INTELLECTUAL PROPERTY
(Updated on 1st August 2007)

Background

The term Intellectual Property (IP) reflects the idea that its subject matter is the product of the mind or the intellect. These could be in the form of Patents; Trademarks; Geographical Indications; Industrial Designs; Layout-Designs (Topographies) of Integrated Circuits; Plant Variety Protection and Copyright.

IP, protected through law, like any other form of property can be a matter of trade, that is, it can be owned, bequeathed, sold or bought. The major features that distinguish it from other forms are their intangibility and non-exhaustion by consumption.

IP is the foundation of knowledge-based economy. It pervades all sectors of economy and is increasingly becoming important for ensuring competitiveness of the enterprises.

International Organisations & Treaties

· A UN agency, namely, World Intellectual Property Organization (WIPO) based in Geneva administers treaties in the field of intellectual property. India is a member of WIPO.

· Department of Industrial Policy & Promotion is the nodal Department in the Government of India for all matters concerning WIPO.

· India is also member of 2 major treaties, namely, Paris Convention for the Protection of Industrial Property (relating to patents, trademarks, designs, etc.) of 1883 and the Berne Convention for the Protection of Literary and Artistic Works (relating to copyright) of 1886. Apart from these, India is also a member of the Patent Cooperation Treaty (PCT) which facilitates obtaining of patents in several countries by filing a single application.

India is also a member of the World Trade Organization (WTO). The WTO agreement, inter-alia, contains an agreement on IP, namely, the Agreement on Trade Related Aspects of Intellectual Property (TRIPS). This Agreement made protection of intellectual property an enforceable obligation of the Member States. TRIPS Agreement sets out minimum standards of intellectual property protection for Member States.

· India has complied with the obligations contained in the TRIPS Agreement and amended/enacted IP laws.

Department of Industrial Policy and Promotion (DIPP) and Intellectual Property Rights (IPRs)

· DIPP is concerned with legislations relating to Patents, Trade Marks, Designs and Geographical Indications. These are administered through the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM), subordinate office, with headquarters at Mumbai, as under:

a) The Patents Act, 1970 (amended in 1999, 2002 and 2005) through the Patent Offices at Kolkata (HQ), Mumbai, Chennai and Delhi.
b) The Designs Act, 2000 through the Patent Offices at Kolkata (HQ), Mumbai, Chennai and Delhi.
c) The Trade Marks Act, 1999 through the Trade Marks Registry at Mumbai (HQ) Chennai, Delhi, Kolkata and Ahmedabad.
d) The Geographical Indications of Goods (Registration & Protection) Act, 1999 through the Geographical Indications Registry at Chennai.

· The Controller General of Patents, Designs and Trade Marks (CGPDTM) is also in-charge of the Office of the Patent Information System, Nagpur and the Intellectual Property Training Institute, Nagpur. The office has 446 personnel in the patents and designs Offices and 291 personnel in trademarks and geographical indication Offices.

· Necessary safeguards have been built into the IP laws, in particular in the Patents law, for protection of public interest including public health.

· Along with the legislation, rules have also been amended to install a user-friendly system for processing of IP applications. All rules and forms are available on the website: http://www.ipindia.nic.in/

Intellectual Property Appellate Board (IPAB)

· An Intellectual Property Appellate Board (IPAB) has been set up at Chennai to hear appeals against the decisions of Registrar of Trademarks, Geographical Indications and the Controller of Patents.

Other IP Legislations

· Copyright is protected through Copyright Act, 1957, as amended in 1999 - administered by the Department of Higher Education.

· Layout of transistors and other circuitry elements is protected through the Semi-conductor Integrated Circuits Layout-Design Act, 2000 - administered by the Department of Information Technology.

· New varieties of plants are protected through the Protection of Plant Varieties and Farmers’ Rights Act, 2001 - administered by the Department of Agriculture and Cooperation.

· Article 39 of the TRIPs Agreement mandates protection of test data submitted to regulatory authorities for obtaining marketing approvals against unfair commercial use. A Committee under the chairmanship of Secretary, Department of Chemicals and Petro-chemicals has examined this issue and submitted its Report to the Government.

