TRIPS

Trade-Related Aspects Of Intellectual

Property Rights
 A Presentation

By
Anurag saraogi
Gs Raja
Muzaffar Hussain
Pravesh marwara
 A NEW ERA
FULL OF CHALLENGES
&
OPPORTUNITIES
in IPR, INNOVATION
&
PATENTING
 INDIA / INDIANS

Will overcome the ongoing

state of confusion & will move
on to the centre stage of action
on innovative research &
patenting as well as practice of
all forms of Intellectual
Property.
What is wrong with Indians ?
• 38% of doctors in USA are Indians
• 12% of scientists in USA are Indians
• 36% of NASA scientists are Indians
• 34% of Microsoft employees are Indians
• 28% of IBM employees are Indians
• 17% of INTEL scientists are Indians
• 13% of XEROX employees are Indians
Wealthiest ethnic group
in USA

(3.22 millions / 1.5% of

population)
 CEO of

CITIBANK MCKENSEY STANCHART

Victor Menezes Rajat Gupta Rana Talwar

Microsoft Testing Director – Sanjay Tejwrika
GM of Hewlett Packard – Rajiv Gupta
President of AT&T-Bells Labs – Arun Netravalli
Founder & Creator of Hotmail – Sabeer Bhatia
Third richest man on the world – Azim Premji
(Sultan of Brunei gone to 6th position)
Creator of Pentium Chip – Vinod Dahm
Co-founder of Sun Microsystems – Vinod Khosla

The decimal system developed in India – 100BC

Sushruta is the father of surgery – 2000years ago
Aryabhatta invented – Zero
Property Tangible
Intangible

Right
Idea
Expression Copyright

Trademark
Innovation
Quality / Identity
Invention
Patents
Trade Secrets
Property  Right

INTELLECT – PROPERTY – RIGHT

Idea  Expression  Copyright

Idea  Innovation  Invention  Patent

Idea  Quality + Identity  trademark

Idea  appearance  design

Idea  keep confidential  Trade Secrets

no disclosure
Intellectual Property
Rights

 Copyrights
 Trademarks
 Patents
 Industrial Designs (+ I.C. layouts)
 Trade Secrets (confidentiality agreements)
 Geographical indications
 Anti-competitive practices (in contractual licences)
Respective Legislations in India
Patents - Patent Act, 1970 (+ amendments)
Design - The Design Act, 1911
Trademarks – Trade & Merchandise Marks Act, 1958 + 1999
Copyrights – The Copyright Act (1957 as amended from time to
time)

Layout Design of - Bills are passed

Integrated Circuits, in Parliament -
Geographical Indications, follow up in progress
Convention on Biodiversity etc.
 TRADEMARK
(BRANDNAME)

Design Copyright
(Packing (printed matter &
Format + manner of presentation)
Style) Product

G.I.

PATENT Trade Secret

(novel formulation Know-how
process/combination)
 Authorities in India
Controller General of Patents, Designs and
Trademarks
under
Department of Industrial Development, Ministry
of Industry
__________________________

Copyrights registration
Under
Ministry of HRD/Education
International Organizations
& Treaties
• GATT / WTO • TRIPs
• WIPO • PARIS
• PCT CONVENSION
• BUDAPEST
• PLT
TREATY
• STRASSBOURG (TRIPS COUNCIL)
AGREEMENT (IPC)
• USPTO – 35 USC
• EPO / EPC
 GATT

A multilateral trading system was

created in 1948 as the General
Agreement on Tariffs and Trade.

In 1995, GATT became

WTO
 GATT / WTO
The World Trade Organization (WTO) is the only
Global international organization dealing with the rules
of trade between nations. At its heart are the WTO
agreements, negotiated and signed by the bulk of the
world’s trading nations and ratified in their parliaments.
The goal is to help producers of goods and services,
exporters, and importers conduct their business (146
members; 30 observers; others)
UN; UNCTAD; IMF; WB; FAO; WIPO; OECD
 About WIPO
The World Intellectual Property Organization (WIPO) is an
international organization dedicated to promoting the use and
protection of works of the human spirit. These works –
intellectual property – are expanding the bounds of science
and technology and enriching the world of the arts. Through
its work, WIPO plays an important role in enhancing the
quality and enjoyment of life, as well as creating real wealth
for nations.

