Intellectual property rights (IPR) are about creations of mind which are new and original in the global context and are granted to creators of intellectual property by the government. Creativity and inventiveness have been the central source and theme of human existence and development; and most things that are interesting, important, and useful for humans are the result of human creativity. Our ancestors travelled millions of years, overcoming unimaginable difficulties through grit, hard work, unceasing perseverance and inventive skills, to come to the stage where we find ourselves today. Otherwise how do you explain the transition from staying on trees, to the fabricating of specialized tools and dwelling units some 40 to 50 thousand years back, to practicing agriculture some 10000 years back, to travelling to other planets in the 21st century. Inventions of alphabets, zero, wheel, microscope, antibiotics, transistors and many others have helped the humans to move further which no other animal is capable of doing. Awarding right of ownership for creations and inventions help the society in advancing further for better living, health, entertainment etc. These rights in many ways are similar to the rights awarded by the government for your land, house, motor cycle, factory, hotels and so on. Whenever we think of property we think about ownership and whenever we think about ownership we know that the property cannot be used without your consent or permission. It may be noted that IPR are exclusive rights and awarded based on certain laws and these rights are available for a fixed period of time. After the expiry of this protection time anyone can use the intellectual property (IP) without the permission of the owner. In our day to day life we come across different types of IP such as new products, medicines, books, paintings, songs, dresses, motor bikes, interesting logo or slogans for companies, laptops, varieties of flowers, vegetables and fruits. Laws have been made to protect different types of IP in different ways through different forms of IPR which are given below:
Patents are linked new, non-obvious and useful inventions which may relate to products, processes, compositions etc. Patents are awarded for a period of 20 years. Copyrights are given for original literary (books, articles), artistic (paintings, photographs, drawings), musical works, computer software etc. and for literary work, for example, the rights last for a long period and that is author’s life from the date of creation of the work plus sixty years. Industrial design rights are in respect of articles having unique shapes, colour combinations, geometric patterns and ornamentation. Furniture, dresses, tumblers, textile designs, pottery, jewellery and innumerable products will qualify for design rights provided the features are new and original. Design rights are available for a period of 15 years. Trademarks are names, logos, pictures, numbers, drawings or their combinations used by companies so that customers could identify products with companies and make choices at the time of buying products. TATA, SBI, Coca Cola, McDonald and Microsoft are well known trademarks. Many a times companies may decide to use a trademark for a product such as Xerox, Lifebuoy, nylon. Trademarks can last for ever, provided the owner renews them in a block of ten years. Protection of IC lay-out designs relates to mask designs of integrated circuits and is valid for ten years. Protection of new plants varieties is in respect of new varieties of known plants. For example if someone develops a spotted variety of rose then this variety can be protected for a period of ten years. Protection of undisclosed information deals with trade secrets and confidential information like data, reports, drawings, design calculations and so on. The term of protection could be infinite provided the owner can maintain the secrecy. However, if someone else generates say, identical drawings on his own, it would not be considered infringement of the previous drawings held as trade secret by the earlier person. Coca Cola still maintains some aspect of the formulation as trade secret. Protection of geographical indications (GI) is given to names associated for a long time with products originating from a specific geographical location and reputed for their special characteristics like Darjeeling tea, Chanderi sari etc. This protection can also last for ever, provided it is renewed every ten years. It must be remembered that GI is associated with the product and there is no ownership by individuals.
IPR have very strong tie up with trade and commerce both in the domestic and international contexts. IPR stand you in good stead in the face of competition through exclusive rights in terms of patents copyrights, designs, trademarks or combination of these rights. IPR can also be used to obtain loans, license your IP to others, enter into joint ventures, find business partners and consolidate research and development to create new IP. As a result, the R&D becomes more focussed and directed towards creating IP having practical utility. It must be remembered that every IP generated may not be successful in the market because the success depends on many other factors as well. However, if all other factors are the same, IPR will certainly provide a distinct advantage and lead over other products. It is reported that to introduce a new drug into the market a company may work on many molecules say, few thousands, before arriving at one which may succeed in the market. It may take about 12-15 years to introduce a new drug in the market and cost the company about Rs. 2000- 5000 crores. Therefore, it can be seen that the journey from invention to a successful product is long and may require substantial funds.
The process of invention starts with identifying a problem quite accurately and precisely. An extensive research may be needed to find out alternative solutions which are really new and non-obvious by studying literature and products available in the market. The solutions cannot be in terms of ideas alone but, a practical way of implementing the ideas must be evolved. Do remember that an invention has to be globally new for grant of a patent along with traits of non-obviousness and utility. After determining novelty, non-obviousness and utility of the invention, an application has to be submitted to the Patent Office along with the description of the invention for the grant of a patent for the invention. As mentioned, IPR are awarded by the government and as an inventor one has to request the government (Central). Prescribed fee has to be paid for obtaining IPR and often it may be advisable to take the help of a patent attorney (lawyer) for this purpose.
Age is no bar for obtaining patents or design rights or copyrights. A young child can have copyrights over his original notes and paintings and other creative work. The youngest person to be granted a patent is a 4 year old girl from USA for an aid for grasping round knobs. In 1850 Margaret Knight, at the age of 12, invented a stop motion device to quickly stop powered textile loom in case something went wrong. She was granted a US patent. It must be kept in mind that before applying for a patent, the invention should not be made public through publishing or talks or exhibiting it in public. Maintaining records of all that has gone behind the invention including failures must be preserved in an organized manner. Do remember that while you would like to protect your IPR, you must honour the IPR of others and not steal them.
