Selection And Role Of The Patent Agent

Patent agents are professionally licensed practitioners who have the license to practice before the patent office of the country. The patent agent has a lot of responsibility when it comes to preparation of the document and filing the same before the patent office and also advising with regards to patentability. When it comes to assisting inventors with completing and submitting all patent-application paperwork, patent agents provide all those services efficiently. The role also extends to searching for prior art, writing the inventor’s legally enforceable claims of ownership to the invention, revising rejected patent applications. The agents are also the subject matter expertise in their domain.

[Image Source: solubilisseo]

Each country has different ways to select the agent as per their statutory requirements. The Indian Patents Act 1970 provides a simple definition of Patent Agent under Section 2(n) as a person for the time being registered under this Act as a patent agent. The definition does not prescribe any such role responsibility of the patent agent but as mentioned earlier, the agent will be the one who will be filing the patent application and is legally authorized to practice before the patent office. But certainly after reading the patent act and the patent rule of 2003, one can get an easy inference of the qualification and the procedure for selection of a patent agent.

Position in India

A patent agent becomes registered to practice by filing Form 22 as specified in Patent Rules 2003, accepting of which the agent will be said to have the name added in the Patent Registry maintained by the Controller. Chapter XXI deals with the patent agent in India. Section 125 specifies the registration of the patent agent in India and the controller is expected to maintain the registry for the same. Section 126 specifies the qualification of the Patent agent which says- A person shall be qualified to have his name entered in the register of patent agents if he fulfills the following conditions, namely being a citizen of India with a minimum age of 21 years. More importantly, the agent is expected to have obtained a degree in science, engineering, or technology. Passing the patent agent examination or working as a controller for ten years is specified.

Section 127 and 129 must be read together as the former deals with the rights of the patent and the latter with the restrictions. Section 127 says that: – Subject to the provisions contained in this Act and any rules made thereunder, every patent agent whose name is entered in the register shall be entitled—

  1. to practice before the Controller; and
  2. to prepare all documents, transact all business, and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.

Similarly, Section 129 speaks about the restrictions of the patent agent. It strictly restricts any other person or even the company to hold it as a patent agent until and unless it is registered.

Three Rules of the Patent Rules 2003 specifies the procedure for registering as the patent agent. Rule 109 talks about the application for registration of a patent agent where any person who desires to be the patent agent will make an application in Form 22. Rule 110 talks about the Particulars of the qualifying exam for the patent agent, which says that the qualifying exam shall consist of a written test and viva voce. The written test will consist of the question with regards to the patent act and drafting. After qualifying for the exam, the candidate becomes eligible to be registered as a patent.   

Patent Agents at GPF

Most Patent Applicants seek cost-effective patent filings as they are largely administrative (not including technical claim amendments/review of the patent specification), and therefore may compromise in quality of work/efficient filing by using low-cost providers who may not ensure accurate translation, accurate preparation of forms, and correct filing of documents/details, which subsequently may lead to their rights not being granted, or lead to rights not being enforceable, or lead to a significant increase in expense in correcting the errors. Therefore, it’s extremely important to ensure that the Patent Attorneys being used for filing and managing the global Portfolio are thorough, reliable, and have the right experience in handling the subject matter that forms part of the Applicant’s portfolio.

Having decades of relevant experience, Patent Agents at Global Patent Filing (GPF) can do due-diligence and file patent applications in compliance with defined legal norms and best practices. With all prosecution being taken care of by an expert, the whole process gets executed timely. In sum, Patent Attorneys and Support Staff at GPF provide a one-stop solution for patent filings, patent translations, and patent portfolio management, which acts as a rejuvenating factor that helps Applicants in the long process of patent issuance and enforcement.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back to us at support@ipandlegalfilings.com.

Copyrightability of Public Speeches in the USA

Overview

“I have a dream”, said Martin Luther King, Jr, in the wake of the civil rights movement, shaping the struggle for the months and years to follow. This pivotal moment, unfortunately, is paid for you to see. The whole $15, in fact, for a DVD – as King’s estate continues to own the rights to the speech.

Speeches, if written beforehand (in tangible form), are protected as any other protected work and usually falls under the purview of ‘literary’ work. Performance of the work generally follows through the same as an exclusive right towards the same. This is in accordance with Title 17 of US Code itself.

§102 on subject matter of copyright in general provides –

“(a) Copyright protection subsists… in original works of authorship fixed in any tangible medium of expression…. Works of authorship include the following categories:

  1. literary works…”

Further, §106 on exclusive rights on copyrighted works provides –

“…the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly…”

Public Domain

Thus,speeches receive copyright protection if they are written beforehand. The issue, however, lies in the ‘public’ aspect of such speeches. If the authors intended for the document to be public and heard by all and distributed by all, how can they claim copyright on it?

Works in the public domain are not covered by copyright. As a basic rule, works published before 1925 in the US are in the public domain since they have passed the 95-year prescribed limit. Generally, any work published without a copyright notice between 1925 and 1977 is in the public domain. Post 1977, irrespective of copyright notice, the work is most likely under copyright.

However, a work may also enter the public domain if –

  • the copyright protecting the work may have expired, or
  • the owner may have explicitly donated the work to the public, or
  • the work is not the type of work that copyright can protect (such as animal made art).

The issue of copyrighted speeches stands in the second item. Did Martin Luther King intend for an explicit donation of his work to the public? US courts have created the doctrine of ‘limited publication’ to tackle this question.

Doctrine of Limited Publication

Generally, a limited publication is the distribution of copies of a work to a definitely selected group with a limited purpose and without the right of diffusion, reproduction, distribution, or sale. A limited publication is not considered a distribution to the public and, therefore, is not general publication.

The US Court of Appeals for the Ninth Circuit stated that a limited publication is one which –

“communicates the contents of a [work] to a definitely selected group and for a limited purpose, and without the right of diffusion, reproduction, distribution or sale … [and is] restricted both as to persons and purpose”

On the other hand, a general publication, intended to be used by all without restriction is not protected under US copyright law. A general publication usually occurs –

“when a work was made available to members of the public at large without regard to their identity or what they intended to do with the work.”

