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INTRODUCTION TO INTELLECTUAL PROPERTY RIGHTS

Intellectual property Right (IPR) is a term used for various legal entitlements which attach to
certain types of information, ideas, or other intangibles in their expressed form. The holder of
this legal entitlement is generally entitled to exercise various exclusive rights in relation to
the subject matter of the Intellectual Property. The term intellectual property reflects the idea
that this subject matter is the product of the mind or the intellect, and that Intellectual
Property rights may be protected at law in the same way as any other form of property.
Intellectual property laws vary from jurisdiction to jurisdiction, such that the acquisition,
registration or enforcement of IP rights must be pursued or obtained separately in each
territory of interest. Intellectual property rights (IPR) can be defined as the rights given to
people over the creation of their minds. They usually give the creator an exclusive right over
the use of his/her creations for a certain period of time.

Intellectual Property
Intellectual property is an intangible creation of the human mind, usually expressed or
translated into a tangible form that is assigned certain rights of property. Examples of
intellectual property include an author's copyright on a book or article, a distinctive logo
design representing a soft drink company and its products, unique design elements of a web
site, or a patent on the process to manufacture chewing gum.

Intellectual Property Rights

Intellectual property rights (IPR) can be defined as the rights given to people over the creation
of their minds. They usually give the creator an exclusive right over the use of his/her
creations for a certain period of time. Intellectual property (IP) refers to creations of the mind:
inventions, literary and artistic works, and symbols, names, images, and designs used in
commerce.

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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Categories of Intellectual Property

One can broadly classify the various forms of IPRs into two categories:

 IPRs that stimulate inventive and creative activities (patents, utility models, industrial
designs, copyright, plant breeders’ rights and layout designs for integrated circuits)
and
 IPRs that offer information to consumers (trademarks and geographical indications)

IPRs in both categories seek to address certain failures of private markets to provide for an
efficient allocation of resources

IP is divided into two categories for ease of understanding:

1. Industrial Property
2. Copyright

Industrial property, which includes inventions (patents), trademarks, industrial designs, and
geographic indications of source; and

Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in their
radio and television programs

Intellectual property shall include the right relating to:

 Literary, artistic and scientific works;

 Performance of performing artists;
 Inventions in all fields of human endeavour;
 Scientific discoveries;
 Industrial designs;
 Trademarks, service marks and etc;

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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 Protection against unfair competition.

What is a property?

Property designates those things that are commonly recognized as being the possessions of an
individual or a group. A right of ownership is associated with property that establishes the
good as being "one's own thing" in relation to other individuals or groups, assuring the owner
the right to dispense with the property in a manner he or she deems fit, whether to use or not
use, exclude others from using, or to transfer ownership.

Properties are of two types - tangible property and intangible property i.e. one that is
physically present and the other which is not in any physical form. Building, land, house,
cash, jewellery are few examples of tangible properties which can be seen and felt
physically. On the other hand there is a kind of valuable property that cannot be felt
physically as it does not have a physical form. Intellectual property is one of the forms of
intangible property which commands a material value which can also be higher than the value
of a tangible asset or property.

TYPES OF INTELLECTUAL PROPERTY

The different types of Intellectual Property Rights are:

 Patents
 Copyrights
 Trademarks
 Industrial designs
 Geographical indications of goods
 Trade Secrets

Important Species of IPR

Out of the different types of Intellectual Property Rights the following are the most important
species of IPR

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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TRADEMARKS

According to section 2, sub-section (1) of the Trade Marks Act 1999, ”Trade Mark” means a
mark capable of being represented graphically and which is capable ofdistinguishing the
goods or services of one person from those of others and may include shape of goods, their
packaging and combination of colours.

Trade mark registration is an effective and economic way of ensuring your brand is
protected.Registration provides a safeguard against third party infringement and often acts as
an effective deterrent against third parties considering or contemplating infringement.Failure to
protect brand may reduce its value, and could damage your business’ reputation. It is also
important to be attentive to the activities of your competitors. If you suspect or witness your
brand being infringed it is best to take action as soon as possible. The longer the infringing
activity exists, the more difficult to maintain the registered trademark and chances of
trademark becoming generic.

Genericide is the term used to describe the death of a trademark that results from the brand
name becoming the name of the object itself.

