INTELLECTUAL PROPERTY RIGHTS: ISSUES AND CONCERNS

Intellectual Property Right:

IPR is a general term covering patents, copyright, trademark, industrial designs, geographical indications, protection of layout design of integrated circuits and protection of undisclosed information (trade secrets). IPRs refer to the legal ownership by a person or business of an invention/discovery attached to particular product or processes which protects the owner against unauthorized copying or imitation.(Source: Business Guide to Uruguay Round, WTO, 1995)  

HISTORICAL BACKGROUND

• Great depression of 1930s of international trade 
• Many countries imposed restriction for their safe guards. 
• 30 October 1947:23 countries signed on GATT.
• To settle disputes regarding who gets what share of the world trade.
• Enforced on 1st Jan 1948.
• 8th round: September 1986: Urugvay.
• Mr. Arther Dunkel, then Director General compiled detailed document known as DUNKEL PROPOSAL.
• In this, namely, agriculture, service & TRIPs, were included.
• 15th April 1994: Morocco: 124 countries signed an accord to give rise to WTO.

IPR DEVELOPMENTS IN INDIA

• 1947: Patents & Designs Act, 1911
• 1995: India joins WTO
• 1998: India joins Paris Convention/PCT
• 1999: Patent amendment provided EMR retrospectively from 1/1/95
• 2003: 2nd amendment in Patents Act
• Term of Patent – 20 years after 18 months publication
• Patent Tribunal Set up at Chennai
• 2005: Patents (Amendment) Act 2005
• 1999 – 2005: Plant Varieties and Farmers’ Rights Act & Biodiversity Act. Designs, TM/Copyright Acts updated GI Registry set up at Chennai. IP Acts TRIPS Compliant

Need of IPR

1. “Monetary profit is the most important, in most cases, the only motive behind man’s relentless toil, inventiveness and ingenuity”.
2. With the advent of biotechnology one of issue is legal characterization of the new invention.
3. It is created to protect the rights of individual to enjoy their creations and invention.
4. Created to insure protection against unfair trade practices.
5. To assure the world a flow of useful, informative and intellectual works.
6. To encourage the continuing innovativeness and creativity of owners of IP.

HOW TO SECURE IPR

The legislative framework for securing IPR is as follows:

1. Contract Act, 1872
2. The Trade Marks Act, & (Amendment) 1999, 2002
3. Copyright Act, 1957 & (Amendment) 1994, 1999
4. The Patents Act, 1970 & (Amendment) 2005,2006
5. The Designs Act, 2000, 2008
6. Plant Breeder Right, 2001
7. Geographical Indications of Goods (Registration and Protection)  Act, 1999, 2002

Copyright

Exclusive privilege to authors to reproduce, distributes, perform, or display their creative works. 

Requirements

• Must be an original work
• expressed in a tangible medium 

Rights to owner:

• Making copies of the work;
• distributing the copies;
• display the work publicly
• make “derivative works”
• Making modifications, other new uses of a work, or translating to another media. 

Copyright includes                                                                   

• Literary
• Artistic works
• Computer programs.   
• Musical works 

Trade and Service Marks

       A trade mark is a sign used in connection with marketing of goods or services. Appear on container or wrapper also in which they are sold.

       A service mark identifies and distinguishes source of service rather than a product.

Category of Trade Marks

Classified and protected according to their level of distinctiveness.

 1. Arbitrary or fanciful marks (most distinctive) not related to goods (e.g. Apple for computers) Fanciful marks coined or invented names (e.g. Kodak film). Highest level of protection.

2. Descriptive marks (medium distinctiveness) describe function or use, purpose of the goods (e.g. Video Buyer’s Guide) only trademark protection. 

3. Generic Marks (least distinctive) are common name for product or service (e.g. COLA). Not protected under trademark law Marks turn generic unless used properly: e.g. ASPIRIN; CELLOPHANE.

Registration procedure for trade marks.

       Application for

1. Search.  
2. Registration.

• Advertisement of TM.
• Filing of opposition.
  
• Certificate issued or hearing set
  
• Term- For a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees.

Industrial Design

• Industrial Design is ornamental or aesthetic aspect of a useful article of industry.
  
• The aspect that gives special appearance to a product of industry.

GEOGRAPHICAL INDICATIONS

It refers to an indication which identified such goods as agricultural goods, natural goods or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin and in case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be. (Source: Ministry of HRD)

It helps in protecting countries biodiversity assets, product like Scotch, whisky, Champagne, California wine falls under this category. It prevents the others from misleading the public and present unfair trade practices for the goods that have their origin from a particular, territory, region or locality. 

 Patents

       A patent describes an invention for which the inventor claims the exclusive right to make, use and sell an invention for a specific period.

       Invention is a new solution to “technical” problem. (product, process and new use)

Patentable Subject Matter

What can be patented? Section 2(1) (i)

1. Machines                               
2. Articles of Manufacture
3. Compositions of Matter
4. Plants (asexually reproducing).            
5. Designs.
6. Processes – Method of purifying a protein or nucleic acid; method of screening for useful drugs; business methods.
7. Improvements on the above.