Creating something new which is not known to the world is an activity successfully undertaken by people who are brave, who can ask questions, who can admit their mistakes, who can work hard on one problem, who don’t easily give up, who are prepared to take risks and who can take failures in stride. Inventors have keen eyes and understanding to observe, analyse and integrate. They see a problem and often find a solution which many others are not able to do. Teachers must encourage students to ask questions and not dissuade them. Questions cannot be stupid or meaningless because they show a sense of inquisitiveness which is the founding block for inventions. Our inability to answer questions should not dampen the inventive spirit of students. The growth of a nation and the society is dependent on innovations, be it in the area of science, music, literature, games, handicraft, medicine, engineering or any other area. Young minds are the source of innovations and creativity and they need an encouraging environment which is open and free to thinking and provides opportunities for experimentation. Children will then become innovators and change agents leading the society and the country to a bright and prosperous future.
The debate on Rani Padmini (Padmavati) has been skewed beyond proportion by several intellectuals including historians, and by discourses in the media with an overemphasis on written record(s) to establish whether such an individual existed or not. Everyone seems to be quoting Malik Mohd. Jayasi, the poet who wrote the famous work Padmavat as if this was the only reliable source to determine the validity of the existence of Rani Padmini. India in the past relied more on oral transmission of knowledge and seldom tried to document what was happening in the society in general. Our historical records are full of male characters, of their achievements, valour etc. but hardly of female characters. Vedic literature also seems to suffer with this drawback.
I would like to argue that Indian society has survived on faith in each other and in the social set up, and as a result has never felt the need for documentation, as was prevalent in the Chinese society. Even records important to one’s life were hardly kept. A Hindu marriage was never recorded in a formal manner; there was never a signing of a document after the marriage. The recording of marriage has been of recent origin although even now most Hindu marriages are not recorded. It is at the same time known that even in absence of any documentation, Hindu marriages are more stable and last longer. The question is – would a marriage of the past be questioned just because there is no document to establish the marriage? To be specific, how many of us can validate the marriage of our great great grand parents, which will take us to the middle of the nineteenth century? If the answer is no, do you declare us illegitimate children? One can challenge several inheritances to property. Would any law in the country dare to declare such marriages invalid? Could the intellectuals and artists of the country afford not to accept the validity of such a marriage? If one were to obtain a post facto marriage certificate from a magistrate, one has to produce just one reliable witness who had attended the marriage. The system has been working and would continue to work in perceivable future.
When the controversy about turmeric (haldi) related patent arose, the US Patent Office asked for documentary evidence to establish that turmeric was used as a wound healing agent for ordinary and surgical wounds. I was deeply involved in the issue and it was surprising to find that no document in Indian languages talked of the wound healing property of turmeric in the manner in which it was described in the said patent. However, we knew that turmeric has been used for years (not recorded) for curing wounds but we needed evidence to protect our traditional knowledge in a foreign land. We could in our perhaps limited search, luckily find a Persian document which had a mention of this property of turmeric based on the uses in India. If the same case was in front of Indian courts, would the courts have asked for documentary evidence? May be in the present legal system, we would need to generate evidence for every action of ours if we need it to be validated. It is going to some time, may be years, before our society is ready for such an overhauling.
Coming back to the Padmavati issue, we should attach a definite value to what the society of that region has grown with, all these years. What is being said by various players in favour of the existence of Padmini needs to be believed and honoured even in absence of any recorded history at that time. Going only by Jayasi’s work or Khusro’s record will be like relying on translations of Ved, Upnishads and other scriptures by foreign scholars. Jayasi’s work can also be an example artistic flight, losing sight of reality existing almost 300 years back. Let us find some time to understand why hundreds or thousands of people continue to swear that Padmini was a real- life character who had tremendous influence on the Rajput society and culture so much so that she is worshiped even today. To argue it differently, does anyone have any proof that she did not exist? Let us not engage in the realism or non-realism of the past when history and social practices were not recorded; that is a wasteful exercise in the Indian context. Faith and beliefs are not always evidence based; leave them as such if not detrimental to the society.
(R Saha, B.Tech IIT Kanpur and Former Adviser, Department of Science and Technology, GOI. Presently, Senior Adviser, CII)
Age is no bar for obtaining patents or design rights or copyrights. A young child can have copyrights over his original notes and paintings and other creative work. The youngest person to be granted a patent is a 4 year old girl from USA for an aid for grasping round knobs. In 1850 Margaret Knight, at the age of 12, invented a stop motion device to quickly stop powered textile loom in case something went wrong. She was granted a US patent. It must be kept in mind that before applying for a patent, the invention should not be made public through publishing or talks or exhibiting it in public. Maintaining records of all that has gone behind the invention including failures must be preserved in an organized manner. Do remember that while you would like to protect your IPR, you must honour the IPR of others and not steal them.
Creating something new which is not known to the world is an activity successfully undertaken by people who are brave, who can ask questions, who can admit their mistakes, who can work hard on one problem, who don’t easily give up, who are prepared to take risks and who can take failures in stride. Inventors have keen eyes and understanding to observe, analyse and integrate. They see a problem and often find a solution which many others are not able to do. Teachers must encourage students to ask questions and not dissuade them. Questions cannot be stupid or meaningless because they show a sense of inquisitiveness which is the founding block for inventions. Our inability to answer questions should not dampen the inventive spirit of students. The growth of a nation and the society is dependent on innovations, be it in the area of science, music, literature, games, handicraft, medicine, engineering or any other area. Young minds are the source of innovations and creativity and they need an encouraging environment which is open and free to thinking and provides opportunities for experimentation. Children will then become innovators and change agents leading the society and the country to a bright and prosperous future.
© R Saha
IPRs have very strong tie up with trade and commerce both in the domestic and international contexts. IPR stand you in good stead in the face of competition through exclusive rights in terms of patents copyrights, designs, trademarks or combination of these rights. IPR can also be used to obtain loans, license your IP to others, enter into joint ventures, find business partners and consolidate research and development to create new IP. As a result, the R&D becomes more focussed and directed towards creating IP having practical utility. It must be remembered that every IP generated may not be successful in the market because the success depends on many other factors as well. However, if all other factors are the same, IPR will certainly provide a distinct advantage and lead over other products. It is reported that to introduce a new drug into the market a company may work on many molecules say, few thousands, before arriving at one which may succeed in the market. It may take about 12-15 years to introduce a new drug in the market and cost the company about Rs. 2000- 5000 crores. Therefore, it can be seen that the journey from invention to a successful product is long and may require substantial funds.