However, the boundaries of general publication are not very clear.

Courts have generally upheld copyright protection a higher status in the US. For example, the following acts were held to still be under copyright protection –

  • exhibiting a painting at a public exhibition: American Tobacco Co. v. Werckmeisterperforming a play in public: Ferris v. Frohman
  • performing a song in public: McCarthy & Fischer v. White
  • delivering a lecture when students were allowed to take notes: Nutt v. National Inst. Incorporated for the Improvement of Memory
  • showing a film in public: Patterson v. Century Productions, Inc
  • broadcasting a work by radio: CBS, Inc. v. Documentaries Unlimited, Inc (announcement of the death of President Kennedy)
  • broadcasting a film on television: Burke v. National Broadcasting Co.

The question of a public written speech came before the courts when CBS aired footage of King’s speech without prior permission or license.

King v. CBS

King’s speech was delivered on August 28, 1963 to some 200,000 people, broadcasted live on radio and television. The speech had been written beforehand, a written version without copyright notice was available to the press during the demonstration.

Prior to appeal, the district court framed the issue as “whether the public delivery of Dr. King’s speech … constituted a general publication of the speech so as to place it in the public domain.” After discussing the relevant case law, the district court held that –

“performance coupled with such wide and unlimited reproduction and dissemination as occurred concomitant to Dr. King’s speech during the March on Washington can be seen only as a general publication which thrust the speech into the public domain.”

However, the appellate court was not of the same opinion. It stated –

“First, a general publication occurs if tangible copies of the work are distributed to the general public in such a manner as allows the public to exercise dominion and control over the work… Second, a general publication may occur if the work is exhibited or displayed in such a manner as to permit unrestricted copying by the general public.”

A mere performance is not publication, as per 17 USC §101. The court was of the opinion that the fact that the speech was orally delivered, that it was a turning point in history of the US civil rights movement, was irrelevant and did not classify it as general publication.

Similarly, distribution of the work to news media, as opposed to the general public, for the purpose of enabling the reporting of a contemporary newsworthy event, is only a limited publication.

“A performance, no matter how broad the audience, is not a publication; to hold otherwise would be to upset a long line of precedent.”

There was no evidence placed as to lack of restriction on copying and free allowance of reproduction by the press. Even the newsletters distributed at the time were disputed to be not by King’s permission. Thus, the court ruled in King’s estate’s favour.

Conclusion

Thus, speeches, public or not, are provided copyright protection if –

  1. they were created beforehand in a tangible form;
  2. if created before 1978, a copyright notice was put up, or attempts were made to restrict the use of the work;
  3. it was not created for the purpose of, or was not in actuality, distributed freely to the public.

Author: Suyash Bajpai, a student of National Law University Odisha, Cuttack, intern at Khurana & Khurana, Advocates and IP Attorneys.  In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

Fashion Industry and Challenges for IP Protection

The fashion industry is an emerging sector in the world with a market capitalization of more than 500 Billion Dollars worldwide. For this sector, the key factor is the innovation and the new idea that keep on coming every day. It is these innovations that keep this sector vigilant about their rights, especially their IP rights. The creation and marketing of the products take its recourse through IP protection. But often the protection seems to be in vain due to less effective checks and balances. The smaller and local sector is more neglected in protecting their intellectual assets; thereby we see infringed and pirated materials in the market, confusing the consumers.

fashion
Image Source : WIPO

The IP law faces many challenges in this sector with regards to the protection offered and its effective enforcement. IP law protects materials through copyright, trademark, and even to some extent patents, if the applicant can prove that the invention is novel and non-obvious and constitutes industrial applicability. While copyright does not protect the physical functionality of the materials per se, but it can protect the print pattern design if it is novel. Trademark protects the logo of the company but not the whole material. Due to such influx of IP in the fashion industry, it becomes imperative to understand the challenges faced by IP in this sector.  

Challenges faced

The primary challenge that is faced is the challenge of protection. The creation of fashion needs protection. Every fashion outlet distinguishes it from other goods and services through the mark which is also subject to protection. This protection must not only mean protecting the designer and the fashion house but also the subject matter. Some of the issues like to what extent the models may be regarded as a performer and may be vested with the performer’s right remains debatable. The recent case of Star Athletica LLC in the US which centres itself on the copyrightability of design on the cheerleader uniform shows the importance and depth of IP in the fashion industry.

Another part that comes up as a challenge is enforcement. The incoming of fast fashion describes the clothing designs that move quickly from the catwalk to the stores to meet new trends. In such a scenario, effective enforcement has become problematic. The owner of trademark has a clear idea of how far the protection of the sign can go even in a different jurisdiction. The challenge of creativity cannot be denied when it comes under the purview of enforcement. An IP regime effectively protects the holder of existing rights and also the cultural significance of certain communities. In the fashion industry, the trends, discoveries, and re-discoveries are possible due to its inherent nature of fast-growing. It’s also due to the cumulative efforts of designs, fashion houses, celebrities etc. This enforcement has to be construed in an effective manner which in any case must not limit the creativity in the industry which forms the backbone of the same.

Prevalent Position in the United States and the European Union

Even if copyright is mostly talked about as the main protection of design, in the US, the trademark is the most widely used means by which fashion brands protect them in the United States. The above-mentioned case of Star Athletica, LLC v Varsity Brands, Inc has impacted the fashion industry in the United States. The case, which went to the US Supreme Court, decided on the copyrightability of designs and the concept of “separability,” which is a pre-requisite for a garment or other useful article to be protected under US copyright law. As copyright law does not seek to protect or create a monopoly over useful articles, and as garments, dresses, shoes, bags, and so forth are considered useful items, they don’t qualify for copyright protection as a whole. The Court gave the separability test where it said that only those design features that can be separated from a garment or other utilitarian or useful item can be qualified for copyright protection in the United States. The whole issue has been a major source of frustration for designers in the United States for some time because it means that only certain aspects of their garments, and not the garment as a whole, are protectable. (https://www.wipo.int/wipo_magazine/en/2018/04/article_0006.html).

