Intellectual Property Rights: formula sheet

Key formulas

Meaning of IPR

IPR = exclusive legal rights over creations of the mind

Start every definition answer with this. Add that the rights are intangible and usually time-limited.

Type to Act matching

Patents - Patents Act, 1970 | Trade marks - Trade Marks Act, 1999 | Copyright - Copyright Act, 1957 | GI - GI Act, 1999 | Designs - Designs Act, 2000

Name the correct Act with the correct year. Mixing these up loses marks.

Purpose of patents (Section 83, Patents Act)

Patents encourage inventions, secure their working in India on a commercial scale, and must not impede public health or become a mere import monopoly

Use this to explain the balance between the owner's rights and public interest.

Madrid Protocol terms (Section 36B, Trade Marks Act)

International registration = registration of a trade mark in the register of the International Bureau under the Madrid Protocol; International Bureau = the International Bureau of WIPO

The definitions link the Trade Marks Act to WIPO.

Co-owners of a patent (Section 50, Patents Act)

Unless an agreement says otherwise: equal undivided shares; each may exploit the patent for own benefit without accounting; licence or assignment of a share needs consent of the others

Useful as an example of how IP is treated as ownable property.

Civil remedies, section 55(1)

Owner may claim injunction + damages + accounts + other remedies conferred by law

Subject to the Act. Damages and accounts are separate heads of relief.

Innocent infringer, proviso to section 55(1)

Defendant proves unaware + no reasonable ground to believe copyright subsisted → plaintiff entitled to no remedy other than injunction + decree for whole or part of profits from sale of infringing copies, as the court deems reasonable

The defendant must prove it. The plaintiff gets no other remedy in that case.

Presumption of authorship, section 55(2)

Name appearing as author or publisher on published copies → presumed author or publisher unless contrary proved

Covers literary, dramatic, musical, artistic works, and, subject to section 13(3), films and sound recordings.

Property in infringing copies, section 58

Infringing copies and plates = deemed property of copyright owner; owner may sue for possession or conversion

No remedy for conversion if the opponent proves lack of awareness of subsisting copyright, or reasonable belief that copies or plates are not infringing.

Rights management information, section 65B

Knowingly removing or altering RMI without authority, or distributing works knowing electronic RMI was removed → imprisonment up to 2 years + fine

Owner may also use civil remedies under Chapter XII if RMI is tampered with. This is a criminal provision, kept separate from civil relief.

Costs, section 55(3)

Costs of all parties are in the court's discretion

Do not say costs automatically follow the event.

Performer's moral rights (s. 38B)

(a) right to be identified as performer; (b) right to restrain or claim damages for distortion, mutilation or modification prejudicial to reputation

Exists independently of any assignment of the performer's rights. Omission of identification is allowed where the manner of use dictates it. Editing, trimming to fit a duration, or purely technical changes are not prejudicial.

Functions of a copyright society (s. 34)

Accept exclusive authorisation; issue licences (s. 30); collect fees; distribute fees after deducting own expenses; other functions consistent with s. 35

Subject to prescribed conditions. The owner may withdraw the authorisation, without prejudice to the society's rights under any contract.

Control by owners (s. 35)

Society is under collective control of owners it represents; fees distributed in proportion to actual use of works

It must get owners' approval for collection and distribution procedures, and for using collected fees for any purpose other than distribution. It must give regular, full and detailed information.

Governance of a society (s. 35(3), (4))

Governing body elected from members, with equal number of authors and owners of work; equal membership rights; no discrimination between authors and owners in royalties

Added by the 2012 amendment.

Tariff scheme (s. 33A)

Society publishes tariff scheme; aggrieved person may appeal to the Commercial Court; interim tariff may be fixed

The appellant must pay fees already due and keep paying until the appeal is decided.

Relinquishment (s. 21)

Author gives notice in prescribed form to the Registrar of Copyrights or by public notice; rights cease from the date of notice

Does not affect rights already subsisting in favour of any person on the date of notice.

Term of patent (Section 53(1))

Term = 20 years from the date of filing of the application

For PCT applications designating India, 20 years from the international filing date.