COPYRIGHTS

1847 is the First Copyright law Enactment in India during British Regime. The term
of copyright was for the lifetime of the author and 60 years counted from the year following
the death of the author

Copyright law is designed to protect interests and balance the rights of the following stake
holders

 Authors/ Creators
 Publishers/ Entrepreneurs
 Users /Audiences

Indian Copyright Act is the one of the best Copyright enactment in the world.

The Copyright Act 1911, while repealing earlier statues on the subject, was also made
Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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applicable to all the British colonies including India. In 1914, the Indian Copyright Act was
enacted which modified some of the provisions of Copyright Act 1911 and added some new
provisions to it to make it applicable in India. Copyright Act, 1911 was in existence in India
till the new Copyright Act, 1957 was introduced in India Post Independence. In India, the
Copyright Act, 1957 (as amended in 1999), the Rules made there under and the International
Copyright Order, 1999 govern Copyright and neighbouring rights. This Act has been
amended five times i.e 1983,1984,1992,1999 and most recently in 2012.

What can be protected under Copyright?

Literary, Dramatic, Artistic, Musical, Cinematographic, Photographic and Sound Recording

works.

Literary works such as novels, poems, plays, reference works, newspapers and computer
programs; databases; films, musical compositions, and choreography; artistic works such as
paintings, drawings, photographs and sculpture; architecture; and advertisements, maps and
technical drawings.

PATENTS

Patent is a grant for an invention by the Government to the inventor in exchange for full
disclosure of the invention. A patent is an exclusive right granted by law to applicants /
assignees to make use of and exploit their inventions for a limited period of time (generally
20 years from filing). The patent holder has the legal right to exclude others from
commercially exploiting his invention for the duration of this period. In return for exclusive
rights, the applicant is obliged to disclose the invention to the public in a manner that enables
others, skilled in the art, to replicate the invention. The patent system is designed to balance
the interests of applicants / assignees (exclusive rights) and the interests of society (disclosure
of invention).

Meaning of ‘Invention’ under Patent

Law Sec.2(1)(J) - Invention” means a new product or process involving an inventive step and

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capable of industrial application

There are three types of patents:

Utility patents may be granted to anyone who invents or discovers any new and useful
process, machine, article of manufacture, or composition of matter, or any new and useful
improvement thereof;

Design patents may be granted to anyone who invents a new, original, and ornamental
design for an article of manufacture; and

Plant patents may be granted to anyone who invents or discovers and asexually reproduces
any distinct and new variety of plant
.TRADE SECRETS

A trade secret consists of any valuable business information. The business secrets are not to
be known by the competitor. There is no limit to the type of information that can be protected
as trade secrets; For Example: Recipes, Marketing plans, financial projections, and methods
of conducting business can all constitute trade secrets. There is no requirement that a trade
secret be unique or complex; thus, even something as simple and nontechnical as a list of
customers can qualify as a trade secret as long as it affords its owner a competitive advantage
and is not common knowledge. If trade secrets were not protectable, companies would no
incentive to invest time, money and effort in research and development that ultimately
benefits the public. Trade secret law thus promotes the development of new methods and
processes for doing business in the marketplace.

Protection of Trade Secrets: Although trademarks, copyrights and patents are all subject to
extensive statutory scheme for their protection, application and registration, there is no
federal law relating to trade secrets and no formalities are required to obtain rights to trade
secrets. Trade secrets are protectable under various state statutes and cases and by contractual
agreements between parties. For Example: Employers often require employees to sign
confidentiality agreements in which employees agree not to disclose proprietary information

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owned by the employer. If properly protected, trade secrets may last forever. On the other
hand, if companies fail to take reasonable measures to maintain the secrecy of the
information, trade secret protection may be lost. Thus, disclosure of the information should
be limited to those with a “need to know” it so as to perform their duties, confidential
information should be kept in secure or restricted areas, and employees with access to
proprietary information should sign nondisclosure agreements. If such measures are taken, a
trade secret can be protected in perpetuity. Another method by which companies protect
valuable information is by requiring employee to sign agreements promising not to compete
with the employer after leaving the job. Such covenants are strictly scrutinized by courts, but
generally, if they are reasonable in regard to time, scope and subject matter, they are
enforceable

GEOGRAPHICAL INDICATIONS

GI is an indication, originating from a definite geographical territory. It is used to identify

agricultural, natural or manufactured goods produced, processed or prepared in that particular
territory due to which the product has special quality, reputation and/or other characteristics.

