INTELLECTUAL PROPERTY RIGHTS FULL

INTELLECTUAL PROPERTY RIGHTS

Acts | Modernization of the Administration | WTO Agreement | Participation of India in activities of WIPO
Patents | Trade Marks | Industrial Designs | Geographical Indications
Acts

The Department administers the following Acts:

Patents Act, 1970
Designs Act, 1911; and
Trade and Merchandise Marks Act, 1958.

This is done through the Office of the Controller General of Patents, Designs and Trade Marks, Mumbai. The office has a Trade Marks Registry in Mumbai, Patent Office at Calcutta and Patent Information System at Nagpur.
Modernization of the Administration

The Department has taken up several projects for modernizing the administration. A UNDP project for modernizing the Patent Information System was completed in 1996. The Office has now been provided with modern equipment and on-line access to external and internal data bases.

Another project was taken up to upgrade and modernize the TradeMarks Registry. During the current Plan period it is proposed to take up the modernization project further to build upon the capacities already built up. An allocation of Rs. 5 crores has been made. This includes the elimination of the backlog of pending applications and increased application of IT in the search, examination and administrative functions of the Registry.

Under the 9th Plan, there is a proposal to modernize the Patent Office. This project envisages strengthening of the infrastructure, human resource development and computerization and the engineering of work practices. An allocation of Rs. 75 crores has been provided for in the budget.
WTO Agreement

India is a signatory to the agreement establishing the World Trade Organization (WTO), which came into force on 1.1.95. The WTO Agreement, inter alia, contains an Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which prescribes the minimum standards to be adopted within stipulated time-frame by the member countries in respect of the following seven areas of intellectual property:

i. Copyright and related rights;
ii. Trademarks;
iii. Geographical indications
iv. Industrial designs;
v. Patents;
vi. Layout-designs (Topographies) of integrated circuits; and
vii. Protection of undisclosed information.

This Department is the nodal department for coordinating the legislative and other aspects of the TRIPS obligations. An Inter-Ministerial Committee under Secretary (ID) has engaged in extensive review and consultations in respect of intellectual property related legislations to be introduced in Parliament in the forthcoming session by the Ministry/Department indicated against each :

1. Protection of Layout Designs of Integrated Circuits Act - Ministry of Information Technology
2. Plant Variety Protection Act - Department of Agriculture and Cooperation
3. Protection of Industrial Information and Control of Anti Competitive Practices - Department of Legal Affairs
4. Enforcement of Intellectual Property Rights Act - Department of Legal Affairs.

India is also a member of the World Intellectual Property Organisation (WIPO), situated in Geneva. The objectives of WIPO are to promote respect for use of intellectual property throughout the world through cooperation among Member States and to ensure administrative cooperation among the intellectual property unions. The protection is promoted through Conventions and Treaties administered by it. The major ones are:

Paris Convention for the protection of industrial property rights in inventions, trademarks and industrial designs, etc.

Berne Convention for the protection or copyright in literary, musical and artistic works, etc.

India is a member of both Conventions.

The functions of WIPO relate to:

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Registration activities which involves direct services to applicants for or owners of industrial property rights.

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Promotion of inter-governmental cooperation in the administration of intellectual property, and

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Programme activities which include promoting the wider acceptance of existing treaties and organising development cooperation activities.

An important sphere of WIPO’s activities concerns assistance in the development of developing countries and in the international relations of these countries.

The training programmes of WIPO consist of various general and specialised courses oganised each year in developed and developing countries. These are seminars and workshops at regional, sub-regional and national levels. In addition, attachment to industrial property offices in developed countries are also organised.

The aim of the training activities is to enable government officials and other personnel from developing countries to acquire knowledge and practice in various aspects of industrial property. They, in turn, are expected to organise and administer the industrial property system of their own countries.

PARTICIPATION OF INDIA IN ACTIVITIES OF WIPO

WIPO has organised seminars on IPRs in India. Recently such seminars were organised in April, 1998, October, 1998, December, 1998 and July, 1999. Further, seminars have been planned to be held in October-November, 1999 in New Delhi, Calcutta and Bangalore.

