Unit-I Intellectual Property Rights & Copyrights

i. Meaning of IPR: International Instruments: Paris Union, Berne Convention, TRIPS,

WIPO,PCT,WPPT,UPOV,VIP
ii. Theories of IPR
iii. Copyright Act: Historical Background, Copyright Act, 1957
iv. Copyright in Literary, Dramatic & Musical, Works, Sound Recording, Cinematograph Films,
Copyright in Computer Programme
v. Author Special Rights, Moral & Economic Rights, Right of Broadcasting and Performers, Terms of
Copyright, International Copyright
vi. Copyright Registrar & Copyright Board- Power & Procedure
vii. Copyright Societies, Ownership, Assignment, License, Translation of Copyright, Compulsory Licenses
viii. Infringement- Criteria of Infringement, Infringement of Copyright- Films, Literary& Dramatic works,
Importation & Infringement, Fair Use Provisions, Piracy in Internet
ix. Remedies-especially possibility of Anton Pillar Injunctive Relief in India
x. Digital Rights & Coyright
LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -1
Topic- IPR- Meaning of Intellectual Property: International Instruments: Paris Union, Berne Convention,
TRIPS, WIPO, PCT, WPPT, UPOV,VIP
Youtube Link- https://www.youtube.com/watch?v=0hFqFk5Lcok

NOTES

Meaning of Intellectual Property:

 Intellectual Property (IP) refers to creation of the mind, such as inventions, literary & artistic works,
designs, symbol names and images used.
 Intellectual Property is the product of the human intellect including creativity concepts, inventions,
industrial models, trademarks, songs literature, symbols, name brands etc.

International Instruments:
 Paris Union:
 It was signed at Paris, France.
 The Date of Paris Union is March 20 1883.
 The Enforcement of Paris Union is by WIPO.
 It is the First IP Treaty.
 Signing Members- 177 Countries
 By this convention establishment of a Union for Protection of Industrial Property.

 Berne Convention:
 Berne Convention was signed at Berne, Switzerland.
 The Date of Enforcement of this Convention was September 9, 1886.
 It is also known as Berne Convention for the Protection of Literary & Artistic works.
 Every country should recognise the copyright held by citizen of another country.

 TRIPS:
 The Full Form of TRIPS- Trade related Aspects of Intellectual Property Rights.
 Added to the agreement establishing the WTO as Annexure No. 1C
 It is an integral part of WTO.
 Its aim is to protect IPR and to reward creativity and inventiveness.

 WIPO:
 WIPO stands for World Intellectual Property Organisation.
 It was signed at Stockholm in 1967
 It was enforced in 1970.
  Its objectives are to promote the protection of Intellectual Property throughout the world & to ensure
the administrative co-operation.
 Its functions are normative activities, program activities, International Classification & Standardization
activities.
 Its organs are General Assembly, Conference & Co-ordination Commitee.

 PCT:
 The full form is Patent Co-operation Treaty.
 It is administered by WIPO.
 PCT system makes it possible to seek the patent protection for an invention simultaneously in a large
number of countries by filing a single PCT application.
 There are two phases in PCT- National Phase & International Phase.

 WPPT:
 Full form of WPPT- WIPO Performances & Phonograms Treaty.
 Deals with the rights of two kinds of beneficiaries, particularly in the digital environment, Performers
& Producers of Phonograms.

 UPOV:
 The International Union for the Protection of New Varieties of Plants, known as UPOV.
 It is an intergovernmental organization with HQ in Geneva.
 The functions of UPOV-
 Promoting international harmonization and cooperation, mainly between in member states & with
assisting nations in introduction of plant variety protection legislation.
 UPOV Serves as a forum to exchange views and share experiences.

ASSIGNMENT
Q.1 Explain the meaning of Intellectual Property.
Q.2 Discuss the Paris Convention.
Q.3 What is WPPT & also write its full form of it.
Q.4 Write the aims of TRIPS Agreement.
Q.5 Name the two phases in PCT.
 LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -2
Topic- IPR- Theories of IPR, The Copyright Act: Historical Background, Copyright Act, 1957
Youtube Link- https://www.youtube.com/watch?v=0hFqFk5Lcok

NOTES

Theories of IPR:

i. Natural Rights Theory ( Labour Theory):

 This theory takes into consideration that everyone has a natural property right on his, or her ideas.
 The essence of this theory emanates mainly from John Lock's idea that an author has a natural right over the
productions of their intellectual labour.
 This theory does not make any difference between intellectual property and the traditional tangible including the
right to use, to exclude others from use and the right to transfer the owned object.
 Accordingly, anyone who violates the intellectual right of an author, creator or inventor is considered to commit a theft.

ii. The Utilitarian Theory:

 This theory is based on the fact that the industrial progress and cultural goods have a beneficial effect on the society.
 Consequently, in order to promote the inventions and creations, the owner needs a guarantee that the will be superior to
the costs of his work.
 As a matter of fact, intellectual rights represent an artificial encouragement from the State .

iii. The Ethic & Reward Theory:

 This theory justifies the exclusive rights of intellectual property with some moral & ethical aspect.
 These sets of exclusive rights are considered as an expression of appreciation to the creator for his or immense
contribution to society by his or her creation.
 The term “ethic" signified “fairness” whereas the term "reward" symbolizes "validation of the in a particular
thing”.
 The theory of moral desert needs to be read along with this theory.

iv. Personhood Theory:

 The theory draws its roots from Hegel’s Philosophy, which provides that intellectual property rights are also
associated with safeguarding personality development that extends to material things.
 This theory remarked that an unauthorized user who offers to the general public someone’s creation without
prior consent will be considered a thief.

 The Copyright Act:

 Historical Background:
 The real need of copyright law was felt only after the invention of printers and copiers.
 During the 15th and 16th Century, printing was invented and widely established in Europe.
 Copies of Bibles were the first to be printed. Government had allowed printing without any restrictions
but this led to dissemination of lot of governmental information.
 Subsequently, government started issuing licenses for printing.
 The republic of Venice was the first to grant privilege to print books. It was for the history of its own
named 'Rerum venetarum ab urbe condita opus’ authored by Marcus Antonius Coccius Sabellicus.
 In 1518, the first copyright privilege was granted in England. It was issued to Richard Pynson,
King's Printer, the successor to William Caxton.
 In 1701, the new parliament of England & Scotland change the laws in both countries and an important
early piece of legislation was the Copyright Act of 1709, also known as the Statute of Anne, after
Queen Anne. The act came trim force in 1710 and was the first copyright statute.
 Thereafter, came the international agreements like the Paris convention and the Berne convention which
are the standards for tire copyright law enacted by every country including India.
  Copyright in India:
Copyright Act 1957:
 Copyright law in India has been in three phases.
 The law of copyright was introduced in India only when the British East India Company was established in 1847.
 The IInd phase was in 1914, when the Indian legislature under the British Raj enacted the Coyright Act of
1914.
 IIIrd phase of Copyright law in 1957. The Copyright Act, 1957 was enacted in order to suit the provisions of
the Berne convention. This act was enacted by Independent India by which we are governed till date.

ASSIGNMENT

Q.1 From whose idea the Natural Rights Theory emanates?

Q.2 What is the meaning of ethics & reward under Ethics & Reward Theory.

Q.3 Mention any 3 points on Utilitarian theory of IPR.

Q.4 What is the Hegel’s philosophy on which the Personhood theory is based?

Q.5 The real idea of Copyright laws was felt after the invention of which machine.

Q.6 Copyright Law in India has gone through how many phases
 LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -3
Topic- IPR-Copyright in Literary, Dramatic and Musical, Works, Sound Recording,
Cinematography Films, Copyright in Computer Program.
Youtube Link- https://www.youtube.com/watch?v=0hFqFk5Lcok

NOTES:

Meaning Of Copyright:

 The word copyright is a mixture of two words – ‘copy’ and ‘right’.

 To be more precise copyright means ‘right to copy’, wherein only the creator or his authorized person has a
right to reproduce a work.
 With the help of a significant mental or intellectual ability, when a person creates a unique product that
product is viewed to be original.
 The unique creations include websites, computer software, musical lyrics, art, literature, poetry, graphic
designs, musical compositions, novels,etc.

 Copyright in Literary work:

 Literary works are protected by copyright as they are present in physical form.
 Literary works include books, magazines, newspapers, journals, anthologies, novels, computer
software,programs etc.
 Literary works are not only confined to the above-mentioned things but also abstracts, and dictionary
meanings, are protected.

 Duration of Copyright:

 In the case of copyright pertaining to literary work both published and unpublished.
 Theauthor owns the copyright which extends to his lifetime plus 60 years after his death.

 Copyright in dramatics:
 Dramatics includes within itself dance, mime covering screenplays, ballets, operas, etc.
 Copyright in the field of drama safeguards the creators, composers, choreographers, dramatists, poets,
authors, and others from replication of their work.
 The different types of published and unpublished work may be submitted for registration including
pantomimes, treatments, choreography,etc.
 It however needs to be understood that all dramatic work cannot get copyright. A few dramatic works are
exceptions to it namely:

1. Title or series of a program.

2. Copyright protects dramatic expressions of a creator but not the general idea of work.
3. Present work/ script can only be given copyright and not future scripts/ works.

 Copyright in Musical Work

 Musical work means a work that consists of music and for a work to be musical it requires a combination of
graphical notations.
 However, it excludes any actions or words which are intended to be sung/ spoken with the music.

 Duration of copyright:

 The copyright for the musical work extends to the lifetime of the author plus 60 years after the author
dies.
 However, in the case of joint authorship the duration is counted after the death of the last author.
 Copyright in sound recordings:
 Sound recordings which comprise of any person’s speech, song sung by any person with or without music,
any audio, or any podcast.
 The sound recordings are subjected to copyright.

 Duration of copyright:

 The copyright usually lasts for 60 years.

 However, in the case of sound recording copyright extends to the lifetime of the producer plus 60 years after
the death of the creator.

 Copyright in cinematograph films:

 Cinematograph films include a plethora of activities namely:

1- Any work of visual recording displayed on any medium from which any moving object can be visualized.
2- Work involving sound recordings.
3- Stages of protection of cinematography under copyright.

 Post-production:

 Once the film is released it becomes the prime necessity to protect it from replication:

1. Rights of the owner

2. Reproduction right

 Copyright protection for computer programs:

 Registration of copyright is not mandatory in nature, but many times, registration is the prima facie evidence
in the court of law.
 Hence, the owner is also advised to register his product.
 Copyright protection is not given to ideas, but rather to expressions.
 It means that the author of computer software has copyright protection when someone tries to exactly copy
the same code, but not for the ones, where the code is made different, but both amount to the same results.

ASSIGNMENT
Q.1 What do you mean by the term Copyright. Enlist any three points.
Q.2 Mention three points about Copyright in Literary Work?
Q.3 What is the duration of Copyright in Literary work?
Q.4In four points describe the term Copyright in Dramatics?
Q.5 What is the duration of Copyright in Sound Recording?
Q.6 Describe briefly about Copyright in Computer Programs. State any four points.
 LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -4
Topic- IPR-Author Special Rights, Moral & Economic Rights, Right of Broadcasting and
Performers, Terms of Copyright, International Copyright
Youtube Link- https://www.youtube.com/watch?v=G9hfUxmJ6B0

NOTES

Author Special Rights:

 Section 57 of the Copyright Act, 1957 grants certain special rights to the authors referred to as
Author’sSpecial Rights.
 These rights include the right to claim authorship of the work and to restrain or claim damages for any
distortion, mutilation, or modification of his work in a manner prejudicial to his reputation.
 These rights are also called the author's moral rights and are based on Article 6bis of the Berne
Convention.
 Copyright gives the exclusive right to the owner/ author of the work to restrain others from copying
his/her original works.
 The Copyright Act protects the moral and economic rights of the author as well as the owner. Moral
rights are inter alia referred to as the author's special rights and are inalienable.
 India, a signatory to the Berne Convention, has incorporated Article 6bis of the convention in Section 57
of the Act. This section enumerates the moral rights/special rights of the author.

 Moral Rights:
 Section 57 of the Act defines the two basic “moral rights” of an author. These are:
1. The right of paternity,&
2. Right of integrity.
 The right of paternity refers to the right of an author to claim authorship of work and a right to prevent all
others from claiming authorship of his work.
 The right of integrity empowers the author to prevent distortion, mutilation, or other alterations of his
work, or any other action in relation to said work, which would be prejudicial to his honor or reputation.
 The proviso to Section 57(1) provides that the author shall not have any right to restrain or claim damages
in respect of any adaptation of a computer program to which Section 52 (1) (aa) applies.
 It must be noted that failure to display a work or to display it to the satisfaction of the author shall not be
deemed to be an infringement of the rights conferred by this section.
 The legal representatives of the author may exercise the rights conferred upon an author of a work by
Section 57(1), other than the right to claim authorship of the work.
 Moral rights are rights that the creator of a work is automatically entitled to and which no one else can
claim. The moral rights of work can even remain with the creator after their death.

 Economic Rights:
 The copyright subsists in original literary, dramatic, musical, and artistic works; cinematographs films,
and sound recordings.
 The authors of copyright in the aforesaid works enjoy economic rights under Section 14 of the Act.
 The rights are mainly, in respect of literary, dramatic, and musical, other than a computer program, to
reproduce the work in any material form.
 It includes the storing of it in any medium by electronic means, issuing copies of the work to the public,
performing the work in public or communicating it to the public, etc.
 In the case of a computer program, the author enjoys in addition to the aforesaid rights, the right to sell or
give on hire, or offer for sale or hire any copy of the computer program.
  In the case of an artistic work, the rights available to an author include the right to reproduce the work in
any material form.

 Right of Broadcasting and Performers:

 The performer has the right to make sound or visual recording:
 A performer has the right to make the sound or visual recording.
 He can also give consent to other people to record the live performance.
 Without the consent of the performer, no other person can make use of that sound recording.
 The performer has the right to produce the sound or visual recording:
 A performer may also become a producer of the sound or visual recording and can enjoy all the rights that
a producer enjoys such as reproducing a number of copies, giving the copies, etc.
 But for that purpose, the performer must have prior permission from the individual copyright owner like
lyricist and music composer and should have the certificate related to the sound or visual.
 The performer has the right to broadcast the performance:
 Performers can prevent others from broadcasting their live performances.
 In case the consent of the performer is not taken and any other individual is broadcasting his performance
then it will amount to copyright infringement.
 Performer has the right to communicate the work other than by broadcast:
 Performer can use other means to communicate with the public than by means of broadcast.
 Broadcast means communication to the public either by means of wireless diffusion or by wire.