The process of invention starts with identifying a problem quite accurately and precisely. An extensive research may be needed to find out alternative solutions which are really new and non-obvious by studying literature and products available in the market. The solutions cannot be in terms of ideas alone but, a practical way of implementing the ideas must be evolved. Do remember that an invention has to be globally new for grant of a patent along with traits of non-obviousness and utility. After determining novelty, non-obviousness and utility of the invention, an application has to be submitted to the Patent Office along with the description of the invention for the grant of a patent for the invention. As mentioned, IPR are awarded by the government and as an inventor one has to request the government (Central). Prescribed fee has to be paid for obtaining IPR and often it may be advisable to take the help of a patent attorney (lawyer) for this purpose.
© R Saha
We have eight different types of IPR recognised the world over, covering different types of creativity and giving varied rights to the owners.
Patents are linked new, non-obvious and useful inventions which may relate to products, processes, compositions etc. Patents are awarded for a period of 20 years. Copyrights are given for original literary (books, articles), artistic (paintings, photographs, drawings), musical works, computer software etc. and for literary work, for example, the rights last for a long period and that is author’s life from the date of creation of the work plus sixty years.
Industrial design rights are in respect of articles having unique shapes, colour combinations, geometric patterns and ornamentation. Furniture, dresses, tumblers, textile designs, pottery, jewellery and innumerable products will qualify for design rights provided the features are new and original. Design rights are available for a period of 15 years.
Trademarks are names, logos, pictures, numbers, drawings or their combinations used by companies so that customers could identify products with companies and make choices at the time of buying products. TATA, SBI, Coca Cola, McDonald and Microsoft are well known trademarks. Many a times companies may decide to use a trademark for a product such as Xerox, Lifebuoy, nylon. Trademarks can last for ever, provided the owner renews them in a block of ten years.
Protection of IC lay-out designs relates to mask designs of integrated circuits and is valid for ten years. Protection of new plants varieties is in respect of new varieties of known plants. For example if someone develops a spotted variety of rose then this variety can be protected for a period of ten years. Protection of undisclosed information deals with trade secrets and confidential information like data, reports, drawings, design calculations and so on. The term of protection could be infinite provided the owner can maintain the secrecy. However, if someone else generates say, identical drawings on his own, it would not be considered infringement of the previous drawings held as trade secret by the earlier person. Coca Cola still maintains some aspect of the formulation as trade secret.
Protection of geographical indications (GI) is given to names associated for a long time with products originating from a specific geographical location and reputed for their special characteristics like Darjeeling tea, Chanderi sari etc. This protection can also last for ever, provided it is renewed every ten years. It must be remembered that GI is associated with the product and there is no ownership by individuals.
© R Saha
Intellectual property rights (IPR) are about creations of mind which are new and original in the global context and are granted to creators of intellectual property by the government. Creativity and inventiveness have been the central source and theme of human existence and development; and most things that are interesting, important, and useful for humans are the result of human creativity. Our ancestors travelled millions of years, overcoming unimaginable difficulties through grit, hard work, unceasing perseverance and inventive skills, to come to the stage where we find ourselves today. Otherwise how do you explain the transition from staying on trees, to the fabricating of specialized tools and dwelling units some 40 to 50 thousand years back, to practicing agriculture some 10000 years back, to travelling to other planets in the 21st century. Inventions of alphabets, zero, wheel, microscope, antibiotics, transistors and many others have helped the humans to move further which no other animal is capable of doing.
Awarding right of ownership for creations and inventions help the society in advancing further for better living, health, entertainment etc. These rights in many ways are similar to the rights awarded by the government for your land, house, motor cycle, factory, hotels and so on. Whenever we think of property we think about ownership and whenever we think about ownership we know that the property cannot be used without your consent or permission. It may be noted that IPR are exclusive rights and awarded based on certain laws and these rights are available for a fixed period of time. After the expiry of this protection time anyone can use the intellectual property (IP) without the permission of the owner. In our day to day life we come across different types of IP such as new products, medicines, books, paintings, songs, dresses, motor bikes, interesting logo or slogans for companies, laptops, varieties of flowers, vegetables and fruits. Laws have been made to protect different types of IP in different ways through different forms of IPR which will be covered in my next post.
© R Saha
This is an international convention governing the recognition of deposits in officially approved culture collections for the purpose of patent applications in any country that is a party to it. Because of the difficulties and on occasion of virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others.
The “Budapest Treaty” was signed in Budapest in 1973 and later on amended in 1980. There are 75 countries which are presently members of the Budapest Treaty. This is an international convention governing the recognition of deposits in officially approved culture collections for the purpose of patent applications in any country that is a party to this treaty. Because of the difficulties and virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others.
An inventor is required to deposit the strain of a microorganism in a recognized depository, which assigns a registration number to the deposited microorganism. This registration number needs to be quoted in the patent application dealing with the microorganism. Obviously a strain of microorganism is required to be deposited before filing a patent application. It may be observed that this mechanism obviates the need of describing a microorganism in the patent application. Further, samples of strains can be obtained from the depository for further working on the patent. There are many international depositories in different countries such as ATCC, DSM etc. which are recognized under the Budapest Treaty. India became a member of this Treaty, with effect from December 17, 2001. The Institute of Microbial Technology (IMTEC), Chandigarh is the first Indian depository set up under the Budapest Treaty.
As in July 2011, 75 countries are signatory to the Budapest Treaty and there are 40 IDA. The total number of deposits in all the IDA stands 73,635; out of which 29925 deposits were made from 2001 onwards.
