Among the very first activities that man indulged into, trade and commerce have undoubtedly been two of the most important ones. Even today, almost every democratic country, in its Constitution, expressly provides to its people the freedom to carry out any (lawful) trade, profession and to contract with any capable person. The reason for such strong protection is because the acts of manufacturing goods and conducting business in it have become an intrinsic part of human nature itself. Furthermore, a human being’s most precious asset is his / her identity. It is this unique identity that sets you apart from every other person who breathes on this planet. The same principle is applicable to man-made products which are often very similar to each other; they crave their own unique identity. So what’s in a name? – Everything.
In the previous episode, we discussed about the protection of new inventions. We found that a patent are granted for a new product which inter alia necessarily has some utility attached to it. Basically this is innovation which makes life easier. But apart from functional ones, we are known to derive pleasure also from those inventions which embody something beyond something as rational as utility.
The fashion industry, for example, almost entirely strives on innovation as well as creativity. Many among us have a special place in our hearts for branded clothes and accessories. Celebrated brands like Vero Moda and Levi’s handsomely pay their workforce to come up with new designs for their product range every year. Novelty and uniqueness provide the incentive for consumers to buy their product and their rivals to compete more fiercely. These are essentially drawings made on paper (whether physical or on computer software) which, after being applied to some kind of cloth (or dress material), are put up for sale as the final product. Design protection doesn’t end here; it extends to every novel design which has ornamental or visual value of any kind.
The interesting aspect is that the cloth by itself has no IP in itself unless the design in the drawing is applied to it. Even though novelty is an indispensible requirement, this effort is not rewarded with patent protection. The reason for this refusal is that these products lack usefulness. We buy and use a t-shirt because we like their shape, the colorful prints, the beautiful embroidery and essentially all the ornamental and decorative features on the garment which appeal only to our eyes. This fusion of patent and copyright is classified as and protected by IP law as an Industrial Design or Design Patent.
Every design is starts out as a copyright; because it is always based on an artistic work like the sketch of a coke bottle on paper. Serving as a blue print, the sketch is then applied to plastic by using a mechanical process to arrive at what we call a Coke Bottle. But the law says that any three dimensional object (representation) based on an artistic work will also be protected by copyright law. This is where IP law facilitates the beautiful co-existence of design and copyright. The law says that for the first 50 reproductions of the artistic work, a copyright would be operative; but the moment a 51st bottle manufactured by Coca Cola, it falls under the ambit of design law. Therefore an industrial design is an enhanced form of copyright, but falls short of qualifying as a patent. This is one of the reasons the violation of this IP right is termed as ‘Piracy of Design’ instead of infringement.
This form of IP accounts for the a 15-year term of protection for a massive range of manufactured goods such as carving of jewelry, confectionary products, the cuts of your furniture, design of your clothes, in addition to the unique shape and size of your accessories and even your car and that of almost all the Fast Moving Consumer Goods (FMCGs). Since many of these products are used by most of us in everyday life, we sometimes overlook the fact that all registered design have to be novel and previously unpublished (or otherwise in the public domain). Therefore you may realize that the shape or the ‘look’ of even the headlamps of any two car brands is never identical or similar. Therefore the novelty requirement in patents is just as strictly enforced while granting a design. Unlike copyright and trademark, a design (as well as a patent) has to be mandatorily been registered for enjoying IP protection.
Along with an Industrial Design, there is another IP which is protected only after being applied to a manufactured product. But the slight difference between them in terms functionality has caused our last Fundamental IP to be the superstar among the business fraternity.
Watch the last two episodes of the first season of The Pomegranate Series to meet this blockbuster.
Ritvik M. Kulkarni
III BA LLB
Around the time Bahlul Lodi was setting up the Lodi dynasty in India, the Venetians had already begun to grant a 10-year monopoly to their inventors for novel inventions. We’ve come a long way from 15th century Venice, but the deal is still the same. Limited monopoly is granted to an inventor in relation to his / her new invention. The reason why it’s different from copyright protection is because most often, the commercial value of an invention is much more than that of a creative work. A strong patent law is indispensable to foster innovation and to constantly incentivize private companies and governments who invest billions of dollars and hire the best minds to upgrade their technological armada.
