party and distinguishing them from others.
| S.No | Categories | Copyright | Trademark | Patent |
|---|---|---|---|---|
| 1 | Regulated Under | The Copyright Act, 1957 | Trademark Act, 1999 | The Patents Act, 1970 |
| 2 | Protection | Protects literary works, dramatic works, musical works, artistic works, cinematograph films and sound recording. | Protects words, phrases, slogans, symbols, and design which helps to distinguish it from that of other goods. | Protects the rights on the property that has been invented by the owner and prevents others from making, using, or selling the invention. |
| 3 | Rights | Copyright protection commences the moment a work is created, and its registration is optional. However it is always advisable to obtain a registration for a better protection. | The rights become effective from the moment the trademark has been applied. It takes around 12 months for a trademark to be registered. | The owner can stop others from making, using and selling the invention the moment he applies for a provisional patent. It takes around 2-3 years for registration of the patent. |
| 4 | Validity | The general rule is that copyright lasts for 60 years. In the case of original literary, dramatic, musical and artistic works the 60-year period is counted from the year following the death of the author. | Trademark registration is valid for 10 years and can be renewed after every 10 years. | Patent registration is valid for 20 years starting from the date on which the application for patent registration is filed. However, it is applicable within the territories of India only. A separate patent application is to be filed for protection in each country where protection is required. |
| 5 | Symbolic Representation | The copyright symbol is © | After the filing of the application and before registration is complete- ™ After completion of Registration- ® | No Symbolic representation |
3 Types of Copyright Services Legallands Can Provide
- Registration of Copyright
- Assignment of Copyright
- Infringement of Copyright
The steps involved in the registration process are:
File an Application
- The holder of the original work, through himself or through an authorized agent can file an application for registration physically or through e-filing from the government site i.e., copyright.gov.in
- The application fees range from INR. 500/- to INR. 40,000/-. The application fees can be paid through demand draft (DD), Indian Postal Order (IPO) addressed to the registrar, or through an e-payment facility.
The Registration Of Copyright process involves 30 days waiting period for the examination of a Copyright application.
Objections:
- If no objection is raised against the copyright application, the examiner scrutinizes the application. Once the process of scrutiny of the application is complete, then the application is allowed to move forward.
- In case, any objection is raised, then letters regarding the same are sent to both parties. Further, the parties are called for a hearing by the registrar. If in the hearing, the objection raised is rejected then the application moves forward for scrutiny by the examiner. However, if the objection is not clarified then a letter of rejection is sent to the applicant.
Registration:
- In the final stage, if the examiner is completely satisfied with the application filed by the applicant then a certificate of registration is issued to the applicant. The process is said to be complete when the applicant is issued the extracts of the Registration of Copyright (ROC).
- The process of registration is indeed time-consuming and requires intensive attention at every stage. Legallands LLP is to provide complete guidance and completion of copyright registration in a hassle-free process on behalf of the owner of the exclusive rights/applicant.
Assignment of copyright means the transfer of the ownership rights by the copyright holder to a person or organization. The Assignment of copyright involves the formation of an agreement between the parties i.e. the assigner and the assignee. The services for the same are provided by the Legallands LLP.
The holder of a copyright holds the ownership of the copyrights and all the rights are exclusive to the holder only. However, sometimes the holder may consider transferring his rights. For example- an author may do so by transferring the original work to the publisher.
The period of assignment of copyright is of 5 years if it is not specifically mentioned in respect to that of the time period of assignment of copyright.
In Pine Labs Pvt Ltd. V. Gemalto Terminals India (P) Ltd, & Ors., 2011(48) PTC248 (del),
- It was held that in the absence of the period of assignment or territory of assignment being specified, the assignment is deemed to be for 5 years, and territory is deemed to be the territory of India as per sections 19(5) and 19(6) of Copyright Act. After 5 years, the copyright reverts to the assignor.
MERITS AND DEMERITS
There are both merits and demerits to the assignment of copyright. Transferring the rights by an author to a publisher, demerits are that the author will get a lesser cut than if he had retained the rights to himself. Further, the author loses creative control over the work.
Assignment of copyright has its own merits. The publisher has more resources through which the author’s work increases in its distribution. It also helps the author to focus on the work of writing and not to go through the hectic commercial processes.
COPYRIGHT INFRINGEMENT
Owners develop new and original work and get copyright protection to guarantee that they can get benefit from their endeavors. The copyright holder has sole authority over his original work.