The United States has seen a changing regime of using IP for protection for fashion businesses where the business holder is shifting for a design patent protection, even lengthy process but effective. Trade dress is also gaining popularity for protecting the appearance and packaging of the product. One of the main differences between the European Union and the United States on IP regulation is the fact that the EU provides with the garments and accessories as a whole different from that of US as mentioned above concerning the separability test.

The fashion industry is more than just attire and design. It’s the ability to monetize the brand and clothing with the IPR. With an ever-growing market, touching upon a trillion-dollar market cap in the upcoming decade, effective enforcement is needed to sensitize the people in the fashion industry.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back to us at support@ipandlegalfilings.com

Thaler Vs Controller General of Patents, Design, And Trademarks

The influx of AI in various businesses intricate has forced the companies to rethink the base of a business and change their attitude towards more prospective business strategy including innovation from AI. The Special Patent Court of High Court of England & Wales in the case of Stephen L Thaler Vs Comptroller General of Patents, Design and Trade Mark ([2020] EWHC 2412 (Pat)) clarified that AI cannot be granted a patent.

artificial intelligence
Image Source: ipwatchdog

Brief of the case

This case is a celebrated case of the United Kingdom (‘UK’). It starts from two patent applications, GB1816909.4 and GB1818161.0, respectively filed by Thaler in his name, in the United Kingdom Intellectual Property Office (‘IPO’) for the grant of patents. The application specifies that Thaler was not an inventor, which is possible as Section 30 of the Patents Act 1977 (‘the Act’) states that the right to apply for a patent is transferable. IPO subsequently notified Thaler to file the statement of inventor-ship and the right to grant patents according to Section 13 of the Act which was Patent Form 7. Thaler filed the Patent Form 7 where he stated that the inventor is none other than an AI named Device for the Autonomous Bootstrapping of Unified Sentience (‘DABUS’) and since he is the owner of the AI is entitled to obtain the right to grant of the patents. To put it simply, Dabus is the inventor, and Dabus is owned by Thaler. Due to this ownership of Dabus by Thaler, Dabus has transferred the right to grant patents to Thaler. So inherently, the contention assumes that the Dabus is entitled to have patents and hence it can transfer it to its owner Thaler. This inherent assumption put in the case has caused the conundrum that whether an AI can be granted a patent, leave alone transferring it. The decision of IPO was negative, which was appealed to the High Court of England and Wales, Special Patents Court which upheld the IPO’s decision.

The Court’s decision

The decision of the court was primarily based upon the fact that Dabus was not a natural person; hence, he is not entitled to own any intellectual property. Keeping this as the principle, Court rejected the contention that Dabus can transfer the right it holds as it being the inventor. It is very important to understand that the main contention being made by Dr. Thaler was not to grant the patents to Dabus. Even Thaler in his arguments has made it clear that AI cannot hold any property being lacking person hood. Thaler acquired the right under the ownership of the inventor and is, therefore, the successor in the title of the inventor.

Perhaps if Thaler would have not specified in his application that the inventor is Dabus, there were probable chances that he might have ended up getting the patent. Reading the arguments, the prior presumption by Thaler that Dabus is an inventor is highly misconstrued.  When Thaler knows that Dabus cannot hold patents as per his contentions, his assumption that the inventor-ship can be transferred is without any base. If one cannot hold the patents, he cannot transfer.

The Court’s reasoning and the law 

The case revolves around Section 7 and 13 of the Patents Act and Section 3.05 of the IPO’s formality manual. The author feels that even if the interpretation done by the court was a bit narrow, it tried to align with that of the existing legislation but again in a manner that could be questioned.

On a bare reading of Section 3.05 of the IPO formality manual, one can misunderstand it on the premise that AI inventor is not acceptable as it does not identify a person. But it has to be understood that the manual only specifies the process of how something has to be done. Interpreting 3.05 only tells us the process that AI inventor is not acceptable but it does not explicitly prohibit AI to be granted the inventor-ship. IPO made it very clear that the dismissal of Thaler’s contention was not based on the premise of Section 3.05.

What policy implications can be taken?

The rejection of granting of the patent to Dabus can have large policy implications for the whole world. AI is the future, and businesses are becoming dependent upon AI. Not granting the patents sparks a new debate as to who will be the owner of the AI inventions. This case was a missed chance to formulate a policy that could at least bring some clarity for the inventions. The author respects the court’s decision and the limitation being propounded by having a separation of power. But the author feels that the court could, at least, have framed some guidelines which can specify the future of such cases. To dismiss the case giving a simple reason, that it being a larger policy issue, cannot be a sufficient answer. One cannot deny the fact that these cases will not come up. The author will reiterate two reasons that will substantiate the lack of policy implication and therefore, it is a missed chance. Firstly, one is not able to effectively interpret what can ‘person’ constitutes. And secondly, not able to effectively deal with the primary subject matter that who will be the owner of AI-related inventions? Instead, the court relied upon that AI cannot be granted patent since they are not a person and left the question of who should be the owner of AI inventions to a larger policy issue.

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back to us at support@globalpatentfiling.com.

Google Licensing Badge: Mechanics and the Aftermath

Introduction

Google is a goldmine to obtain a plethora of information, and users’ experience with this onslaught only extends when the information is received through images. Google image provides this to its users by enabling them to experience a world of information visually. Further, the procedure of receiving information on Google images is extremely uncomplicated and fulfilling.

However, this easy access to images by search engines soon unearths a conflict; copyright infringement.  The aforementioned conflict is a product of misplaced affirmation amongst the users that the images in search results are perhaps not protected under copyright. This behavioural flaw amongst users is indicated in a recent research conducted by Smartframe.