Being a creation of statute, a patent is a monopoly right granted to an inventor for a new invention by the government of a country. Since IPRs are territorial in nature, a patent granted by the Indian Patent Office (IPO) is only enforceable within the national territorial limits. The monopoly is limited because the object of granting patent is to ensure availability of the specifications of the patented invention in the public domain after the expiry of the term of patent. Therefore a mere idea, which has not been fully disclosed to the IPO in the form of specifications, is not patentable in India (as in most other countries). In addition to the specs, the best mode to create (arrive at) the said invention must also be disclosed.
An invention may be an entirely new / better form of such pre-existing invention (state of the art) or it may be a new (more efficient) process of creating such technology; both the new invention as well as the new process, are patentable. The most primary right that a patent confers on the patentee (inventor) is the exclusivity to make, use and sell the invention. Secondarily, the patentee is also given the right to license out his / her invention to any other person so as to earn royalty for it. Not all inventions are protected by patent. Section 3 of the Patents Act, 1970 provides a list of things for which a patent is not granted by the government. The reason for making these exceptions is that an invention must pass the ‘Golden Quadrangle Test’ (no, they don’t really call it that) to be eligible for a patent.
Let’s take the Tata’s Nano® for example, which has around 37 patented inventions imbedded in the car. The IPO granted these patents after a thorough examination to confirm that the specifications submitted were not available / published in the public domain; and therefore the People’s Car passed the first test of Novelty. It was realized that even the persons skilled in the art of car-manufacturing (engineers or otherwise) could not replicate the patented technology in this car without having access to the complete specifications and the best mode to apply them. After passing this test of Non-Obviousness or Inventive Step, it was abundantly clear that the patented tech could be (and that Tata intended it to be) Manufactured. Last but certainly not the least; Tata was successful in showing that the patents sought were for technology that is useful to humankind, thereby passing the last test of Utility. There it is. Any person who comes up with such an invention which can pass all the four tests listed above, is eligible for a patent. But hey, if you do not want to get a patent while still wanting a monopoly over your invention, fret not; for trade secrets are best kept forever! (Watch the previous episode to know more)
On a slightly socialist note, even though inventions are strongly protected by Patent law, it also empowers the government to grant a compulsory license to an aggrieved applicant when (among other reasons) the patentee refuses to license it on Fair, Reasonable and Non-Discriminatory (FRAND) terms. So inventors are not empowered to hoard their technology and obtain a patent without being reasonable towards its competition in the market. Be that as it may, I would still advise you to be FRAND-ly towards the geek fraternity; you might just have to secure a patent for these people!
Therefore we now know that people who invest their time and money into creating something useful and functional are fiercely protected by Patent law. But what of those create things which appease only to the eye? Watch the next episode of The Pomegranate Series to find the answer to that question and get a chance to meet the most stylish among all IP.
Ritvik M. Kulkarni
III BA LLB
In the last two episodes we saw how a creative expression of your ideas is protected by the State through copyright law. But we were left with a puzzling question: What do we do when you have a great idea, but you are unable to or you do not have the desire to express it? Remember, the whole concept of protection of intellectual property is that the State is going to protect your IP in return for full disclosure; may it be subject matter of a copyright, patent or industrial design. The State can only protect when it knows what it is protecting, and when it knows that eventually it is going to fall in public domain, after which everyone can make use of the said IP. Coincidentally there is no statute which protects undisclosed information or ideas in India.
But what happens when, for example, you come up with a great plot for a movie or a new invention or even a business method (of accounting or managing client lists etc.), but have not written it down because you think you may not be able to do justice to your idea; or because even if you can, you do not have the resources to commercialize your idea and make it successful; or because even when you have the resources, you simply do not wish for any other person to profit from your idea? After all you were the one to come up with the idea, it is only fair and reasonable that only you get to choose who can and who cannot profit from it.
Now is when the law makes an exception to the doctrine of full disclosure.
There is a simple answer: keep it secret. The law allows you to keep your ideas secret, and even extends protection to you for any misuse of that secret, even if there is no statute to that effect. The only conditions are that you must believe that your idea or information is valuable and that you have taken all possible efforts to keep this information secret and that this information is not already available in the public domain. Of course as you may know, a secret not always something that you keep only to yourself; you do tell it to people who you trust can keep it further to themselves.
These people can be bound by contract. Before you reveal your information to any person, you can enter into a contract with him / her to enter into a confidentiality clause or a non-disclosure agreement (NDA). If after entering into such an agreement, such a person discloses your secret to third party, you can sue him / her for breach of confidentiality.