 Term of Copyright:
 Copyright is protected for a limited time. Economic rights have a time limit, which can vary according to
national law.
 In those countries which are members of the Berne Convention, the time limit should be equal to or longer
than fifty years after the creator’s death.
 Under the Indian Copyright Act, 1957, Chapter V enumerates the term of copyright protection.
 Section 22 of the Act states the term of copyright in published literary, dramatic, musical and artistic works
shall subsist, published within the lifetime of the author, until sixty years from the beginning.
 Followingthe year in which the author dies. In this section, the reference to the author shall, in the case of a
work of joint authorship, be construed as a reference to the author who dies last.
 This term has been increased from fifty years to sixty years by the Amendment of 1992.

 International Copyright:
 “International copyright” is something that will protect an author’s writings throughout the world.
 The protection is given against unauthorized use in a particular country, depending on the country’s
national laws.
 In 1999, the International Copyright Order was formulated to protect the authors/owners of foreign
copyright works and enforce protections beyond the national limits.
 Under Indian legislation, the copyright of works of the different countries mentioned in the International
Copyright Order is protected in India, as if such works are Indian works.
 The benefits granted to foreign works must not extend beyond what is available to the works in the home
country and only on a reciprocal basis.
 “Section 40 states that the copyright of nationals of countries who are members of the Berne Convention
for the Protection of Literary & Artistic Works are protected in India.

ASSIGNMENT
Q.1 Define the expression ‘Author’s Special Rights? Mention any five points.
Q.2 What are Moral Rights? List any six points.
Q.3 By stating five points, elaborate Economic Rights of an Author?
Q.4 Mention three kinds of Performer’s Rights along with two points each?
Q.5 State Term of Copyright in four points?
Q.6 Define International Copyright in four points?
 LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -5
Topic- IPR-Copyright Registrar & Copyright Board- Power and Procedure
YouTube Link- https://www.youtube.com/watch?v=2di4cuWPMyo&t=201s

NOTES

Copyright Registrar:
 Chapter II consists of Sections 9-12 of the Copyright Act,1957 deals with Copyright Office &
Copyright Registrars.
 The Central Government shall appoint a Registrar of Copyright who shall appoint a Registrar of
Copyrights & may appoint one or more Deputy Registrars of Copyrights.
 The Copyright office under the overall charge of the Registrar maintains a Register of Copyright,
containing particulars of the authors of the copyright works, names, etc. of publishers & owners.
 Section 44provides that a Register of Copyrights shall be kept at the Copyrights Office which will
include works or names or titles or addresses of the owners of the copyright.

 Register of Copyright:
 The copyright office will maintain a Register of Copyrights containing the names or titles of works and
the names and addresses of authors, publishers, and owners of copyright and other particulars as may be
prescribed.
 The Register of Copyright will be kept in six parts as follows:
 Part I - Literary works other than computer programs, tables, and compilations including computer
databases and dramatic works.
 Part II - Musical works
 Part III - Artistic works
 Part IV - Cinematograph films.
 Part V - Sound recordings.
 Part VI - Computer programs, tables, and compilations including computer databases.

 Who Can Register a Copyright?

 The creator of the work and the person who has obtained rights to the original work can register for the
copyright.
 It’ll be called work made for hire if the said piece was created during the time of the employment.
 In such a case, the employee is not considered the author or creator of the work. That title goes to the
employer.
 If a work has been created by two people, then they get co-ownership of the copyright unless the people
concerned want it otherwise.

 What Does a Copyright Protect?

 Itis a form of intellectual property law, which protects original works under literature, music, art,
photography, cinema/film, or even a computer program.
 The copyright protects most of the works that are available in tangible form, including lyrics to a song,
tunes, pictures, graphics, sculptures, pieces of architecture, etc.
 Steps for Copyright Registration:
 Step 1: Filing the Application:
 Along with the requisite fee, an application needs to be submitted either in DD/IPO. Once this application
is filed, a diary number is generated and issued to the applicant.

 Step 2: Examination:
 There is a minimum wait of 30 days for recording and analyzing any objections that may come up against
the copyright application.
1. In case of no objection:
 The application goes ahead for scrutinization by an examiner. This scrutiny gives rise to two options:
 In case of the discrepancy found during scrutiny:
 A letter of discrepancy is sent to the applicant.
2. In case of zero discrepancies:
 This would mean that the application fulfils all criteria required for the copyright. The applicant is then
given the nod to go ahead with the registration of the same.
 If the registration is not approved, then the applicant received a letter of rejection.
3. If the application is accepted:
 The application being accepted means that the objection has been rejected. The application goes ahead for
scrutinization by an examiner.
 Step 3: Registration:
 Theregistration solely depends on the registrar.
 Once everything is cleared from the registrar’s end, the applicant receives the copyright and can legally
exercise all rights that come with the owner of that copyright.

 Copyright Board- Power and Procedure:

 The Copyright Board, a quasi-judicial body, was constituted in September 1958. The jurisdiction of the
Copyright Board extends to the whole of India.
 The Copyright Board is a body constituted by the central government to discharge certain judicial functions
under the Act.
 The Board is entrusted with the task of adjudication of disputes pertaining to copyright registration,
assignment of copyright, and grant of Licenses in respect of works withheld from the public, unpublished
Indian works.
 It consists of a chairman and not more than fourteen other members.The Chairman and the members shall
hold their office for five years. They may be reappointed on the expiry of the tenure.
 The Chairman of the Copyright Board must be a person who is or has been a Judge of a High Court or is
qualified for appointment as a judge of a High Court.
 There is no qualification mentioned about the members of the Board.
 The Registrar of Copyright also plays a very important role. The Registrar of the copyright board will perform
all secretarial functions of the copyright board.
 The Registrar of the Copyright is the authority under Section 9 of the Act who is the officer of the Copyright
Office. The Registrar of Copyright has powers of the civil court.

 Functions of Copyright Board:

 The foremost function of the copyright board is to look after whether the provisions of the Act are followed
without any violation or infringement and to adjudicate certain cases pertaining to copyrights.
 Other than this, the copyright board has been provided direct jurisdiction in relation to matters:
 To decide the issue of the publication and its date in order to determine the term of copyright.
 Powers of Copyright Board:
 The copyright board has been constituted to perform judicial functions.
 Therefore, the copyright board has been accredited with the powers of civil court for the purpose of Sec. 345 &
346 of the Code of Criminal Procedure, 1973.
 All proceedings of the court are judicial proceedings within the meaning of Sec. 193 & 228 of Indian Penal
Code, 1860.

ASSIGNMENT

Q.1 What do you mean by Copyright Registrar?

Q.2 Define the Register of Copyright in three points.
Q.3 Who can register the Copyright? List three points.
Q.4 Discuss the Steps of Copyright Registration in six points.
Q.5 Define Copyright Board & its powers in six points?
Q.6 Enlist three points of Functions & Powers of Copyright Board?
 LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -6
Topic-IPR-Copyright Societies, Ownership, Assignment, License, Translation of Copyright,
Compulsory Licenses
YouTube Link- https://www.youtube.com/watch?v=BZGXPPp1eDM

NOTES

Copyright Societies:
 The Copyright Society is such a legal entity that safeguards the interests of owners of the work in which
copyright subsists.
 The author of creative work is assured of commercial management of his work by these societies.
 The functions of a copyright society are to grant a license of the copyright in original work for the
reproduction, performance, issuing copies of the work to the public, locate infringement of the copyright,etc.
 Collective administration of copyright by societies is a concept where management and protection of copyrigh
t in works are undertaken by a society of authors and other owners of such works.
 No author and another owner of copyright in any work can keep track of all the uses others make of his work.
 When he becomes a member of a national copyright society, that society, because of its organizational facilitie
s and strength, is able to keep a better vigil over the uses made of that work throughout the country and collect
due royalties from the users of those works.

 Evolution of copyright society:

 Before the commencement of the Copyright (Amendment) Act, 1944, Section 33 to Section 36 was used to
deal with the performing rights societies.
 This society used to carry on the business of issuing or granting licenses for the performance in India of any
work in which copyright subsisted.
 However, the ambit of such a society’s power was limited to the field of literary, dramatic, and musical work.
 In 1994, after the commencement of the Copyright (Amendment) Act, 1994, provisions relating to copyright
societies were stated in the said Act.

 Reason for the development of copyright societies:

 It has been usually observed that the authors of creative works are not business-minded, or interested in
financial resources and are often prone to the exploitation of their work.
 For example, if an author has created an original piece of literary work, then the author might get a monetary
benefit by reproducing copies of his work and selling them to the public at large.
 However, this is only possible if the work is licensed to a publisher. It is also extremely difficult for the owner
of the work to prevent infringement of the work.
 At times, it has been also observed that they are unable to keep track of all the uses others make of their work.
 Provisions for the power of copyright society:
 The powers of copyright societies are mentioned in Section 34 of the Act. The Section states that:
 A copyright society might accept exclusive authorization of any copyrighted work from the author and other
owners of such rights.
 By accepting such exclusive authority, they issue licenses or collect the license, fees or both.
 An author or any other owner of rights might withdraw reauthorization without injuring any rights of the
copyright society under any contract.

 Ownership:
 Section 35 deals with the control over the Copyright Society by the owner of rights.
 Everycopyright society shall be subject to the collective control of the owners of rights under this Act whose
rights it administers & shall, in such a manner as may be prescribed:
1. Obtainthe approval of such owners of rights for its procedures of collection and distribution of fees.
2. Obtain their approval for the utilization of any amounts collected as fees for any purpose other than distribution
to the owners of rights.
 3. Provide to such owners regular, full & detailed information concerning all its activities in relation to the
administration of their rights.
 All fees distributed among the owners of rights shall, as far as may be, be distributed in proportion to the actual
use of their works.

 Assignment:
 Section 18,19 & 19A of the Copyright Act deals with the assignment of Copyright. Assignments of copyright
may be for the whole of the rights or for part of the rights only.
 Assignment of copyrights may be general, i.e., without any limitation being placed on the assignee or the
assignment may be subject to certain limitations.
 Assignment may be for the full term of the copyright or for a limited period of country.
 Assignment may be on a territorial basis, i.e, for a particular territory or country.
 An owner of a copyright can assign his right in the above combination of forms.

 License:
 A license can transfer the interest in a copyright. In a license the rights granted are limited. The ownership of
the rights remains with the author.
 When an author licenses only the right of circulation of his work to a publisher, the publisher is only entitled
to cause circulation of the work.
 Section 30 deals with the owners of copyright in any existing work or the prospective owner in any future
work may grant any interest in the right of license in writing signed by him or his agent.
 Section 31(1) deals with Compulsory license which means it is a license to do an act covered by an exclusive
right, without the prior authority of the right owner.
 Section 31D deals with Statutory Licensing in India which regards to the broadcasting of the literary, musical
work & sound recording. It gives rights to the broadcasters.
 Section 32 deals with Termination of License provides that if after granting the license to produce and
publish translation, the owner of the copyright himself publishes the translation in same language
 Translation of Copyright:
 Article 2(3) of the Convention provides that “translations …… of a literary or artistic work are protected as
original works without prejudice to the copyright of the original work”.
 A fundamental principle of copyright law is that copyright exists only in the expression of a work, not in the
idea behind it.
 The original author’s literary work is the expression of his idea, and the translation implies another
expression of that idea.
 The translator does not build on the author’s work but conveys the author’s ideas in a new form of
expression.
 Section 13 of the Copyright Act 1957 (Act) provides that copyright shall exist throughout India for an
original literary work.
 Thus, a translated literary work must seek permission from the original author before translating and
publishing the work.
 Compulsory Licenses:
 Section 31 deals with a compulsory license in works withheld from the public.
 Meaning – Compulsory license means that the use of the owner’s rights against payment is either set by law
or determined through some form of adjudication or arbitration.
 In other words, prior permission from the right owner is not required if the mandate provided by law is met.
 The section states that if the owner of the rights has refused to republish or allow republication or allow
performance or allow communication by way of broadcast to the public.
 The aggrieved person may reach out to the Appellate Board. The Appellate Board, after giving reasonable
opportunity of being heard to the owner, may hold an inquiry.

ASSIGNMENT
Q.1 Define Copyright Societies in five points?
Q.2 Discuss the Evolution of Copyright Society in four points?
Q.3 What are the reasons for the development of copyright societies. State any four points.
Q.4 Discuss ownership in Copyright. List any three points.
Q.5 What do you mean by Assignment. Point any four points.
Q.6 Differentiate between Licenses & Compulsory Licenses in five points each?
LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -7
Topic-IPR-Infringement- Criteria of Infringement of Copyright- Films, Literary & Dramatic Works,
Importation and Infringement, fair use provision, Piracy in Internet
YouTube Link- https://www.youtube.com/watch?v=bkJdH1gxsno

NOTES

 Infringement:
 Copyright infringement refers to the unauthorized use of someone’s copyrighted work.
 Thus, it is the use of someone’s copyrighted work without permission thereby infringing certain rights of the
copyright holder, such as the right to reproduce, distribute, display, or the protected work.
 Section 51 of the Copyright Act specifies when a copyright is infringed. According to Section 51 of the Act,
Copyright is deemed to be infringed if:
 A person without obtaining the permission of the copyright holder does any acts that only the copyright
holder is authorized to do.
 A person permits the place to be used for communication, selling, distribution, of an infringing work unless
he was not aware or has no reason to believe that such permission will result in the violation of copyright.
 A person without obtaining the authority from the copyright holder reproduces his work in any form.

 Criteria of Infringement of Copyright:

 In judging whether an act would amount to infringement or not, the factors which are taken into consideration
are given below:
1. Whether copying has a causal connection, is deliberately made or is unintentional, indirect copying.
2. A causal connection can be found where the infringer has some overt motive to produce a copy, for instance
reaping the monetary reward.
 In determining whether an act amounts to infringement, the extent of the defendant’s alteration of the original
work.
 The manner in which the defendant attempts to take advantage of the plaintiff’s work; the nature and extent
of the plaintiff’s effort involved in the original work.

 Substantial Copying:
 There must be substantial copying of the work. In deciding whether there has been substantial copying, three
factors have to be taken into consideration:
1. Volume of the material borrowed by the defendant. Volume here does not mean only the quantity but also the
quality.
2. Whether the substantial copying on the part of the defendant has been intended for the purpose of saving
himself of the labor.
3. The extent to which the plaintiff & defendant work are competing with each other.

 Direct Evidence of Copying:

 Evidence of copying, for instance, can be found when the defendant’s work contains the same errors and
mistakes as those present in the plaintiff’s work.
 Similarity in the language & writing style also provides evidence of copying.
 Copying the copyrighted work even with minor additions, omissions or alterations would still amount to
infringement of the copyright
 There can be infringement by indirect copying also. Work may be copied by making a copy from a pre-
existing copy of the same work.

