Unit-I

INTRODUCTION TO INTELLECTUAL PROPERTY

INTRODUCTION
Definition of intellectual property
There are three distinct types of property that individuals and companies can own
a) Real Property – It Refers to land or real estate
b) Personal Property – It refers to specific items and things that can be identified, such as
jewelry, cars, and art work.
c) Intellectual Property - It refers to the fruits and product of human creativity, including
literature, advertising slogans, new inventions. Thus, property that is the result of
thought, namely intellectual activity, is called Intellectual Property. In some foreign
countries, intellectual Property is referred as Industrial Property.

Protection of Intellectual Property:

Intellectual Property is a field of law that aims at protecting the knowledge created through human
effort in order to stimulate and promote further creativity. Authors who write books and musicians
who compose songs would be unlikely to engage in further creative effort unless they could
realize from their endeavors.If their work could be misappropriated and sold by others, they
would have no incentive to create further works.

Example: Pharmaceutical companies could not invest millions of dollars in to research and
development of new drugs unless they could be assured that their inventions would enable them
to recover these costs and develop additional drugs.

Thus, not only the creators of intellectual property for the public as well as benefit from protecting
intellectual property. On the other hand, if the owner of the intellectual property is given complete
and perpetual rights to his/her invention or work, the owner would have a monopoly and be
able to charge excessive prices for the invention or work, which would harm the public.

Intellectual property law attempts to resolve these conflicting goals so that owners right to reap
the rewards of their efforts are balance against the public need for competitive place. Under
federal law, a patent for a useful invention will last for only 20 years from the date an application
for the patent is filed with the USPTO. After the period of the time, the patent expires, and
any one is free to produce and sell the product.
 USPTO US Patent and Trademark Office

INTA International Trademark Association

WIPO World Intellectual Property Organization

WTO World Trade Organization

NAFTA North American Free Trade Agreement

GATT General Agreement on Tariffs and Trade

TRIPS Agreement on Trade-Related Aspects of Intellectual Property

TYPES OF INTELLECTUAL PROPERTY

There are 4 types of Intellectual Property. They are

1. Trade Marks & Service Marks:
A trademarks or Service Mark is a word, Name, Symbol; Devise is used to identify and
distinguish one’s good or services and to indicate their source, quality and ownership of
a product or services.
What is protectable?
A Trademarks is used in the marketing of a product (Such as REEBOK for shoes),
while a service mark typically identifies a service (Such as STARBUCKS for restaurant
services). A Trademarks or Service mark identifies and distinguishes the products or
services of one person from those of another.

2. Copyrights:
Copyright protects original works of authorship, including literary, musical, dramatic,
artistic, and other works. Just as trademarks are protected from the moment of their first
public use, copyrights exist from the moment of creation of a work in fixed form.
What is protectable?
• Copyright protects is available for more than merely serious works of fiction or art.
Marketing materials, advertising copy and cartoons are also protectable.
• Copyright is available for original works; no judgment is made about their literary or
artistic quality.
• Certain works are not protectable by copyright such as titles, names, short phrases or
lists of ingredients.
 • Similarly Ideas, Methods, and Processes are protectable by copyright. Copyright
protection exists automatically from the time a work is created in fixed form.
3. Patents:
A patent is a grant from the US Government that permits its owner to exclude others from
making, selling, using, or importing an invention. Patents exist only up on issuance by
the US Patent and Trademark Office (USPTO).
There are three types of patents
• Utility Patent is the most common patents and which cover useful inventions
and discoveries (such as the type writer, the auto mobile, and genetically altered
mice).
• Design Patent is cover new, original and ornamental designs for articles (such
as furniture).
• Plant Patents are new and distinct asexually reproduced plant varieties (Such as
Hybrid flowers or trees).
What is Protectable?
Patent Protection is available only for useful, novel and nonobvious inventions. Generally
patent law prohibits the patenting of an invention that is merely an insignificant addition
to or minor alteration of something already known. Moreover some items cannot be
protected by patent, such as pure scientific principles.
4. Trade Secretes:
Trade Secrets consist of any valuable commercial information that, if known by a
competitor, would provide some benefit or advantage to the competitor. No registration
or other formalities are required to create a Trade Secret, and Trade Secret endures as long
as reasonable efforts are made to protect their secrecy, recipes, marketing planes, financial
projections.
What is Protectable?
• Trademarks, copyrights and patents are all subjects to extensive statutory scams for
their protection, application and registration, these is federal law relating to trade
secrets and no formalities are required to obtain rights to trade secrets.
• Trade Secrets are generally protectable under various state statutes and cases and
by contractual agreements between the parties.