With headquarters in Geneva, Switzerland, WIPO is one of

the 16 specialized agencies of the United Nations systems of
organizations. It administers 23 international treaties dealing
with different aspects of intellectual property protection. The
Organization counts 179 nations as member states.
 WIPO
Objectives of the Organization
The objectives of the Organization are :
(i) To promote the protection of intellectual
property throughout the world through
cooperation among States and, where
appropriate, in collaboration with any
other international organization,
(ii) To ensure administrative cooperation
among the Unions.
 Treaties & Contracting Parties

• Intellectual Property Protection Treaties

• Global Protection System Treaties
• Classification Treaties
 TRIPS

The TRIPS (Trade Related Aspects of

Intellectual Property Rights)
Agreement came into being with the
establishment of the WTO (World
Trade Organization) effective from 1st
January, 1995
The Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPs)

The most detailed and

comprehensive
multilateral agreement
on intellectual property
yet negotiated.
The Agreement on Trade-Related
Aspects of Intellectual Property
Rights (TRIPs)
• TRIPS introduced intellectual property
rules into the multilateral trading system
for the first time.
• Membership in WTO requires a country to
agree to adopt the minimum standards for
intellectual property regulation.
• IP laws are established and enforced by
each individual Member Country.
The Agreement on Trade-Related
Aspects of Intellectual Property
Rights (TRIPs)
• How basic principles of the trading system and
other international intellectual property
agreements should be applied.
• How to give adequate IP protection.
• How to enforce IP rights.
• How to settle disputes on IP between members of
the WTO.
• Special transitional arrangement.
 What areas are covered by
TRIPS?
The intellectual property areas covered by the
TRIPs Agreement are:
• Copyright and related rights
• Trademarks
• Industrial designs
• Patents
• Layout-designs (topographies) of integrated circuits
• Undisclosed information, including trade secrets
• Enforcement
 Current Issues Under TRIPs

• Trademarks
• Geographical Indicators

• Enforcement
• TRIPs Plus

• Patents
• Data Exclusivity
• CBD
 TRIPs Art. 22: Geographical
Indications

• “[I]ndications which identify a good as

originating in the territory of a Member, or a
region or locality in that territory, where a
given quality, reputation or other
characteristic of the good is essentially
attributable to its geographic origin.”

• Examples: Idaho potatoes, Napa Valley wine,

Washington State apples
 Geographical Indicators (GI)

U.S., Australia, Canada and others:

• Private rights to be enforced by right
holder.
• Subject to priority rules (a later-in-
time GI cannot trump an earlier
established trademark).

European view:
 Geographical Indications as Certification Marks

• GIs are a subset of trademarks because

they are source-identifiers, guarantees of
quality, and business interests.
 Geographical Indications as Certification Marks

• Geographical indications can be

protected through a trademark system:

• As certification marks or;

• As collective marks.
 Certification Marks
A certification mark is a type of trademark
which indicates to consumers:
1) geographic origin of a product;
2) materials used, quality, method of
manufacture, and accuracy; or
3) products made under the auspices of, or
by members of, a specific trade union or
organization.
 Collective Marks
• Indicate membership in a group or
organization.
• Can also identify group members.
• Proprietors of collective marks can
exclude people from using the mark.
Examples of Foreign Geographical Indications for
Foodstuffs
Protected in the United States
 “COLOMBIAN”
• U.S. Registration No.
1,160,492 (registered
July 7, 1981)
• For “coffee”
• “The mark certifies that the
coffee was grown in the
Republic of Colombia and that
such coffee has been subjected
to standards inspection
authorized by applicant and …
passing recognized current
minimum quality standards
required for such export as set
and enforced by said
Federacion….” Registrant: Republic of Colombia
 “DARJEELING”
• U.S. Registration
No. 2,685,923
• For “Tea”
• “The certification mark, as used
by authorized persons, certifies
that the tea contains at least one
hundred percent (100%) tea
originating in the Darjeeling
region of India and that the blend
meets other specifications
established by the certifier.”
Registrant: Tea Board of India
 “Egyptian Cotton”
• Application Serial No.
76-229673
• For (a variety of
products made wholly or
substantially of Egyptian
cotton)
• “The certification mark,
intended to be used by
authorized persons, is
intended to certify that the
products identified above
contain 100% Egyptian Applicants: Alexandria Cotton Exporters
Barbadense cotton.” Association and the Egyptian Ministry of
Economy and Foreign Trade
 “Parmigiano Reggiano”
• U.S. Trademark
Registration Nos.
1,754,410; 1,892,496;
1,896,683; 2,320,595
• For “Cheese”
• “The certification mark, as used by
person authorized by the certifier,
certifies that the goods originate in
the Parma-Reggio region of Italy,
specifically the zone comprising the
territory of the provinces of Parma,
Reggio Emilia, Modena and Mantua
on the right bank of the river Po and
Bolgona on the left Bank of the river
Reno.”
 TRIPS Art. 41-61: Enforcement