 Films, Literary & Dramatic Works:

 In relation to a literary, dramatic, artistic, or musical work recorded or reproduced in any cinematograph film,
the exhibition of such film after the expiration of the term of the copyright therein:
  Provided that the provisions of sub-clause (ii) of clause (a), sub-clause (i) of clause (b) and clauses (d), (f),
(g), (m), and (p) shall not apply as respects any act unless that act is accompanied by an acknowledgment—
 (i) identifying the work by its title or other description; and
 (ii) unless the work is anonymous or the author of the work has previously agreed or required that no
acknowledgment of his name should be made, also identifying the author.
 The Performance of a literary, dramatic, or musical work or the communication to the public of such work or
of a sound recording in the course of any bona fide religious ceremony.
 Or an official ceremony held by the Central Government or the State Government or any local authority.
 Importation & Infringement:
 Importing the infringed work of the copyright holder in India also amounts to infringement of Copyright.
 However, if the person has imported the infringed work for domestic or personal use then it will not amount
to Copyright Infringement.
 Section 53 deals with the importation of infringing copies.
 As per this section, The Registrar of Copyrights, on application by the owner of the copyright in any work or
by his duly authorized agent and on payment of the prescribed fee.
 May, after making such inquiry as he deems fit, order that copies made out of India, of the work which is
made in India, would infringe copyright shall not be imported.
 The Registrar of Copyrights or any person authorized by him in this behalf may enter any ship, dock, or
premises where any such copies as are referred to may be found and may examine such copies.
 All copies to which any order made under subsection (1) applies shall be deemed to be goods of which the
import has been prohibited or restricted.
 Fair use provision:
 Doctrine of Fair Dealing is an exception to the law that would usually protect any material that would be
considered to be copyrighted under Section 52.
 It is a legal doctrine that permits a person to use any work which is protected under the Act with limited
usage of such work so as to maintain the sanctity and originality of such work.
 Fair dealing with any work, not being a computer programme, for the purposes of—
 (i) “private or personal use, including research;
 (ii) criticism or review, whether of that work or of any other work;
 (iii) the reporting of current events and current affairs, including the reporting of a lecture delivered in public.
 The transient or incidental storage of a work or performance purely in the technical process of electronic
transmission or communication to the public.
 Piracy in Internet:
 Internet piracy is the use of the internet to illegally copy the content, infringing on the copyright of the
content owner.
 Internet piracy takes many forms and includes a wide variety of legally protected content. This includes
music, movies, software, and even digital books.
 Types of piracy:
 Counterfeiting: It is the illegal acquisition, duplication, and distribution of any copyrighted material, which
directly imitates the copyrighted product.
 Internet Piracy: Internet piracy is the act of downloading a file from the internet, or procuring online
software through a compact disc.
 End-User Piracy: This form of piracy involves the user illegally reproducing software that he isn’t
authorized to do.
 Client-Server Overuse: In a computer network, when the number of clients exceeded the number prescribed
in the server license, then it is termed as overuse piracy.
 Hard-Disk Loading: This occurs when a business sells new computers with illegal copies of software loaded
onto the hard disks to make the purchase of the machines more attractive.
 He shall be liable for imprisonment no less than 7 days, extending up to 3 years, and a fine no less than Rs.
50 thousand, which may be extended up to Rs. 3 lakhs.
ASSIGNMENT
Q.1 Define the term Infringement of Copyright. List any five points.
Q.2 Discuss the criteria of Infringement in five points?
Q.3 What do you mean by Substantial Copying &Direct Evidence of Copying in four points?
Q.4 Discuss the concept of Films, Literary & Dramatic Works in four points?
Q.5 What is Fair Use provision? List in five points.
LL.B. (INTEGRATED) FIVE YEARS (THIRD YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT I- Intellectual Property Rights & Copyrights
Lecture -8
Topic-IPR-Remedies-especially the possibility of Anton Pillar Injunctive Relief in India & Digital
Rights and Copyright
YouTube Link- https://www.youtube.com/watch?v=9vcmG6o2R1c

NOTES

Remedies against Infringement of Copyright:

 Kinds of Remedies:
 There are three types of remedies a person can get for copyright infringement in India namely:
1. Civil Remedies,
2. Criminal Remedies
3. Administrative Remedies.
 Copyright infringement has become a serious issue in the modern world. Infringement occurs when a
person intentionally or unintentionally copies the work of another creator.
 Infringement is usually classified into two categories – primary infringement and secondary infringement.
 Civil Remedies for Copyright Infringement:
 The civil remedies for copyright infringement are covered under Section 55 of the Copyright Act of 1957.
The different civil remedies available are:
1. Interlocutory Injunctions:
 The most important remedy is the grant of an interlocutory injunction.
 In most cases, the application filled is for interlocutory relief and the matter rarely goes beyond the
interlocutory stage.
 There are three requirements for there to be a grant of interlocutory injunction – Firstly, a prima facie case.
Secondly, there needs to be a balance of convenience& there needs to be an irreparable injury.
2. Pecuniary Remedies:
 Copyright owners can also seek three pecuniary remedies under Sections and 55 & 58.
 First, an account of profits which lets the owner seek the sum of money made equal to the profit made
through unlawful conduct.
 Second, compensatory damages which the copyright owner seek the damages he suffered due to the
infringement.
 Third, conversion damages are assessed according to the value of the article.
3. Mareva Injunction:
 The Mareva injunction comes into play when the court believes that the defendant is trying to delay or
obstruct the execution of any decree being passed against him.
 The court has the power to direct him to place whole or any part of his property under the court’s disposal
as may be sufficient to satisfy the decree.
 This is provided in Order XXXVIII, Rule 5 of The Civil Procedure Code, 1908.
4. John Doe Orders:
 John Doe orders are actions for seizing and assisting orders passed by the court of law against anonymous
infringement.
 The person who acts as a threat is not known as they are made due to an unknown identity.
 These orders in recent times have been issued in matters of protecting copyright protection of books and
prevention of movie buyers are used here.
 It is a term used as a reference to provide a pattern who are an unknown autonomous entity.
  Criminal Remedies:
 Criminal remedies are distinct and independent of other remedies and can be availed as simultaneously with the
civil remedies to stop further infringement during the pendency of the civil suit.
 It does not justify the strain of criminal remedies in which the same question is involved in addition, the criminal
complaint cannot be dismissed merely because the dispute is civil in nature.
 In addition, the criminal proceedings involve the honor and social status of the individual. As a consequence of
it sometimes the infringer steps down from the court to save his Prestige.
 Section 63-73 of the Copyright act, 1957 deals with criminal remedies.
 The offences prescribed under criminal remedies are-
I. Infringementof copyright,
II. Knowing the use of influencing copy of computer program,
III. Positionof plaint for making in fencing copy.
IV. Circumventingtechnological measures
V. Altering rights management information and lastly-contravention of section 52A.
 Under the Copyright Act, 1957 the following remedies are provided for infringement:
I. Imprisonment up to 3 years but, not less than 6 months
II. Fine which may not be less than 50,000 but, may extend up to 2,00,000
III. Search and seizure of infringing goods.
 Administrative Remedies:
 Under administrative remedies, one may file for moving the Registrar to ban the import of infringing copies and
delivery of the confiscated infringing copies to the owner.
 To prevent the importation of work which is sometimes also known as border control measures.
 This provision has been completely revamped in 2013.
 Anton Pillar Order:
 This order is used in cases where there is a high probability that the Defendant may destroy crucial evidence in
his custody for the sole purpose of defeating the ends of justice.
 To prevent this from happening, Plaintiff on an ex-parte application, even without any notice being given to
Defendant, can approach the Court to enter the premises of Defendant.
 Furthermore, an Anton Piller order acts as a mandatory injunction so it can be granted under specific acts as well
such as the Copyright Act and other IP laws.
 Anton Piller’s order is generally used in Intellectual Property law cases. In addition, it can also be used after the
decree is passed to find out assets that can be taken in the execution of the decree.
 In addition, another distinction is that an Anton Piller order is a direction in personam onto the Defendant to
grant inspection.
 In India, the purpose of the Anton Piller Order can also be served by appointing a commission to make a local
investigation under Order 26 Rule 9 of the CPC.
 Digital Rights & Copyright:
 The way to protect the copyrights of digital media is known as digital rights management.
 This includes the use of technologies to restrict the limit of copyrighting and the work which is used by
proprietary software and copyrighted.
 The publishers were allowed to control the work done by paying users by digital rights management.
 India is not a signatory of the WIPO Copyright Treaty and WIPO Performances and Phonograms Treaty.
 The amendment of 2012 of copyright laws which are implemented to protect the digital rights management.
 Section 65A of the Copyright Act, 1957, the criminal sanctions were imposed by circumventing “effective
technological protection measures.”
 The sentence for the prison was mandatory under both provisions with the maximum 2 years term, also, to find
what is discretionary.

ASSIGNMENT
Q.1 What are the three kinds of Remedies to the infringement of Copyright? State three points.
Q.2 Define Civil Remedies & its Kinds in three points each.
Q.3 Discuss Criminal Remedies in five points?
Q.4 Elaborate Anton Pillar Remedy for infringement in six points?
Q.5 Discuss the Concept of Digital Rights & Copyright in six points?
 LL.B. (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
Unit- II Patent
1. The Patents Act 1970
2. Introduction to Patent Law
3. Definitions ( S.2), Criteria for Patents, Patentable Inventions
4. Non Patentable Inventions ( S.3) Procedure for filing Patent Application ( Sec.6-53)
5. Revocation of Patent (S.64), Licensing, Compulsory Licensing ( S.88-92)
6. Parallel Imports ( S.107(A) & Rights of Patentee
UNIT II- Patent
Lecture -1
Topic-IPR-The Patent Act, 1970 & Introduction to Patent Law
YouTube Link- https://www.youtube.com/watch?v=OKjyGKl4L9E
NOTES

The Patent Act, 1970:

Introduction:

 The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the
Indian Patents and Designs Act 1911.
 The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by
Justice N. RajagopalaAyyangar.
 One of the recommendations was the allowance of only process patents with regard to inventions relating to
drugs, medicines, food, and chemicals.
 Later, India became a signatory to many international arrangements with the objective of strengthening its
patent law and coming in league with the modern world.
 One of the significant steps towards achieving this objective was becominga member of the Trade Related
Intellectual Property Rights (TRIPS) system.
 Significantly, India also became asignatory of the Paris Convention and the Patent Cooperation Treaty on
7th December 1998 and thereafter signed the Budapest Treaty on 17th December 2001.

 History:
 Being a signatory to TRIPS, India was under a contractual obligation to amend its Patents Act to comply with
its provisions.
 India had to meet the first set of requirements on 1st January 1995 to give pipeline protection till the country
starts granting product patent.
 On 26th March 1999, Patents (Amendment) Act, 1999 came into force retrospective effect from 1st January
1995.
 The second phase of the amendment was brought in by the Patents (Amendment) Act, 2002 which came into
force on 20th May 2003.
 The third and final amendment to the Patents Act, 1970 came by way of Patents (Amendment) Ordinance,
2004, which was later replaced by The Patent (Amendment) Act, 2005.
 Patents (Amendment) Rules, 2006 with retrospective effect from 1st January 2005.

 Meaning of patent:
 A patent is an exclusive right granted by the Government to the inventor to exclude others to use, making,
and sell an invention in a specific period of time.
 The main motto to enact a patent law is to encourage inventors to contribute more in their field by awarding
them exclusive rights for their inventions.
 The word “patent” is referred tothe Latin term “patere” which means “to lay open,” i.e., to make available for
public inspection.
 There are three basic tests for any invention to be patentable:
1. Firstly, the invention must be novel, meaning thereby that the Invention must not be in existence.
 2. Secondly, the Invention must be non-obvious, i.e., the Invention must be a significant improvement to the
previous one; mere change in technology will not give the right of the patent to the inventor.
3. Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the Invention must not be
solely used in any illegal work and is useful to the world in a bonafide manner.
 The patent has a limited term of 20 years, which is counted from the date of filing of the patent application. A
patent is a territorial right.
 The Patent Cooperation Treaty (PCT) provides a way to file an international patent application in which a
patent can be filed through a single patent application in a large number of countries.

 Salient Features of Patent Act, 1970:

 Both product and process patent provided
 Term of patent – 20 years
 Examination on request
 Both pre-grant and post-grant opposition
 What can be Patented:
 In order to be patentable, an invention must pass four tests;
 The invention must fall into one of the five “statutory classes’: Processes, Machines, Manufactures
Compositions of matter, and new uses of any of the above
 The invention must be “useful”
 The invention must be “novel”
 Purpose of getting a Patent:
 Toenjoy exclusive rights over the invention.
 The patent is to ensure commercial returns to the inventor for the time and money spend in generating a new
product.
 The main motive behind patent was to encourage scientific research, new technology and industrial progress.
 Patent law grants a monopoly to the inventor to use their patented product and allow the use of the same to
someone with prior permission against certain consideration.
 Types of Patents:
 Three types of the patent are granted under the provisions of the act, namely:
1. An Ordinary Patent
2. A Patent of Addition
3. A Patent of Convention
 The second type of classification of the patent is:
1. Product Patent
2. Process Patent
 What can be patented:
 Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding what can be
patented in India.
 There are certain criteria that have to be fulfilled to obtain a patent in India. They are:
 Patent subject:
 The most important consideration is to determine whether the Invention relates to a patent subject matter.
 Sections 3 and 4 of the Patents Act list non-patentable subject matter.
 Novelty:
 Innovation is an important criterion in determining the patent potential of an invention.
 Section 2(l) of the Patent Act defines novelty or new Invention.
 Inventive steps or non-clarity:
 Under Section 2(ja) of the Patents Act defines an inventive step.
 This means that the invention should not be obvious to a person skilled in the same field where the
invention is concerned.