NDAs are very commonly entered into between an employer and their employees in order to protect all proprietary and sensitive information of the employer.. The subject matter need not always be limited to non-disclosure; it may also extend to an agreement restraining the promise from making any use (for benefit or otherwise) of the trade secret (so disclosed) in any manner that the promisor does not allow.
Even though contractual protection is available and enforceable, trade secrets often go unprotected. This may happen because there was no express agreement that the subject matter of disclosure was not meant to be further disclosed. In India, trade secrets and confidential information have been strongly protected in common law by our Courts at various instances even in the absence of an express agreement; especially in disputes between employers and their employees (who quit their jobs and seek employment elsewhere) when the nature of the information is commercially valuable and essentially absent in the public domain.
This form of protection of your ideas is particularly very effective when even the expression of such ideas is not protected under statutory IP law. For example, while an algorithm or mathematical formula (say for selling ball pens more effectively) cannot be subject matter of patent protection in India, it can be protected as a trade secret since it is commercially valuable. Like any other IP, this information (or trade secret) can be licensed, shared as well as sold or assigned to any person by the owner of such information. At other times, even if such expression of an idea is patentable (like the chemical formula for Coca Cola®), one may simply choose to not get a patent over it requires full disclosure of the subject matter of the idea; especially when one is certain that the subject matter is difficult, if not impossible, to be discovered by reverse-engineering.
After reading this long post on contractual and common law protection of Trade Secrets and Confidential Information, you may now be able to answer the question I posed at the end of the previous episode. And now that I have told you about those expressions (of ideas) which cannot receive patent protection, it might be a good time to tell you which of them can.
Watch the next episode of The Pomegranate Series to meet the most commercially successful and the highest grossing IP blockbuster of all time.
Ritvik M. Kulkarni
III BA LLB
The Pomegranate Series
Season 1, Episode 2: An Intellectual Justification
Why should we even care to spend our time and effort protecting Intellectual Property Rights?
For any work to be done and for any property to be created, human labour is an indispensable requirement. Only when such labour is applied to an external factor, is there a chance for the creation / procurement of another factor of production. This premise is based on John Locke’s theory of the right to property; which states that property is owned by the person who applies his / her labour to any object (material or otherwise) to create such property in the object. This property may lie in a tangible object like a Dell Vostro laptop, or in an intangible one like the content of this blog-post. The existence and ownership of private property is not only recognized by our fellows in society, but is also fiercely protected by the laws of a country.
While interpreting human labour, we often sub-consciously understand it to mean the physical effort applied in works like manual labour and other tasks of which physical utility is the central requirement. However, application of intellectual effort to a sheet of paper also leads to ownership of property in the drawing of a blue-print, just the way an application of physical effort leads to creation of property in an apartment constructed on the basis of that blue-print. The purpose of IP law is to provide recognition and protection to such laborious intellectual effort.
Season 1, Episode 1 (Pilot): Welcome to IP
IP is a mega-discipline not only because of the sheer vastness of the subject, but also because of its unique ability to form a symbiotic relationship with almost every other field of law. In a field where the center of attraction is any subject-matter that is created out of intellectual/mental labour, the urge to explore the limitless world of IP is irresistible. The Cell, through this blog series, endeavors to re-introduce to all of you the mega-interesting concept(s) of Intellectual Property (IP).
This short series has been created for those curious cats who, whilst being privy to the “Basics” of this subject, are still keen to fully understand the intricacies within the basics of the subject. For one of the best ways to understand a subject is to acquire the skill to distinguish between similar concepts of one subject; the same way a Trade Mark has the ability to distinguish between similar goods manufactured by different owners (more on this in the following episodes). As for those among you who couldn’t possibly attend any of the sessions for paucity of time, this series is the simplest way for you to get introduced to the curiously amazing world of Intellectual Property Rights.
Every new episode of this season is a step closer to fully understanding a subject which in today’s world, is one of the most lucrative options for any lawyer working in any form of the profession. While we promise to do our best, any effort would be incomplete without your active participation. If you have a doubt, query, suggestion of new topics to discuss, or if you want to share your insight and/or take on a particular subject, you are encouraged to post comments on the series at any time. To satisfy your IP-tite, tune into this blog for the next episode of The Pomegranate Series.
In the words of Francis Underwood,
– Ritvik M. Kulkarni
III BSL LLB
ILS Law College, Pune