Background
In 1974, the Director General of WIPO convened a committee of Experts to discuss the possibilities of international cooperation over the deposit of microorganisms for patent purposes. The essence of the solution prepared was that certain culture collections should be recognized as depository authorities and that a deposit made with any one of them should be recognized as valid for patent purposes by all the countries in which protection for the relevant invention was sought. At two further sessions in 1975 and 1976 the Committee of Experts examined drafts prepared by International Bureau of WIPO of a Treaty and Regulations on the International Recognition of Deposit of Microorganisms for the purpose of Patent Procedure. A third draft of this Treaty and Regulations served as a basis for the deliberations of a Diplomatic Conference, convened by the Director General of WIPO, organised by him in cooperation with the Government of Hungary, and held in Budapest form April 14 to 28, 1977. The Diplomatic Conference, which was attended by representatives of 29 states members of the Paris Union for the protection of Industrial property and observers from 2 non-member states of Paris Union, the Interim Committee of the European Patent Organisation, and 11 non-governmental international organizations, adopted a treaty with the title “Budapest Treaty on the International Recognition of the Deposit of Microorganisms’ for the purposes of patent procedure, together with Regulations under the treaty.
The Treaty came into effect in 1980 when it had been ratified or acceded to by the requisite minimum number (five) of States, and U.S. became a contracting party in August 1980 when the treaty became effective. The Regulations under the Budapest Treaty were modified on January 20, 1981, by the Assembly of the Budapest Union in its second extraordinary session. The said modifications entered into force on January 31, 1982.
Main features of the Budapest Treaty
i) International Depositary Authorities and Recognition of single Deposit
Under the Treaty certain culture collections are recognized as “international depositary authorities” (IDAs). Any Contracting State which allows or requires the deposit of microorganisms for the purposes of patent procedure must recognize, for those purpose, a deposit made in any IDA, wherever the IDA may be.
Any culture collection can become an IDA provided that it has been formally nominated by the Contracting State on whose territory it is located and that contracting state has furnished assurances that the collection complies and will continue to comply with the requirements of the Treaty and Regulations. The most important of these are that the IDA will be available on the same terms to any depositor, that it will accept and store microorganisms deposited with it for the full period specified the Treaty, and that it will furnish samples of deposited microorganisms only to those entitled to receive them.
ii) Deposit and Furnishing of Samples
The Regulations under the Treaty lay down in detail the procedure which depositors and IDA must follow, the duration of storage of deposited microorganisms (at least 30 years or five years often the most recent request for a sample, whichever is later and the mechanisms for the furnishing of samples. The Regulations do not address the timing of the deposit, However; this is left entirely to the relevant national law. Provision is made for samples to be furnished at any time to the depositor, to anyone having the depositor’s written authorization, and to any “interested” industrial property office. However, because IDA may not be familiar with the national laws of different countries, the Regulations require that a third party requesting a sample from an IDA must make his request on a form on which the relevant industrial property office certifies that he is entitled to receive a sample of that particular microorganisms. Alternatively, the industrial property office may, from time to time, notify IDAs of the accession numbers of those microorganisms referred to in patents granted and published by it, in which case such microorganisms become available without the need for certification.
iii) Safeguard of Deposits
The Treaty and Regulations make various provisions to guard against the loss and consequent non-availability of deposited microorganisms. Thus the IDA must have the expertise and facilities necessary to keep the microorganism viable and uncontaminated throughout the storage period required by the Treaty. If for any reason an IDA is no longer able to furnish samples of microorganisms, a new deposit of the same organism can be made and can benefit from the date of deposit of the original. If for any reason an IDA ceases to function as such, The Treaty provides for the microorganisms deposited with it to be transferred to another IDA.
(iv) Meaning of the Term “Microorganism”
The term ‘microorganism’ is not defined in the Treaty so that it may be interpreted in a broad sense as to the applicability of the Treaty to microorganisms to be deposited under it. Whether an entity technically is or is not a microorganism matters less in practice than whether deposit of that entity is necessary for the purposes of disclosure and whether an IDA will accept it. Thus, for example, tissue culture and plasmids can be deposited under the terms of the Treaty, even though they are not microorganisms in the strict sense of the word.
© R Saha
The Hague Agreement concerning the International Deposit of Industrial Designs first came into existence in 1925, and was revised in 1934 and 1960. The Agreement aims at providing a mechanism for securing protection of an industrial design in all the member countries by means of an international deposit. The international deposit could be in the form of the industrial product or drawing or photograph or any other graphic representation of the said design. The duration of protection is 15 years from the date of deposit, this term is divided in two periods, one period of five years and the other of ten years. This Agreement is now being implemented by the WIPO.
A Diplomatic Conference was held in June and July 1999 to bring out some amendments in the Hague Agreement. The revised agreement will come into effect after it has been ratified by six of the initial signatory nations to the Agreement. The idea is to provide a way through which a single design application can give rights to protection for that design in member countries. The international design application must designate countries where protection will be sought. The designated countries can refuse to award design rights, if the application does not meet the requirements of national laws. The Agreement does not lay down any particular standards for registrability of the design, leaving this to national laws. Once registered, the international registration will have the same effect as a national design registration in those designated countries that have not refused grant of national registration. The other main features of the revised agreement / treaty are:-
- International design protection will be available to nationals of a contracting country, domiciled in a contracting country or having a industrial or commercial establishment in a contracting state.
- An international design application may be filed either at the applicant’s national office or directly with the International Bureau of WIPO.
- Two dimensional designs (textile designs) would be eligible for protection.
- A formalities examination will be carried out by the international Bureau and then the application will be published if it is found to satisfy the formalities. The publication will be made six months after the registration. This can be deferred to 30 months in some special cases.
- The International Bureau will, after the registration, send a copy of the application to each of the designated countries. These countries have to inform the Bureau within six months if national requirements are not met. However, for countries that examine design applications for novelty or where opposition system exists, this time is increased to 12 months.
- Multiple designs may be included in the same application. It is however, required that all products to which such designs relate must be in the same class under the Locarno classification.