ASSIGNMENT
Q.1 Discuss the History of Patent Law in five points.
Q.2 Define the meaning of Patent in five points.
Q.3 State the salient features of the Patent Act 1970 in four points?
Q.4 What are the purposes of granting Patent? Enlist any four points.
Q.5 What can be patented. Discuss all three kinds in two points each?
 LL.B(INTEGRATED) FIVE YEARS (FOURTH YEAR) V SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT II- Patent
Lecture -2
Topic-IPR- Definitions, Criteria for Patents & Patentable Inventions
YouTube Link- https://www.youtube.com/watch?v=5CCZK1z0YYM

NOTES

 Definitions:
 Patent:
 Section 2(1)(m) of the Indian Patent Act, 1970 defines "patent" aswhich means a patent for any invention
granted under this Act.
 Patent is an exclusive right granted by a government for an invention that is new, involves inventive steps,
and is capable of industrial application.
 A grant of some privilege, property, or authority made by the government or the sovereign of the country to
one or more individuals.
 It is the exclusive right to make use, exercise & vend his invention.
 The act conveys to the inventor substantive rights and secures to him the valuable monetary rights which he
can enforce for his own advantage either by using it himself or by conveying it to others.
 Invention:
 Section 2(1)(j) defines an "invention" which means a new product or process involving an inventive step
and capable of industrial application.
 An invention means a solution to a problem, usually technical in nature.
 A new product or process or modification of an already existing one qualifies for being an invention if made
through human intervention, as against the mere discovery of something already existing in nature.
 Novelty:
 Section 2(1)(l) defines New Invention as means any invention or technology which has not been anticipated
by publication in any document or used in the country or elsewhere in the world.
 Beforethe date of filing of a patent application with complete specification, i.e., the subject matter has not
fallen in the public domain or that it does not form part of the state of the art.
 Innovation is an important criterion in determining the patent potential of an invention.
 Simply, the novelty requirement basically states that an invention should never have been published in the
public domain.
 It must be the newest which have no same or similar prior arts.
 Inventive steps or non-clarity:
 Section2(1)(ja) defines an inventive step.
 The characteristic of an invention that involves technological advancement or is of economic importance or
both.
 Ascompared to existing knowledge, an invention is not obvious to a person skilled in the art.
 This means that the invention should not be obvious to a person skilled in the same field where the invention
is concerned.
 It should not be inventive and obvious for a person skilled in the same field.
 Capable of industrial application:
 Industrial applicability is defined in Section 2 (ac) of the Patents Act as the invention is capable of being
made or used in industry.
 This basically means that the Invention cannot exist in the abstract.
 It must be capable of being applied in any industry, which means that it must have practical utility in respect
of patent.
 Types of Patents:
 There are four types of patents that apply to different kinds of inventions:
1. Design patent:
 A design patent provides patent protection for an ornamental design on an object, such as furniture, jewellery,
clothing, and even computer icons.
 A design patent can prevent objects with substantially similar designs to the patented object from being
made, used, or sold without the patent owner’s permission.
 2. Plant patent:
 A plant patent protects the intellectual property rights of the unique elements of a new plant created by
cutting, grafting, or other non-sexual methods.
 Most plant patents don't cover genetically modified plants.
3. Provisional patent:
 A provisional patent isn't an actual patent but an application that serves as a placeholder of sorts for an
inventor.
 This type of patent proves that the inventor owns the item and secures a future filing date for a formal patent
(within a year).
 Once a provisional patent is filed, the invention is considered patent pending. However, if a formal patent
isn't filed within the time frame, the inventor will lose that filing date.
4. Utility patent:
 A utility patent is another term for a standard patent for an invention.
 It grants the patent owner the exclusive rights to exclude others from making, selling, or using their
invention.
 Criteria for Patents:
Inventors must meet several criteria to determine if an invention is patentable. Four of the most important
criteria are:
 The invention must be novel:
 Your invention, or an element of your invention, has to be new and different than any other invention,
including ones that are already patented, on sale, or in the public domain.
 These inventions are referred to as prior art.
 The invention must be non-obvious:
 Non-obviousness is one of the main criteria of patentability.
 Your invention needs to be (or include) an element that a person working in that field could not figure out
independently.
 The invention should be patentable:
 Patentable inventions include machines, processes, articles of manufacture, and the composition of matter.
 Non-patentable subject matter includes theories or methods, natural processes, like plants growing from
sunlight and soil, or anything that a person can accomplish just by using their body.
 The invention must be practical:
 Your innovation has to have some kind of practical use as an industrial application, which means that it's a
tangible object or a process that industry or business can use.
 It must be of economical benefit to the creator.
 Patentable Inventions:
 An invention relating either to a product or process that is new involves an inventive step, and is capable of
industrial application can be patented.
 Provided the invention is not falling under the categories of inventions that are non-patentable under Sections
3 and 4 of the Patent Act.
 A patent for improvement does not include the improvementof an object.
 Patentable subject matter:
a) Invention mustrelate to a process or a product or both
b) be new (Novel).
c) involves an inventive step.
d) be capable of industrial application.
e) Originality - must be created by the person claiming to be the inventor.
ASSIGNMENT
Q.1 Define the term Patent in four points.
Q.2 Define the term Invention & Novelty in three points each.
Q.3 Discuss Inventive steps & Capable of Industrial Application in three points each.
Q.4 What are the four kinds of Patents? State two points each.
Q.5 Mention four factors of Criteria for granting a Patent? State two points each.
Q.6 What are Patentable Inventions? Enlist four points.
 LL.B(INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT II- Patent
Lecture -3
Topic-IPR-Non-Patentable Inventions, Procedure for filing Patent Application & Revocation of
Patent
YouTube Link- https://www.youtube.com/watch?v=Y6mi9GslWEM

NOTES

Non-Patentable Inventions:
 Introduction:
 Thosefall under the category of “Inventions” can be patented, as defined in Section 2 (j) of the Act
which involves anything that is novel,capable of industrial application, and is not frivolous
 However, those that cannot satisfy such conditions (or restricts the scope of subject matters eligible for
patentability) are non-patentable as mentioned in Section 3 and Section 4 of the Act.
 Section 3 and Section 4 of the Patent Act deals with the list of exclusions that are non-patentable that do
not satisfy the above conditions.
 The objective of Patent Law:
 It recognizes the exclusive rights of a patentee to gain commercial advantage out of his invention.
 To encourage the investors to invest their creative faculties, knowing that their creative faculties,
knowing that their invention would be protected by law.
 The object of patent law is to encourage scientific research, new technology, & industrial progress.
 Grant of exclusive privilege to own, use or sell the method or product patented for a limited period,
stimulates new inventions of commercial utility
 Inventions that cannot be Patented:
 Following are the inventions that are not permitted to be patented and they are:
 Inventions that are frivolous and contrary to natural laws:
 Inventions that are frivolous or contrary to well-established natural laws.
 Inventions that are against the natural laws that are any machine giving 100% efficiency, or any
machine giving output without an input cannot be considered obvious and cannot be patented.
 Inventions that go against public morality:
 Inventions in which the primary or intended use or commercial exploitation of which could be contrary
to public order or morality.
 Or which causes serious prejudice to human, animal or plant life or health or to the environment.
 As in Biotechnology, termination of the germination of a seed by inserting a gene sequence that could
lead to the disappearance of butterflies, any invention leading to theft or burglary.
 Inventions that are a mere discovery of something that already exists in nature:
 The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living
or non-living substances occurring in nature.
 Mere discovery of something that is already existing freely in nature is a discovery and not an invention and
hence cannot be patented unless it is used in the process of manufacturing an article or substance.
 For instance, the mere discovery of a micro-organism is not patentable.
 The mere discovery of a form already existing in nature does not lead to enhancement of efficacy:
 The mere discovery of a new form of a known substance that does not result in the enhancement of the
known efficacy of that substance or the mere discovery of any new property.
 Or new use for a known substance or of the mere use of a known process, machine, or apparatus unless such
known process results in a new product or employs at least one new reactant.
 For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, etc and other
derivatives of known substance shall be considered to be the same substance.
 Mere admixing of mixtures leading in the aggregation of properties are non- patentable:
  A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance is not considered the
invention.
 Mere addition of mixtures is non-patentable unless this satisfies the requirement of synergistic effect.
 Medicinal, curative, prophylactic, diagnostic, and therapeutic for treating diseases in humans and
animals are non-patentable:
 Any process for the medicinal, surgical, curative, prophylactic treatment of human beings or any process for
a similar treatment of animals to render them free of disease.
 Those medicinal methods administering medicines orally or injecting it, surgical methods like stitch-free
surgeries, curative methods as curing plaques etc do not fall under the ambit of the invention.
 Procedure for filing Patent Application:

 Revocation of Patent:
 Revocation, in layman’s terms, means the act of taking back something that has already been granted. The
same happens to the patent, which even once granted can’t be treated as permanent.
 People, other than the patent holder, are provided with the right of filling a revocation petition if they have
issues due to someone’s patent right.
 Here the people include any interested person who has legally acceptable grounds for revocation of the patent
and the Central Government.
 However, such a person may only raise their voice by filing a petition. The final decision related to the
revocation relies on the Intellectual property appellate board (IPAB).
 Revocation of Patents are defined inSection 64 of the Patent Act, 1970.
 If the person provided with the patent is not the original owner and has by misrepresentation or fraud
obtained the patent protection, the original owner can seek the remedy of patent revocation.
 An obvious invention can’t be shed by patent protection.
 Revocation of patent or amendment of complete specification on directions from Government in cases
relating to atomic energy. (Section 65)
 Section 85 deals withthe Revocation of patents by the Controller for non-working.
 Section 66 deals with the Revocation of patents in the public interest.
ASSIGNMENT:
Q.1 Introduce Non- Patentable Inventions in three Points.
Q.2 Discuss the three objectives of Patent Law.
Q.3 Discuss the inventions frivolous in nature in two points.
Q.4 Discuss the inventions contrary to public morality in nature in three points.
Q.5 The mere discovery of a form already existing in nature does not lead to the enhancement of efficacy. State
three points.
Q.6 What do you mean by Revocation of Patent? Enlist any six points.
 LL.B(INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT II- Patent
Lecture -4
Topic-IPR-Licensing, Compulsory Licensing ( Section 82-92A)
YouTube Link- https://www.youtube.com/watch?v=lgg00kcsA-Y

NOTES

 Licensing:
 Patent licensing is a process of granting permission to a third party to extract benefits by selling and
using the licensed product.
 The patent owner gives a license to a third party to use his patented invention based on the agreement
and royalty.
 The license can be given for a period of time as per the mutual understanding between the patent owner
and licensee.
 During this time period, the licensee can use the patented invention and can take financial benefits.
 Licensing is a contract between two parties where the licensor agrees on the terms and conditions of the
patent owner.
 Since it is a contract or agreement, it must follow Sections 10 and 11 of the Indian Patent Act 1970. As
per Section 68 of the Patent Act 1970, the agreement must be in writing.

 Licensing under Indian Patent Act 1970

 Sections 84-92 of IPA 1970 are related to Licensing of a patent. According to the IPA 1970, patent
licensing should be in writing between the licensor and the licensee.
 Section 84 of IPA 1970 states the terms and conditions required for issuing Compulsory Licensing.
 The Act has the provision and empowers the Controller to issue the Compulsory Licensing to a third
party.
 Compulsory Licensing is possible only if the patented invention is useful to public health or in National
Emergencies or health crises.
 According to Section 84, after three years from the grant of the patent, any interested person can write
an application to the Controller for the grant of a Compulsory License.
 Onthe following are the grounds namely:
1. Thereasonable requirements of the public for the patented invention have not been satisfied.
2. The patented invention is not available to the public at an affordable price
3. The patented invention is not worked within the territory of India.

 Types of Patent Licensing:

 There are eight types of patent licensing as described below:
 Exclusive License:
 In Exclusive licensing, all the rights except the title of the invention are given to the licensee.
 The patent owner transfers the ownership of the patent to the licensee. The patent owner has only the
title of the invention.
 Non-Exclusive License:
 In Non-Exclusive Licensing, the license of the patent can be granted to more than one party and all of
them can commercialize the patent into the market.
 Thus, the patent owner has right to license his patented invention to more than one party.
 Sub License:
 Licensee has rights to issue Sub license to different organizations for making the product of the patented
invention.
 Patent Owners give rights to the licensee and the licensee has the right to issue the license further to a
third party that can the use patented invention.
 Cross-Licensing:
 Cross-Licensing is the exchange of licenses between different organizations and creators.
  When an invention requires the support of other products to make its place in the market, the Cross-
Licensing process is used.

 Voluntary Licensing:
 Voluntary licensing is an act of goodwill towards society. It is also applicable to pharmaceutical patents.
 Patentowner can license his patented invention to other parties on an exclusive or non-exclusive basis
and give the right to manufacture, import, or distribute a pharmaceutical product.
 Carrot Licensing:
 Carrot Licensing is one of the approaches to patent licensing.
 This approach is suitable when the prospective licensee is not in the practice of the patented invention
and does not fall under any obligation to take a license.

 Stick Licensing:
 Stick Licensing is another approach of licensing which is totally contrast of carrot licensing.
 In the Stick Licensing approach, the prospective licensee is already using the patented technology and
thus infringing the patent.

 Compulsory Licensing:
 Compulsory licensing is a measure that is provided by the patent act. It ensures that the patentee does not
misuse their patent rights.
 Compulsory Licensing is given only for public health and nutrition.
 Itis a license given to a 3rd party to manufacture, use, or sell the product or use the process that provides a
new way of doing something which has been already granted patent without the permission of the owner.
 This is done for public health, or in national emergencies and health crises.
 As this license works against the owner of the patent there are conditions that are given by the government to
be fulfilled.
 Status of Compulsory Licensing in India:
 Compulsory Licensing was first given to a company in 2012. Under the Indian Patent Act, conditions
for granting compulsory licensing are given.
 The conditions which need to be fulfilled in order for a compulsory license to be granted are given
under Sections 84 and 92 of the Indian Patent Act, 1970.
 If any company wants a compulsory license of any product, then they should follow these two sections.
These sections are explained below:
 Section 84 of Patent Act, 1970:
 Anyperson who is interested or already a holder of the license under the patent can make a request to
the controller for a grant of compulsory license on patent after three years from the date of grant.
 Onthe existence of conditions mentioned in Section 84 of the patents act, 1970.
 A compulsorylicense will be granted on the following grounds:
1. That the reasonable requirements of the public with respect to the patented invention have not been
satisfied or,
2. That the patented invention is not available to the public at a reasonably affordable price or,
3. That the patented invention is not worked in the territory of India.
 Section 92 of Patent Act, 1970:
 This section deals with other grounds on which the compulsory license will be granted.
 These are special provisions for compulsory licenses on notifications by the Central Government.
Government grants compulsory licenses in the following grounds:
1. For exports, If the product is used for exporting to another country, then the government can grant
licenses but this is only in exceptional circumstances.
2. If there is a national emergency, this is the case where the product is needed on an urgent basis like in
war or in health crisis.
ASSIGNMENT
Q.1 Discuss the Concept of Licensing in six points.
Q.2 Describe Licensing in Indian Patents Act 1970 in five points.
Q.3 Mention all the eight kinds of Patent Licensing in two points each.
Q.4 Define the Concept of Compulsory Licensing in five points.
Q.5 State Section 84 of Patent Act, 1970 in three points.
Q.6 What is Section 92 of Patent Act, 1970 in three points.
 LL.B(INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT II- Patent
Lecture -5
Topic-IPR-Parallel Import ( Section 107A)& Rights of Patentee
YouTube Link- https://www.youtube.com/watch?v=Oet4b9Av7Eo

NOTES

Parallel Import (Section 107A):

 Section 107A (b) of the Indian Patents Act deals with parallel imports.
 Parallel import means patented or marked goods that are acquired from a foreign market and exchanged in the
domestic market.
 These are also known as passive parallel imports. Parallel imports are a category of international trade which
involves direct imports from overseas of legitimate copies of goods for commercial resale.
 The term parallel import first came by the Patent (Amendment) Act, 2002 under Section 107A (b).
 Section 107A(b) says, that the Importation of the patented products by any person who is duly authorized by
the patentee to sell or either distribute the product is not considered to be an infringement of patent rights.
 But this provision indirectly puts a barrier to the idea of international exhaustion.
 The main purpose of exhaustion gets defeated because section 107A (b) fails to make the availability of the
patented products at a cheaper price.
 To remove particular difficulty the Parliament of India introduced the Patent (Amendment) Act, 2005, and also
made a few changes.
 Section 107 A (b) states that the first sale of the product is made by ‘any person’. The ‘any person’ who was
authorized by the patentee his rights are exhausted with respect to the particular product.
 According to sec 107A (b) this process does not constitute infringement.Thus, the Patent (Amendment) Act,
2005 removed the exception and barriers which are associated with the 2002 amendment.

