WEEK 1 · Foundations of IP
What is IP?
Creations of human mind with commercial/legal value. Intangible — protected by legal (not physical) boundaries. Includes: inventions, software, books, music, brand names, designs, trade secrets.
IP vs IPR
| IP | The creation — intangible asset |
| IPR | The legal shield — exclusive rights granted by law |
No legal protection → only IP. Legal protection granted → IP + IPR.
Characteristics of IP
- Intangible, easily replicated → needs legal protection
- Non-rivalrous + Non-excludable (public good nature) → IPR introduces legal exclusivity
- Has commercial value: license, sell, assign, royalties
- Requires registration — except copyright, which is automatic upon creation
Types of IP
| IP | Protects | Duration (India) |
|---|---|---|
| Patent | Inventions | 20 yrs from filing |
| Copyright | Expression of literary/artistic/software works (not the idea) | Life + 60 yrs (individual); 60 yrs from publication (institution) |
| Trademark | Brand names, logos, marks | 10 yrs, renewable indefinitely |
| Trade Secret | Confidential business info | Indefinite, no registration |
| Industrial Design | Visual appearance of product | 10 + 5 = 15 yrs max |
| GI | Products linked to a specific region | 10 yrs, renewable |
Key Definitions
- Infringement = using protected IP without owner’s permission
- Right as Liberty = freedom to perform an act (write, create)
- Right as License = legal permission granted to use IP
- Limited-life IP = Patent, Copyright, Industrial Design → enter public domain after expiry
- Unlimited-life IP = Trademark → survives with renewal + continued use
Patent – Core Rights
Make · Use · Sell · Offer for sale · Import · License / Assign
Copyright – Key Points
- Protects expression, NOT the idea itself
- Must be fixed in a tangible medium
- Automatic protection — no compulsory registration
- Author of film = Producer; sound recording = Producer; photo = Photographer; music = Composer
International Framework
| Agreement | Type | Key Feature |
|---|---|---|
| Paris Convention | Substantive | National treatment, priority rights — no enforcement mechanism |
| TRIPS | Substantive | Minimum standards; patentability = novelty + inventive step + industrial applicability; 20-yr term |
| PCT | Procedural | Single filing for multiple countries — NOT a worldwide patent |
| Patent Law Treaty (PLT) | Procedural | Simplifies administrative procedures |
| Berne Convention | Copyright | Automatic protection, national treatment, no compulsory registration |
- National Treatment = foreign authors get same protection as nationals
- MFN (Most-Favoured-Nation) = any advantage to one WTO member must extend to all
IP as a Subject
Interdisciplinary: Law + Management + Innovation + Business + Entrepreneurship
WEEK 2 · Patents, Trademarks, Copyright, GI & Design
Patents in India
History:
- 1911: Indian Patents & Designs Act (British era)
- Ayyangar Committee → Patents Act, 1970
- 1999 / 2002 / 2005 Amendments → TRIPS compliance; 2005 introduced product patents in all fields
| Product Patent | Process Patent | |
|---|---|---|
| Protects | Product itself | Manufacturing method only |
| Strength | Stronger | Narrower |
Lifecycle: Idea → File → Prosecution (FER + objections + amendments) → Grant → Enforcement
Patent Specification:
- Description = explains invention (background, prior art, working, drawings, abstract)
- Claims = defines legal scope of protection
- Addressed to PSITA (Person Skilled in the Art)
Types of Patent Applications:
| Type | Section | Purpose |
|---|---|---|
| Ordinary | S.7 | First Indian filing, no foreign priority |
| Convention | S.135 | Claims priority from Convention country — file within 12 months |
| PCT International | PCT | Single filing → multiple countries (not a worldwide patent) |
| PCT National Phase | S.7(1A) | Entry into Indian system after PCT |
| Patent of Addition | S.54 | Improvement on an existing main patent |
| Divisional | S.16 | Splits one application containing multiple inventions |
Application Requirements: Provisional or Complete Spec · Drawings · Form 3 (foreign filings) · Priority Document · Declaration of Inventorship · Form 26 (Power of Attorney if via agent) · Prescribed Fees
Provisional → secures priority date → Complete Spec must follow within 12 months or deemed abandoned
Who can apply: True & first inventor · Assignee · Joint applicants · Legal representative Note: Patent Agent = authorized representative only — not inventor/applicant unless independently qualifying
Patentability Criteria (TRIPS): Novelty + Inventive Step (non-obviousness) + Industrial Applicability
Non-patentable (S.3): Mere discoveries · mathematical methods · business methods · literary works · mental acts · traditional knowledge · plants/animals · inventions against public morality
FER = First Examination Report — contains technical or substantive objections
Trademarks in India
Governing Law: Trade Marks Act, 1999
Evolution: No law → IPC/Civil remedies → Merchandise Marks Act 1889 → TM Act 1940 → Trade & Merchandise Marks Act 1958 → TM Act 1999
Functions of a Trademark: Origin · Quality/Guarantee · Advertising & Investment · Information
Types:
- Word Mark · Service Mark · Collective Mark · Certification Mark
- Unconventional: Colour, Shape (accepted) · Sound, Smell, Taste (difficult to register)
Good TM: Distinctive, invented/coined word, easy to pronounce/spell/remember Avoid: Laudatory words, descriptive terms, geographical names, common surnames, community names
Registration: 10 years, renewable every 10 years indefinitely — filed with CGPDTM Passing Off: Common law remedy without registration — prove goodwill + misrepresentation + damage
Is TM a monopoly? No — gives exclusive rights over the mark only, not over the goods/services themselves.