The research indicated that the majority of users relied on Google and Google images for searching for pictures. The research further reveals that a whopping 77% directly downloaded images from these searches, through the ‘save image as…’ option available. This research, by extension, also puts forth the risk of copyright violation of the creators at the hands of unaware users.

This issue of tremendous copyright infringement of photographers has always been a ground for the discontent towards Google’s policies to protect creators. Following this discontent and a demand to protect creators efficiently and combat unauthorized usage, Google has introduced a ‘Google Licensable Badge’ feature. The feature was launched in collaboration with Shuttershock. The feature enables artists and distributors to license their images on their terms. However, it is pertinent to contemplate what this feature holds for the artists and distributors in the aftermath of its launch.

Google Licensable Badge

Over the years Google has introduced several features to protect photographers from copyright infringement, however, to a little to no yield. The very first attempt by Google to discourage copyright infringement was in 2018 when it removed the ‘view image’ option from the search results. The intent herein was to encourage users to visit the original webpage where the images were uploaded to download it. Furthermore, a warning was also included which spelt that ‘Images may be subject to copyright.’

Later, Google introduced a feature, where users had the option to filter images as per ‘usage rights’. This filter had four options, ‘labelled for commercial reuse, labelled for commercial reuse with modifications, labelled for non-commercial use and non-commercial use with modifications’. The feature, however, was largely unfruitful in achieving the desired results. The failure can be attributed to it being extremely complicated for users to navigate through because of the extensive legal jargons. Also, the filter only worked for the ‘labels’ within which the images were tagged and failed to direct the users towards the ‘rights’ attached to the images.

The new Google Licensing Badge is an attempt at redemption from the aforementioned unsuccessful efforts to reduce copyright infringement. The Google Licensable Badge has brought forth two major features. First, the licensing information is provided to the users in the search results by a ‘Licensable’ icon which appears on the thumbnail of the image. Further, clicking on the licensable image, leads users to a page wherein additional information regarding the license is provided to the users.

google licensing

                              Source: Google

google licensing

Source: Google

The Second feature provided by Google enables the users to filter out search results under ‘usage rights’ such as ‘Creative Commons licences’ and ‘Commercial and other licenses’.

google licensing

Source: Google

Artists and distributors can avail the benefits of this feature by either of the two methods, i.e., ‘Structured data’ or ‘IPTC Photo Metadata’. Structured data is essentially a feature which associates the image with the original page with the mark-up. It is however important to add structured data to every time an image is used. IPTC Photo Metadata, on the other hand, is embedded within the image itself. Herein, the creator is only required to embed IPTC photo data once (per image) and it will move along with the photo from to page.

Implications for Artists and Distributors

Google launched this feature in collaboration with Shutterstock. Therefore, Google’s intent behind this launch can be understood from Shutterstock’s VP Content Operation, Paul Brennan’s statement:

“Google Images’ new features help both image creators and image consumers by bringing visibility to how creators’ content can be licensed properly. We are pleased to have worked closely with Google on this feature, by advocating for protections that result in fair compensation for our global community of over 1 million contributors. In developing this feature, Google has clearly demonstrated its commitment to supporting the content creation ecosystem.”

Though, it is pertinent to note that with this new feature, Google is not essentially attempting to enter into licensing business for images. Google is rather trying to create an environment wherein more and more people flock to it for image searches for a variety of reasons. The ultimate intent is to capitalize on it. This makes it imperative to analyse and gauge what this new feature entails for creators and their copyright.

The Google Licensing Badge feature is largely welcomed by creators and distributors. The reason being, the previous four license filter features made available images which were essentially in the public domain or were free to download. This resulted in no revenue incentive for photographers. The new feature enables artists to license their images on terms outlined by them and provides them with an opportunity to generate revenue.

However, the feature might not be the end and be all for the plight of artists and distributors. It has been pointed out that the license badges do not appear in the first 200 or so image search results. They only appear when the filter for ‘usage rights’ is applied.

Moreover, while the stock agencies will be able to avail this feature to the fullest, about the familiarity with the procedure, individual creators are disadvantaged in this realm. The procedure of creating licenses for the images can be fairly complicated for individual creators. To ensure that more and more creators, especially individuals, can avail this feature, it is required that the procedure is simplified.

Finally, merely providing licensing badges on Google, in isolation will not suffice. It is pertinent that other search engines and social media websites also avail similar features to ensure that photographers are protected and fairly incentivized.

Conclusion

Photographers are susceptible to high rate copyright infringement about disregard by users and easy access to images through the internet. Therefore, the ‘Google Licensing Badge’ feature has been highly anticipated and welcomed by creators and distributors. The feature ensures that the creators can draw the terms for licensing their images and provide them autonomy over it. The feature, however, runs the risk of falling short at providing complete protection to the creators.

About the author: Author: This blog is written by Shivani Kundle (intern at Khurana & Khurana, Advocates and IP Attorneys), a student of Bharati Vidyapeeth Deemed to be University, New Law College, Pune. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

New Designs Subject To Protection In Japan Are Already Popular

Under the new Design Act, 2020 in Japan enforced from April 1, 2020, designs of graphic images, architectures of buildings and interiors of buildings are now protected. As of October 1, 2020, already 450 applications have already been received for graphic images, while 204 and 132 applications have been received for building architectures and interior designs respectively.

Earlier, while images were covered under the Designs Act, they were only protected if they were recorded and displayed on a physical article. Now, the scope of “image design” has been expanded and images provided by a network and originally stored on the cloud are protected. Graphic images such as holograms projected onto walls, roads or the human body are also given protection. This includes images viewed in virtual reality and augmented reality.

This comes as a welcome change in design law in Japan, however remains to be behind the US and Europe due to the restrictive exhaustive definition under the Act.

