Legal Issues for the Legal Issues for the EntrepreneursEntrepreneurs

Chapter 6Chapter 6

Intellectual Property

Patents

Copyrights

Trademarks

LawyerWhy Have One?

Determine What Is Needed

Search For Lawyer With Special Expertise

How to Select LawyerOne-Time Service or On-Going?

Set-Up Comfortable Working Relationship

Determine Costs Up-Front

Patents 1856: THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS BASED ON THE

BRITISH PATENT LAW OF 1852. CERTAIN EXCLUSIVE PRIVILEGES GRANTED TO INVENTORS OF NEW MANUFACTURERS FOR A PERIOD OF 14 YEARS.

1859: THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES CALLED EXCLUSIVE PRIVILEGES (MAKING. SELLING AND USING INVENTIONS IN INDIA AND AUTHORIZING OTHERS TO DO SO FOR 14 YEARS FROM DATE OF FILING SPECIFICATION).

1872: THE PATENTS & DESIGNS PROTECTION ACT. 1883: THE PROTECTION OF INVENTIONS ACT. 1888: CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT. 1911: THE INDIAN PATENTS & DESIGNS ACT. 1972: THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON 20TH APRIL

1972. 1999: ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999) CAME INTO

FORCE FROM 01-01-1995. 2002: THE PATENTS (AMENDMENT) ACT 2002 CAME INTO FORCE FROM 2OTH

MAY 2003 2005: THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM Ist JANUARY 2005

PatentsContract Between Government & Inventor-

20 Years of ProtectionIs under the Department of Industrial

Policy & PromotionsGrants Holder Protection Of IdeaTypes

UtilityDesignBusiness Method

International- WTOInfringement

Patent Documentation

1) Patent & Trademark Office2) Disclosure Document-

Date Of Conception3) Application

a) Introductionb) Descriptionc) Claims

DOCUMENTS REQUIRED FOR FILING AN APPLICATION 1) Application form in duplicate (Form 1).

2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).

6) Priority document (if priority date is claimed) in convention application,when directed by the Controller.

7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5).

8) Power of attorney (if filed through Patent Agent).

9) Fee (to be paid in cash/by cheque/by demand draft)

MembershipIndia is a member of the following International

Organisations and Treaties in respect of Patents: a) World Trade Organization (WTO) with effect

from 01-01 -1995. b) Convention establishing World Intellectual

Property Organisation, (WIPO). c) Paris Convention for the protection of Industrial

Property with effect from Dec.7, 1998. d) Patent Co-operation Treaty (PCT) with effect

from Dec.7, 1998. e) Budapest Treaty with effect from 17th

December, 2001.

TrademarksDistinguishing Word/Name/SymbolBenefits

• Notice Of Exclusive Rights• Entitlement To Sue• Incontestable Rights• Prevent Importation Of Goods With Similar Mark• Entitled To Use Of Notice Of Registration®• Basis For Foreign Filing

Trademark Filing Requirements

1) Completion of Written Form

2) Drawing of Mark3) Five Specimens

Showing Use Of Mark4) Fee

CopyrightsPrevents Others From Copying Original

Works Of AuthorshipSoftware Added To Law In 1980Registered With Library Of CongressRequirements

Form From PTOTwo Copies Of WorkFee- Register of Copyrights

ProtectionAuthor - Life + 50 YearsInstitution - Publication + 75 Years

Copyright ProtectionBooksScriptsArticlesPoemsSongsSculpturesModels

MapsBlueprintsCollagesPrinted Material

On Board Games

DataMusic

Trade SecretsProtection Against Revealing Information

Not Covered By Federal Law

Confidentiality Agreement

LicensingContract For Rights To Intellectual

Property Of OthersProperty Owner Receives Royalty/FeeValue = Marketing Strategy To Holder Of

Patent, Copyright, Trademark

Licensing Factors•Recognizable Property?

•Complement Product/Service

•Experience With Property

•Long-Term Outlook

•Kind Of Protection

•Commitment?

•Renewal Options/Terms

Product Safety/Liability

Consumer Product Safety Act (1972)- Legal Specifications

Identify StandardsSubstantial HazardsDangerous Defects

Amended (1990) – Stricter Guidelines

Product Liability Claims

Negligence

Warranty

Strict Liability

Misrepresentation

Types Of InsurancePropertyCasualtyLifeWorkers’ Compensation

Bonding

ContractsLegally Binding Agreement Between Two

PartiesRequirements

OfferAcceptanceConsiderationCompetencyLegal$500+ Must Be In Writing

Contract IngredientsParties Named & Roles

Specified

Detailed Description Of Transaction

Exact Value Of Transaction

Signatures of All Parties Involved

Remedies For Breach

Fulfill Agreement Or Pay

Damages

Both Parties Agree To

Drop Matter