IMPORTANCE OF INTELLECTUAL PROPERTY RIGHTS

IPR is a significant tool in today's era. The risk of an innovation getting infringed without the
knowledge of the inventor stands very high. With the increase in the importance of IP,
instances of IP crimes have become the part and parcel of the digitized era sometimes even
leading to failure of businesses. Companies rely on adequate protection of their patents,
trademarks, and copyrights, while customers make use of IP to ensure that they purchase
secure, assured goods. An IP asset is like any other physical property offering commercial
benefits to businesses. In a web-based world, IP protection is much more relevant as it is
comparatively simpler than ever to reproduce any specific template, logo, or functionality.
Hence, strong IP laws give protection to IP and contribute to the economy of the respective
state. IPR is one of the sources of security for intangible properties which are still open to the
public and which can be quickly replicated by anyone.

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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Intellectual property rights are more important because today we are highly-connected to
digital landscape. With all of the good the rise of the internet has done for the sharing of
information and ideas, it has unfortunately become easier for ideas and works to be stolen,
which can be damaging to both national economies and innovation.

Intellectual property protection varies from country to country, but countries that have strong
IP laws recognize the important impact original works, designs, inventions, etc. have on the
overall economy. Almost every country that has a dependence on international trade takes
strong measures to protect their intellectual property rights.3

With the rise of intangible assets that are shared across the internet, it is easy for
people to unlawfully copy and share books, music, movies, and more. Copyrights, patents,
trademarks, and trade secrets and the laws around these protections are all intended to
encourage innovation and creativity and are essential to the practice of IP law to help curb
illegal activities.

Organizations like the World Intellectual Property Organization (WIPO) underscore

the importance of fostering IP-driven innovation to incentivize and protect creativity. WIPO
is a global forum for intellectual property services and is a self-funding agency of the United
Nations, with 193 member states.

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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EVOLUTION OF IP ACTS AND TREATIES

The evolution of international IP acts through different treaties and the formation of World
Intellectual Property Organization (WIPO) is given below in brief.

1883 – Paris Convention (France)

The Paris Convention for the Protection of Industrial Property is born. This international
agreement is the first major step taken to help creators ensure that their intellectual works are
protected in other countries. The need for international protection of intellectual property (IP)
became evident when foreign exhibitors refused to attend the International Exhibition of
Inventions in Vienna, Austria in 1873 because they were afraid their ideas would be stolen
and exploited commercially in other countries. The Paris Convention covers:

• Inventions (patents)

• Trademarks

• Industrial designs

1886 – Berne Convention (Switzerland)

Following a campaign by French writer Victor Hugo the Berne Convention for the
Protection of Literary and Artistic Works is agreed. The aim is to give creators the right to
control and receive payment for their creative works on an international level. Works
protected include:

• Novels, short stories, poems, plays;

• Songs, operas, musicals, sonatas; and

• Drawings, paintings, sculptures, architectural works.

1891 – Madrid Agreement (Spain)

With the adoption of the Madrid Agreement, the first international IP filing service is
launched: the Madrid System for the international registration of marks. In the decades that
Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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follow, a full spectrum of international IP services will emerge under the auspices of what
will later become WIPO.

1893 – BIRPI established

The two secretariats set up to administer the Paris and Berne Conventions combine to form
WIPO's immediate predecessor, the United International Bureaux for the Protection of
Intellectual Property – best known by its French acronym, BIRPI. The organization, with a
staff of seven, is based in Berne, Switzerland.

1970 – BIRPI becomes WIPO

The Convention establishing the World Intellectual Property Organization (WIPO) comes
into force and BIRPI is thus transformed to become WIPO. The newly established WIPO is a
member state-led, intergovernmental organization, with its headquarters in Geneva,
Switzerland.

1974 – WIPO joins the UN

WIPO joins the United Nations (UN) family of organizations, becoming a specialized
agency of the UN. All member states of the UN are entitled, though not obliged, to become
members of the specialized agencies.

1974 – WIPO joins the UN (193 Member Countries in UN today)

WIPO joins the United Nations (UN) family of organizations, becoming a specialized agency
of the UN. All member states of the UN are entitled, though not obliged, to become members
of the specialized agencies.

1978 – PCT System launched

The PCT international patent system begins operation. The PCT expands rapidly to become
WIPO's largest international IP filing system today.