Part III Enforcement of

Intellectual Property
Rights
1. General Obligations
2. Civil and Administrative
Procedures and Remedies
3. Provisional Measures
4. Special Requirements Related
to Border Measures
5. Criminal Procedures
 TRIPs Art. 41: General
Principles

• “Members shall ensure that

enforcement procedures … are
available under the law to permit
effective action against infringement of
intellectual property rights…”
• “expeditious remedies”
• “constitute a deterrent”
 TRIPs Plus: Improving TRIPs
Standards

• Pre-established damages available at

election of rightholder.
• Seizure of documentary evidence
related to infringement.
• Goods found to be infringing and the
materials and implements used to
create them shall be destroyed.
 TRIPs Plus: Improving TRIPs
Standards

• Require infringer to provide information

regarding others involved in infringement,
means of production and channels of
distribution.
• Enforcement procedures for technical
protection measures and rights
management information.
• “Ex officio” authority for criminal and
border measures.
 TRIPs Plus: Improving TRIPs
Standards

• Criminal procedures even where no

motive of financial gain.
• Seizure and forfeiture of goods, assets,
means to produce and evidence.
• Criminal procedures for trafficking in
counterfeit labels.
• Internet Service Provider liability.
 TRIPs and Patent Issues

1. Data exclusivity for pharmaceuticals

and agrochemicals

2. UN Convention on Biological
Diversity
 TRIPs and Patent Issues
“Data exclusivity”: Test data that
demonstrates a drug or agrochemical’s
safety and efficacy, which is required by
a drug regulatory authority for marketing
approval.
TRIPs Art. 39.3: Protection of
Undisclosed Information
• “Members … shall protect such
[undisclosed test] data against unfair
commercial use.”
• “Members shall protect such data against
disclosure, except where necessary to
protect the public, or unless steps are
taken to ensure that the data are protected
against unfair commercial use."
 TRIPs and Patent Issues

• Is there a conflict between TRIPs and

the UN Convention on Biological
Diversity, protection of traditional
knowledge and folklore?
(Doha Ministerial Declaration, Para. 19)
 TRIPS

Intellectual Property Rights itself is

defined, in the context of the TRIPS
as a right given to people over the
creations of their minds. It usually
gives the creator an exclusive right
over the use of his creations for a
certain period of time.
 TRIPS
The TRIPS Agreement consists of 73 articles contained in the
following seven parts :
Part I : General provisions and basic principles
Part II : Standards concerning the availability, scope
and use of Intellectual Property Rights
Part III : Enforcement of Intellectual Property Rights
Part IV : Acquisition and maintenance of Intellectual
Property Rights and related inter-partes procedures
Part V : Dispute prevention and settlement
Part VI : Transitional arrangements
Part VII : Institutional arrangements; final provisions
 TRIPS
For the purpose of TRIPS Agreement, intellectual
property refers to all categories of intellectual property
that are the subject of Sections 1 to 7 of Part II of the
TRIPS Agreement viz.
1) Copyright and related rights
2) Trademarks
3) Geographical Indications
4) Industrial Designs
5) Patents
6) Layout-Designs (Topographies) of Integrated Circuits
7) Protection of undisclosed information
8) Control of anti-competitive practices in contractual
licences
 COPYRIGHT
What is Copyright ?

Copyright is a legal term describing rights

given to creators for their literary and
artistic works
 COPYRIGHT
What is covered by Copyright ?

The kinds of works covered by copyright include :

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.
COPYRIGHT - extention
IT Revolution !
Recordings
Broadcastings
Audio visual works

Computer programs
Digital databases
Internet/web
Cable and SatelliteT.V.
 Distinction and degree of
protection
Copyright – Expression of ideas
– Protection is specific and its
protection scope is fairly narrow
Patents – novel idea itself when applied and
useful.
– can cover a relatively broader
scope including various
applications or programs.
 INDUSTRIAL DESIGN
An industrial design is the ornamental or aesthetic aspect of an
article. The design may consist of three-dimensional features,
such as the shape or surface of an article, or of two-dimensional
features, such as patterns, lines or color.