It can be seen that there are some similarities with the PCT system for patent applications. India is not yet a member of the Hague Agreement and hence, the above provisions or description may not be of immediate relevance to us. However, there is a strong need to monitor the developments in this area.
© R Saha
This article describes the relationship between Intellectual Property Rights and Internet operations, including e-commerce. The new issues opened due to the advent of digital technologies for storing and transmitting information are discussed along with types of IPR issues applicable to Internet.
1. INTRODUCTION
A spurt in the interest in intellectual property rights (IPRs) has been visible in the country for the last five years, even though the legal and other regimes to deal with IPR have been in place since independence and earlier. The recent interest, which started with curiosity and sometimes with an element of apprehension, has now graduated to a need-based compulsion and desire to play a new game introduced with the formation of World Trade Organisation (WTO). With the opening up of trade in goods and services, the IPRs have become more susceptible to infringement without adequate return to the creator of knowledge. There has been a quantum jump in the R&D costs with an associated jump in investments required for putting a new technology in the marketplace. The stakes of the developers of technology have become very high and hence, the need to protect the knowledge from unlawful use has become expedient, at least for a period, that would ensure recovery of R&D and other associated costs and adequate profits for continuous investments in R&D.
Information technology (IT) requires a strong IPR protection system for many reasons; the important ones are:
(a) It changes rapidly,
(b) Product life cycle is becoming shorter,
(c) Investments on R&D, production and marketing are very high,
(d) It is a multidisciplinary area requiring high level of skills,
(e) It is unaffected by geographical boundaries,
(f) It is a great equaliser and unifying factor for the human society,
(g) It is now highly software driven, and
(h) The industry is very competitive.
Therefore, one expects a large number of patents being granted in the IT sector all over the world, including India. In a recent study conducted by the Patent Facilitating Centre (PFC) of the Technology Information Forecasting and Assessment Council (TIFAC), it was found that electronics is the second most important area after chemicals, in which a large number of patent applications are being filed in India. Of the 2678 applications considered, most applications were related to areas such as: encoding and decoding (1 14), optical fibre (97), cellular telephony (78)) antennas (63), data transfer (45)) CDMA (38), TDMA (19)) display devices (96), chips (48), computer network (23), and Internet and e-commerce (23). The bulk of these applications (95 per cent) have been filed by foreign companies and individuals, indicating their strong interest in India. Many applications appear to be linked to software and databases that are not patentable in India. These applications need to be tracked. Similarly, applications related to Internet and e-commerce may also be tracked.
Internet has introduced many new features in sharing of information and knowledge and there is a general feeling that some special protection regimes may be called for. The matter is being discussed globally by international organisations like World Intellectual Property Organisation (WIPO) and WTO. So far no recommendations have emerged, which could be considered acceptable to all. However, there is one common understanding that new rights of intellectual property should be avoided and no greater protection to intellectual property need be provided in the cyber space than that exists elsewhere.
2. INTELLECTUAL PROPERTY RIGHTS
Intellectual property rights as a collective term includes several independent intellectual property rights (IP), namely, patents, copyrights, trademarks, registered (industrial) design, protection of IC layout design, geographical indications and protection of undisclosed information.
The IPRs are awarded by the member country and most of the rights are territorial in nature, except for copyright. A copyright generated in a member country of the Berne Convention is automatically protected in all the member countries, without any need for registration. However, the rights will not be automatically available in countries that are not members of Berne Convention. Like any other property, IPR can be transferred, sold or gifted. One of the main underlying principles of IPR is that protection is not given for what is already known in the public domain. The IPRs are meant to benefit creators of work, inventions and designs. These rights are granted for a limited period, except for trademark where the protection period could be extended indefinitely by way of renewal. IPRs, which are the monopoly rights, prohibit unauthorised use of protected work/invention. In return for such rights, the state expects that the invention/ original work should be made public ‘for use by others, after the period of rights has expired, or during the period of protection with proper authorisation from the right holder. However, while protecting undisclosed information, the above principle of disclosure will not apply.
A patent is awarded for an invention which satisfies the criteria of global novelty, non-obviousness and industrial application. Patents can be granted for products and processes. As per the Indian Patent Act 1970, electronic equipment, circuits, etc. can be patented and currently their term of patent is 14 years from the date of filing. It is expected that this term will be extended to 20 years after the amendments to the Act take place.
India is a signatory to the Berne Convention and has a very good copyright legislation, comparable to that of any country. Copyright is awarded to literary, dramatic, audio-visual and similar works. Computer programs and databases are also considered literary works and hence, are protected by copyright in India. In fact, these are considered copyrightable items under the Agreement on Trade Related aspects of Intellectual Property Rights (TRIPS). It may be noted that copyright protection extends to expression of an idea and not to the idea itself. To get protection, these works should be in a tangible form, i.e., in a form capable of either visually or audibly recreating the representation of the original work. Works are not copyrightable if they are merely ideas or sounds or gestures. Therefore, any information transmitted on Internet is a subject matter of copyright.
A trademark is any word, name, symbol, or device or any combination thereof, used by a person to distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of goods. The purpose is to protect the public so that it will get the product with certain qualities if it goes for a product having a particular trademark. Industrial design is connected with the protection of external shape, appearance and configuration of an article. Protection of integrated circuit (IC) layout design is associated with the mark design in (ICs). At present, there is no law in the country for providing this protection but such law is expected to be available by January 2000, as stipulated in TRIPS. Protection of undisclosed information is quite similar to the concept of trade secret, which includes formula, pattern, compilation, programme, device, method, technique or process. The new legislation is expected to be in force in India by Jan 1, 2000.
3. NEW ISSUES OPENED BY DIGITAL TECHNOLOGY
The move from analog to digital technologies for storing and transmitting information is a major shift in IT. New paradigms of economics and law, including the IP laws will have to be evolved to solve new problems not experienced so far. IP laws have, in the past, responded to new developments in science and technology, but with a time lag. For example, copyright was evolved as a response to the development of printing press. In the 17th century, the right to copy was equivalent to a right to vend because it was cheaper to buy an authorised original of the work than to copy it. Basic concepts of copyright protection must shift as the relative costs of events affecting the creator’s market position change. Internet has posed many questions related to copyrights, trademark and patents; countries are even thinking of evolving new protection regime to protect commercial interests through protection of creators’ works.