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an
invention simultaneously in each of a large number of countries by filing an "international"
patent application.

TRIPS Agreement

India along with other emerging nations graced a signatory to the Treaty of TRIPS of the
World Trade Organisation (WTO) in 1995 with a matter that agreement will allow
freeflow of trade, investment and eliminate the restrictions enduring in the norm of
Intellectual Property.

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an

international agreement administered by the World Trade Organization (WTO) that sets down
minimum standards for many forms of intellectual property (IP) regulation as applied to
nationals of other WTO Members. The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS) is an international legal agreement between all the member nations
of the World Trade Organization (WTO).

The TRIPS Agreement aims for the transfer of technology and requires developed country
members to provide incentives for their companies to promote the transfer of technology to
least-developed countries in order to enable them to create a sound and viable technological
base

AGENCIES RESPONSIBLE FOR IPR REGISTRATIONS

(a) National IPR Agencies:

The office of the Controller General of Patents, Designs and trademarks (CGPDTM), a
subordinate Office under The Department for Promotion of Industry and Internal
Trade (DPIIT), carries out statutory functions related to grant of Patents and registration of
Trademarks, Designs and Geographical Indications. The registration of copyrights is
administered by the Registrar of Copyright Office, working under the CGPDTM. It functions
out of offices situated in Delhi, Kolkata, Mumbai, Chennai and Ahmadabad, while the
Central IP Training Academy is at Nagpur.
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The appropriate office of the patent office shall be the head office of the patent office or the
branch office as the case may be within whose territorial limits. Residence of applicant or
Domicile; or their place of business; or the place where the invention actually originated.

The CGPDTM supervises the functioning of the following IP offices:

i. The Patent Offices (including the Design Wing) at Chennai, Delhi, Kolkata &
Mumbai.
ii. The Patent Information System (PIS) and Rajiv Gandhi National Institute of
Intellectual Property Management (RGNIIPM) at Nagpur.
iii. The Trade marks Registry at Ahmadabad, Chennai, Delhi, Kolkata & Mumbai.

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iv. The Geographical Indications Registry (GIR) at Chennai.

v. The Copyright Office at Delhi.
vi. The Semiconductor Integrated Circuits Layout-Design Registry at Delhi.

Office Territorial Jurisdiction

Patent Office Branch, The States of Telangana, Andhra Pradesh, Karnataka, Kerala,
Chennai Tamil Nadu and the Union Territories of Pondicherry and
Lakshadweep
Patent Office Branch, The States of Maharashtra, Gujarat, Madhya Pradesh, Goa
Mumbai and Chhattisgarh and the Union Territories of Daman and
Diu & Dadra
and Nagar Haveli.
Patent Office Branch, The States of Haryana, Himachal Pradesh, Jammu and
New Delhi Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal,
Delhi and the Union
Territory of Chandigarh.
Patent Office, Kolkata The rest of India

Intellectual Property Appellate Board (IPAB):

Intellectual Property Appellate Board (IPAB) has been established in the year 2003,
under Section 84 of the Trade Marks Act, 1999. The Board hears appeals against the decision
of Controller of Patents (under the Patents Act, 1970), Registrar of Trade Marks (under the
Trade Marks Act, 1999) and Geographical Indication cases (under the Geographical
Indication & Protection Act, 1999). The Copyright Board and Plant Varieties Protection
Appellate Tribunal function under the ambit of IPAB in accordance with their respective Acts
and Rules.

(b) International IPR Agencies:

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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There are a number of International organizations and agencies that promote the use
and protection of intellectual property.

International Trademark Association (INTA)

INTA is a not-for-profit international association composed chiefly of trademark owners and

practitioners. It is a global association. Trademark owners and professionals dedicated in
supporting trademarks and related IP in order to protect consumers and to promote fair and
effective commerce. More than 4000 (Present 6500 member) companies and law firms more
than 150 (Present 190 countries) countries belong to INTA, together with others interested in
promoting trademarks. INTA members have collectively contributed almost US $ 12 trillion
to global GDP annually. INTA undertakes advocacy work throughout the world to advance
trademarks and offers educational programs and informational and legal resources of global
interest. Its head quarter in New York City, INTA also has offices in Brussels, Shanghai and
Washington DC and representative in Geneva and Mumbai. This association was founded in
1878 by 17 merchants and manufacturers who saw a need for an organization. The INTA is
formed to protect and promote the rights of trademark owners, to secure useful legislation
(the process of making laws), and to give aid and encouragement to all efforts for the
advancement and observance of trademark rights.