 The doctrine of Exhaustion:

 The doctrine of Exhaustion is defined as exhaustion of the patentee's right after the first sale of the patented
product.
 It means once the patentee has sold out his patented product, he cannot regulate its movement after sale i.e., he
cannot regulate resale and redistribution of the sold patented product.
 The patented product covered under this doctrine broadly includes all the patented processes, or the product
obtained using a patented process.
 However, the term "Exhaustion" has not been explicitly defined or mentioned in TRIPS Agreement.
 The intention of the TRIPS is clearly evident, which is to promote parallel importation among the
members/countries of the World Trade Organization (WTO).
 Therefore, the principle of exhaustion as required by the TRIPS Agreement among the WTO members
connotes the doctrine of International Exhaustion.
 Section 48 confers upon the patentee the exclusive right to prevent third parties from the act of making, using,
selling or importing that product in India if the subject matter of the patent is a product.

 Rights of Patentee:
 The patent holder enjoys various rights including the right to assign licenses to other persons and authorise
them to manufacture and sell the patented item.
 However, these are not absolute rights and are subject to various constraints and limitations.
 In order to get your invention patented and become an official patent holder, the following procedure needs to
be followed-
1. Invention disclosure
2. Patentability search
3. Decision to file an application for patent
4. Patent drafting
5. Filing the patent application etc.
 Exclusive rights according to Article 28 of the TRIPS agreement
  Article 28 of the TRIPS agreement provides the following rights. A patent shall confer on its owner the
following exclusive rights:
1. where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from
the acts of making, using, offering for sale, selling, or importing for these purposes that product.
2. where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from
the act of using the process, and from the acts of using, offering for sale, selling, or importing etc.
 Right to exploit the patent
 In India, the patent holder is provided with the right to manufacture, use, sell and distribute the patented
product.
 In case the invention is a process of production, the owner of the patent has the right to direct the procedure to
the other person who has been authorized by the patentee.
 This right can be enforced by the agent of the patent holder.
 Right to assign and license:
 The patent holder is granted with the rights of assigning or granting licenses for the manufacture and
distribution of the patented products to others.
 In case there are co-owners of the patented product, permission to grant a license to the other person shall be
sought from the co-owners.
 The license would be considered to be granted when the request has been duly authorized by the controller.
 Right to surrender the patent:
 The owner of the patent has the right to surrender his patent after seeking permission from the controller.
 The controller then advertises this surrender as per the procedure laid down in the Indian Patents Act.
 The parties interested in getting the ownership of the patent can then approach the controller. The controller
examines the party’s claims and.surrenders the ownership respectively.
 Right before sealing:
 Section 24 of the Indian Patents Act implies that a patent is sealed from the date of notification for acceptance
to the date of acceptance of the notification.
 The right of the patentee begins after the notification for acceptance has been presented.
 Right to apply for the patent of addition:
 This provision is provided in Section 54 to 56 of the Indian Patents Act. This provision provides for
modifications to the existing invention.
 In such a case, the patent holder is granted the right to the modified invention after the notification of the
acceptance comes out.
 Once the notification is presented, the owner is provided with the same rights as provided to the previous
patent.
 Right in case of infringement:
 When any of the rights of the patent holder is violated, then it is termed patent infringement.
 This is to mean that if the patented invention is used, manufactured, or sold for commercial purposes by any
person, then it will be accused of patent infringement.
 In case of violation of patentee’s rights, the patentee can approach either the district court or a high court.
 If the person is proven guilty of infringement, the courts will either grant a permanent injunction or damages or
both.

ASSIGNMENT:
Q.1 Define the term Parallel Imports in seven points.
Q.2 What is the Doctrine of Exhaustion? State in seven points.
Q.3 Introduce the Rights of Patentee in three points.
Q.4 Discuss the right to Assign & License in three points.
Q.5 Discuss the right to surrender the patent in three points.
Q.6 What is Right in case of infringement. State four points.
 LL.B (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
Unit III: Patent, Protection & Infringement
i. Government use (Sec. 99),
ii. Infringement (Sec.104 to 115), Patent Agents (Sec.125 to 132),
iii.International Arrangements (Sec.133 to 139),
iv. Paris convention, 1999
v. Amendment of 1999 & 2005 Exclusive Marketing Rights
vi. International Patent
UNIT III- Patent, Protection & Infringement
Lecture -1
Topic-IPR- Government Use
YouTube Link- https://www.youtube.com/watch?v=yprYAn0Hqd8
Previous year Questions of Lucknow University:

NOTES

Government Use:

Introduction:
 Section 99 defines what constitutes use of an invention for the purposes of government.
 An invention is said to be used for the purposes of government if it is made, used, exercised or sold for the
purposes of the Central Government, State Government or a Government undertaking.
 Section 47 enumerates certain conditions to which the grant of a patent would be subjected to.
 It allows, both in the case of a product or a process patent importation by or on behalf of the government,
making by or on behalf of the government for the purpose merely of its own use.

 Sec.47-Grant of patents to be subject to certain conditions:

 The grant of a patent under this Act shall be subject to the condition that-
 Any machine, apparatus or other article in respect of which the patent is granted or any article made by
using a process in respect of which the patent is granted.
 It may be imported or made by or on behalf of the Government for the purpose merely of its own use.
 Any process in respect of which the patent is granted may be used by or on behalf of the Government for the
purpose merely of its own use.
 Any machine, apparatus or other article in respect of which the patent is granted or any article made by the
use of the process in respect of which the patent is granted.
 It may be made or used, and any process in respect of which the patent is granted may be used, by any
person, for the purpose merely of experiment or research.

 Sec. 99-Meaning of use of invention for purposes of Government:

 An invention is said to be used for the purposes of Government if it is made, used, exercised or vended for
the purposes of the Central Government, a State Government or a Government undertaking.
 Without prejudice to the generality namely:
(a)the importation, by or on behalf of the Government, of any invention being a machine, apparatus or other
article covered by a patent granted before the commencement of this Act.
(b) The importation, by or on behalf of the Government, of any invention being a medicine or drug covered
by a patent granted before the commencement of this Act-
(i) For the purpose merely of its own use; or
(ii) for the purpose of distribution in any dispensary, hospital or other medical institution maintained by or on
behalf of the Government or in any other dispensary, hospital or other medical institution.
 While Sec. 99 defines the scope of use of inventions for the purpose of Government. This definition
under Sec.99 applies only to the provisions contained in Section 99 to 103 of the Act.

 Differences between Section 47 and Section 99:

 Payment of Royalty:
 Use of patented invention without payment of royalty.-
 The use of a patented invention may be made by or on behalf of the Government on behalf of the
Government without payment of royalty in the circumstances mentioned below.
 A distinction has been made between patents granted under the Act of 1970 and those granted under the Act
of 1911, and also patents relating to medicines and drugs and other patents.

 Right to use resulting from the conditions of grant.

 The Central Government or any State Government may import or make the patented article for the purpose
merely of its own use (Sec. 47(1)).
 It may also use any patented process merely for its own use (Sec. 47(2)).

 In case of patents relating to any medicines or drugs:

 The medicine or drug in question can be imported by the Central or State Government for its own use or for
the distribution to government dispensaries, hospitals etc.by notification.
 It can however, only import and distribute the medicine or drug and cannot manufacture it in India for
distribution.
 There is no power to sell the patented article, whether relating to medicine or drug or otherwise.
 The use of invention under Sec.47 is without payment of royalty. This follows from the fact that such use is
made a condition of the grant.
 Besides, such use is also exempted from the operation of s. 100 dealing with payment of royalty.
 This definition under Sec.99 applies only to the provisions contained in Section 99 to 103 of the Act.

 Right to use resulting from prior record or trial of the invention by the Government.-Section 100 and
Section 99(1):
 Where an invention has been recorded, tested or tried on behalf of the Government or Government
undertaking, before the priority date of the relevant claim of the complete specification or otherwise than as
a result of a communication from the patentee, it may be used for the purpose of Government without
payment of any royalty (Sec. 100(2)).
 This applies to the patents granted under the Act of 1911 and the Act of 1970. The use may be made by the
Central Government, any State Government or a government undertaking (Sec. 99(1)).
 The right to use the invention includes the right to make, use exercise, vend and sell on non-commercial
basis the goods made in exercise of that right (Sec. 100(6)).
 The patented Article may also be imported on behalf of the Government for its own use (s. 47 and s.
100(6)).

 Use of invention on payment of royalty:

 The use of an invention for the purpose of Government will require payment of royalty or other
remuneration to the patentee.
 Payment of royalty will, however, arise only in respect of an invention which has not been recorded,
tried or tested on behalf of the government before the priority date.
 The relevant claim otherwise than in consequence of a communication of the invention from the patentee
(Sec. 100(3)).

ASSIGNMENT
Q.1 Introduce the term Government Use in four points.
Q.2 Grant of patents to be subject to certain conditions. Express it in five points.
Q.3 Meaning of use of invention for purposes of Government. Discuss in five points.
Q.4 Differentiate between Section 48 & Section 99 in five points each.
LL.B (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT III- Patent, Protection & Infringement
Lecture -2
Topic-IPR- Infringement & Patent Agents
YouTube Link- https://www.youtube.com/watch?v=hAOzhE8ALEk
Previous year Questions of Lucknow University:

NOTES

 Patent Infringement:
 A patent is an invention based legal document that defines and provides the bearer with exclusive rights to
exclude others from producing, selling or distributing such invention.
 The violation of these exclusive rights of the patent holder is known as patent infringement. The patent is
granted by the Government for a limited period of time.
 Section 104-114 of the Patents Act,1970 provides provisions regarding Patent Infringement.
 The Patents Act, 1970 does not provide specifications as to what would be considered as an infringement of a
patented product.
 But it lays down two kinds of activities which when committed without the consent of the patent holder
would constitute infringement:
1. Making, using, offering for sale, selling, importing the patented product.
2. Using the patented process, or using, offering for sale, selling or importing the product directly contained by
that process.
 Legislations governing Patent Infringement:
 The major enactment governing patent infringements in India is the Patents Act,1970 which was
implemented in 1972.
 It made pharmaceutical product innovations, as well as those for food and agro-chemicals, un-patentable in
India. It allowed for copying & marketing of the innovations in India which were patented elsewhere.
 In 1992, India became a member of WTO and therefore, it became an important to amend the existing law
in order to meet the requirements of TRIPS agreement.
 Following are the major provisions of the amendment act:
 Product Patent:
 This amendment provided for product patent protection in contrast to the earlier provision of the act that
provided for only the process patent protection.
 Process patent protection meant that only the process used for the manufacture of the product could
be patented and not the final product.
 Compulsory Licensing:
 This provision was introduced in compliance with the TRIPS agreement.
 It empowered the government to make available the patented product to the general public for non-
commercial use in case of a national emergency.
 Other Provisions:
 Under this amendment, the patent holder could challenge the license in order to block the general
production of his drug.
 The act also provided for a pre-grant & post-grant opposition clause.
 Provisions to safeguard national interest against violations of patent laws were also introduced.
 Ways to prevent Patent Infringement:
 There are various ways to avoid patent infringement , some of which are listed below:
1. Creation of Original Products:
 Companies can hire staff members who can create original products using their creativity and intellect.
 The company should not forget to add a clause in the contract that the product produced would be the
exclusive right of the company.
2. Obtaining appropriate licenses from Patent Holders:
 if the companies on using any registered material for further use, then they should seek permission from
the patent holder.
  Royalty-free material basically refers to the use of online material which can be used without any
restrictions.
3. Patent Infringement Suits:
 The act empowers the patentee to file a suit in case there is an infringement of his exclusive patent rights.
 In order to file a suit, the limitation period as specified under the Limitation Act is 3 years within the
infringement.
 In India, both districts & High courts have the power to hear cases related to Patent Infringement.
 In case there is a counterclaim for revocation of the patent filed by the defendant, then only High Court
has the power to hear.
4. Temporary/Interlocutory Injunction:
 A temporary injunction is invoked by the court at the initial stages of the suit filed by the plaintiff.
 This is passed in order to prevent the defendant from getting further gains by using other patented
products.
 It is important for the patentee to prove that the patent is valid and has been infringed by the defendant.
5. Permanent Injunction:
 A permanent injunction is invoked when the case is finally decided by the court.
 The interim injunction is transferred to a permanent injunction if the defendant is found guilty of patent
infringement.
 Patent Agents:
 Patent Agent as defined under Section 2(n) is a person who is registered under the patent act as a patent
agent.
 In order to understand the meaning of the term Patent Agent, it can be defined as a person who files the
Patent Application.
 He helps in the preparation of the documents, including drafting, filing and prosecution of an application
before the controller on behalf of any person.
 Register of Patent Agents:
 The Register of Patent agents shall be maintained by the Controller in accordance with Section 125 read
with Rule 108 of the Rules.
 The particulars to be contained in the register includes:
a) Name
b) Nationality
c) Address of the Principal place of business & addresses of branch offices.

 Role of Patent Agent:

 Every Patent agent whose name is entered in the register is entitled to the following rights as per Section
127 & 129.
a) To practice before the Controller.
b) Applying for or obtaining patents in India or elsewhere;
c) Preparing specifications or other documents for the purposes of the act or of the patent law of any other
country.

ASSIGNMENT
Q.1 Discuss the concept of Patent Infringement in five points.
Q.2 Mention the Legislations governing Patents in four points.
Q.3 Describe the three ways of preventing patent infringement in 2 points each.
Q.4 Define Patent Agents in three points.
Q.5 Discuss the role of Patent Agents in four points.
LL.B (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT III- Patent, Protection & Infringement
Lecture -3
Topic-IPR- International Arrangements
YouTube Link- https://www.youtube.com/watch?v=hAOzhE8ALEk
Previous year Questions of Lucknow University:

NOTES

International Arrangements

Introduction:
 An invention can be protected sthrough a patent in multiple countries by filing an “international” patent
application.
 In order to preserve and protect the international and global character of the invention, countries
have become signatories to various international conventions governing the formal parameters.
 This international aspect of protecting inventions under the patent law has been introduced under
Chapter XXII Section 133-136of the Patents Act, 1970 which deals with International Arrangements.
 The patent applications which are received under the aegis of the Paris Convention, 1883 and the Patent
Cooperation Treaty (PCT), 1970 to which India is also a member are dealt with under the provisions.
 India became a member of the Paris Convention in 1998 and the Paris Convention provides
reciprocity in filing with the right to priority.
 India is also a member of the Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent, 1977.