The growing power and ever diminishing costs of computers in the last 50 years have brought about some important convergence among technologies through which information has been produced and distributed. Office automation, especially word processing, computerisation of newspaper publishing and the availability of low-cost open architecture .computer networks have been responsible for moving away from purely paper and ink-based technologies. The PC revolution and access to digital communications have made it attractive to disseminate information electronically. Much of the information produced and distributed through broadcast and television, radio and telephone conversations were analog in nature. As a result, it was difficult to transmit different categories of information through a common channel. With improvements in the digital technologies, it became feasible to conceive of the voice and video content of television, radio and telephone being digitised, produced and distributed through digital networks that no longer will be distinct from the networks used for text-based information. The different categories of information have distinct positions in the law but with this erosion of the boundaries between categories, a new challenge for evolving an appropriate law has become imminent. Further, the information can be replicated with a very high speed and each copy is as good as the original. Digital representation also allows random access to parts of a document or message rather that requiring review of an entire new record, from the beginning to the end.
Some basic issues influencing the application of existing IPRs in the internet environment have emerged and call for a shift in the conceptual framework, operational and execution strategies and legal premises. Firstly, a truly intangible and an ephemeral property in cyber space is being dealt, which does not exist at any particular location as one understands, but seems to float in space. All IPRs are territorially limited, in the sense that the laws of the country, where the alleged infringement is supposed to have taken place, will decide whether an infringement has actually taken place or not.
The traditional notion of infringement needs to be re-appraised as it may sometimes be difficult to locate the infringer, and sometimes, the place of infringement may not have proper IPR laws, particularly copyright laws. People involved with IPRs, like authors will have to review their position, especially in the light of the potential for exploitation, and adopt new market and investment strategies. It is likely that novel methods will be developed by investing large sums of money to stop unauthorised use of copyrighted material along with other systems, using high technologies. This may limit the total number of service providers on Internet and these players will then dictate the future use of Internet. This may not allow open trading in IP. Further, the technological convergence puts pressure on traditional institutional arrangements for selling things, collecting money, and preventing piracy. Basic legal concepts need to be developed.
There has been a rapid growth of Internet; the number of users has grown from about 1 million in 1990 to more than 70 million in 1997. The e-commerce grew from US$ 2.6 billion in 1996 to US$ 20 billion in 1998. This figure is expected to run to hundreds of billions of dollars in the early years of the next millennium. As the number of users increases, the chances of infringement of copyrighted material also goes up. The IP framework acknowledges that some free riding is inevitable in any publishing activity; the important question about protecting IP is whether large-scale piracy could be reduced to almost zero level. India’s stakes in the entertainment market are quite high and there is a need for a close-to-airtight mechanism for protecting the rights of creators, and therefore, there is an urgent need to have a close look at transacting Indian music and pictures, etc. over the Internet.
4. TYPES OF IPR APPLICABLE TO INTERNET
Generally speaking, the enforcement aspects rather than the protection aspects of IPR are occupying people’s minds and the people are, perhaps, more concerned about the non-IPR issues, such as levying duty on accessing information on Internet and doing e-commerce through the Internet. While dealing with IPR the Internet, one is predominantly concerned with copyrights: trademarks, patents, registered design and protection of IC layout design and undisclosed information. Each of the rights mentioned above provide a different kind and degree of protection. The strictest regime is the one provided by patents.
5. COPYRIGHT
Protection of copyright appears to be the most obvious and important subject matter. Once a material is published anywhere in member countries of the Berne Convention, it becomes copyrighted material and no separate registration is required. Therefore, any information which is transmitted on Internet is a subject matter of copyright, as it is available in public domain. In addition, many pieces of information transferred and transmitted on Internet may already be copyrighted. There are several players whenever one is dealing with transaction of information on Internet, namely, the internet service provider, the content provider, the person downloading the information, bulletin board service provider, etc. The cause of infringement may be any of the players. The situation becomes very complex when a collection of copyrighted work is transacted. Take, for example, the case of multimedia which represents an integrated whole of computer program, audio-visual work, text, sound recording and databases. These components may be separately protected through copyrights or some other regime. The question, which arises, independent of the Internet is: who is the owner of such a work and what exactly needs to be protected? As different components are protected, it may be felt that it may not be necessary to protect the multimedia work per se. But, this approach may not be conducive to new investments for reaching the benefits of the digital revolution to a large population.
A deeper analysis would show that a multimedia work is neither a literary, musical or dramatic work nor it is a database or a computer program. However, the potential of multimedia works is immense and is’ proving to be large revenue generators. Therefore, it appears that a standalone legal regime may be considered by the publishers and pushed into international debates. The main question arises as to who would be responsible for wrong and unauthorised use of such information. Secondly, it is also equally important to ensure that Internet does not promote and encourage unlawful use of any copyrighted material.
There are many court cases dealing with infringement of the nature mentioned above. Playboy Enterprise claimed in 1993 that 170 centrefold photographs and other photographs from its publications appeared on the bulletin-board service (BBS) run by Mr Frena for which he did not have any authorisation from Playboy Enterprises. The District court held that Mr Frena was an infringer. Similarly, in another case, the court granted a restraining order against the uploading and downloading of copyrighted computer software of Sega Entertainment, permitted by a BBS operator. The court also upheld the seizure of the computer memory devices, which had been distributed by BBS operator. At the Diplomatic Conference of WlPO held on December 20, 1996, two new obligations have been introduced on a treaty on copyrights.