Lapse for non-payment (Section 53(2))

Renewal fee not paid within the prescribed or extended period → patent ceases to have effect

Under Section 53(4), once the patent ceases or expires, the subject matter gets no protection.

Pre-grant opposition (Section 25(1))

Application published + patent not yet granted → any person may oppose in writing to the Controller

Only on the grounds listed in Section 25(1), and on no other ground.

Post-grant opposition (Section 25(2))

After grant but before one year from publication of grant → any person interested may give notice of opposition

Opposition Board examines and recommends; Controller then orders to maintain, amend or revoke (Section 25(3)-(4)).

Section 3(d) rule

New form of a known substance → not an invention unless there is enhanced known efficacy

Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, complexes, combinations and other derivatives are treated as the same substance unless they differ significantly in efficacy properties.

Opposition grounds (Section 25)

Wrongful obtaining; prior publication; prior claiming; public knowledge or use in India; obviousness; not an invention or not patentable; insufficient description; non-disclosure under Section 8; convention filing beyond 12 months; source of biological material; traditional knowledge

Eleven grounds, clauses (a) to (k), in both sub-sections.

Share of co-owners (s 50(1))

Patent granted to 2 or more persons → equal undivided shares, unless agreement to the contrary

The agreement can change the shares. Without one, shares are equal.

Working the patent (s 50(2))

Each registered co-owner may exercise section 48 rights for own benefit, without accounting to the others

Subject to sections 50 and 51, and unless agreement to the contrary is in force.

Licence or assignment (s 50(3))

No licence and no assignment of a share without the consent of the other co-owners

Subject to sections 50, 51 and any agreement in force.

Sale of patented article (s 50(4))

Buyer and those claiming through him deal with the article as if sold by a sole patentee

Protects buyers from claims by other co-owners.

Controller's directions (s 51)

Application by a registered co-owner → hearing to others → directions on sale, lease, licences or s 50 rights

If a person fails to act within fourteen days of written request, the Controller may authorise another to sign for him. No direction may affect trustees' or legal representatives' mutual rights, or be inconsistent with an agreement.

Power to deal (s 70)

Registered grantee or proprietor may assign, license or deal with the patent and give effectual receipts

Subject to co-ownership provisions and rights noted in the register. Equities can be enforced as for other movable property.

Section 84(1): when and on what grounds

Application after 3 years from grant of patent + any person interested + ground (a) reasonable requirements of the public not satisfied, or (b) not available at a reasonably affordable price, or (c) not worked in India

Any one ground is enough. The three years run from the date of grant, not from the date of filing.

Section 84(6): factors the Controller considers

Nature of invention and time elapsed + ability of applicant + capacity to bear risk and capital + efforts to get a voluntary licence

The efforts must have failed within a reasonable period, ordinarily not exceeding six months. This efforts requirement does not apply in national emergency, extreme urgency, public non-commercial use or proven anti-competitive practices.

Section 84(7): when public requirements are deemed unmet

Refusal to license on reasonable terms causing prejudice, or demand not met adequately or on reasonable terms, or export market not supplied, or unfair licence conditions, or not worked on commercial scale in India, or working hindered by imports

Section 84(7)(c) covers conditions such as exclusive grant back, preventing challenges to validity and coercive package licensing.

Section 84(2): existing licensee

A holder of a licence under the patent can still apply, and is not estopped by any admission made or by having accepted the licence

Useful for questions on whether a licensee can seek a compulsory licence.

Section 88: Controller's incidental powers

Licences to customers of applicant (88(1)); cancel or amend existing licence (88(2)); licence of other patents of same patentee (88(3)); revision of terms after 12 months of commercial working, only once (88(4))

Section 84(5) allows these powers as incidental to a direction to grant a licence.

Section 91: related patents

Applicant has right to work another patent + is prevented or hindered from working efficiently + able and willing to grant a licence of the other invention on reasonable terms + other invention made a substantial contribution to commercial or industrial activity in India

The licence is non-assignable except with assignment of the respective patents.

Section 92: emergency licences

Central Government notification in the Official Gazette (national emergency, extreme urgency or public non-commercial use) → application by any person interested → Controller grants licence

Under section 92(3), the Controller need not apply the section 87 procedure in such cases, but must inform the patentee as soon as practicable.