INTERNATIONAL ORGANIZATIONS, AGENCIES, & TREATIES

There are a number of international organizations and agencies that promote the use and
protection of intellectual property. They are
• International Trademark Association (INTA) is a not-for-profit international
association composed chiefly of trademark owners and practitioners. More than 5,500
trademark owners and professionals in more than 190 countries belong to INTA, together
with others interested in promoting trademarks. INTA offers a wide variety of
educational seminars and publications, including many worthwhile materials available
at no cost on the Internet.
• World Intellectual Property Organization (WIPO) was founded in 1883 and is a
specialized agency of the United Nations, whose purposes are to promote intellectual
property throughout the world and to administer 24 treaties dealing with intellectual
property, including the Paris Convention, Madrid Protocol, the Trademark Law Treaty,
the Patent Cooperation Treaty, and the Berne Convention. More than 180 nations are
members of WIPO. WIPO is headquartered in Geneva, Switzerland.
• World Trade Organization (WTO) was organized in 1995 and deals with rules of
trade among its more than 150 member nations. It resolves trade disputes and administers
various agreements, including those relating to Intellectual property. It is headquartered
in Geneva, Switzerland.
There are also a number of international agreements and treaties that affect intellectual
property. Among them are the following:
• Berne Convention for the Protection of Literary and Artistic Works (the Berne
Convention)The Berne Convention was created in 1886 under the leadership of Victor
Hugo to protect literary and artistic works. It has more than 160 member nations. The
United States became a party to the Berne Convention in 1989. The Berne Convention
is administered by WIPO and is based on the precept that each member nation must
treat nationals of other member countries like its own nationals for purposes of copyright
(the principle of “National Treatment”).
• Madrid Protocol The Madrid Protocol came into existence in 1996 and allows trademark
protection for more than 70 countries, including all 27 countries of the European
Union, by means of a centralized, trademark filing procedure. The
 United States implemented the terms of the Protocol in late 2003. This treaty facilitates a
one-stop, low cost, efficient system for the international registration of trademarks by
permitting a U.S. trademark owner to file for international registration in any number of
member countries by filing a single, standardized application form with the USPTO, in
English, with a single set of fees.
• Paris Convention One of the first treaties or “conventions” designed to address
trademark protection in foreign countries was the Paris Convention of 1883, adopted to
facilitate international patent and trademark protection. The Paris Convention is based
on the principle of reciprocity, so that foreign trademark and patent owners may obtain
in a member country the same legal protection for their marks and patents as can citizens
of those member countries. Perhaps the most significant benefit provided by the Paris
Convention is that of priority. An applicant for a trademark has six months after filing an
application in any of the more than 170 member nations to file a corresponding application
in any of the other member countries of the Paris Convention and obtain the benefits
of the first filing date. Similar priority is afforded for utility patent applications,
although the priority period is one year rather than six months. The Paris Convention is
administered by WIPO.
• North American Free Trade Agreement (NAFTA)The NAFTA came into effect on
January 1, 1994, and is adhered to by the United States, Canada, and Mexico. The
NAFTA resulted in some changes to U.S. trademark law, primarily with regard to
marks that include geographical terms.
• General Agreement on Tariffs and Trade (GATT) – The GATT concluded in 1994
and is adhered to by most of the major industrialized nations in the world. The most
significant changed to US intellectual Property law from GATT are that non use of a trade
mark for 3 years creates a presumption the mark as been abandoned and that the duration
of a utility patent is now 20 years from the filing date of the application (Rater than
17 years from the date the patent issue, as was previously the case).
• Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) Negotiated
from 1986–1994, TRIPS is administered by the World Trade Organization and
establishes minimum levels of protection that member countries must give to fellow
WTO members. Computer programs must be
 protected as copyrightable literary works, and countries must prevent misuse of
geographical names such as Roquefort or Champagne.
IMPORTANCE OF INTELLECTUAL PROPERTY RIGHT
Intellectual property (IP) is crucial for fostering innovation, creativity, and economic growth. It
encompasses legal rights granted to individuals or organizations for their creations, inventions,
and unique ideas. Here’s why intellectual property is important:

1. Encourages Innovation and Creativity: IP protection ensures that creators, inventors, and
artists are rewarded for their work. Knowing that their ideas or products are protected by
law incentivizes them to continue innovating and creating new technologies, art, literature,
and other works.

2. Economic Growth: IP fuels industries such as entertainment, technology, pharmaceuticals,

and fashion. It contributes significantly to the global economy by enabling businesses to
capitalize on their intellectual assets. By protecting creations, companies can monetize their
innovations and drive economic growth.

3. Promotes Fair Competition: IP encourages healthy competition by ensuring that creators

can protect their inventions and works. This prevents others from copying or unfairly
profiting from someone else's intellectual labor. It also ensures that companies compete
based on the value of their ideas and innovations.

4. Supports Business Development: Businesses can leverage IP as a strategic asset. IP rights,

like patents and trademarks, can be licensed, sold, or used as collateral to secure financing.
This provides businesses with additional revenue streams and enhances their market
position.

5. Protects Consumers: Trademarks, for example, help consumers identify genuine products
and services. Intellectual property laws ensure that consumers can trust the quality and
authenticity of what they purchase.

6. Cultural Enrichment: Copyright protection fosters the creation of books, movies, music,
software, and other creative works, enriching culture and society. It enables artists and
writers to profit from their works and inspires new creations.

7. Global Trade and Market Expansion: In today’s globalized world, IP helps businesses
protect their products and services in international markets. Agreements such as the World
Intellectual Property Organization (WIPO) facilitate global protection of IP, helping
businesses expand beyond national borders.
 8. Attracts Investment: Investors often seek companies with strong IP portfolios because
they see potential for profitability and long-term growth. A solid IP strategy can attract
venture capital or other forms of investment, particularly for startups and emerging
industries.

9. Fosters Knowledge Sharing: IP laws like patents provide a system for disclosing new
inventions to the public, fostering knowledge exchange and enabling others to build upon
previous discoveries. This drives further research and development.

Agencies Responsible for Intellectual Property Registration

United States Patent & Trademark Office (USPTO)
The United States Patent and Trademark Office (PTO or USPTO) is an agency in the U.S.
Department of Commerce that issues patents to inventors and businesses for their inventions, and
trademark registration for product and intellectual property identification. The USPTO, founded
more than 200 years ago. The USPTO is "unique among federal agencies because it operates
solely on fees collected by its users and not on taxpayer dollars". Its "operating structure is
like a business in that it receives requests for services—applications for patents and trademark
registrations—and charges fees projected to cover the cost of performing the services [it]
provide[s]".

United States Patent and Trademark Office

Seal of the U.S. Patent and Trademark Office

Agency overview
 Headquarters Alexandria, Virginia, U.S.
Employees 9,716 (2009)
Agency Michelle K. Lee, Director
executives Russell Slifer, Deputy Director
Parent agency U.S. Department of Commerce
Website www.USPTO.gov