 Unpatentable Subject Matter

1. Laws of Nature, discovery, mathematical method or scientific theory.
2. Naturally occurring compounds (i.e., as they exist in nature)
3. Abstract ideas, Mere presentation of information.
4. Technology already known.
5. A literary, dramatic, musical or artistic work or any other aesthetic creation.
6. A scheme, rule or method for performing any mental act, playing a game or a program for a computer.

 A patent has 3 basic parts:

• A grant                            
• A description ("specification") telling how to make the invention,   
• Claims ( in words, what is protected)

 Types of Patents

1. Utility Patents: machines, Compositions of matter, processes, And Biotech patents.

2. Design patents: ornamental design, layout of an article, style of a chair.                 

3. Plant patents: asexually reproducing plants. Sexually reproducing plants are covered under the PVP Act.

 A Patent Specification includes four main components:

• Background (technical field of the invention)
  
• Drawings (showing the invention );
  
• Detailed Description (enables readers to make and use the invention)
  
• Claims, define the limits of coverage.
  
• Provisional Patent Application must meet written description* requirements.

 *The application must fully describe how to make and use the invention and the best mode to carry out the invention.

   Term of protection – Twenty years counted from filing date.

 REQUIREMENTS FOR PATENTABILITY

1. Useful                
2. Novel            
3. Not Obvious failure to meet any of these criteria will prevent a patent from being issued.

USE OF PATENTS

1. Rights of the Patent Owner can make, use or sell the patented invention and prevent others to do so. 
2. Owner can License the rights to someone else can make, use or sell the patented invention and prevent others to do so (ownership does not change).
3. Owner can assign the rights of invention to someone else (Ownership changes)

Rights

•  Granted within geographical territory of country where filed
•  Rights are for the period of Grant
•  Rights can be revoked if shown that grant was not correct
•  Patents to be kept alive by paying fees

FOREIGN PATENTS

• Patent have a territorial effect. An Indian patent is enforceable only in the India, its territories, and possessions.
  
• There is no “World Patent” to give protection worldwide.
  
• Patents must be obtained in individual countries or territories. Each country has its own patent laws.
  
• Prosecution done with the aid of a Foreign Associate.
  

  The Patent Cooperation Treaty (PCT) provides preliminary examination of international application prior to entering the patent process for individual countries.

Why Protection for plants is required in India?

• To promote/ protect investment by providing appropriate returns.
• To encourage need based appropriate research
• To enable Indian plant breeders to get their varieties protected in other countries on reciprocity.
• To facilitate market access for export of seed to countries
• To ensure researcher’s access to foreign germplasm in future.

       PVP Bill 1999, passed by Parliament in August, 2001 compliance with TRIPS some form of IPR protection is necessary for plants in the form of patent protection; or

By a sui generis system; or

By a combination of both

Plant variety protection and Farmers right Act

Section 2(k) "farmer" means any person who—

1. Cultivates crops by cultivating the land himself; or
2. Cultivates crops by directly supervising the cultivation of land through any Other person; or 
3. Conserves and preserves, any wild species or traditional varieties, or adds value to such wild species or traditional varieties through selection and identification of their useful     properties.

Farmers’ Rights (Sec 39)

Farmers’ Rights Has same privilege as a breeder of a variety

. A farmers’ variety is entitled for registration if declaration has been made that the initial variety has been lawfully obtained Can save, use, sow, resow, exchange, share or sell his farm

produce including seed of a protected variety

. The farmer as such cannot sell branded seeds of a protected variety

. A farmer can claim damages if the seed of the protected variety does not give the yield as stated by the breeder. 

A Compulsory Licensing System Section 47

if seeds of a protected variety are not available after 3 yrs of registration in adequate quantity, and at reasonable price,

The Authority may grant license to a third party to

1. Undertake production, and
2. Distribution and sale of the seed on reasonable royalty 

Benefit Sharing- National Gene Fund

 Authority will invite claims for benefit sharing from persons or organizations only for Indian Citizens and Organizations

Breeder can oppose the claims.

Plant Breeders’ Rights Act (PBRA): protection to plant breeders.

A plant “breeder’ is “any person” who “originates or discovers [a new] plant variety”. – s.2 PBRA. The protection covers sale and propagation of “new” plant varieties for the period of minimally, 15-20 years”.

 Rights under PBRA Under s.5,

Use, sell, and produce of the plant variety

. Authorize others (whether conditionally or unconditionally) to use, sell, or produce the propagating material.