Section 85: revocation for non-working

Compulsory licence granted + 2 years from order granting first licence + application by Central Government or any person interested

Grounds are non-working, unmet public requirements or unaffordable price. The application should ordinarily be decided within one year.

Quick revision

• A patent term is twenty years from the date of filing; for PCT applications designating India, from the international filing date (Section 53(1)).
• A patent ceases if the renewal fee is not paid within the prescribed or extended period (Section 53(2)).
• After a patent expires or lapses for non-payment of renewal fee, its subject matter gets no protection (Section 53(4)).
• Unless agreed otherwise, co-owners of a patent hold equal undivided shares (Section 50(1)).
• A co-owner can work the patent for his own benefit without accounting to others, unless agreed otherwise (Section 50(2)).
• A co-owner cannot grant a licence or assign a share without the other co-owners' consent, subject to agreement (Section 50(3)).
• A registered patentee can assign, license or otherwise deal with the patent, subject to co-ownership rules and noted rights (Section 70).
• The Controller has civil court powers in proceedings under the Patents Act, including summoning witnesses and awarding costs (Section 77).
• Copyright remedies include injunction, damages and accounts; an innocent defendant faces limited relief (Section 55(1)).
• Infringing copies are deemed the owner's property, but no conversion remedy lies against a defendant who proves innocence (Section 58).
• No infringement suit lies for an unregistered trade mark or unregistered GI, but passing off rights remain (Sections 27 and 20).
• Trade mark relief includes injunction, damages or account of profits at the plaintiff's option, and delivery-up (Section 135).

Common mistakes

• Treating IPR as only patents and copyright. Fix: Always list all five types: patents, trade marks, copyright, geographical indications and designs.
• Writing the wrong Act or year, for example Patents Act, 1999 or Copyright Act, 1970. Fix: Memorise the pairs: 1970, 1999, 1957, 1999, 2000, in the order patents, trade marks, copyright, GI, designs.
• Saying the owner always gets damages. Fix: Check whether the defendant proves he was unaware and had no reasonable ground to believe copyright subsisted. If so, only an injunction and a profits decree are available.
• Confusing the section 55 proviso with the section 58 proviso. Fix: The section 55 proviso limits relief to an injunction and profits only where the defendant proves he was unaware and had no reasonable ground for believing copyright subsisted. Section 58 bars only the conversion remedy for infringing copies. Section 58's proviso also covers reasonable belief that the copies do not infringe.
• Saying moral rights go away when copyright is assigned. Fix: Moral rights are personal to the author. Section 38B says the performer's moral rights exist independently of assignment. Say the same for authors.
• Saying a copyright society may distribute fees equally among owners. Fix: Section 35(2) says fees are distributed, as far as may be, in proportion to the actual use of the works.
• Saying all computer programmes are non-patentable. Fix: The bar is on a computer programme per se, a mathematical or business method, or algorithms. Write the exact words.
• Treating any new form of a known drug as patentable. Fix: Under Section 3(d) a new form of a known substance is not an invention unless it enhances known efficacy. Mention the Explanation about salts, polymorphs and so on.
• Saying a co-owner must share profits from his own working of the patent. Fix: Section 50(2) says each may exercise the rights for his own benefit without accounting, unless an agreement says otherwise.
• Saying a co-owner can license freely because he owns a share. Fix: Under section 50(3), licence or assignment of a share needs the consent of the other co-owners.

Exam tips

• Begin each answer with a crisp definition. It is the easiest mark to earn and examiners look for it.
• Present the five types as a short list with their Acts and years. It is quick to write and easy to check.
• Always add the public-interest angle. Section 83 of the Patents Act gives you precise wording to quote or paraphrase.
• Keep TRIPS and WIPO separate: TRIPS sets standards under the WTO, WIPO administers treaties and services.
• Close every answer with a one-line conclusion tied to the question.
• Always cite section 55 for remedies and section 58 for infringing copies. Cite the exact section when you can.
• Write both provisos in one comparison line: section 55 proviso limits relief to injunction and profits, section 58 proviso bars conversion.
• In fair dealing answers, link the purpose to the facts and state that the extent used must be fair. Do not just list purposes.