 Who is a Convention Country:

 Section 2(1)(d) of the Patents Act, 1970 defines a “convention country” as a “country which is a
member of a or a union of countries or an Intergovernmental organization.
 India is a member of the World Trade Organization, the Paris Convention and also a contracting state to
the Patent Cooperation Treaty. Therefore, a convention country includes within its scope:

1. Any country;
2. Union of countries; or
3. Intergovernmental organizations
4. Which are members/contracting states to the above-mentioned convention, treaty or agreement.
 Moreover, where the citizens of India are not accorded the same rights in respect of grant and
protection of patent rights by any country which it gives to its own nationals.
 Insuch cases a national of such country shall not be entitled, either solely or jointly:

1.To apply for the grant of a patent or be registered as the proprietor of a patent;
2.To be registered as the assignee of the proprietor of a patent; or
3.To apply for a licence or hold any licence under a patent granted under the Act.
 Therefore, reciprocity is an essential feature under an international arrangement among the
signatories or parties to an international convention or treaty dealing with patents.
 Convention Application:
 When a patent application is made by a person for an invention in a convention country known as the basic
application.
 And that person or his legal representative or assignee of that person makes an application under the
Patents Act for a patent within 12 months from the date of the basic application.
 The priority date of a claim of the complete specification is the date on which the basic application was
made.
 Where an application is made in two or more convention countries for the protection of an invention,
the 12 month period will commence from the date on which the earlier or earliest of the
applications..
 However, the fee payable would be the same as if separate applications have been made in respect of each
of the inventions and the requirement prescribed under section 136(1)(b) will apply separately.

 Requirements for a Convention Application:

 Section 136 of the Patents Act, 1970, prescribes special provisions with respect to convention
application. Every convention application should be accompanied by:

1. a complete specification;
2. an abstract;
3. specify the date and the convention country in which the application for protection was made;
4. State that no application for protection in respect of the invention had been made in a ‘convention
country’ before that date by the applicant or by any person from whom he derives title.
 Furthermore, the term of the patent of a convention application shall be for a period of 20 years from
the date of filing the application in India.
 Where the Controller requires, the applicant in addition to the complete specification must submit copies
of the specifications or corresponding documents filed or deposited by the applicant.
 In the patent office of the convention country which must be verified to the Controller’s satisfaction.
 Where the specifications or the documents are in a foreign language an English translation of the
specification and the documents, verified by an affidavit which is to the satisfaction of the Controller
should be provided when required by the Controller.

 International Application under the Patent Cooperation Treaty (PCT):

 When an international application is filed under the Patent Cooperation Treaty, such an application
will have the effect of filing an application for a patent under section 7, 54 and 135 of the Act.
 The title, description, claims, abstract and drawings which are filed in the international application are
considered as complete specification.
 Moreover, the filing date of a patent application and the complete specification processed by the patent
office will be the date of international filing accorded under the Patent Cooperation Treaty.
 There are three different ways for filing a PCT international application by an Indian applicant which are
as follows:
1. Filing is done in the Indian Patent Office which also acts as the receiving office. The application should
be accompanied by permission for foreign filing which is granted by the Controller under section 39.
2. Aninternational application directly in the International Bureau of WIPO after permission is taken from
the Indian Patent Office.
3. Beforethe expiry of 12 months from the date of filing, an international application can be filed in
the International Bureau of WIPO or in the Indian Patent Office which is a receiving office.

ASSIGNMENT
Q.1 Discuss the concept of International Agreements in five points.
Q.2 What do you mean by Convention Country. State in four points.
Q.3 Describe Convention Application in four points.
Q.4 What are the requirements for a convention Application. State four points.
Q.5 Define International Application under PCT in three points.
LL.B (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT III- Patent, Protection & Infringement
Lecture -4
Topic-IPR- Paris Convention 1883
YouTube Link- https://www.youtube.com/watch?v=vlbMtZz5xZM
Previous year Questions of Lucknow University:

NOTES

 Paris Convention 1883:

 The Paris Convention applies to industrial property in the widest sense, including patents,
trademarks, industrial designs, utility models, service marks, trade names, geographical indications and
the repression of unfair competition.
 The Paris Union, established by the Convention, has an Assembly and an Executive Committee.
 Every State that is a member of the Union and has followed to at least the administrative and final
provisions of the Stockholm Act (1967) is a member of the Assembly.
 The members of the Executive Committee are elected from among the members of the Union, except
for Switzerland, which is a member ex officio.
 The establishment of the biennial program and budget of the WIPO Secretariat – as far as the Paris
Union is concerned – is the task of its Assembly.
 The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911,
at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and was
amended in 1979.
 The substantive provisions of the Convention fall into three main categories: National treatment,
Right of priority, and Common rules.They are as follows:

(1) National treatment:

 The Convention provides that, as regards the protection of industrial property, each Contracting State
must grant the same protection to nationals of other Contracting States that it grants to its own nationals.
 Nationals of non-Contracting States are also entitled to national treatment under the Convention if
they are domiciled or have a real and effective industrial or commercial establishment in a Contracting
State.

(2) Right of priority:

 The Convention provides for the right of priority in the case of patents (and utility models where
they exist), marks and industrial designs.
 This right means that, on the basis of a regular first application filed in one of the Contracting States, the
applicant may, within a certain period of time apply for protection in any of the other Contracting
States.
 These subsequent applications will be regarded as if they had been filed on the same day as the first
application.
 They will have priority (hence the expression "right of priority") over applications filed by others during
the said period of time for the same invention, utility model, mark or industrial design.
 Moreover, these subsequent applications, being based on the first application, will not be affected by
any event that takes place in the interval, such as the publication of an invention or the sale of articles
bearing a mark or incorporating an industrial design.

(3) Common rules:

 The Convention lays down a few common rules that all Contracting States must follow. The most
important are:
(a) Patents:
 Patents granted in the different Contracting States for the same invention are independent of
each other.
 Thegranting of a patent in one Contracting State does not oblige other Contracting States to grant a
patent; a patent cannot be refused, annulled or terminated in any Contracting State.
 Onthe ground that it has been refused or annulled or has terminated in any other Contracting State.
 The inventor has the right to be named as such in the patent.
 The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that the
sale of the patented product, or of a product obtained by means of the patented process, is subject to
restrictions or limitations resulting from the domestic law.
(b) Marks:
 The Paris Convention does not regulate the conditions for the filing and registration of marks
which are determined in each Contracting State by domestic law.
 Consequently, no application for the registration of a mark filed by a national of a Contracting State
may be refused, nor may a registration be invalidated.
 Onthe ground that filing, registration or renewal has not been affected in the country of origin.
 The registration of a mark obtained in one Contracting State is independent of its possible registration
in any other country, including the country of origin.
 Consequently, the lapse or annulment of the registration of a mark in one Contracting State will not
affect the validity of the registration in other Contracting States.
(c) Industrial Designs:
 Industrial designs must be protected in each Contracting State, and protection may not be forfeited on
the ground that articles incorporating the design are not manufactured in that State.

(d) Trade Names:

 Protection must be granted to trade names in each Contracting State without there being an obligation to
file or register the names.

(e) Indications of Source:

 Measures must be taken by each Contracting State against direct or indirect use of a false indication of
the source of goods or the identity of their producer or trader.

(f) Unfaircompetition:
 Each Contracting State must provide for effective protection against unfair competition.

ASSIGNMENT
Q.1 Discuss the concept of the Paris Convention 1883 in six points.
Q.2 What are the three substantive provisions of Paris Convention? State National Treatment in two points.
Q.3 Describe the Right of Priority in five points.
Q.4 What are Common Rules? State the concept of Patents in four points.
Q.5 Discuss the term Marks in four points.
LL.B (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT III- Patent, Protection & Infringement
Lecture -5
Topic-IPR- Amendment of 1999& 2005 Exclusive Marketing Rights
YouTube Link-https://www.youtube.com/watch?v=ph7xPyLs
Previous year Questions of Lucknow University:

NOTES

 Amendment of 1999 of Patents Act 1970:

 The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)
imposes several obligations on the Government of India in the area of patent protection.
 It calls for substantial changes in the Indian Patent Act, 1970 to satisfy these obligations.The Agreement
helps India to introduce the changes at three different stages.
 To satisfy the first set of obligations, the Patent (Amendment) Act, 1999 was enacted after India lost
the dispute with the USA in WTO.
 The Patent (Second Amendment) Bill, 1999 was intended to satisfy the second set of obligations.
This included changes in patentable inventions, grant of new rights, and the extension of the term.
 Provisionfor reversal of the burden of proof in case of process patent infringement and conditions for
compulsory licenses.
 India has time up to 2005 to introduce protection for micro-organisms, pharmaceutical products,
agricultural chemical products, inventions relating to atomic energy, and plant varieties.
 Amendments to satisfy TRIPS Obligations:
 Patentable inventions:
 The TRIPS Agreement for the first time not only laid down uniform international norms for an invention to
be patentable but also spelled out the exceptions based on which patents could be denied.
 Article 27(1) has not defined the term "invention" but only lays down the norms to find out what constitutes
an invention whether it is a product or process.
 For an invention to be patentable as per TRIPS, the invention shall be "new", have "inventive step" and
"capable of industrial application".
 It is important to note that these terms are not defined in TRIPS. It appears that the Bill introduced a new
definition for an invention to satisfy Article 27(1).
 Rights of patent owner:
 The TRIPS Agreement has spelled out various rights available to the owner of the product and process
patent separately. This includes the new right of importation of patented products.
 Section 48 of the Patent Act is amended prospectively to satisfy this requirement.
 Thus, the new rights are available to the owners of the patents granted only after the commencement of
the Patent (Second Amendment) Act, 1999.
 Section 107-A importation of patented products by any person from a person who is duly
authorized by the patentee to sell or distribute the product shall not be considered as an
infringement of patent rights.
 Term of protection:
 The term of protection in India as per the existing law is fourteen years counted from the date of
the patent.
 But in the case of a process patent for food, medicine, or drug, the period is five years from the
date of sealing of the patent, or seven years from the date of the patent, whichever period is
shorter.
 This existence of the patent is subjected to the periodic renewal of the patent by payment of a fee.
 The TRIPS Agreement mandates a uniform term of twenty years from the date of filing of the patent
application irrespective of whether the invention is a product or process.
 Use without authorization:
 The Patent Act, 1970 envisages grant of compulsory licences and statutory licences for not working the
patent in India to satisfy the reasonable requirements of the public.
 The compulsory licence is granted at the request of an interested person.
 The statutory licence include the general power of the Central Government to notify any patent as a
patent endorsed with the licence of right and an express provision treating all patents relating to drugs or
medicine as patents deemed to have been endorsed with license of right.
 These provisions were introduced in the Act considering the fact that the majority of the commercially
viable patents taken in India were owned by foreigners.
 Amendment of 2005 Exclusive Marketing Rights:

 Salient features of the Patents (Amendment) Act 2005:

 Extension of product patent protection to products in sectors of drugs, foods and chemicals.
 Term for protection of product patent shall be for 20 years.
 Introduction of a provision for enabling grant of compulsory license for export of medicines to countries
which have insufficient or no manufacturing capacity.
 Provided such importing country has either granted a compulsory license for import or by notification or
otherwise allowed importation of the patented pharmaceutical products from India.

 Effects of Patent Amendment Act 2005:

 Due to the new patent regime, increased prices of products were considered to be a major hindrance during
the time.
 However, the government has taken proactive measures to ensure low prices for essential drugs, and has used
compulsory licensing as a tool to keep exorbitant prices under check.
 The amendment intended to make Indian drug and pharmaceutical industries competitive at par with
multinational companies.
 Despite initial reservations, Indian pharmaceutical companies manufacturing generic drugs have flourished in
the last decade.
 Also, MNCs have opened Research and Development Centres in India.
 Pharmaceutical & Biotech Patents:
 Pharmaceutical and Biotech patents are registered in India after undergoing a stringent examination process.
 In Section 3, which specifies inventions that are not patentable, under clause (d) where new use of the
existing substance, process, the machine results in a new product.
 Also, the provisions of the patent law allow patenting of products in chemicals, biotechnology, food
processing, drugs and pharmaceuticals, not just the process.
 Rights granted by a Patent:
 If the patent is for a process, then the patentee has the right to prevent others from using the process, using
the product directly obtained by the process, offering for sale etc.
 If the grant of the patent is for a product, then the patentee has a right to prevent others from making, using,
offering for sale, selling or importing the patented product in India.

 Term of Patent:
 The term of every patent in India is 20 years from the date of filing the patent application,irrespective
of whether it is filed with provisional or complete specification.
 However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of 20 years
begins from the international filing date.

ASSIGNMENT
Q.1 Discuss the Amendment Act of 1999 in five points.
Q.2 What are Patentable Inventions? State in four points.
Q.3 Describe the Term of Protection in four points.
Q.4 Discuss the term Use without Authorization in four points.
Q.5 What are the salient features of the Amendment Act of 2005? State in four points.
Q.6 State the effects of the Amendment Act of 2005 in five points.
LL.B (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY LAW
UNIT III- Patent, Protection & Infringement
Lecture -6
Topic-IPR- International Patent
YouTube Link-https://www.youtube.com/watch?v=2MBwtrL9_PM
Previous year Questions of Lucknow University:

NOTES

 International Patent:
 The Patent Cooperation Treaty (PCT) provides us with an overview of an international patent that is
duly administered by the World Intellectual Property Organization (WIPO).
 The Patent Cooperation Treaty (PCT) is an international treaty with more than 148 Contracting States.
It is administered by the World Intellectual Property Organization.(WIPO).
 The PCT is an international treaty that provides a system for filing a patent application and allows us to
obtain patents in multiple countries around the world on the basis of a single patent.
 As PCT simplifies the procedure for obtaining Patent protection in many countries, making it more
efficient and economical for users of the patent system i.e., inventors& National Offices.
 The PCT simplifies the patent filing process for applicants and the ultimate decision to grant patent
vests exclusively with each national or regional Patent Office.
 A single PCT application has the same legal effect as a national Patent application in each of the PCT
Contracting States.
 Patent Cooperation Treaty- file an application under the PCT, directly or within the 12-month
period as provided for by the Paris Convention from the filing date of a first application, which is
valid in all Contracting States of the PCT.