However, the expansion of definitions to include architectures and interior designs is very welcome – where the Act remained significantly outdated. Any structure that is man-made and has land-fixed material can be protected under the former definition, including schools, factories, residences, commercial buildings, stadiums, bridges, dams, etc. The internal space and design of these structures are also protected.

On the other hand, interior designs include primarily the set-up of furniture and items that make up the aesthetic appearance of an interior – including desks, chairs, beds, displays, lighting, décor, walls, ceilings, etc. It is required to have a cohesive creative idea and design to be given protection, and not mere placement of objects.

As more and more companies try to create their distinctive brands, the new changes in the Act is shaping to be a great relief for designers.

Author: This blog is written by Suyash Bajpai  (intern at Khurana & Khurana, Advocates and IP Attorneys), a student of National Law University Odisha, Cuttack. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

Can Software Be Patented?

The 21st Century has always been about computers, software and the internet. The very first time a stored-program computer held a piece of software in electronic memory and executed it successfully, was 21st June 1948, at the University of Manchester, on the Manchester Baby computer. Do you know what was it for? That software calculated the highest factor of the integer 2^18. Looking at the progress in the field of software it is evident that we have come a long way. Today we are entering the industrial revolution 4.0 which is powered by Artificial Intelligence (AI).

software patent

Being an IP enthusiastic, I like to look at the development from an intellectual property perspective. Under the Copyright Act, 1957 the software is granted copyright protection unless it leads to a technical effect and is not a computer program per se. So generally, the software which doesn’t have a technical effect is granted protection under the copyright regime. The threshold criteria to qualify for that protection is that the computer software needs to be original and sufficient effort and skill must have been imparted to create it. If computer software only generates multiplication tables or algorithms that may not suffice the test of “sufficient effort” required for the protection. Apart from being original, the work should be first published in India or if the work is published outside India the author on the date of publication or if the author is dead at the time of his death should be the citizen of India[1].

Coming to the question of whether the software can be granted patent protection or not. In United State software is eligible for patent protection and the recent decision of the Federal Circuit clearly is paving the way for granting patent protection to the software. These inventions are referred to as “computer-implemented process”. The software can be protected in the U.S. if it is unique and tied to a machine. The software is also required to have some identifiable improvement which is non-obvious to the person skilled in the art. The “unique” requirement is another way of saying that invention must be novel and non-obvious, which are basically the patentability requirements for any invention.

Last decade, the issue of patentability of software in the United States was in flux. The issue was largely settled in the case of Bilski v. Kappos[2], which was decided by the United States Supreme Court in the year 2010. The issue before the Supreme Court was whether the “machine-or-transformation” test is the only test for patent eligibility under 35 U.S.C 101.  The Supreme Court overturned the Federal Circuit’s “machine-or-transformation” test, which required that patentable process either be tied to a machine or apparatus or it should involve the transformation of a particular article into a different state or thing as the sole test for what constitutes a process. Another important case, Alice Corp. v. CLS Bank[3] where the Supreme Court articulated a two-step test for determining whether particular software is patentable or not, reshaped the test for the patent-eligible subject matter. Both the decisions didn’t shut the door to software-based patenting or business method patenting but only made scrutiny stronger.

In India, the software industry is one of the fastest-growing industries and a pace of technological development and advancements in the field of software has made it essential to protect the intellectual property vested in the software, program and all those machines which use the programs and software. According to RBI’s annual report, the export of India’s software services stood at Rs. 4,854.6 billion in 2015-16, which constituted nearly 48 per cent of total services export of India and stood at around 3.6 percent of GDP [4]. India’s approach towards software patentability is quite parallel to the EU’s approach. Under Art. 52(2) of EPC [5], a list of items is provided which are not considered to be inventions in the field of technology as they are in themselves considered non-technical, but to make it more complicated, these items are only excluded from patentability if they are claimed “as such” according to Art. 52(3) EPC [6]. The Board of Appeal of the European Patent Office has created a reliable framework for implementation of these complicated legal provisions called the “two-hurdle” approach. The two hurdles that any software patent has to overcome are Patent-eligibility and Inventive step. Apart from these requirements, under Art. 83 EPC [7], the software patent claims should also disclose the invention in a sufficiently clear and complete manner. Similarly, the grant of a software patent is also possible in India if the software patent is embedded software in a mobile application, and/or software plus hardware combination.However, the Indian Patent Act doesn’t allow patent protection for software per se, as it is prohibited by Section 3(m) of the Indian Patent Act [8].

CSIR came up with the guidelines for examination of computer-related inventions in 2016. These guidelines discuss various provisions relating to the patentability of computer-related inventions. The following points are needed to be objectively judged to ascertain whether, looking at the invention as a whole, the invention does have an inventive step or not[9]:

  • Identify the “person skilled in the art”, i.e., competent craftsman or engineer distinguished from a mere artisan;
  • Identify the relevant common general knowledge of a person skilled in the art at the priority date;
  • Identify the inventive concept of the claim in question;
  • Identify the differences that exist between the matter cited as forming the part of the “state of art”.
  • Identify the steps which are obvious to the person skilled in the art. 

So, only because the software is code, it nowhere means that the software cannot be patented as the 21st century is that of the internet which is wholly based on the code. India is a developing nation which has 66 million population accessing the internet and it’s growing faster than ever. Due to the presence of a large pool of IT outsourcing companies, India holds the largest talent pool for software on the patent. Thus, the government is required to dive deeper into aspects of software patenting and encourage laws that enable the smooth grant of software patents.

Author: This blog is written by Utsav Sharma (intern at Khurana & Khurana, Advocates and IP Attorneys), a 2nd year student of Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

References:

[1]Section 13(2)(i) of the copyright Act, 1957.

[2]Bilski v. kappos 561 u.s. 593

[4]Reserve Bank of India – RBI Bulletin, , https://www.rbi.org.in/Scripts/BS_ViewBulletin.aspx?Id=16565..

