Module - 1
INTRODUCTION &
EMERGENCE OF
INTELLECTUAL PROPERTY
Paridhi Saxena
Advocate | Founder & Managing Partner
Taarkik Legal, Advocates & Consultants
Editorial Director, Lex Explore
© Taarkik Legal, Advocates & Consultants
WHAT IS A PROPERTY?
Any valuable thing owned by a person.
E.g. land, house, garden, industries, animals, gold,
silver, diamond, money etc.
Moveable Property
Types of
Immoveable Property
Property
Intellectual Property
© Taarkik Legal, Advocates & Consultants
WHAT IS AN INTELLECTUAL
PROPERTY?
Property created by application of human mind.
THE NEED TO PROTECT INTELLECTUAL PROPERTY
new ideas, processes, products, inventions and
innovations developed by a person
inputs in terms of thinking, planning and fine tuning of
new ideas/products/processes etc.
considerable amount of funds and other resources
MAXIMUM BENEFITS
Copied, Reproduced & Used by Others
© Taarkik Legal, Advocates & Consultants
BENEFITS OF IP PROTECTION
Good fences make good neighbors
Encourages innovation, product development,
technical change
Monetary gains to creators
Great inflows of technology
Promotion & preservation of culture
© Taarkik Legal, Advocates & Consultants
WHAT ARE INTELLECTUAL
PROPERTY RIGHTS (IPR)?
rights given to persons over the creations of their
minds.
exclusive right for certain period of time.
non-tangible asset
“Intellectual Property shall include rights relating to
literary, artistic, and scientific works, discoveries
throughout all areas of human endeavor, scientific
advances, industrial design rights, trademarks, service
marks, and commercial names and designations,
protection against unfair competition.”
- Article 2 of the World Intellectual
Property Organization (WIPO)
© Taarkik Legal, Advocates & Consultants
FORMS OF IPR
Patent
Trademark
Industrial Trade Secrets
Primary
Copyright Industrial Designs
Traditional Geographical
Sui-generis
Knowledge Indication
© Taarkik Legal, Advocates & Consultants
THEORIES OF IPR
© Taarkik Legal, Advocates & Consultants
THE NATURAL RIGHTS THEORY
Propounded by John Locke
everyone has a right to consider his/ her ideas as
natural property right
the creation originates from the effort, originality and
inventiveness of the creator.
there is no difference between intellectual property
and the traditional tangible property - unlimited term
of ownership
Criticisms:
does not deal with temporal limitation of IPR - usage of
IPR is time bound
allows an innovator to own an abstract idea which can
affect subsequent innovators
© Taarkik Legal, Advocates & Consultants
THE UTILITARIAN THEORY /
INCENTIVE THEORY
Propounded by Jeremy Bentham
Objective: making every policy universal in the
sense of attaining the greatest good for the
greatest number
Protection of IP gives an incentive & motivation
to the creator
Accords economic gains to the author but
ultimately society gets benefited from the
innovation done by author.
Criticisms:
Grant of exclusive rights create a monopoly.
© Taarkik Legal, Advocates & Consultants
THE ETHIC & REWARD
THEORY
rationalizes the exclusive rights of intellectual
property from moralistic and ethical aspect
requires an equitable and proportional
contribution from the side of creator or innovator
who has invented something for the social utility
Criticisms:
the benefits can be obtained by the innovator in
the initial years but if the innovators deserve the
same right or not is questioned too under this
theory.
its limitation in protecting the traditional
knowledge
© Taarkik Legal, Advocates & Consultants
THE PERSONHOOD THEORY
Propounded by Immanuel Kant and George Hegel.
IP is a creation of the author i.e. Expression of his
thoughts & represents his personality.
Author has the right to determine it’s use,
performance etc.
Criticisms:
the work is independent from its creator but dependent
on the public domain.
If we consider the fact that once the original work is
produced, it is distinct from the creator. As the work
becomes available to the public, it is up to them as how
they receive and treat it. It is not dependent on the person
creating it.
© Taarkik Legal, Advocates & Consultants
HISTORY OF IPR
© Taarkik Legal, Advocates & Consultants
PARIS CONVENTION 1883
International Convention for Protection of Industrial
Property
Protection to patents and trademarks
Principles:
National Treatment (Article 2 & 3)
Right of Priority (Article 4) (date of application)
Moral rights of Inventor & Legality of Invention
Problems:
No minimum substantive standard of patent
protection
Lack of enforcement mechanism
India became a member on December 7, 1998
© Taarkik Legal, Advocates & Consultants
BERNE CONVENTION 1886
The Berne Convention for the Protection of Literary
& Artistic Works
influenced by the French “right of the author” (droit
d’auteur)
Principles:
National Treatment
Inherent protection – registration not compulsory
Problems:
Lack of enforcement mechanism
India ratified on April 1, 1928
© Taarkik Legal, Advocates & Consultants
THE UNIVERSAL COPYRIGHT
CONVENTION, 1952
Developed by UNESCO
For states who disagreed with aspects of Berne
Convention but still wished to participate in some
form of multilateral copyright protection.