Industrial designs are applied to a wide variety of products of

industry and handicraft: from technical and medical instruments to
watches, jewelry, and other luxury items; from housewares and
electrical appliances to vehicles and architectural structures; from
textile designs to leisure goods.

To be protected under most national laws, an industrial design

must appeal to the eye. This means that an industrial design is
primarily of an aesthetic nature, and does not protect any technical
features of the article to which it is applied.
 DESIGNS

The existing legislation on industrial designs in India is

contained in the New Designs Act, 2000 and this Act will
serve its purpose well in the rapid changes in technology
and international developments.

This replacement Act is also aimed to inact a more detailed

classification of design to conform to the international
system and to take care of the proliferation of design related
activities in various fields.
 TRADEMARK
A registered trademark or a mark used in relation to goods
for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods and
some person having the right as proprietor to use the mark.

A mark used or proposed to be used in relation to goods for

the purpose of indicating or so as to indicate a connection in
the course of trade between the goods and some person
having the right, either as proprietor or as a registered user,
to use the mark whether with or without any indication of
the identity of the person, and includes a certification trade
mark registered as such under the provisions of Chapter
VIII.
 TRADEMARK
A trademark is a distinctive sign which identifies
certain goods or services as those produced or provided
by a specific person or enterprise.

Its origin dates back to ancient times, when craftsmen

reproduced their signatures, or “marks” on their artistic
or utilitarian products. Over the years these marks
evolved into today’s system of trademark registration
and protection. The system helps consumers identify
and purchase a product or service because its nature and
quality, indicated by its unique trademark, meets their
needs.
 TRADEMARK

A trademark provides protection to the owner

of the mark by ensuring the exclusive right to
use it to identify goods or services, or to
authorize another to use it in return for
payment. The period of protection varies, but
a trademark can be renewed indefinitely
beyond the time limit on payment of
additional fees. Trademark protection is
enforced by the courts, which in most systems
have the authority to block trademark
infringement
 TRADEMARK
What kinds of trademarks can be registered ?

The possibilities are almost limitless. Trademarks may be one or a

combination of words, letters, and numerals. They may consist of drawings,
symbols, three-dimensional signs such as the shape and packaging of goods,
audible signs such as music or vocal sounds, fragrances, or colors used as
distinguishing features.

In addition to trademarks identifying the commercial source of goods or

services, several other categories of marks exist. Collective marks are
owned by an association whose members use them to identify themselves
with a level of quality and other requirements set by the association.
Examples of such associations would be those representing accountants,
engineers, or architects. Certification marks are given for compliance
with defined standards, but are not confined to any membership. They may
be granted to anyone who can certify that the products involved meet
certain established standards. The internationally accepted “ISO 9000”
quality standards are an example of such widely recognized certifications.
 GEOGRAPHICAL
INDICATION
Geographical Indications of goods are defined as
that aspect of industrial property which refer to the
geographical indication referring to a country or to
a place situated therein as being the country or
place of origin of that product. Typically, such a
name conveys an assurance of quality and
distinctiveness which is essentially attributable to
the fact of its origin in that defined geographical
locality, region or country.
GEOGRAPHICAL INDICATION
India, as a member of the World Trade
Organization (WTO), enacted the Geographical
Indications of Goods (Registration &
Protection) Act, 1999 which is likely to be
operationalized soon with the notification of the
Rules.

• Geographical Indications of Goods

(Registration & Protection) Act, 1999
• Geographical Indications of Goods
(Registration & Protection) Rules, 2002
GEOGRAPHICAL INDICATION

What is a Geographical Indication ?

• It is an indication
• It originates from a definite geographical territory
• It is used to identify agricultural, natural or
manufactured goods
• The manufactured goods should be produced or
processed or prepared in that territory
• It should have a special quality or reputation or other
characteristics
 GEOGRAPHICAL INDICATION
Examples of possible Indian Geographical Indications

• Basmati Rice
• Darjeeling Tea
• Kanchipuram Silk Saree
• Alphanso Mango
• Nagpur Orange
• Kolhapuri Chappal
• Bikaneri Bhujia
• Agra Petha
• Goa Feni
 What is Patent

A legal monopoly

Granted for a limited time

by the state
For a jurisdiction
(a limited area)
Patent :-
A conditional grant

Balance of Rights and Obligations

Subject to other laws of land

Granted to owner of Invention/Assignee

What is a Patent ?
A patent is a protection given to a patentee for
an invention for a limited term by the
government for disclosing the invention

Right to exclude others from using your

invention.