[5]Article 52 – Patentable inventions – The European Patent Convention, Convention on the Grant of European Patents – (European Patent Convention), Part II – Substantive patent law, Chapter I – Patentability, , https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar52.html.

[6]Id.

[7]Article 83 – Disclosure of the invention – The European Patent Convention, Convention on the Grant of European Patents – (European Patent Convention), Part III – The European patent application, Chapter I – Filing and requirements of the European patent application, , https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar83.html.

[8]Section 3(m), Indian Patent Act, 1970.

[9]Guidelines for examination of CRIs.

Significance Of Intellectual Property Rights In Current Era

Introduction

In the modern era, Intellectual property rights plays a significant role on trade of every nation. In this digitized world, there stands a higher risk of creative ideas getting stolen without the consent of the author. The need for strong IP laws gives an overall contribution in the economy of the respective state. IPR is one of the sources of security for intangible properties which are still open to the public and which can be quickly replicated by anyone. IP crimes have become the part and parcel of the digitized era leading to failure of business.

ipr

Intellectual Property

Intellectual Property is a generic term that defines intangible assets that are owned by individual person or company contributing to the national as well the state economies. Throughout our economy, thousands of companies rely on adequate protection of their patents, trademarks, and copyrights, while customers make use of IP to ensure that they purchase secure, assured goods.An IP asset seeks to offer the same security protection as any other physical property, leading to its potential to offer the same comparative benefits to businesses. In a web-based world, it has now become much more relevant as it is comparatively simpler than ever to reproduce any specific template, logo, or functionality.

Types of Intellectual Property Rights

  • Copyright – It is the right that protects a tangible form of expression like book, painting etc. It protects the mannerism in which the idea is expressed.
  • Trademark – It refers to the protection of logo or design that an individual or company uses. The distinguished logo or design helps the customers to connect with the brand value and thereby ensure trust on the goods and services.
  • Patent– A patent is used to prohibit the use, selling, by another party for a defined period of time, of original production. In brief, a sovereign authority awards the inventor the IP right after an examination of its viability.

The benefits of IP Rights in modern era

  • Innovative idea a means to earn profit – Ideas do have little to no worth of their own. IP has great untapped potential to turn your innovations into products and services which are commercially viable. The registering of copyright and patent will result in a constant stream of fee and increased income that will boost the overall market result.
  • Export Business Opportunities – The productivity of a company in the export market is also improved by intellectual property. An IP right holder may use these logos or designs to sell products and services in foreign countries and may obtain a franchise arrangement with the overseas corporation, or export the proprietary products.
  • Encourage the ideas by securing them -There will still be people who will attempt to duplicate the concept or development for monetary benefit if anyone has a unique idea or development. It is also necessary to protect the IP properties until any third party is unlawfully infringed. For all forms and sizes of companies, IP security may be implemented. Thus, after evaluating the market needs and situations, a person should determine which Intellectual Property Rights (trademark, copyright or patent registration) should be used to cover various areas of IP.
  • Business Growth – Shielding their exclusive goods or services, which the rivals will use to take away market share, resulting in steady growth and profits, is very important for small scale enterprise. Losing a market share of a sector at the initial level can be dangerous in the long run to its corporate health.

The pandemic and IPR

The open COVID-19 pledge is an effort comprising a community of techies including IBM, Microsoft, Amazon, Twitter, Hewlett Packard and Sandia National Laboratories. In order to battle Covid-19 during the pandemic, they have vowed free use of their intellectual property (IP). In this acute public health crisis (not to be monetized), aspiring businesses could come forward to take advantage of this access and accelerate the production and implementation of diagnostics, vaccinations, therapeutics, medical equipment and technological solutions. Additional technology firms and education and research institutions joined this growing list.

Political leaders around the world have since formed proposals to expand access to IP rights pertaining to COVID-19. For e.g., the EU is considering buying COVID-19 related rights to set up a pool or fund of publicly owned patents. This is an important step in the IP sector and it is an extraordinary attempt by policymakers to ensure that the battle against the pandemic is not obstructed by patents. Several countries are now considering a compulsory license scheme whereby governments permit a third party to perform or use a certain procedure without the patent owner’s consent.

Conclusion

From dawn to dusk, a regular guy comes across intellectual properties. The items have a very wide range and are related to food, shelter and clothing; things of survival, comfort and pleasure. He deals with these assets, including waking up from a Gautier bed, using a supportive Sleepwell mattress and pillows, getting a cup of Taj Mahal Tea, to wearing a Nike track suite and shoes for a morning walk.A Modern Bread or Mother Dairy Milk at tea, or a cup of Nescafe, driving to the office in a Zen car, using a Compaq machine, and coming back in a car. In the evening, watching Sony Television and setting alarm to wake up in the morning in his / her Swatch watch, he uses the items which are somebody’s intellectual properties. These properties are protected by a copyright or a right to copying or a trade mark. As the life of a common man is very closely connected with papers and goods that are under human property protected by statute.Without the owner’s consent, the copying, duplication, alteration, and illegal duplication of these objects which constitute a serious offence. Therefore, for a common man, knowledge of intellectual property rights is needed.

ABOUT THE AUTHOR- This blog is written by Swastik Sahai Bisarya (intern at Khurana & Khurana, Advocates and IP Attorneys. ), a third-year student pursuing B.A.LLB (Hons.) from Institute of Law Nirma University, Ahmedabad. His areas of interest include IPR, Corporate and Commercial Laws. In case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

Benefits Of Having A Start-Up In India

India,with large number of start-ups growing exponentially day by day,now has the third largest number of start-up in the world. This not only impact the socio-economics of existing start-ups but also creates a large number of opportunities for upcoming start-ups.With the advent of Start-up India Campaign in 2016, Prime Minister Narendra Modi aimed at boosting entrepreneurship and young talent in India. The object was to finance the start-ups, provide various tax exemptions, simplify the start-up process and other benefits.

startup
[Image Source: Shutterstock]

Currently, India has the second largest number of unregistered business and the reason behind is the lack of awareness among people about the benefits of a registered business. In this blog we will first discuss the government scheme for start-up and then will discuss the requirements for formation of a start-up in India and lastly will list out all the benefits of having a Start-up.