India has also participated in other activities of WIPO such as meetings on the harmonization of trademarks laws and patent laws, settlement of Intellectual Property Disputes, etc.

Two projects for modernisation of patent information services and modernisation of registration of trademarks have been implemented recently with the assistance of WIPO.

Further, WIPO has also shown its willingness to assist us in modernising patent offices.

PATENTS

It is proposed to amend the Patents Act, 1970 in the context of India’s time bound international obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), coupled with the need for integrating and harmonising the Indian patent regime with international practices, as well as for providing a rationalised and user-friendly system.

The TRIPS Agreement is a part of the Agreement establishing the World Trade Organization (WTO) which India has ratified and which came into force from January 1, 1995. The TRIPS Agreement lays down minimum standards for protection and enforcement of Intellectual Property Rights (IPRs) in member countries and requires them to bring their laws and regulations on Intellectual Property (IP) into conformity with their obligations within the time frame stipulated in the Agreement. Patents which constitute one element of IP, come within the purview of the TRIPs Agreement.

India, as a developing country has a transition period of five years with effect from January 1, 1995 to comply with the provisions of the Agreement. This deadline expires on December 31, 1999. An additional period of five years i.e. till December 2004 is also available for extending product patent protection to areas of technology not protected so far. This would mainly be in the areas of pharmaceuticals and agricultural chemicals. During the transition period relating to the extension of product patent protection to pharmaceuticals and agricultural chemicals, the Agreement stipulates certain conditions relating to a ‘mailbox’ , in which product patent applications can be received during the transition period for consideration with effect from January 1, 2005. It also stipulates certain provisions for granting Exclusive Marketing Rights (EMRs) for five years or till the patent is granted or rejected whichever is earlier. India has already made these transitional arrangements through an amendment of the Patents Act, 1970, notified on March 26, 1999.

Apart from the recent amendments made in March, 1999, the Patents Act, 1970 has not undergone any change. During this period of time, however, there has been considerable technological innovation and development of knowledge and the concept of IP as a resource for knowledge- based industries has become well recognised the world over. Development of technological capability in India, coupled with the need for integrating the IP system with international practices and intellectual property regimes require that the Patents Act, 1970 be modified into a modern, harmonised and user-friendly Act to adequately protect national and public interests, while simultaneously meeting India’s international obligations under the TRIPs Agreement.

Given the importance and sensitivity of several issues relating to Patents Act, 1970, the Department of Industrial Development has engaged in broad-based and extensive consultations on all aspects critical to the changes which may be necessary in the Patent Act, 1970 and which will have a bearing on policy level decision making. This has been achieved through a series of initiatives.

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An Inter-Ministerial Committee under the Chairmanship of Secretary, Department of Industrial Development has periodically examined and reviewed issues relating to the legislative aspects on the obligations arising from the TRIPS Agreement in order to strike an appropriate balance between India’s international obligations and imperatives of public and national interests.

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The Department had also circulated an issue-based paper relating to the changes which may be necessary to the Patents Act, 1970. This paper was circulated not only to the Ministries/Departments but also made available to organisations and interest groups.

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An Expert Group under the chairmanship of Dr. Raja Ramanna has periodically reviewed IP issues relating, inter-alia, to proposed amendments to the Patents Act, 1970.

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An Inter-Ministerial Working Group comprising representatives of Ministries/Departments, Department of Industrial Development, Commerce, Chemicals and Petro-chemicals, Legal Affairs and Legislative Department, has examined in detail all aspects relating to amendments necessary for consistency with the TRIPS Agreement, safeguards necessary in public interest and amendments necessary for harmonisation with international practices, deletion of obsolete and redundant provisions and to enhance quality of examination. This exercise has also been followed up by another in-house review of the changes recommended by the Working Group. While doing so, this Department has also taken into account the appropriate provisions obtaining in the legislation of the other countries.