Copyright in India
Governing Law: Copyright Act, 1957
What’s protected: Literary, dramatic, musical, artistic works · cinematograph films · sound recordings · software
Key principle: Idea–Expression Dichotomy — only expression is protected, not the underlying idea
Moral Rights (S.57): Right of paternity (attribution) + right of integrity (object to distortion) — retained even after assignment
Fair Dealing (S.52): Research, criticism, education, news reporting — not infringement
Geographical Indications (GI)
Governing Law: GI of Goods (Registration & Protection) Act, 1999 Registry: Chennai Validity: 10 years, renewable every 10 years
Conditions: Specific geographical origin + quality/characteristic/reputation + clear link to place of origin
Examples: Darjeeling Tea · Kanchipuram Silk · Aranmula Kannadi · Mysore Agarbathi · Banglar Rasogolla
Industrial Designs
Governing Law: Designs Act, 2000 Filed at: Design Wing, Patent Office — HQ: Kolkata; branches: Delhi, Mumbai, Chennai
Protects: Shape, configuration, pattern, ornamentation, lines, colours — visual/aesthetic only, NOT functional
Requirements: New/original · Undisclosed before filing · Applied to an article · Visually appealing
Cannot register: Against public order/morality · Artistic works · National emblems · Flags · Labels · IC layout-designs · Cartoons
Duration: 10 yrs initial + 5 yrs renewal = 15 years maximum
Classification: Locarno Agreement
- Class 2 = Clothing | Class 28 = Pharma & Cosmetics | Class 99 = Miscellaneous
Remedies for infringement: Injunction · Damages · Statutory compensation (~₹25,000 per contravention; ~₹50,000 per design max)
WEEK 3 · Entrepreneurial University & Patentability Search
Entrepreneurial University
Three functions of a university: Teaching (disseminate knowledge) → Research (create new knowledge) → Entrepreneurship (commercialize knowledge)
Commercialization methods: Licensing · Technology Transfer · Collaborative research · Startups · Consultancy
Push–Pull Model:
- Push = University offers innovations: patents, publications, skilled graduates
- Pull = Industry demands: funds research, seeks technological solutions
Bayh–Dole Act, 1980 (USA): Before 1980 → govt-funded research IP belonged to the government. After 1980 → universities own patents from federally funded research; can license; share royalties with inventors → TTOs created
Entrepreneurial State: Government invests in high-risk research → earns share of rewards (Risk–Reward relationship)
IP Centre / TTO / TLO: Bridge between researchers and industry — identify, screen, file, maintain, license, enforce
Research Park = cluster of companies near university for collaboration Incubator = support for startups: mentorship, funding, legal help, IP guidance
Patentability Search
Purpose: Determine if invention is novel + inventive before committing to filing
Databases: Espacenet · Google Patents · IPAS (Indian Patent Advanced Search) · USPTO · Derwent Innovation
Prior Art = any public disclosure before the priority date (patents, publications, public use, etc.)
IPC (International Patent Classification): Hierarchical system Section → Class → Subclass → Group → Subgroup — used globally to classify patent documents
Types of Patent Searches:
- Patentability Search — novelty + inventive step
- State of the Art Search — technology landscape
- Freedom to Operate (FTO) — can I commercialize without infringing?
- Validity/Invalidity Search — challenge or defend a granted patent
- Prior Art Search — for litigation purposes
Patentability Search Report — Contents: Title / scope / keywords used → references found → discussion on each reference → opinion on novelty, inventive step, industrial applicability → Conclusion: Favourable / Negative / Neutral
When a search may NOT be required:
- Limited budget
- Urgent filing (risk of losing priority)
- Vague or undefined invention
- Obscure / inaccessible literature
Limits of a search report: Only covers available databases · Quality depends on IDF input · Negative-oriented (tries to find art that destroys novelty) · May miss unpublished/recently filed prior art · Incorrect IPC codes or keywords → missed references
Prosecution History Estoppel — Festo Principle: If claims are narrowed during prosecution to overcome objections, the patentee cannot later claim the surrendered scope. A thorough search reduces unnecessary claim narrowing.