Start-up India Action Plan

In 2016 when the government launched the Start-up India Campaign, in order to meet their objective a policy framework “Start-up India Action Plan” was made. Start-up India is one of the leading initiatives of the Government which aims to nurture new and innovative start-ups in the Country. The action plan is based on the following three pillars:

  • Simplification and Handholding
  • Funding Support and Incentives
  • Industry-Academia Partnership and Incubation

With this Action Plan, the Government hopes to accelerate spreading of the Start-up movement. Under this plan, the government aims to provide various tax benefits and give access to various funding options to start-ups if they fulfil certain criteria.

Formation of Start-up

The benefits of the Start-up India Action Plan are limited to eligible start-ups in India. An entity is considered a Start-up only if it is incorporated as a Private Limited company (under the Companies Act, 2013), or registered as a Limited Liability Partnership (under the Limited Liability Partnership Act, 2008), or as a Partnership Firm (under the The Indian Partnership Act, 1932) in India.

A start-up to be registered needs to fulfil the following conditions:

  • Not more than seven years have elapsed from its incorporation/ registration (for an entity in the biotechnology sector, this period is 10 years).
  • The turnover of the entity in any financial year since incorporation/ registration has not exceeded INR 250 million.
  • The entity is working towards innovation, development or improvement of products or processes or services, or is a scalable business model with a high potential of employment generation or wealth creation.
  • Exemption is only available to Start-ups that are private companies or LLP formed on or after 01 April, 2016;
  • It holds a certificate of eligible business from Inter-Ministerial Board of Certification
  • Plant and machinery used in the business should be new and have never been used in India before;

Benefits of having a start-up

1. TAX Benefits

One of biggest advantages of the Action Plan received by the eligible Start-ups is the number of tax benefits they receive from the Government. Following are the tax benefits to Start-up:

Tax holiday for three consecutive years:

100% deduction of profit is available to all the eligible Start-ups which are formed on or after 1 April, 2016. The eligible start-ups have the option to choose any three years out of their first 10 years, in which they want to avail the tax exemption.

Capital gains tax exemption:

To boost the start-up conducive environment in India, a long-term capital gains exemption up to INR 5 million is provided. It is based on the condition that, the amount equal to capital gain arising from the sale of capital assets should be reinvested in the units of an informed fund set up for Start-ups for a period of at least three years. However, if it is withdrawn before 3 years, then exemption will be cancelled in the year in which money is withdrawn.

Carry forward of losses despite change in ownership:

The Indian Tax management permits the security of unabsorbed tax losses of Start-ups brought in the first seven years of its functioning as long as all the shareholders at the time of incurrence of losses keep on being shareholders in the Start-up organization in the time of carry forward and set-off.Therefore, such safety is intact even if the change in shareholding is beyond 49% threshold applicable in other cases.

No Angel Tax:

To encourage Start-ups in India, eligible Start-ups have been excluded from the ambit of angel or premium taxation under Section 56(2)(viib) of the Income-tax Act, 1961. Therefore, where a Start-up issues its shares to any angel investor in consideration of funding received at a price surpassing the fair market value of the shares of the Start-up, any excess over the fair market value (i.e. premium) is not taxed.

2. Faster To Exit

The Ministry of Corporate Affairs (MCA) has notified the relevant Sections 55-58 of Insolvency and Bankruptcy Code, 2016 pertaining to the Fast Track process and has further notified that the process shall apply to Start-up (other than the partnership firm) as defined by DIPP. With the help of this notification,Start-ups will now be able to wind up their business within a period of 90 days from making an application for the same as compared to the 180-day period for other firms.

3. FFS For Start-Ups

FFS stands for “Funds of Funds”. In order to support innovation and creativity driven Start-ups, FFS of INR 10,000 crores has been established which is being managed by SIDBI. FFS invests in Alternative Investment Funds (AIFs) which, in turn, will invest in Start-ups. To this date, INR 600 crore has been released to SIDBI and a letter approving INR 1600 crore has been provided to SIDBI.

Conclusion

The Government of India by launching the Start-up India Campaign has taken a great initiative. It will not only help the young and innovative start-up ideas but also will foster the socio-economic development of the country. Today’s entrepreneurs have everything from innovation to enthusiasm but they fail when it comes to arrangement of capital. Therefore, these government scheme by exempting start-ups from taxes, benefits all those creative mindsets who have the potential to change the world but fail due to lack of capital. However, there is another side to this and if we look closely,the horizon of such exemption is very limited and some of these exemptions can be claimed only after fulfilling certain conditions. With all being said one cannot deny the fact that, the initiative by the government for promoting the start-ups has been great and have pushed various entrepreneurs to start new ventures. 

Author: Sahai Bisarya, an intern at IIPRD, in case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.

Moral Rights And The Conflict With Freedom Of Expression

Introduction

Moral Rights – as a vein of Copyright – are, essentially, personal rights vested in the author of original work and are inalienable. These rights are regarded as quintessential as they are known to fiercely protect authors. However, Moral Rights have always garnered a ground for debate for how much of scope they should be allowed in law, and subsequently in their application.

fearless girl
[Image Source: WIPO Magazine]

History is replete with cases, wherein authors or artists have invoked these rights to protect themselves from misrepresentation or wrongful attributions. For instance, recently the Mirzapur 2 creators came under siege for using a book titled, Dhabba as a prop along with a voiceover in a scene. The author of the book, Surendra Mohan Pathak, alleged misrepresentation of his work.

In a similar instance, a controversy stirred up when Javed Akhtar objected to him being attributed as the lyricist of the song ‘Ishwar Allah’ in the movie, PM Narendra Modi. Javed Akhtar was quick to condemn this attribution on Twitter and distanced himself from any contributions to the movie and the song.