Owner has a qualified right to use the

invention
Patent - a Property Right (A Bundle of Rights) can be
given away (assigned)
inherited
sold
bought
licensed
abandoned etc.

Patent – can be revoked

by state
by opponent in a suit

Patent – can be defended

against infringement
What are inventions ?
 New
 Useful
 Art, process or method of manufacture
 machine, apparatus or other article
 substance produced by manufacture
new and useful improvements of any of them

Amendment 2002:
 A new product or process involving an inventive
step (not obvious to a person skilled in the art) and
capable of industrial application.
 Patent - Patentability
An invention can be patented if it is
 NOVEL – Must involve INVENTIVE STEP

 NON-OBVIOUS to a person “Skilled in the Art”

MUST DISTINGUISH from “State of the Art”
(PRIOR ART)

 Must be USEFUL – must have INDUSTRIAL

APPLICATION
Patent/Invention
Can be simple
Need not be complicated
What is patentable ? – S.2(i)(j)
What is not patentable ? - S. 3, S.4, S.5
WHAT CANNOT BE PATENTED IN INDIA
 SECTION 3
 CONTRARY TO NATURAL LAWS
 CONTRARY TO MORALITY
 MERE IDEA/DISCOVERY
 MERE ADMIXTURE
 METHOD OF TESTING ?
 NEW USE OF A KNOWN MATERIAL
 METHOD OF AGRICULTURE
 PROCESS OF TREATING HUMAN BEINGS OR ANIMALS

SECTION 4
 ATOMIC ENERGY

 SECTION 5
 SUBSTANCES USED AS FOOD, MEDICINE OR DRUG
 PATENTS
India
http://www.patentoffice.nic.in
Patent Act, 1970
Patent Rules, 1972

Patent (1st Amendment) 1999

Patents ……
 PATENTS

Patent (Amendment) 2002 Act

Patent Rules – 2002 (Draft)
Patent Rules 2002
(expected to be announced shortly & to
be effective from 1st April 2003)
Patents (Amendment) Act, 2002

Highlights

 Duration of Term of Patent - Extended to 20 years

For all process/product
including currently valid patents
 Highlights (contd..)

 Invention/inventive step – definitions as per TRIPs

 Scope widened – Micro organisms

– mathematical or business
method or computer
program with applications/
– utility (except “by itself”)
– traditional knowledge
Highlights (cont’d)

 Traditional Knowledge - Excluded (as such)

from Patentability

 PCT - Provisions & Procedures

introduced

 Depository for Biological - Budapest Treaty compliance

 Highlights (cont’d)
 Compulsory Licence - specified and defined (with
Provisions and without 3 year restriction)
includes “Doha Declaration”

“Licence of Right” - Deleted

 Quantum of Royalties - open for negotiation

- taking into account the
economic value of the use of
the patent
- not more than adequate
remuneration
Highlights (cont’d)

 Waxman-Hatch Type - Regulatory approval related

provision / working during
life of patent without
restriction – allowed

 Reversal of burden of - In case of process patent

proof

 Parallel Imports - Incorporated

Provisions
 Highlights (cont’d)

 Publication - On 18 months (DOA or DOP)

 Examination - Only on request (48 months)

 Appellate Board - introduced

 WHY PATENTS ?
- Rewards to Inventor

- Motivates / stimulates inventive

research

- Encourages maximum disclosure

to enable further research and
technology development
Patents vs. Trade Secrets – know how

Patents encourage dissemination of valuable

technological information to the benefit of the
society

Valuable technology remains out of reach of

society if protected by trade secrets. Further
research based on know-how does not take place.
 WIPO –

The Patent Agenda/SME website

http://www.wipo.int
(i) http://patentagenda.wipo.int/index.html
(ii) Wipo summit on IP & the knowledge
economy (April 2003)
(iii) patentoffice.nic.net
THANK YOU !

HAVE AN
‘IPR’ DAY !