 Need for Introducing PCT:

 To bring the world within reach.
 Removes major costs and provides users with additional time to consider their various Patent granting
options.
 Provides a strong basis to the user for Patenting decisions.
 Is effectively used by the world’s major corporations, universities, and research institutions when they seek
international patent protection.

 Basic Features of International Patent:

 Formal examination is done by one office.
 Retrieval is carried out by one office.
 International publication is done by one office.
 Examination and authorization finished by the national office.
 Single application with legal effect in all PCT countries.
 148 countries and 4 regional patent systems.

 International Advantages:
 A single application in a single language filed in a single country is called the international application.
 Provides a strong basis for patenting decisions to the users.
 Harmonizes formal requirements.
 Used by the world’s major corporations, universities and research institutions when they seek international
patent protection.
 This single application has the effect of filing simultaneously in different countries (designated countries).
 PCT Filing Process:
 STEP 1 – Filing of Local application:

 The first applicant needs to file a patent application their home country.

STEP – 2 Filing of PCT application:

 Applicant need to file a national application along with international application in one language and need to
pay single set of fee.
 PCT application is to be filed within 12 months after filing a national application.
 Priority date is given by the national office.
 PCT application can also be directly filed to RO (receiving office) office of WIPO.

STEP – 3 Checking for Defects:

 The check is conducted by the receiving office, it is divided into two parts.
 The first part concerns the requirements of according an international filing date as set out in Article 11(1) of
PCT.
 The second part concerns the formal and physical requirements under Article 14.

STEP – 4 International Search Report:

 Application is transmitted to an International searching authority. An International Searching Authority
search an application and check for a prior art and state of art.
 They made it clear whether or not document that have been presented is eligible for grant of patent. They
establish it on the basis of their written opinion.
 Within 16 months from the date of filing, ISR (International search report) will give search report with a
written opinion.

STEP 5 International Publication:

 After submitting the necessary document user application is published, after the completion of 18 months.
 Before that an application is kept secret. International Bureau (IB) of WIPO publishes the PCT application.
Content of the application is disclosed to the general public.

STEP – 6 International Search:

 Request for supplementary search is filed by the application before completion of 19 months from the priority
date.
 Under this applicant demand for an international preliminary examination.

STEP – 7 International Preliminary Report

 Search authority will give a report on patentability, whether or not a patent is to be granted.
 This is to be given within 28 months by the competent authority.

STEP – 8 Enter in National Phase:

 After completion of all necessary requirements patent is granted by national office and likewise patent is
granted in all other contracting states.
 Patent is granted to the applicant before the completion of 30 months.
 After this applicant can seek protection.

ASSIGNMENT
Q.1 Discuss the term International Patent in five points.
Q.2 Discuss the need for introducing PCT in four points.
Q.3 What are the basic features of an International Patent? State in five points.
Q.4 State any four advantages of filing an International Patent.
Q.5Mention all eight steps of filing International Patent
 LL.B. (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY RIGHTS
Unit- IV The Trademarks Act 1999
1. Introduction to Trademark Law
2. Brief Introduction to related International Treaties & Conventions
3. Definitions ( S.2), Registration of Trademarks, Procedure, Grounds of Refusal & Well Known Trademarks,
Deceptive Similarity
4. Passing Off, Infringement & Exceptions to Infringement Actions, Remedies
5. Assignment & Licensing, Intellectual Property Apellate Board, conflicts of Trademarks with Domain Name
6. Unconventional Trademarks
UNIT IV- The Trade Marks Act, 1999
Lecture -1
Topic-IPR-Introduction to Trademark Law & Brief Introduction to related International
Treaties & Conventions
YouTube Link-https://youtu.be/8_TdJMjWcbk
Previous Year Questions of Lucknow University:

NOTES

 Introduction to Trademark Law:

 In order to protect such aspects from unfair competition and to preserve its identity, Trademark, a branch of
Intellectual Property Rights becomes essential.
 Trademark refers to various signs, symbols or any distinctive image that is capable of distinguishing the
goods and services of one, from the goods and services of another.
 In India, prior to 1940 the law with regard to Trademarks was based on the common law principles of equity
and passing off as followed in England.
 The Trade Marks Act, 1940 was the first statutory law in India with regard to Trademarks which had similar
provisions as the United Kingdom Trade Mark Act, 1938.
 This Act was then replaced by the Trade And Merchandise Marks Act, 1958 which was a consolidation of all
the laws related to Trademarks as provided in the Indian Penal Code.
 However, the statutory Act that governs TradeMark in India presently is the Trade Mark Act of 1999.
 Definition of Trademark:
 As per section 2(1) (m) of the Trade Mark Act of 1999, the term ‘mark’ includes a device, brand, heading,
label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combinations.
 Thus, in short, anything can be considered a mark as long as it is capable of being graphically represented
either in a one dimensional, two dimensional or three-dimensional space.
 The Nike swoosh symbol along with its famous tagline “Just Do it “is an apt example of a mark that has a
combination of a symbol, tagline and a brand name.
 Section 2 (zb) defines “trade mark” as a mark capable of being represented graphically and which is capable
of distinguishing the goods or services of one person from those of others and may include shape of goods,
their packaging and combination of colours etc.
 The trademarks have been classified into different classes according to Section 7 of the Trademark Act
1999.They are classified into 34 classes of goods and 11 classes of services.
 Class 1 to 34 comprises the specification of the goods, and classes 35 to 45 comprises the specifications of
the services.

 Different types of Trademarks:

 Word Marks – Such marks consist of only words, letters or numerals. An example of word marks would be
Coca- Cola, Google, Adidas etc.
 Device Marks – These marks consist of a unique representation of words plus a logo. For example, the
mermaid graphic along with the starbuck font on the cup.
 Service Marks – Such marks are utilised only for services and not for goods and are dealt with from class
35 to 45.
 It represents the service which the business or company deals with. For example, FedEx.
  Collective Marks – Such marks are used by a group of companies collectively and are not one single
product or business. For example, Sony as a company utilises Bravia,etc.
 Certification Marks – Such marks are used to define standards of quality, quantity etc that is produced. For
example, The Food Safety And Standard Authority of India is a certification mark for the quality of
packaged food products.
 Well-Known marks – Such marks are marks that are recognised amongst a large percentage of a
population and as the term suggests that such marks are well known by the public.
 Unconventional Trademarks – Such marks are characterised by their innate distinctive feature. Such as –
1. Colour trademark – The red colour of the KitKat chocolate packet
2. Sound Marks – The ringtone of the Airtel
3. Shape Mark- The shape of the Kinder joy chocolate package
 Brief Introduction to related International Treaties & Conventions:
 International trademark law emerged in the nineteenth century with the beginning of the 1883 Paris
Convention, which was the first international attempt to simplify and bring uniformity towards protection
of Intellectual Property Rights.
 At international level attempts have been made to increase the level of security given to the interests of
various stakeholders in the trademark protection system including consumers.
 Spanning from the Paris Convention on Industrial Property, Madrid Agreement, Madrid Protocol, and the
Trademark Law Treaty has stressed on the rationalization and homogeneity of the substantive and
procedural law on trademarks.
 The purpose of enacting the Trademark Law Treaty was to standardize and regulate a set of principles or
procedural rules to simplify the national and regional process for application and registration process.
 It is done by simplifying and harmonizing the aspects of certain processes, thereby making trademark
applications and the administration of trademark registrations less complicated and more consistent in
multiple jurisdictions.
 The Trademark Law Treaty ensures greater procedural harmonization of trademark law by providing a list
of the maximum standards that members can impose for different acts.
 Objectives:
 The main aim of the treaty was to outline and standardize the registration process for national and regional
trademarks.
 It intends to make the application process for trademarks and the regulation of trademark registrations less
complicated and more straightforward in multiple jurisdictions.
 This is expected to be done by simplifying and harmonizing Trademark registration processes around the
world.
 The terms of the treaty refer to goods and/or services as well as the marks used upon them.
 Phases:
 The provisions of the Trademark Treaty deals with the process before a trademark office which can be
further classified into three key phases:
1. registration application
2. post-registration changes
3. Renewal.
 The procedure and rules regarding each phase have been carefully constructed so as to outline the
requirements needed for an application or in relation to a specific request.

ASSIGNMENT
Q.1 Discuss the Introduction to Trademark Law in six points.
Q.2 Define the term Definition of Trademark in six points.
Q.3 Mention seven different kinds of trademarks.
Q.4 Express in six points the Brief Introduction of the International Treaties & Conventions.
Q.5 What are the four objectives of International Treaties & Conventions.
Q.6 Discuss the phases of International Treaties & Conventions in two points.
LL.B. (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY RIGHTS
UNIT IV- The Trade Marks Act, 1999
Lecture -2
Topic-IPR- Definitions, Registration of Trademarks, Procedure, Grounds of Refusal &Well
Known Trademark Deceptive Similarity
YouTube Link-https://www.youtube.com/watch?v=efC-F6Ad-x4
Previous Year Questions of Lucknow University:

NOTES
Definitions:
1. Certification Trademark[Sec.2(1)(e)]-
 Itmeans a mark capable of distinguishing the goods or services in connection with which it is used in the
course of trade.
 Which are certified by the owner of the mark in respect of origin, material, and mode of manufacture of
goods or performance of services, quality, accuracy or other characteristics.
2. Collective Mark[Sec.2(1)(g)]-
 It means a trade mark distinguishing the goods or services of members of an association of persons
which is the proprietor of the mark from those of others.
3. Deceptively Similar[Sec.2(1)(h)]-
 A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark
as to be likely to deceive or cause confusion;
4. Mark[Sec.2(1)(m)]-
 It includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof;
5. Service[Sec.2(1)(z)]-
 It means service of any description which is made available to potential users and includes the provision of
services in connection with business of any industrial or commercial matters.
 Suchas banking, communication, education, financing, insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of electrical or other energy etc.
6. Trade Mark[Sec.2(1)(zb)]-
 mark capable of being represented graphically and which is capable of distinguishing the goods or services
of one person from those of others and may include shape of goods, their packaging and combination of
colours.
 Procedure of Registration of Trademarks:
 The registration process in India is a first to file' basis.
 Therefore, it is important to apply for registration as soon as possible. A trademark usually takes 2-3
years to get registered, if the trademark is not being opposed by a third party.
 The application must be filled as per territorial jurisdiction. And as per provisions of trademarks
act,1999 section 18.
 To register a trademark in India the following steps must be followed:
1. Select a trademark agent in India:
a. Proprietors are only allowed to file a trademark application if their place of business is in India.
2. Determination of the eligibility and availability of the trademark:
a. The agent usually starts the registration process by determining whether the trademark is eligible for
registration and conducting a clearance search to see if there is a similar mark.
3. Completing the application form and filing:
a. If the trademark agent has the power of attorney from the right holder he can complete and file the
application form.
4. Review by the trademark office:
a) The trademark office reviews the application to see if it is complete and then allots the application a
number. If the trademark is registered, this number becomes the registration number.
5. Preliminary approval and publication, show cause hearing or rejection of the application:
a. The trademark association determines if the application is barred from registration either on absolute or
relative grounds for refusal as prescribed in the Trade Marks Act, 1999.
  Grounds of Refusal:
 Section 9 of the Act lists down the absolute grounds for refusal of registration. If any trademark comes
under the grounds listed in this section, it cannot be registered.
 The absolute grounds for refusing registration are –
1. Trademarks which do not possess any distinctive character. Distinctive character means trademarks
which are not capable of distinguishing the goods or services of one person from those of another.
2. Trademarks which exclusively contain marks or indications which serve in trade to define the kind,
quality, quantity, intended purpose, values or geographical origin of goods or services rendered.
3. Trademarks which exclusively contain marks or indications which have become customary in the current
language or the established practices of the trade.
 Relative Grounds For Refusal Of Registration:
 Section 11 of the Act provides relative grounds for refusal of registration. This section provides
exceptions to the grounds of refusal.
 If the exceptions are complied with, then the trademarks under section 11 can be registered.
 Section 11(1) states the following grounds for refusal –
 Trademarks which confuse the public as it is identical with an earlier similar trademark of goods or
services.
 Well Known Trademarks:
 Well-known trademarks are ‘special trademarks’, which are defined in Section 2(zg) of The Trademark Act.
 The section defines Well-known trademarks as, ‘marks of companies that have become so substantial to a
section of the public that uses such goods or receives services from those companies.
 Thatthe use of that mark while using other goods or services would also be taken as a connection with the
company that renders such goods or services.
 While trademarks only protect the goodwill of a company to a specific geographical area or range of
products.
 Conditions not necessary for a Trademark to be Well-Known:
 Section 11(9) of The Trademarks Actlays down the conditions that are not necessary for a trademark to be
considered as Well-known.
 The conditions are namely:
1. That it has been used in India.
2. That it has been registered.
3. That the application for registration has been filed in India.
 Deceptive Similarity:
 Section 2(h) states that a mark shall be deemed to be deceptively similar to another mark if so nearly
resembles that other mark as to be likely to deceive or cause confusion.
 In simple words a mark which is in question is so similar to the registered mark that it tends to deceive and
create confusion in the minds of the people.
 Factors deciding Deceptive Similarity:
 There are some of the factors which are taken into consideration while deciding a deceptively similar mark,
which are as follows:-
1. The Perceptible similarity of a mark.
2. Auricular Similarity
3. Conceptual Similarity

ASSIGNMENT
Q.1 Discuss six important definitions of Trademark Act in one point each.
Q.2 State five points on the Procedure for Registration of Trademark.
Q.3 What are the two Grounds of Refusal. Also define Relative Grounds in four points.
Q.4 Mention the term Well Known Trademarks in four points.
Q.5 Express the term Deceptive Similarity in two points.
LL.B. (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY RIGHTS
UNIT IV- The Trade Marks Act, 1999
Lecture -3
Topic-IPR- Passing off, Infringement & Exceptions to Infringement Actions, Remedies
YouTube Link- https://www.youtube.com/watch?v=PwDVlJBVwyc
Previous Year Questions of Lucknow University:

NOTES

 Passing Off:
 “If a person sells his goods as the goods of another” then the trademark owner can take action as this
becomes a case of passing off.
 Passing off is used to protect or safeguard the goodwill attached to an unregistered trademark.When the
trademark has been registered by the owner and infringement happens.
 Then it becomes a suit for infringement, but if the trademark has not been registered by the owner and
infringement happens then it becomes a case of passing off.
 The principle of passing off, i.e. “Nobody has the right to represent his goods as the goods of somebody else”
was decided in the case of Perry v Truefitt (1842).
 This was later expanded to business and non-business activities. Now, it applies to many forms of unfair trade
and unfair competition where one person’s activities harm the goodwill of another person.
 It is difficult to prove passing off as claimants need to demonstrate that at least some of the public is at risk of
confusion between the two businesses.
 Kinds of Passing off
 There are two kinds of passing off-
1. Extended Passing-Off –
 Where misrepresentation as a particular quality of a product or service damages the harmony or goodwill of
another person or business.
2. Reverse Passing Off –
 Where a trader markets, sells or produces the goods or services of another person or business.
 Elements of Passing-Off:
 There are three basic elements of passing off.
 The three elements are also known as the Classical Trinity, as restored by the House of Lords in the case of
Reckitt & Colman Ltd v Borden Inc.
 Which established the three elements of passing off, i.e.
1. Misrepresentation
2. Goodwill
3. Damage
 Infringement:
 Infringement as per Section 29, a use of a mark, by an unauthorized or an authorized person or a person who
is not the registered owner, which is identical or deceptively similar to the trademark.
 In relation to the goods or services in respect of which the trademark is registered.
 In simple words, it is defined as the violation of exclusive rights that are attached to a registered
trademark without the permission of the registered owner or licensees.
 The courts have time and again assumed that similarity of two marks and the kind of goods and services
results in causing confusion in the minds of general public.
 They may take an undue advantage of enjoying the hard-earned reputation of the registered trademark.
 In order to have a successful claim against a person infringement of trademark, what needs to be proved is that
the infringing trademark is deceptively similar or identical to the registered trademark.
 When can a person be considered as infringing a trademark:
 A registered trademark is said to be infringed in case of the following situation:
1. If the mark in dispute is identical with or deceptively similar to the registered trademark and is in
relation to the same or similar goods or services.
2. If the identical or similar mark can cause confusion in the minds of general public to have an
association with the registered trademark
3. If the registered trademark is used as a part of trade name or business concern for goods and services in
respect of which the trademark is registered
  According to Section 103, a person is said to be applying for a trademark wrongfully in the following
conditions:
1. If falsification of trademark has been committed;
2. If any trademark has been falsely applied to goods and services;
3. Makes, possesses or disposes of any instrument with the object and purpose of falsifying a trademark;
4. Falsely indicates name of the country or place where the goods have been made or the name or address of
the person who is responsible for its manufacturing.
 Remedies for Passing Off &Infringement:
 To succeed in passing off claims, the plaintiff must show that the misrepresentation made by the
defendant, which has damaged the goodwill.
 In a passing-off action, the plaintiff can claim any of the following remedies:
1. Apply for an injunction prohibiting the business from using your trademark or goodwill:
 An Injunction to prevent further use of the trademark by the defendant. The injunction is an
effective remedy in the prevention Infringement of registered trademark or unregistered
trademark.
 Section 135 of the Trademark Act, 1999 provides injunctive relief. An injunction can be given
in various types:
2. Anton Piller Order:
 These are prior partial orders to inspect the defendant’s premises.
 The court may order the plaintiff where the defendant is likely to Destroy or dispose of materials
which contain the trademark of the plaintiff
3. Mareva injunction:
 In such order, the court has the power to freeze the assets of the defendant where the property is
likely to be dissolved or cancelled, so granting judgment against him will not be enforced.
4. Interlocutory Injunction:
 It is one of the most commonly used forms of an injunction. It acts to take action against the
defendant based on former Violation.
 Interlocutor prohibition is an order to prevent the defendant from continuing usage of the
trademark, which is leading to infringement of the unregistered trademark.
5. Perpetual injunction:
 It is an injunction that prevents the defendant completely, for all time from performing any act
that violates the right of the owner of the trademark.
 A perpetual injunction is usually granted when the case is finally settled.
 Exceptions to Infringement Actions:
 Section 30 of the Act specifies the limitations on the rights of a registered trademark, as well as the
commercial conduct that does not constitute infringement.
 An infringer may be freed from his liability if the use of the trademark falls within the scope
of provisions mentioned in section 30.
1. When the mark is used to indicate quality, the kind, quantity, etc
2. When the mark is used outside the scope of registration
3. When there is implied consent of use
4. When a registered trademark is used in relation to accessories and parts
5. When two registered trademarks are similar to each other.
ASSIGNMENT
Q.1 Discuss the concept of Passing Off in six points.
Q.2 Mention two kinds of Passing Off in one point each.
Q.3 What are the three elements of Passing Off. State three points.
Q.4 Discuss the meaning of Infringement in six points.
Q.5 What are the different remedies of Passing Off & Infringement. State five points.
Q.6 State two points on Exceptions to infringement actions.
LL.B. (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY RIGHTS
UNIT IV- The Trade Marks Act, 1999
Lecture -4
Topic-IPR-Assignment and Licensing (ss48-53), Intellectual Property Appellate Board(ss83-100),
Conflicts of Trademarks with Domain Name
YouTube Link-https://www.youtube.com/watch?v=WzFcjHAmxXs
Previous Year Questions of Lucknow University:

NOTES
 Assignment:
 A registered Trademark is assignable & transmissible. The proprietor of the registered trademark has the
power to assign or transmit the trademark with or without the goodwill of the business concerned.
 The assignment or transmission can be for all of the goods or services covered by such trademark or only
some of such goods or services.
 No such assignment or transmission of a registered trademark is permissible in a case. There are subsisting
exclusive rights in more than one of the persons concerned to the use of trademarks.
 Section 42 lays down conditions for assignment of a trademark without the goodwill of business. Such
assignment would take effect when the assignor obtains directions of the Registrar as per the procedure.
 No such directions of the Registrar would be required if the assignment is only in respect of some of the
goods or services with the goodwill of the assignment is of a trademark used for only in respect of goods.
 No assignment or transmission of a certification trademark can be made without the consent of the Registrar.
Associated trademarks aren’t assignable or transmissible except as whole & not separately.
 Section 45 provides that a where a person becomes entitled to a registered by assignment or transmission, he
shall apply to the Registrar to register his title & Registrar shall register him as the owner of trademark.
 Chapter V deals with Assignment & Transmission. Sections 37-45 & Rule 71 covers these rights.
 Licensing:
 The term “Licensing of TM” has not been defined in the Trademarks Act, 1999. A License in general is the
permission given to someone to do an act.
 Trademark License simply means the permission granted by the owner of the trademark to a third person.
Such a license is granted in consideration of Royalty.
 The holder/proprietor of the registered Trademark can grant the trademark license. It would be right to
mention here that under the Indian Law both registered and unregistered can be transferred.
 The transfer of a Trade Mark can either be by means of a license or an assignment.
 A license to a registered Trade Mark in India can be of two kinds- A simple license agreement which is with
respect to permissive use.
 A Registered User wherein the license agreement is registered with the Registrar of Trade Marks. In this
license, certain rights accrue to the licensee as per statute.
 It is a common practice by foreign companies, the tech companies, in particular, to provide TM License in
other countries so that their trademark can be exploited in those countries.
 The statutory provision under Section 48 of the TM Act stipulates that a person other than the registered
proprietor of a trademark may be registered as a registered user.
 Intellectual Property Appellate Board:
 The Central Government being empowered by Section 83 established the Intellectual Property Appellate
Board to exercise the jurisdiction, powers & authority conferred on it with effect from 15 September 2003
 It consists of a Chairman, Vice- Chairman & such other members as the Central Government may deems fit.
It has its Benches at various places which will exercise the jurisdiction, powers & authority.
 Each Bench consists of one Judicial member & one Technical Member and shall sit at such place as the
government shall specify.
 The Government has specified Ahmedabad, Chennai, New Delhi, Mumbai & Kolkata as the benches of the
Board by 15 September 2003.
  A person shall not be qualified for appointment as Chairman unless he is or has been a Judge of the High
Court or has at least two years held the office of Vice Chairman.
 A person shall not be qualified for appointment as Vice-Chairman unless he has for at least two years held
the office of Judicial Member or a Technical member.
 The Chairman, Vice-Chairman and every other members shall be appointed by the President of India. No
appointment of Chairman shall be made except after consultation with the Chief Justice of India.
 Term of office of Chairman, V-C & other members:
 The Chairman, V-C & other members shall hold the office as such for a term of five years from the date from
the date of entry upon such office.
 Or until he attains, in the case of Chairman & V-C age of 65 years and in the case of Member, the age of 62
years, whichever is earlier
 Offences&Penalties :
 Sec.102 relates to falsifying & falsely applying trademarks.A person shall be deemed to falsify a trademark
who either without the assent of the owner makes that trademark or deceptively similar mark.
 Sec.103 lays down the penalty. he may be punishable with imprisonment for a term not less than six months
which may extend to three years & fine up to Rs. 50,000 and extends up to Rs. 2 lakhs.
 Sec.104 relates to the penalty for selling goods or services to which false trademarks are applied. The
punishment is similar as of above.
 Sec.105 provides for enhanced penalty for second or subsequent convictions.Imprisonment for a term less
than a year but extends to three years and fine of not less than Rs. 1 lakh which may extend to Rs. 2lakh
 Sec.108 provides for improperly describing a place of business as connected with the Trademarks Office. The
punishment provided is up to two years or fine or both.
 Conflicts of Trademarks with Domain Name:
 A domain name contains Top Level and Second Level Domain names that can be registered with ICANN-
approved registrars such as WIPO.
 Settlement of domain name disputes can be through various means like ADR mechanism, agreement, and
Court proceedings.
 ICANN has set up the Uniform Dispute Resolution Policy (UDRP) to settle domain name disputes at an
international level.
 However, the main issue while settling a domain name and trademark dispute is the jurisdictional issue
because the internet has no boundaries.
 Issues as to which court the matter should be brought, whether the decision of the court is binding on the
parties who are registrants in two different countries.
ASSIGNMENT
Q.1 Discuss the term Assignment in six points.
Q.2 What do you mean by Licensing. State six points.
Q.3 Mention Intellectual Property Appellate Board in seven points.
Q.4 State Terms of Office of Chairman & others in two points.
Q.5 Describe the Offences & Penalties in five points.
Q.6 Enumerate five points on Conflicts of Trademarks with Domain Name.
LL.B. (INTEGRATED) FIVE YEARS (FOURTH YEAR) VII SEMESTER
SUBJECT- INTELLECTUAL PROPERTY RIGHTS
UNIT IV- The Trade Marks Act, 1999
Lecture -5
Topic-IPR-Unconventional Trademarks
YouTube Link- https://www.youtube.com/watch?v=i8eZP9fSWM0
Previous Year Questions of Lucknow University:

NOTES

 Unconventional Trademarks:
 Traditionally trademarks can be defined as any mark which is unique to the product and was identified
with the origin of the product.
 An unconventional trademark is a new type of trademark which does not fall into the category of
conventional or traditional trademarks.
 These trademarks fulfill the conditions of being a trademark but are difficult to register because of
their unusual nature.
 These unconventional trademarks included texture, shape, scent, outline, body movement etc.
 This rise in the number of unconventional trademarks can be attributed to the non-concrete legal
definition provided for a trademark.
 Certain conditions are required to be fulfilled to register an unconventional trademark-
1. The mark should be intrinsically distinctive.
2. The mark should be able to distinguish the particular product from other products.
3. The mark should be capable of graphical representation.
4. These kinds of unconventional trademarks raise a fascinating question that what all can be included
within the ambit of a trademark.
 It has been observed that earlier unconventional trademarks were thought to be unregisterable.
 But this situation has changed and even trademarks like shape, color, sound, smell, etc. are being
registered as trademarks.
 Essentials for Unconventional Trademark in India:
 In order to get protection under the Trademark Act, 1999 following are some of the essential in relation
to unconventional Trademarks in India:
1. The mark should be a “mark” as defined under the Section 2(1) (m) and should include any device,
brand, label, headings, logos, symbols, numbers, shapes, letters, colour combinations etc
2. The mark must be capable of being graphically represented,
3. The Trademark must be distinctive in nature.
 Amendments made in the Unconventional Trademarks:
 The amendments or developments in the area of unconventional Trademarks must be credited to Trade
Related Aspects to Intellectual Property Rights (TRIPS) agreement.
 TRIPS agreement is a form of the international convention based on the Intellectual Properties which helps in
setting the legal standing in this regard.
 TRIPS agreement includes a trademark such as colour trademarks, shape trademarks, trademarks in relation
to holograms and many more.
 India is a signatory to both the agreements namely TRIPS agreement and Paris agreement thus is under the
obligation to follow the guidelines set by these conventions.
 However, it can further be stated that the trademark may consist of any sign which is not in itself capable of
being perceived visually, provided that it can be represented graphically.
 Particularly by means of images, lines or characters, and that the representation is clear, precise, self-
contained, easily accessible, intelligible, durable and objective.

 Legal Provisions relating to the Unconventional Trademarks in India:

 There are various laws relating to Trademark in India. In India, these laws have developed with a very high
pace since last 10 years primarily because of the changes brought in the following regulations:
a. International conventions,
 b. TRIPS Agreement
c. Introduction of Trademark Rules 2017
d. Section 2(1) (zb) and 2(1)(m) of Indian Trademark Act,1999
e. Rule 26 and 2(k) of Trademark Rules 2002.
 Types of Unconventional Trademarks in India:
 There are various types of marks which lack the capacity to be graphically represented in India. Some of these
marks thus come under the ambit of Unconventional Trademarks.
 Therefore following are some of the marks which are considered under the category of an unconventional
trademark in India:
a. Sound Marks
b. Smell Mark
c. Mark of a Hologram
d. Tastes
e. Varieties of Shapes
f. Motion
g. Marks related to Textures
 Position of Unconventional Trademarks in India:

 The Trademark Act, 1999 which Indian follows is influenced by the laws of the United States as well as that
of the United Kingdom.
 Both in India and in the UK, the graphical representation is considered to be necessary for the registration of
Trademark. Hence, the doctrine of functionality is also important both in India as well as in the United States.
 As per the new Trademark Rules, 2017 the sound marks can be registered as Trademark as per the Rule 26(5).
 This can be done by submitting the sound clip with the musical notations which should not exceed more than
thirty seconds.
 Further, the colour marks can also be submitted by producing a combination of colours. In this case, the onus
to prove the distinctive nature or characteristics of both sound and colour lies on the applicant.
 As per Section18 of the Trademarks Act, 1999 the registration of a Trademark should be done in accordance
with the Trademark Rule.
 As stated under Rule 25(12) (b) of 2002 the registration of Trademark should be in such a manner so that it
can be graphically represented.

ASSIGNMENT

Q.1 What do you mean by the term Unconventional Trademarks. Discuss it with seven points.
Q.2 State three points on essentials of Unconventional Trademarks.
Q.3 What are the Amendments made in Unconventional Trademarks. State six points.
Q.4 Discuss the Legal Provisions relating to the Unconventional Trademarks in India in two points.
Q.5 State two points on types of Unconventional Trademarks in India.
Q.6 Enumerate six points on the position of Unconventional Trademarks in India.