Another famous case of moral rights infringement is the 2017 “Charging Bull against the Fearless Girl” controversy. In the instant case, a statue of ‘the Fearless Girl’ was installed in front of the ‘Charging Bull’. The placement was such that it altered the meaning of the ‘Charging Bull’ to a representation of gender-based oppression. The artist of the ‘Charging Bull’ took objection to this alteration of context as his intent for the aforementioned statute was to show the resilience of the American Economy.

The cases illustrated above draw light on the importance of Moral Rights for the artists. In fact, it can be argued that these are important for they protect artists’ ‘freedom of expression’, i.e., their art. However, this argument puts moral rights in a unique position of conflict between Copyrights and freedom of expression (particularly, free speech).

The blog herein will discuss at length on the concept of moral rights. Further, the author will put forth the doctrine of freedom of expression in the context of moral rights and the underlying conflict therein. The author herein will attempt to put forth certain proposals for resolving the said conflicts.

Moral Rights – Concept

Moral Rights derive their origin from the person hood theory. The theory postulates that the art or intellectual property is but an extension of its author’s personality. This is to say that the author’s personality is intricately threaded into the fabric of their artwork. This intimate connection of the artist with their art demands to be legally protected. 

Furthermore, when dealing with moral rights, the term “art” and “artist” are both of profound importance for the nexus between the two hugely impacts the value of the intellectual property. This is to say that, it is important that the creation of the artwork is correctly attributed to its creator to ensure its authenticity and its value. This unique connection between the artist and their artwork creates an interest in protecting the integrity of the artist’s work. Since moral rights maintain that artists are intimately bound to their artwork, and artists’ reputation depends on their art and the art’s value, on their artists.

This interest is widely accepted in most countries, and hence, Berne Convention through article 6 bis (1) makes it imperative for all its members to provide moral rights to artists. Since, India is a signatory of Berne Convention, Section 57 of the Copyright Act, 1957 broadly protects the moral rights of the artist. The rights guaranteed under this section can be broadly divided into (1) Right to integrity and (2) Right to attribution. The rights are perpetual and extend even after the termination of the copyright term vested with the author.

Additionally, moral rights are of huge significance to the authors because, as mentioned above, they are inalienable. Oftentimes, authors and artists because of their lack of legal awareness or financial constraints are highly susceptible to entering into contracts which might strip them off of their rights or might leave them with a shorter end of a bargain. Moral Rights ensure that artists are given the power to negotiate on terms which are fair to them.

Moral Rights of Integrity and the Artist’s Freedom of Expression

It is a noteworthy argument that an artist’s art is their instrument towards self-expression. Therefore, several scholars have put forth arguments stating that the right to integrity serves the purpose of protecting free speech or freedom of expression by giving the author autonomy.

Scholars like Spence put forth that moral rights are in consistency with free speech because it provides speakers with autonomy from participating in a public debate or from having their speech be distorted. While scholars like Huge define integrity as the ability of the public to identify the artist with their art.

Netanel argues that copyright ensures that the authors are adequately incentivised for their work by providing them with autonomy, encouraging new creation of art and inventions while enabling a “robust” democracy.

Therefore, any modification, mutilation or distortion of the original artwork amounts to infringement of the author’s self-expression or free speech. This requires the presence of laws such as the right to integrity to ensure that the authors enjoy their rights to the full extent.

However, a very stringent interpretation of this law has the potential to threaten the very principles of freedom of expression that it attempts to protect. The conflict between copyright and free speech is discussed at length in the next section.

The Conflict

As has been established earlier the right to integrity and freedom of expression resolve into interplay with each other. Hence, it is pertinent that an author’s integrity is protected.

However, this position soon warps and runs into conflict with itself. This is to say that while moral rights (especially, right to integrity) claim to protect freedom of expression, it also threatens it. If the scope of this right is left unchecked and stretched to no bounds it might create a space for creators which will fail to provide them with autonomy, discourage new creations, and hinder a democratic society. The right to integrity argument can be made from both the sides of the claim. This is the inherent and perpetual conflict that moral right runs into.

It is inarguably important that the artists must be given autonomy over their work, however, unchecked autonomy and exclusive control over one’s work can warp the democratic values copyright claims to protect. Stringent, moral rights will make it difficult for subsequent creators to create new art. It would also be exceptionally difficult to critique any art, in such a scenario.

A strict interpretation of the right to integrity has the potential to create an environment which excludes downstream creators from engaging and creating in art, especially marginalised creators. Moreover, it will make the art widely inaccessible to a large number of people, which goes in direct conflict with the cultural theory.

The potential exploitation of marginalised downstream artists and restraining their free speech is especially idiosyncratic and relevant to how the Indian market works. The market is infamous for providing selective protection to a handful of established artists while stifling the free speech of the marginalised ones.

Therefore, it is pertinent that there be a balance between an artist’s right to integrity and modifier’s free speech.

Leslie Kim Treiger-Bar-Am elucidates ways in which this balance can be achieved. Treiger argues that the right to integrity should not be used to stifle excessive criticism. Another limitation introduced on the right to integrity is that the original or “primary” work should be allowed to be used if it is in a public forum. Moreover, the doctrine of freedom of expression must be applied from within the framework of the copyright law as opposed to from outside sources.

Conclusion

Moral Rights are profoundly important for primary artists as they ensure incentives and provide vulnerable artists with bargaining power while entering into contracts and markets. These rights are especially important for their flow with the theory of personhood. Moral Rights are important for they are consistent with the doctrine of freedom of expression. However, the right to integrity soon runs into a conflict for the freedom of expression can be made from both sides of the claim. Moreover, a stringent interpretation of the same runs in direct conflict with free speech. Therefore, there must be a balance between the right to the integrity of authors and free speech of modifiers.

Author: Shivani Kundle, an intern at IIPRD, in case of any queries please contact/write back to us at aishani@khuranaandkhurana.com.