The obligations concerning technological measures demand that each contracting state shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this treaty or Berne Convention and that restrict acts, in respect of their works which are not authorised by the authors concerned or permitted by law. This, in other words, means that the use of decryption devices without the consent of the authors will not be allowed. It may therefore lead to a situation that a user may have to purchase a decryption system recommended by the authors or their assignees.
Many developed and member countries are also allowing patenting of these items. Copyrights are often thought of as special territory for artists, composers, writers, and those connected with the entertainment industry. People in these activities have long been aware of the special value of copyright protection. What is not well-understood is that copyrights are at least as valuable to the commercial world, as to government operations and fields of science and education.
6. DOMAIN NAMES AND TRADEMARK ISSUES
The estimated number of domain name registration has increased from 100000 in 1995 to 5 million and is growing at a volume of 70000 new registration, every week. The domain name is that part of the e-mail address or the home page address which appears after ‘@’ and ‘www’, respectively. Domain names are read from right to left. The first level on the right, such as ‘.com’ or ‘co.uk’ is known as the top level domain (TLD). The part immediately to the left of TLD is known as the second level domain (SLD). It is the SLD which is allotted to users as the unique identifying element in their Internet address and this usually corresponds to the user’s trading name. It is clear that the Internet is an effective tool for marketing internationally and creating more and more business opportunities. Potential markets are not limited by geographical boundaries.
For this new communication medium, the goods or services offered are not available for instant physical identification, as are goods in a store. Instead, these goods or services must be located and accessed by a domain name. It is at this point that an issue related to trademark arises. The concern is that an Internet address assigned to A would contain words constituting B’s trademark. If A is an entirely different business from B, there may not be any trademark infringement problem because there is no possibility of consumer being confused. The problem arises when A is in the same business. It is known that many corporate giants did not appreciate the hidden potential of domain names in the early days and others used their trademarks as domain names. It has been reported that TATA is being used as a domain name by someone other than TATA Sons. There are reported cases where these corporate houses have bought domain names at a price. Now, many industries are reserving domain names of their interest. For example, it is reported that 1, Craft Foods Inc. has registered 150 domain names relating to its product line.
Similarly, Proctor and Gamble has reportedly obtained domain names corresponding to trademarks for its products and has taken additional steps of registering domain names associated with the use of its products, such as ‘underarm.com’ and ‘diarrhea.com’.
A domain name is not a legal right as such unlike patents, trademarks and copyright, there is no domain name law. It is becoming a valuable piece of IP in cyber space. It is quite 17 evident that law suits involving trademarks will emerge. It may be a difficult choice to determine who the real infringer is, the owner of the domain name or the NIS or the service-provider. New guidelines have been worked out which put heavy responsibilities on the person applying for a domain name so much so that he/she has to almost certify that the proposed domain name does not infringe any trade name, company name or any other IPR. Many developing countries are not members of treaties related to trademarks. Due to the international nature of Internet, this will lead to many legal cases, as many applicants will have very difficulty in accessing the trademarks and trade names already registered in other countries. This development makes the allotment of domain name dependent on a global search. Further, consideration may be given to changing format of the domain name to avoid the trademark issues. No clear-cut guidelines exist to decide the cases related to domain and trade names. However, it seems from a number of judgements in the US that the trademark laws can be used to settle IPR issues related to domain names vs trademarks /trade names.
7. PATENTS & OTHER RIGHTS
Patents seem to have occupied a secondary place while discussing the IPR related issues regarding Internet. In view of the transcontinental nature of the Internet operations, it would be better to minimise infringements by providing better protection mechanisms through better technologies for encryption and decryption. In the context of e-commerce, these technologies play a very important role as they provide the best solution for avoiding unlawful access to what is being transacted on the Internet between two or more parties. This secrecy could only be maintained by assigning special keys (codes) to the players of e-commerce (EC) having unique identification.
The concept of digital signature is based on these technologies. The development of digital technology has permitted huge expansion in the capacity for encrypted services. However, at the same time, the sale of unauthorised decoding devices has had an adverse effect on the operators of encrypted services. EC has 18 estimated that unauthorised decoding devices currently represent between 5 and 20 per cent of the total number of devices in circulation. This would promote some Internet service-providers and database operators to monopolise such devices and make the users dependent on the operators for many other facilities, which the users themselves can arrange.
As the sophistication of technologies goes up with the passage of, time, developing countries may face a difficult time, especially in terms of hardware. The issue becomes complex due to the fact that such devices are eligible for patents. Software, encryption and decryption systems including equipment, assemblies, ICs, components or software with capability to maintain secrecy, compression algorithms, techniques for representing graphical images, databases and databases retrieval techniques have become subject matter of patents in developing countries. For example, US patent number 4,405,829 (September 1983) deals with the RSA encryption, 5,396,343 (March 1995) with image compression systems with optimised data access, 5,428,741 (June 1995) with high speed image pre-processing system including a multipurpose buffer for storing digital image and 5,428,462 (June 1995) with facsimile apparatus having user name register with means for receiving image signals. Whereas in India, software is not patentable per se as these are considered literary works; in advanced countries it is now possible to obtain software patents.
There are two advantages of software patents, namely, copying of the idea of a patent is prohibited and a stronger legal protection is ensured. One of the reasons of starting software patents is that these are now developed with substantial investment of finances and human resources and are responsible for better functioning machines, novel performance of microprocessors, and when transported through discs, it becomes a tangible product.
Devices being used for decryption are subject matter of patents. All the ICs can be protected through a separate regime. There are strong indications that software developed for masking information or avoiding infringement through special technique like the watermarking technology, will be converted into chips and then multiple protection may be available for software. The chip could be protected under the IC layout design or as a component of an overall hardware. Once hardware are protected through patents, it would be difficult to by-pass them. The external shape can be protected through registered design, and customer confidence can be achieved by protecting the product through a trademark/ trade name. It appears possible that such devices may be monopolised globally as the business of Internet gets into a few hands, which appears to be a distinct possibility.