World Intellectual Property Organization (WIPO)

WIPO was founded in 1883 and is specialized agency of the United Nations whose purposes
are to promote intellectual property throughout the world and to administer 23 treaties
(Present 26 treaties) dealing with intellectual property. WIPO is one of the 17 specialized
agencies of the United Nations. It was created in 1967, to encourage creative activity, to
promote the protection of Intellectual Property throughout the world. Around 193 nations are
members of WIPO. Its headquarters in Geneva, Switzerland, current Director General of
WIPO is Francis Gurry took charge on October 1, 2008.

THE ROLE AND VALUE OF IP IN INTERNATIONAL COMMERCE

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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Intellectual property rights (IP rights) are not inherently valuable. Their value is the
strategic advantage gained by excluding others from using the intellectual property. To be
valuable, your exclusionary rights should be strategically aligned with your business
objectives.

The recognition of intellectual property rights is an important key to converting creativity

into a marketable product with positive cash flow. Creativity is essential to economic growth.
Consumer sales depend on attractive, efficient, safe, innovative, and dependable products and

services, and these qualities are built on intellectual property. The IP rights of a business are
among its most valuable assets. The protection of those IP rights can promote creativity,
distinguish a business and its products or services, and increase its profitability and endurance.

To understand the role of IP rights in practical terms, you must first appreciate the purpose of
IP laws. Although IP laws will differ in detail from country to country, they have the same
basic purpose, which is also reflected in international and regional agreements. In broad
terms, exclusive rights in intellectual property are usually granted pursuant to laws that are
intended to do the following:

 Define the monopolistic rights, namely, exclusive ownership rights that belong to the
holder of the IP and are transferable to another holder in certain situations.
 Define the limitations on the monopoly, such as by restricting the application of
exclusive rights to an invention, presentation, or specific goods only, by making
exceptions to exclusive use for permitted acts (e.g., authorizing single copies for
educational purposes), and by setting terms of duration.
 Define the remedies for violation of IP rights.

In other words, IP laws create affirmative rights, but not an absolute defensive shield against
infringement. They give the owner of the IP the right to stop other persons from using the IP
in a manner that is not permitted by the law. Unless the IP owner takes affirmative action, an
infringement of IP rights may continue unchecked by any other authority. This concept is
extremely significant: mere registration of IP rights is not alone sufficient to protect those
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rights against unauthorized use. If you are going to spend the money and labor to register
your IP claim, you must be also willing to spend the money and labor to enforce your claim.

Your IP can be one of your most useful and most used business tools. If you own patents,
copyrights, designs, or similar IP, you will realize value from utilizing them in your own
exclusive manufacture or production. If you own marks, you will use them to distinguish
your business and your products or services, to grow its customer base, and to promote its
goodwill and reputation. If you own trade secrets, specialized mailing lists, secret recipes or
processes, and similar IP, your business can provide distinctively unique services in contrast
to your competition.

The cost of launching a new product or developing a new invention can sometimes be so
costly that licensing or merging with another company is less expensive. When selling a
business, the valuation of assets should always include the value of all IP rights held by the
business. There are no limits on how valuable IP rights may become. The value of your IP
could double your company’s value. Your IP may become the most valuable asset in your
business. You business may even be or become the exploitation of your IP rights through
licensing or other similar arrangements. For example, copyrights generate lucrative license
fees and royalties.

Publishers, authors, music makers, record companies, entertainers, sports figures, television
and movie studios make millions from IP protected by copyrights. A famous person can
command millions for an appearance, and can sue for millions for unauthorized use of his or
her famous name or likeness.

Companies holding patents can gain substantial market share while other companies are
trying to find another way to replicate the same result. Small inventors and large companies
alike often license patented technologies for substantial fees. It has been reported by the
Asian Wall Street Journal that an inventor who has filed more than 500 patents in the United
States in the last 35 years has made more than US$500 million without directly engaging in
any industrial application of the invention.