Modernisation of IP administration

· To complement the legislative initiatives, modernisation of IP infrastructure has also been undertaken and new integrated offices have been established in Delhi, Kolkata, Chennai and Mumbai. A programme costing Rs.153 crore has been implemented in the 10th Five Year Plan. The programme focused on: Infrastructure development; computerisation; human resource development; training and awareness.

· E-filing facility for patent and trademark applications has been introduced on 20.7.2007.

International Cooperation

· Bilateral cooperation agreements (MoUs) have been entered into with UK, France, USA, European Patent Office and Japan. These focus on human resources development, capacity building and awareness and outreach activities.

· Multilateral Cooperation: India has an active cooperation programme in intellectual property matters with WIPO. These, inter alia, include organization of joint seminars and workshops and study programmes besides technical assistance by WIPO experts.

Enforcement of Intellectual Property

· Civil and criminal provisions exist in various laws for dealing with counterfeiting and piracy.

· The Department of IPP has set up an Inter-ministerial Committee to coordinate IP enforcement issues.

Impact of Modernisation

Patents:
· The filing of patent applications has increased from 4824 in the year 1999-2000 to 28,882 applications in the year 2006-2007.
· The number of applications examined has gone up to 14,119 in 2006-07 against the figure of 2824 in the year 1999-2000.

Trademarks:

· The backlog of unexamined applications of approximately 5 lakh cases brought down to zero.
· Renewal of Trademarks certificates being done instantaneously in clear cases and new applications are examined within one week.
· As against only 8,010 registrations in 1999-2000, 13 times more TMs were registered in 2006-07, that is, 109,361.
· 3.38 lakh trademark certificates were issued during the last 3 years whereas only 1.65 lakh marks were registered in 64 years (since 1940 to 2004).

Geographical Indications

· 39 Geographical Indications products have been registered since September, 2003. These include Darjeeling Tea, Chanderi Saree, Pochanpally Ikat, Solapur Chaddar, Mysore Silk, Kullu Shawl, Bidriware, etc.

Designs

· The filing of applications for Design has increased from 2874 in 1999-2000 to 5372 in 2006-07.
· The number of applications examined has also gone up to 5179 in 2006-07 against the figure of 2067 in 1999-2000.
· The number of Designs registered has also increased from 1382 in 1999-2000 to 4431 in 2006-07.

Current Issues

Establishment of NIIPM
· The Government has approved a proposal for establishment of a National Institute for Intellectual Property Management (NIIPM) at Nagpur. The Institute will perform training, education, research and think tank functions.

Modernisation of IP Offices· Further modernisation of IP Offices to provide additional human resources, higher level of computerisation to support on-line processing, strengthening of data-base and novelty search facilities, awareness generation activities, accession to international treaties/conventions is being taken up in 11th Five Year Plan. Madrid Protocol on Trademarks
· Madrid Protocol, administered by WIPO, is a simple, facilitative and cost effective system for registration of International Trademarks. India’s membership of Madrid Protocol will help Indian companies to register their trade marks in the member countries of the Protocol through a single application.

· An exercise to amend the Trade Marks Act is underway to enable joining the Madrid Protocol.
ISA and IPEA
· A proposal is under consideration to seek recognition for the Indian Patent Office as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) under the Patent Co-operation Treaty. ISA and IPEAs provide search reports on novelty and examination reports on patentability of inventions.

Mashelkar Committee
· Government has set up a technical expert group under the chairmanship of former Director General of CSIR (Dr. R.A. Mashelkar) to examine the following two patent law issues:

(a) whether it would be TRIPS compatible to limit the grant of patent for pharmaceutical substance to new chemical entity or to new medical entity involving one or more inventive steps; and
(b) whether it would be TRIPS compatible to exclude micro-organisms from patenting.

· The Report of the Group is available at http://ipindia.nic.in/ipr/patent/mashelkar_committee_report.doc


more