8. CONCLUSION
The IPR professionals are faced with a totally new situation while ensuring that IP rights are not violated when business is transacted over the Internet. It would be better if new IP rights are avoided but at the same time, the interests of innovators need to be secured with the existing provisions. Whether a total governmental control over unauthorised reproduction and distribution of copyrighted works over Internet will work or not, is a difficult question to answer at this stage. If there are no controls then are we expecting it to be driven by market forces alone?
The experience of satellite communication and international telephone services may be helpful in solving some of the conflicts arising out of cross- boundary and simultaneous use of information. It appears that innovative technologies and industry self-regulation, rather than policing, may provide some answers. If there is a common and clear understanding about enforcing copyright laws, an effective awareness campaign may be beneficial for the end users, content providers and Internet access providers. It must dawn upon all that the society has to recognise the innovative work and reward the generators of innovations adequately, and others do not have a legal or moral right to earn on infringements. Ultimately, the purpose is to make the Internet economically viable for the benefit of the newly emerging information society, and this would largely depend on how successfully one is able to resolve the issues related to IPRs.
(This article written by R Saha, while working with Technology lnformation Forecasting and Assessment Council (TIFAC), appeared in the DESlDOC Bulletin of Information Technology, Vol. 20, Nos. 1 &2, January & March 2000, pp. 13-19.
The orignal article can be read at
http://publications.drdo.gov.in/gsdl/collect/dbit/index/assoc/HASH0135.dir/dbit2001013.pdf
© R Saha
If your company plans to manufacture products or deliver services that are required to comply with certain standards it is advisable to become familiar with the IPR or patent policy of the relevant standard making body. Any company, large or small, that plans to adopt a standard for its products, processes or services, should first and foremost verify if there is/are any “essential” patent(s) for which a license is required and the broad terms and conditions under which the license will be granted to your company. If there is a need to obtain a license from a holder of an essential patent to meet the industry standards, it will generally be necessary to contact the patent holder directly and sign a license agreement under negotiated terms and conditions that are acceptable to both the parties. Ignorance of this knowledge may put your company in a difficult situation because you may be sued for infringement of a patent while your company thought that it was following a standard! Extending it further would also imply that you have to choose your vendors very carefully.
Standards of any kind are aimed to ensure that consumers of products receive products, which meet certain specification related to dimensions, properties, performance, safety and other parameters. Standards influence the food we eat, the drugs we take, means of communication, electric gadgets and endless other activities. Almost every product available in the market has been developed in accordance with some voluntary or mandatory standards. A product usually incorporates many components and each component is a product by itself. In a larger product the interconnectivity and interface of components is equally important as the components themselves. This is very true in IT. If components are not properly related (connected) and do not talk to each other the manner in which are expected to, the product may not be acceptable in the market. However, if components and the product are so designed that they could establish uniform, consistent and reliable performance then it is easy to win the allegiance of market place. This allegiance is easier to attain if the products and components are designed according to some standards either already existing or established for the product in question. Take the example of power supply in different countries. In India the power supply follow 220V-50 Hertz system whereas in USA it is 110V-60 Hertz system. Appliances such as hair dryers and electric irons designed for the Indian market will not work in USA without an adapter. Similarly, take the sockets, which hold electric bulbs. There is a standard followed for the design of the bulb in terms of dimensions, electrical properties and design. Bulbs are manufactured by different companies to fit the standard sockets even if there are differences in manufacturing techniques, materials etc. If this was not the case, each manufacturer of bulbs would be marketing their own sockets. There would be so many different types of sockets in the market, a situation difficult to comprehend today.
In a more complex product such as a personal computer which is a combination of hardware and software and which has to talk to many different outside systems such as its connection with internet, maintaining standards becomes challenging. Each component like Intel microprocessor or Window 2003 has been designed to some standards, which are practised and accepted practically all over the world. All such components have a strong element of inventiveness built into them and would usually have strong IP protection through one or more forms of IPR. In the absence of standards it would be very difficult, in most cases impossible, for competing firms to develop compatible or interoperable products.
Standards are rules that define the ways in which a product performs. They provide a basis of reuse, inter-networking, cooperation and portability. Standards are specified by a large number of formal and informal organizations. Some standards are never formalized but become de-facto standards due to market dominance of a particular product or service. Mandatory standards generally pertain to health, safety or the environment and are set and enforced by, or on behalf of, the relevant government. Most standards are voluntary, however. The International Organization for Standardization (ISO) defines a formal standard as “a document, established by consensus that provides rules, guidelines or characteristics for activities or their results.” A standard, therefore, is generally a set of characteristics or qualities that describes features of a product, process, service, interface or material. A standard may also describe how properties are measured, the composition of a chemical, the properties of an interface, or performance criteria against which a product or process can be measured. Apart from health, safety and environmental concerns, standards are important for a number of other reasons. For example, the existence of standards makes it possible to develop compatible or interoperable products by competing firms.
De-facto standard is a convention, product or a system that has achieved a dominant position in the market by public acceptance or market forces. These standards are often but not always proprietary. QWERTY system for layout of letters on a typewriter or a keyboard is a universally adopted convention and it was not designed to any existing standard because there was no standard at that time for this purpose. QWERTY system has become a de-facto standard and no typewriter or keyboard follows any other system for layout of letters. Many competitive systems were designed based on a different layout but none could replace the QWERTY system. VHS format for video recording and play replaced Betamax system completely due to superior marketing tactics. These standards also emerge in response to an immediate industry needs. They gain in use and popularity through market dictates. They are usually maintained and managed by the company or the group of companies that originated them and they do not undergo any community review. These standards are not approved by any standard organization. They are widely used by the industry. It could be seen that these standards tend to be narrower and designed for specific use.
The intricate relationship between standards and patents is least understood by most people because it appears so distant as standards have nothing to do with monopolistic rights. The development of standards more and more frequently anticipates technology rather than following it, leading to conflicts between standards and patents. MPEG-2 standard for visual and audio compression is covered by about 100 patents.
© R Saha
Advayah 