India provides protection to IPR in accordance with its obligations under the TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement of the WTO (World Trade Organisation), as adopted in the respective legislations.
India is also a signatory to a number of Conventions and hence the protection under IPR matches the international system at certain level. Conventions are named hereunder:
- Berne Convention, 1971
- Universal Copyright Convention, 1979
- Vienna Classification , 1973
- Paris Convention for the Protection of Industrial Property, 1979
- Geneva Convention for the Protection of Rights of Producers of Phonograms, 1971
Other than the civil remedies and compensation, the Police and enforcement authorities are also empowered to take action against infringement of IPRs.
Petitions are filed for infringement of IPRs and are tried in the judicial courts like other suits.
Appeals are also filed in the judicial courts against the administrative decisions relating to IPR.
PATENTS
Patenting an intellectual property in India is governed by three parameters:
- Inventive step/Non - obvious
- Novelty
- Utility/Usefulness
A patent is granted for the following:
- A new and utility-bearing article/product, produced by manufacture;
- A new process of manufacture to make an article/product, already in existence;
- A machine, apparatus or other article;
- For secondary innovations such as improvements on existing products or processes;
- Recently, exclusive marketing rights and mail box facility for inventions relating to chemical and pharmaceutical products was introduced.
Product and process patent protection are available.
A patent right is granted for a limited period of time. Presently, the Indian Patents Act, 1970 sets this period of time at 20 years.
Foreign Patents
The Government of India may, by notification in the Official Gazette, declare a country to be a convention country for the purposes of granting patents and the protection of patent rights.
Applications for protection can be made within 12 months in respect of an invention in a convention country.
COPYRIGHTS AND RELATED RIGHTS
Copyrights are a set of exclusive rights given to an author of a literary or artistic work. This set of rights includes “right to copy”, right to be credited for the work, right to publication and broadcasting etc. Berne convention was the first convention which recognised copyrights on an international level.
As practiced, a copyright exists in an artistic work form the day of its creation. Registration of copyrights strengthens the protection but unregistered copyrights have equal protection under India law if proved.
India’s copyright law fully reflects the Berne Convention on Copyrights. Additionally, India is party to the Geneva Convention for the Protection of Rights of Producers of phonograms and to the Universal Copyright Convention. Recent amendments have introduced provisions for the first time to protect performer’s rights as envisaged in the Rome Convention.
Several measures have been adopted to strengthen and streamline the enforcement of copyright including the setting up of a Copyright Enforcement Advisory Council, training programmes for enforcement officers and setting up special policy cells to deal with cases relating to infringement of copyright.
The copyright is valid for the life of the owner and continues for next 60 succeeding years after the death of the owner.
TRADEMARKS
Trademark means a mark or a symbol being represented graphically and which is capable of distinguishing the goods or services of one person from the others and can include shape of goods, their packaging and colours etc.
Unregistered trademarks can be protected through common law remedy of “passing off” only and infringement actions are not possible. Hence, to get maximum protection for any trade, it is inevitably necessary to register their trade name and marks. [Passing off is essentially the circumstances where one person misrepresents his or her goods as being the goods/services of another person or holding out his or her goods as being associated with or connected with the goods/services of another person.]
India provides protection for marks of goods and services, collective marks, certification trademarks and well-known marks under the Trademarks Act, 1999.
Application for registration of a trademark should be filed with the trademark registry. Trademark is registered after publication in the trademarks journal to invite opposition and after further examination. Registration is not necessary for protection; however, it is mandatory for taking action against infringement. Registration is valid for an initial period of ten years and can be renewed for further period of ten years.
For unregistered trade marks, only the remedies under the law of “passing off” are available.
Police officers are empowered to seize, without warrant, the counterfeit goods and machinery used to commit the offence. Penalties ranging from six months to three years and fines have been prescribed in the Act for trademarks violations.
GEOGRAPHICAL INDICATIONS
Geographical Indications of Goods are defined as that aspect of industrial property which refers to the geographical indication referring to a country or to a place situated therein as being the country or place of origin of that product. Typically, such a name conveys an assurance of quality and distinctiveness which is essentially attributable to the fact of its origin in that defined geographical locality, region or country for e.g. "scotch whisky” is identified with Scotland or “champagne" with France.
Protection to geographical indications is provided under the Geographical Indications of Goods (Registration and Protection) Act, 1999.
A geographical indication may be registered with the Controller General of Patents, Designs and Trademarks for all goods originating in a definite territory of a country, or a region or locality in that territory.
The Geographical Indications Act provides for additional protection of higher level to goods notified by the Central Government.
Registration of a geographical indication is for ten years with possible renewal for further ten-year periods.
PROTECTION OF PLANT VARIETIES
Protection to plant varieties is provided by the Protection of Plant Varieties and Farmers’ Rights Act, 2001 in compliance with India’s obligations under Article 27.3 (b) of the TRIPS Agreement of the WTO by providing an effective sui generis system for protection of plant varieties.
Provides for an effective system for protection of plant varieties and farmers’ rights to stimulate investments for R&D both in public and private sectors.