India became member on January 7, 1988
© Taarkik Legal, Advocates & Consultants
MADRID AGREEMENT, 1891
Provides International Trademark Registration.
Administered by the International Bureau of World
Intellectual Property Organization (WIPO).
It enables registration of trademarks in multiple
jurisdictions that are part of Madrird Protocol by filing a
single application.
Requirements:
Prior registration in the country of origin.
Single Application – designating countries where
registration is desired
Duration:
10 years
renewed for further 10 years (renewal may be for all
designated contracting parties or some)
India joined the protocol w.e.f. July 8, 2013
© Taarkik Legal, Advocates & Consultants
PATENT COOPERATION
TREATY (PCT), 1970
Supplemented Paris Convention
Established centralized utility application process
Filed on standard form with the WIPO
WIPO processes the common application and
forwards it to countries designated by the
Applicant
If atleast one of the applicants is a national or
resident of PCT signatory, the PCT application
gives a priority claim on that invention, in all
signatory states.
India ratified on December 7, 1998
© Taarkik Legal, Advocates & Consultants
AGREEMENT ON TRADE-RELATED
ASPECTS OF INTELLECTUAL PROPERTY
RIGHTS (TRIPS)
First international agreement concerning all types of
intellectual property.
copyright and related rights
trademarks including service marks;
geographical indications including
appellations of origin;
industrial designs;
patents including the protection of new
varieties of plants;
the layout-designs of integrated circuits; and
undisclosed information, including trade
secrets and test data.
© Taarkik Legal, Advocates & Consultants
ISSUES GOVERNED BY TRIPS
Standard
a minimum set of criteria for the protection of IPRs in
each categories.
Explicitly state - the subject matter sought to be
protected, the rights to be granted, possible exceptions
to such rights, minimum period of protection.
Enforcement
domestic processes and remedies for IPR enforcement
The Agreement establishes a set of broad rules that apply
to all IPR enforcement actions.
Dispute Settlement
Part of integrated Dispute Settlement System of WTO.
No unilateral action by members allowed.
© Taarkik Legal, Advocates & Consultants
PROVISIONS UNDER TRIPS
Part I- General Provisions and Basic Principles (Article 1 to
Article 8)
Part II- This part covers the requirements for the
availability, scope, and application of intellectual
property rights. (Article 9 to Article 40)
Part III- The enforcement of IPRs is the focus of this
part. (Article 41 to Article 61)
Part IV: This part covers the procedures for obtaining and
maintaining intellectual property rights. (Article 62)
Part V: This part deals with the prevention and resolution
of conflicts resulting from the provisions of the Agreement.
(Article 63 to Article 64)
Part VI: This part is about transitional agreements. (Article
65 to Article 67)
Part VII: This part of the Agreement deals with a variety of
institutional arrangements. (Article 68 to Article 73)
© Taarkik Legal, Advocates & Consultants
BAISC PRINCIPLES
Freedom to determine the appropriate method of
implementing the Agreement (Article 1.1)
National Treatment (Article 3)
treat nationals of other countries the same as their own
nationals.
Most-Favoured-Nation Treatment (Article 4)
all foreign nationals must be treated equally
Transitional Arrangements
(the period between when the agreement entered into force (on January 1, 1995) and when it
got implemented in member countries)
Developed countries: one-year transition period
Developing nations: five-years transition period
Least-developed nations: eleven-year transition time, with
the option of an extension.
The transition period has been prolonged three times, and now continues until July 1,
2034, or until a member no longer qualifies as a Least Developed Country (LDC),
whichever comes first.
© Taarkik Legal, Advocates & Consultants
ADVANTAGES OF TRIPS AGREEMENT
Transparency in IP policy was brought to the world’s
attention.
WIPO’s existing international legal system, which was
designed and controlled by them, was greatly
enhanced by this agreement.
Trade conflicts over intellectual property concerns
were reduced by establishing a clear, rules-based
framework for resolving disputes.
It has aided in the acquisition and exercise of
intellectual property rights, as well as providing a solid
platform for the trade in knowledge products.
In developing countries, the number of patent
applications is increased
© Taarkik Legal, Advocates & Consultants
DISADVANTAGES OF TRIPS
AGREEMENT
TRIPS mandates high levels of patent protection.
Fertilizers, insecticides, pharmaceutical items, and
procedures were not protected by patents, resulting
in low-cost food and drugs
Education and technology transfer were fostered by
the lack of copyright protection for informational
products
Jobs in the local imitative industries were lost.
Traditional knowledge is not protected in any way.
© Taarkik Legal, Advocates & Consultants
Any questions?
Thank You!
© Taarkik Legal, Advocates & Consultants