Exclusive right is granted to pay a prescribed annual fee. S.6(2)

and maintain the propagating material. S.30 

Protection of New varieties of plants based on

•   Novality
  
•   Uniformity
  
•   Distinctness
  
•   Stability

An invention is Novel if on the date of filing an application for a patent, its subject matter was Not Published in any Indian patent Specification, or anywhere in the world, not publicly known or used in India

Protection of Plant variety and Framer’s Right act 2001 (PPVFR):

1. To maintain balance between breeder’s and farmer’s right, India has
2. passed an act in 2001, according to this act:
3. Newly-bred varieties (EDV)
4. Extent varieties
5. Farmer’s varieties

Registered Varieties

• Issue of certificate of registration-Sec.24
  
• Publication of list of Varieties - Sec. 25
  
• Determination of benefit sharing by Authority -Sec. 26
  
• Breeder to deposit seeds or propagating material - Sec.27
  
• Registration to confer exclusive right to the breeder or his successor -Sec. 28

Duration of Protection

1. 12 years  --  annual plant species
   
2. 17 years  -- perennial plant species
   
3. 27 years  -- woody trees

Crops Covered under the PPVFRA

FIRST PHASE

Cereals:Rice, wheat, maize, sorghum, pearl millet

Legumes: Chickpea, MULaRP

SECOND PHASE

Oilseeds: Rapeseeds mustard, groundnut, soybean, sunflower, safflower, castor, sesame, linseed

Fiber Crop: Cotton, jute and Sugarcane

Fodder Varieties: Lucerne, berseem

Vegetables: Tomato, brinjal, okra, cauliflower, cabbage, potato, onion, garlic

Flowers: Rose and Chrysanthemum

 BENEFITS OF IPR

1. It encourages and safe guard intellectual and artistic creation.
2. It encourages investment in research and development efforts.
3. It provides the consumers with the result of creations and invention.
4. It enables the dissemination of new ideas and technologies quickly and widely.  

 Problems from IPR

•  IPR has encouraged monopolies; many take over’s have been motivated by access to an IPR.
•  It may adversely affect biological diversity and ecological balance.  
•  Adversely affect the livelihood of the poor in developing countries.

 Monitoring and tackling the IPR aspects of inventions.

1. Enhances cost.
2. Demands time, attention & effort and,
3. May act as a disincentives for R & D efforts.

Neglected issue of implementations

1. Insufficiency of the regulations.
2. The lack of awareness of and respect for IPRs and access regulations.
3. The efficient application/control of these regulations (Wendt and Izquierdo, 2000). 

Issues to think about

1. Higher life forms cannot be patented as not inventions,
2. Many of the arguments raised against patenting of higher life forms apply to the PBRA.
3. Beyond that, the PBRA (and its equivalent statutes in other developed countries) could become a vehicle for denying people in less developed countries and native communities access  to some plants.
4. In some developing countries, some plants serve medicinal purposes.
5. Private sector driven international norm setting
6. Non transparent and non participatory international law making
7. Trade in pirated and counterfeited goods threatens health, safety and security of consumers worldwide particularly in poor countries.
8. Entry barriers

Developing Country’s Concerns Typical Concerns

1.  Will IPR stops us from using our own traditional knowledge?
2.  Will our lives be governed by trans-nationals?
3.  What will happen to local workmen?
4.  Will there be piracy of National Biodiversity
5.  Will local initiatives be negatively impacted and stunt local development?

 Recommendations

1.  Formulation of Comprehensive IPR Policies for various sectors and Academic Institutions
2.  Training of Personnel to manage IPR
3.  Providing Access and training to use Patent information databases
4.  Creation of a consortium of IPR professionals to offer professional services for IPR work

 CONCLUSION

1. Successful implementation of the TRIPs agreement has a number of pre-requisites. The important ones being legal, administrative and institutional reforms, appropriate research investment, and first rate science and technology capability. Provided the IPR protection is adequate and effective (worldwide), the TRIPs accord can promote innovation, transfer of technology, foreign direct investment, use of genetic resources and environmental protection.
2. Creation of patent cell in the ICAR is a step in the right direction. Having a clear cut intellectual property policy and promoting patent literacy among its scientists must be the next logical step.
3. To maximize opportunities, DCs must foster and reward entrepreneurship and evolve a regulatory environment conducive to technological innovation.
4. At the international level ,in the WTO, India must lobby for establishing a linkage between the Convention on Biological Diversity (CBD) and TRIPs, stating that it is the CBD which must have primacy over the TRIPs and not the other way round.

References: 

• Blakeney, M. (2002). Protection of Plant Varieties and Farmers’ Rights, 24 Eur. Intell. Prop. Rev. 9-19.
  
• Desai, T.R. (2006). The Protection of Plant Varieties and Farmers’ Rights Act, 2001, Universal Law Publishing Co. Pvt. Ltd. pp 5-68.
  
• Helfer, Laurance, R. (2002). Intellectual Property Rights in Plant Varieties: An Overview with Option for National Governments. FAO Legal Papers Online #31.
  
• Seed Bill (2004). Department of Agriculture and Cooperation, Ministry Of Agriculture. Govt. of India, Krishi Bhavan, New Delhi.
• The Biological Diversity Act (2002). (No. 18 of 2003). The Ministry of Environment and Forests, Govt. of India, Paryavaran Bhavan, New Delhi.