New plant varieties could be registered under this Act for Plant Breeder Rights based on the international criteria of newness, distinctiveness, uniformity and stability.
The essentially derived varieties are also registered under this Act based on internationally accepted criteria. This Act also has some unique features like benefit sharing, community rights, gene funds, compulsory licensing etc.
The Protection of Plant Varieties and Farmers’ Rights rules have also been framed under this Act. Applications for plant varieties should be filed with the Authority.
Department of Agriculture and Cooperation, Ministry of Agriculture, Government of India is the administrative department for implementation of this Act.
INDUSTRIAL DESIGNS
The Designs Act, 2000 provides protection for registered designs in accordance with India’s obligations under the TRIPS Agreement.
Independently created designs that are new or original are protected under this Act.
The Act provides a right to the owner of the registered industrial design to prevent third parties not having his consent from making, selling or importing articles being or embodying a design, which is a copy or substantially a copy of the protected design when such acts are undertaken for commercial purposes.
The duration of the protection is ten years.
LAYOUT DESIGNS OF INTEGRATED CIRCUITS
The Semiconductor Integrated Circuits Layout Design Act, 2000 provides protection to semiconductor integrated circuits layout designs in accordance with the provisions of the TRIPS Agreement.
The Act provides for exclusive rights to the registered proprietor of a layout design and also to the registered users.
Applications for registration of layout designs should be filed with the Registrar.
Appeals against the orders of the Registrar should be filed with the Appellate Board. The Act also provides for criminal prosecution for infringement of layout designs.
The administration department for implementation of the Act is Dept. of information Technology, Ministry of Communications and Information Technology, Government of India.
TECHNOLOGY TRANSFER - PROTECTING INTELLECTUAL PROPERTY
General Policy
Induction of foreign technology/ know-how is encouraged through foreign technology collaboration agreements.
Such collaborations are permitted either through automatic route or with prior Government approval.
Scope of Technology Collaboration
The terms of payment under foreign technology collaboration agreements are eligible for approval through the automatic route and by the Government approval route.
Payments can be as technical know how fees or for design and drawing or for engineering service and royalty.
Automatic Route - foreign technology collaboration
Payments for foreign technology collaboration are allowed under the automatic route subject to the following limits:
Lump sum, not exceeding US $2 million;
Royalty, limited to 5 per cent for domestic sales and 8 per cent for exports, without any restriction on the duration/period of the royalty payments.
The royalty limits are net of taxes.
The royalty will be calculated on the basis of the net ex-factory sale price of the product, exclusive of excise duties, minus the cost of the standard bought-out components and the landed cost of imported components, irrespective of the source of procurement, including ocean freight, insurance, custom duties, etc.
Use of Trademarks and Brand name
Payment of royalty up to 2% for exports and 1% for domestic sales is allowed under automatic route for use of trademarks and brand name of the foreign collaborator, when there is no technology transfer.
In case of technology transfer, payment of royalty for technology transfer (5 per cent for domestic sales and 8 per cent for exports), includes the payment of royalty for use of trademark and brand name of the foreign collaborator. Therefore, no separate payment for trademarks and brand name is permitted
Royalty on brand name/trade mark shall be paid as a percentage of net sales, viz., gross sales less agents’/dealers’ commission, transport cost, including ocean freight, insurance, duties, taxes and other charges, and cost of raw materials, parts and components imported from the foreign licensor or its subsidiary/affiliated company.
Procedure for Automatic Route
If the remittances are within the permitted limits Authorised Dealers (AD) allow remittances for royalty, payment of lump-sum fee and remittance for use of Trade mark /Franchise.
Non-automatic Route
For the following categories, Government approval would be necessary:
Proposals attracting compulsory industrial licensing.
Items reserved for the Small Scale Sector (certain items notified by the Government are exclusively reserved for manufacture in this sector).
Proposals involving any previous joint venture, or technology transfer /trademark agreement in the “same” or “allied” field in India. The definition of "same" and "allied" field would be based on National Industrial Classification (NIC) 1987 Code.
Proposals not meeting any or all of the parameters for automatic route, such as higher lump-sum payment/royalty payments, applying different parameters for calculating net ex-factory sale price/ net sales etc.
Hiring of Foreign Technicians
No permission is necessary for hiring of foreign technicians and no application needs be made to the Government for this purpose.
Payments for the deputation of Indian technicians abroad and testing of indigenous raw material, products and indigenously developed technology in foreign countries are also permitted.
Release of foreign exchange for the payment of remuneration etc. can be obtained through Authorised Dealers), as per Reserve Bank of India (RBI) guidelines.
CONCLUSION
Protection of IPR is important for any business. It is advisable for the foreign entrant, before introducing their products, to first take steps to protect their IPRs in India and then start marketing or using it. This facilitates complete protection to all intellectual properties from the very beginning. This also applies in the cases of technology transfers, where there is an assignment of IPRs and hence protecting them becomes one of the most important aspect.
No comments:
Post a Comment