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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Intellectual property rights can become worth more than the physical assets of a company.
For example, the IP produced and acquired by Microsoft Corporation is valued at more than
the company’s physical assets, and the company itself has been valued at more than the value
of General Motors Corporation, despite the latter’s significant physical assets. Similarly, the
Internet Company Yahoo, Inc., has been valued at more than the value of New York Times,
Inc., based on the IP rights developed and acquired by the former.

In addition to knowing the factors that complicate the value of your IP rights, you hold the
key to identifying other intangible assets, which may be taken into account in combination
with your IP rights or as separate assets

E-Commerce, more than other business systems, often involves selling products and services
that are based on IP and its licensing. Music, pictures, photos, software, designs, training
modules, systems, etc. can all be traded through E-Commerce, in which case, IP is the main
component of value in the transaction. IP is important because the things of value

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that are traded on the Internet must be protected, using technological security
systems and IP laws, or else they can be stolen or pirated and whole businesses can
be destroyed. The systems that allow the Internet to function - software, networks,
designs, chips, routers and switches, the user interface, and so on - are forms of IP
and often protected by IP rights. Trademarks are an essential part of E-Commerce
business, as branding, customer recognition and good will, essential elements of
Web-based business, are protected by trademarks and unfair competition law.

Finally, E-Commerce based businesses usually hold a great deal of their

value in IP; so the valuation of your E-Commerce business will be affected by
whether you have protected your IP. Many E-Commerce companies, like other
technology companies, have patent portfolios and trademarks

ISSUES AFFECTING IP INTERNATIONALLY

The major IP Issue Areas to be considered in International Trade are as follows

 IP Rights are Territorial

 Secure Freedom to Operate
 Respect Deadlines
 Early Disclosure
 Working with Partners
 Choosing an Appropriate Trademark
IP Rights are Territorial
It is important to keep in mind that IP rights are only valid in the country or
region in which they have been granted. Therefore, applying for such rights in
other countries is important if there is an intention to go international. However,
note copyright is automatically available through the provisions of the Berne
Convention, famous marks have automatic protection, trade secrets are by their
nature confidential.

IP Rights can be obtained Internationally as follows

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand
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National Route

Apply in each country, pay fees, translation into national languages

International Route( PCT)

The Patent Cooperation Treaty (PCT) is an international patent law treaty,

concluded in 1970. It provides a unified procedure for filing patent applications
to protect inventions in each of its contracting states. A patent application filed
under the PCT is called an international application, or PCT application. In this the
filing of an international application is done from the applicant's national Office

Freedom to Operate (FTO)

Analyzing FTO is to evaluate whether you are in any way infringing the
patents, designs or trademarks of others. Such a evaluation is usually done by
conducting a search in patent, trademark and design databases for patent
applications, granted patents, registered trademarks or designs As patents,
trademarks and designs are granted to particular territories an FTO search may
reveal that the particular IP in question is not protected in the territory of interest.
Reason for conducting searches: are

 Same or confusingly similar trademark may already exist in the export market
 Technology not patented in one country may be patented elsewhere

Respect Deadlines

Priority Period -Once an application for a patent or design right has been
made domestically (priority date) an international application has to be made
within the “priority period.” The international application will benefit from the
priority date. A filing after the priority period has lapsed would mean you can’t
benefit from the earlier priority date and novelty will be lost.

Patents: 12 months

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Designs: 6 months

Risks of Early Disclosure

Patents and designs are required to be novel to merit protection If a product

needs to be disclosed it should be done in a Non-disclosure Agreement. If not, the
novelty could be lost and an application for registration be rejected. This is
particularly important in disclosing products that embody inventions and/or
designs to potential partners before protection has been obtained

Working with Partners

Ownership of IP Creation of new IP and who owns that

Assignments/licenses for ownership Risk of unauthorized use or disclosure of
trade secrets by partner Risk that partner will use trade secrets of others and expose
you to litigation. Insist on indemnification Quality of product to be maintained so
as to sustain brand image. Trademarks if registered in the partners name in the
country could create problems once the relationship ends.

Choosing an Appropriate Trademark

Check whether the mark has undesired connotations or is likely to be
rejected in any country. For example Mitsubishi was dismayed to find that
PAJERO means 'wanker' in Spanish. Ford NOVA means no go in Spanish. But
Coca-Cola was successful in finding a trademark in Chinese to say “happiness in
the mouth”.

Dr. Binod Kumar Choudhary, Associate Professor , ARKA JAIN University Jharkhand