The owner of the copyright can sell his work or permit it to the outsider who can utilize his work. However, if somebody copies or repeats copyrighted work without the authorization of the owner, then that leads to copyright encroachment. In that case, the owner can make a lawful move against the infringer.
R.G Anand vs M/S. Delux Films & Ors, AIR 1978 SC 1613,
- it is stated that if the defendant’s work is nothing but an imitation of the copyrighted work with slight variations it will amount to a violation of the copyright.
- In other words, to be actionable, the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.
INFRINGEMENT OF COPYRIGHT REMEDIES
- Civil Remedy: Section 55 of The Copyright Act, 1957, provides that if copyright in any work has been encroached upon, the owner of the copyright will be qualified for all such cures via directive, harms, and records.
- Criminal remedy: Section 63 of The Copyright Act, 1957, states that the copyright holder can take criminal procedures against the infringer. Punishment may extend to 3 years and with a fine of Rs. 50,000 and which may extend to 2 lakhs.
On understanding the Copyright law it can be said that Copyright law in India is strong and effective. The copyright law involves proper description and procedure of registration and assignment of copyright. Further, in case of infringement of copyright legal safeguard is provided to the aggrieved party.
India has become part of many Conventions/Treaties so that the protection of the original work of the holder/owner of the copyright does not get limited by borders.
The nation has a particularly stable and solid lawful base for the assurance of Intellectual Property Rights, the Court should assume a functioning part in the security of these rights, including the copyright. The circumstance is, in any case, not however disturbing as it seems to be seen and the current overall set of laws can adequately deal with any issues related to copyright encroachment.
TECHNOLOGY TRANSFERS
Technology Transfer is the process where the technological creation/advancement so made is made to be available to the larger world. The technological transfer also involves the transfer of the procedure and the technological skills so involved and such is an inherent part of the technological transfer process.
The Technological transfer is a very complicated process and it do not only focus on the scientific aspect but also to non-scientific and other technical aspects which are important part of Transfer of technology which involves risk management, Intellectual Property management, Finance management etc.
The Technology can be transferred in two mode:
- Tangible Knowledge
- Intangible Knowledge
Tangible refers to something which can be seen and touched. Tangible knowledge refers to the information which is available in physical form. This includes machinery equipment, apparatus, Technology Management agreements, etc.
Intangible Knowledge refers to the information which is not available in the physical form for example skills, techniques, methods etc. which is not available in tangible form.
Further technology transfer involves three steps. They are:
- Preparation:- This step includes the formation of the technology which is technical in nature and only then it will be Patentable as random ideas, scientific theories, data presentations cannot be patented. Thus, the formation of the technology should be the root to technological advancement which brings benefit to the society as well as the scientific world. This step involves formation of blue prints, elaboration of the processes, determination of what the technology will provide and for what can be used, technology planning, understanding the risks involved, if any etc.
- Installation:- After the preparation of what the technological advancement would be the next step refers to installation of the technology. It determines the cost involved, manpower required, the requirement of space, safety measures, approval of the government, determination of hazard, area of installation, distribution process, transportation, warrantees and guarantee’s, establishment of liability.
- Utilization:- Utilization refers to use of the Technology transferred for which the same has been created. The utilization aspect also refers to how and for what the technology has been transferred and the purpose of its use. The purpose of use and actually how it is used should be same and should not collide with each other. It also includes the determination of the factors like environmental factors, human safety, factors relating to hazard etc.
WHAT ARE THE LEGAL ASPECT INVOLVED IN TECHNOLOGY TRANSFER?
The Legal aspects which are to be considered in respect of Technology Transfer are as follows:
- Restriction of Import and Export
- Technology Rights
- The aspect of Non-Disclosure
- Guarantees and Warranties
- Patents
Whenever there is the involvement of import and export there is also another aspect that is to be taken care of i.e. the trade barriers and also the aspect of prohibited catalogue of goods which refers to the goods that cannot be imported or exported. Thus, when it comes to Technology transfer, import and export of the same comes within the purview. It is important to understand the legal validity whenever an import and export of Technology is taking place and that there is no restriction or barrier in the same.
Technology rights means and includes the information relating to goods, which are not covered by a patent or patent application. It includes the technical and non-technical information, methods, procedures, techniques, processes, formulae, designs, protocols, plans, site-plans etc.