Patentability Criteria (Detailed)
| Criterion | Meaning |
|---|---|
| Novelty | Not disclosed anywhere in the world before the priority date |
| Inventive Step | Non-obvious to a PSITA; involves technical advancement + economic significance (India) |
| Industrial Applicability | Can be made or used in some form of industry |
Non-patentable subject matter (S.3, Patents Act): Mere discovery · scientific theory · mathematical method · business method · mental act · aesthetic creation · traditional knowledge · plants/animals · nuclear inventions · inventions against public order or morality · aggregation of known devices with no new function
WEEK 4 · Setting up an IP Centre
What is an IP Centre?
Also called: IPM Cell · TTO (Technology Transfer Office) · TLO (Technology Licensing Office)
Why universities need it: Research commercialization · NIRF/ARIIA rankings · UGC/AICTE/NAAC compliance · Revenue generation
NIRF (Research & Professional Practice) considers: Publications · Citations · Patents filed / granted / licensed · Collaborative projects
ARIIA evaluates: Awareness of innovation · Idea generation support · IP generation · Technology transfer · Commercialization
Four Functions of an IP Centre
1. IP Education
- Awareness: workshops, expert lectures, forums
- Basic → Ongoing → Advanced training
2. IP Intelligence ← most important function Identify research with commercial value → Evaluate commercial potential (business plan: market analysis, cost-benefit, competing tech) → Decide: patent / publish / other IP → Market Research: industry partners, licensees, negotiation
Publications must be screened before submission — once published, it becomes prior art and kills novelty
3. Registration IDF → Patentability Search Report → Provisional or Complete Spec → Patent Filing → PCT / Convention for foreign protection
| IP | Registration required? |
|---|---|
| Copyright | No — automatic upon creation |
| Trademark | Yes |
| Industrial Design | Yes |
| Patent | Yes |
4. Maintenance Record keeping · Renewals · Surrender / Abandonment · Licensing · Enforcement (cease-and-desist · infringement suit · declaratory proceedings)
Licensing models: Exclusive · Non-exclusive · Open licensing · Patent Pool
IP Policy
Why it is needed: Synchronizes research · Aligns institutional mission · Improves research quality · Incentivizes innovation through revenue sharing
Key sections of an IP Policy: Preamble · Objectives · Definitions · Ownership · IP Administration · Patent Filing · Renewals & Assignments · Commercialization · Confidentiality (NDA) · Revenue/Profit Sharing · Enforcement · Dispute Resolution
Revenue Sharing vs Profit Sharing:
| Revenue Sharing | Profit Sharing |
|---|---|
| Share of total revenue received | Share of profit after deducting filing, maintenance, and admin costs |
Typically: patents belong to the institution; copyright may remain with the creator
Social responsibility: IP Policy should align with CSR initiatives, UN SDGs, and public welfare research
Types of IP Centres
| Type | Description |
|---|---|
| Internal | Operated entirely by the university |
| External | Managed by an outside organization |
| Mixed / Hybrid | Internal staff combined with outsourced functions |
Basic research → primarily disseminated via publication. Applied research → commercialized.
AUTM — Why Technology Transfer? Commercialization for public good · Reward and retain researchers · Industry collaboration · Generate income to fund future research
Flash Revision
| Topic | Key Point |
|---|---|
| Patent term | 20 years from date of filing |
| Copyright (individual) | Life of author + 60 years |
| Copyright (institution) | 60 years from first publication |
| Trademark | 10 years, renewable indefinitely every 10 years |
| Industrial Design | 10 + 5 = 15 years maximum |
| GI | 10 years, renewable |
| GI Registry location | Chennai |
| Design Office HQ | Kolkata |
| TM Registry authority | CGPDTM |
| TRIPS patentability | Novelty + Inventive Step + Industrial Applicability |
| PCT | Common filing procedure — NOT a worldwide patent |
| Berne Convention | Automatic copyright protection; no compulsory registration |
| Bayh–Dole Act | 1980; universities can own IP from govt-funded research |
| Festo Principle | Narrowed claims during prosecution → prosecution history estoppel |
| IP Intelligence | Most important function of an IP Centre |
| Revenue vs Profit sharing | Revenue = gross income; Profit = after deducting all costs |
| Non-patentable (S.3) | Discoveries, math methods, business methods, traditional knowledge, mental acts |
| Passing Off | Common law remedy for unregistered TM: goodwill + misrepresentation + damage |
| PSITA | Person Skilled in the Art — standard for patent specification and inventive step |
| FER | First Examination Report — patent office objections after examination |