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A series of Interactive Sessions on ‘Approaches to the Indian Patent Law’ have been organised all over the country between 28 June, 1999 to 9 August, 1999. These sessions have focussed in detail on issues relating to patentability, Compulsory Licensing and Enforcement/Implementation. Open house opportunities were also provided for views on all other aspects like traditional knowledge, bio-diversity, indigenous systems of medicines, database creation, patent awareness and education, etc.

A guiding principle during the exercise has been to not only ensure TRIPS compliance but also avail flexibilities under the TRIPS Agreement in order to provide adequate safeguards for national security and public interest. These include issues relating to bio-diversity, traditional knowledge, indigenous systems of medicine, issues of patentability, scale of compulsory licensing etc.

An amendment Bill was introduced in the Winter Session of Parliament and has been referred to a Joint select Committee of both the Houses.

TRADE MARKS

It is proposed to repeal the existing Trade and Merchandise Marks Act, 1958 and replace it by a new Act in order to modernize the legislation and provide for administrative simplicity by making it more user friendly as also to meet international obligation under the TRIPS Agreement. The need to amend the Act to bring it in line with developments in trading and commercial practices in India and abroad has arisen in view of the necessity to reduce the gap between the law as enacted and the requirements of the present day market place. The need for a comprehensive review of the existing law has also become necessary in the light of various judicial decisions which need to be codified.

Keeping in view the changes in trade and commercial practices, globalization of trade, need for simplification and harmonization of trade marks registration systems etc., a Bill was passed by both Houses of Parliament in the Winter Session of the Parliament. The Bill seeks to replace the existing Trade and Merchandise Marks Act, 1958 to bring it in line with developments in trading and commercial practices in India and abroad.

The thrust of the amendments contained in the Bill relate to modernization of the legislation by incorporating service marks, collective marks, well known marks through the amplification of the definition of trade mark and to simplify administrative procedures involved in the administration of the Trade Marks Act.

These amendments would also make the Trade and Merchandise Marks Act consistent with India’s obligations as contained in the TRIPS Agreement. As a developing country member, India has to fulfil these obligations by 31st December, 1999.

INDUSTRIAL DESIGNS

Industrial designs refer to creative activity which result in the ornamental or formal appearance of a product and design right refers to a novel or original design that is accorded to the proprietor of a validly registered design. Industrial designs are an element of intellectual property. Under the TRIPS Agreement, minimum standard of protection of industrial designs have been provided for. As a developing country, India has time till 1.1.2000 to amend its national legislation to provide for these minimal standards.

The essential purpose of design law is to promote and protect the design element of industrial production. It is also intended to promote innovative activity in the field of industries. The existing legislation on industrial designs in India is contained in the Design Act, 1911. While this Act has served its purpose well, rapid changes in technology and international developments necessitate the amendment of this legislation. India has also achieved a mature status in the field of industrial designs and in view of globalization of the economy, it is essential that the legislation be aligned with the changed technical and commercial scenario and made to conform to international trends in design administration.

The replacement Act therefore proposes to introduce 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.

This legislation was passed by the Rajya Sabha in the Winter session of the Parliament and is now awaiting consideration of the Lok Sabha.

GEOGRAPHICAL INDICATIONS

‘Geographical Indications’ mean any indication which define the goods as originating in the territory of a country or a region or locality in that territory, provided a given quality reputation or other characteristics of the products is essentially attributable to its geographical origin. This means that the geographical indication has to indicate that a product of a particular origin has a certain quality or reputation or some other characteristics which is essentially attributable to its geographical origin.

Under the Paris Convention (1967), Geographical Indications is one of the elements of intellectual property. Protection of Geographical Indications are also required under the TRIPS Agreement (1994).

At present, geographical indications are not registrable in India. However, geographical indications are protected in India by general principles of common law which permit the aggrieved person to file an action for ‘passing off” for protection of their rights. In view of the absence of statutory protection in India, Indian geographical indications are being misused by persons outside India to indicate goods not originating from that locality in India.

It is, therefore, necessary to provide protection to geographical indications through suitable legislation as has been done by other countries.

A Bill called the Geographical Indication of Goods (Registration and Protection) Bill, 1999 was passed by both the Houses of Parliament in the Winter Session of the Parliament.

PLANET MANDAR