Register Mark Trade Mark Copy Rights

Register Marks of Various Companies

 UNIT-II
TRADE MARKS

Introduction to Trade Mark

A trademark, trade mark, or trade-mark is a recognizable sign, design or expression which
identifies products or services of a particular source from those of others. The trademark owner can
be an individual, business organization, or any legal entity. A trademark may be located on a package,
a label, a voucher or on the product itself. For the sake of corporate identity trademarks are also being
displayed on company buildings.
A trademark is designated by the following symbols:
• ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods)
• ® (for a registered trademark)
What is Trademark?
A trade mark (popularly known as brand name) in layman’s language is a visual symbol which
may be a word signature, name, device, label, numerals or combination of colors used by one
undertaking on goods or services or other articles of commerce to distinguish it from other similar
goods or services originating from a different undertaking.
• The selected mark should be capable of being represented graphically (that is in the
paper form).
• It should be capable of distinguishing the goods or services of one
undertaking from those of others.
• It should be used or proposed to be used mark in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between
the goods or services and some person have the right to use the mark with or without
identity of that person.
Trade Marks are distinctive symbols, signs, logos that help consumer to distinguish between
competing goods or services. A trade name is the name of an enterprise which individualizes
the enterprise in consumer’s mind. It is legally not linked to quality, but linked in consumer’s
mind to quality expectation.
Key Features of Trademark
• Trademark must be Distinctive
• Trademark must be used in Commerce
TYPES OF TRADEMARK
• Trade Mark - A trademarks is a word, Name, Symbol, and Devise is used to identify
and distinguish one’s good or services and to indicate their source.
• Service Mark – A Service Mark is refers to an intangible service, in common service
usage the term Trade Mark is often is used to refer to marks for both goods and
services.
• Collective Mark – A Collective Mark is one used by a collective membership
organization, such as a labour union, fraternity, professional society, to identify that the
 person displaying the mark is a member of the organizations.
Ex: FUTURE FARMERS OF AMERICA and AMERICAN BAR ASSOCIATION
marks indicate member ship in certain organizations.
• Certification Mark – Certification Marks is a word, name, symbol, devise are combination
of, used by a person other than its owner to certify that goods or services have certain features
in regard to quality, material, mode of manufacture or some other characteristic.
Ex: GOOD HOUSEKEEPING

Purpose:

• To provide legal protection to brands or product identities.

• To prevent unauthorized use of a business's brand identity.
• To ensure consumers can distinguish between different products and services.

FUNCTIONS OF TRADE MARK

Trademark performs four functions –
• It identifies the goods / or services and its origin;
• It guarantees its unchanged quality;
• It advertises the goods/services;
• It creates an image for the goods/ services.

Acquisition of Trademark Rights

Trademarks are acquired through:

• Use in commerce: Establishing distinctiveness by using the trademark in business.

• Registration: Filing an application with the relevant trademark office (e.g., USPTO, IPO in India).

PROTECTABLE MATTER

The definition of Trademark or Service mark is that it is a word, name, symbol, device, or any
combination thereof used to identify products or services.
Clearly, words such as BARNES & NOBEL and designs or symbols such as Mercedes Benz’s
segmented circle or the Mr. Peanut design can function as Trade Marks. There are, however, a host of
other items that can be protected as marks, generally because of the flexibility in the language of the
lanham act allowing for registration of a symbol or device.
A symbol or device might include anything capable of conveying meaning to a person such as Sounds,
Shapes and Smells.
Slogans, Letters & Numbers, Logos & Symbols, Domain Names, Shapes & Containers, Fragrances,
Sounds and Moving Images, Color.

SELECTING & EVALUATING TRADEMARK

• SELECTING A MARK:
Selection of mark occurs in variety of ways. Some companies hold contests and encourage employee
to create a mark to a new product line or service.Other companies engage sophisticated research and
branding firms that will conduct surveys and create a mark and a logo or design for the company.There
 are name creation software programs that help individuals and companies create marks. Once the
mark is selected it must be screened and evaluated for use and registrability.
• Reviewing a Proposed Mark:
Once a Mark is selected, it should be carefully scrutinized to ensure that it will not be excluded from
protection under the lanham Act. Considerations include whether the mark contains scandalous
material, whether consent from a living person will be required, whether the mark is generic, whether
it is statutorily protected and whether the mark is descriptive of some features of the goods and
services offered under the mark.
Trademark Search – A TWO step process
A Trade Mark searching is TWO step processes –
1. The Preliminary Search
2. The Comprehensive Search

A Preliminary Search is conducted the records of the USPTO to make a quick determination as to
whether they mark may be available or whether there is a direct conflict that would preclude use of
the mark..
A Compressive Search of other sources (including State Trade Mark Records, Telephone Directories,
internet records, and Trade Journals) is then conducted.
 Step One:
• Preliminary Search: There are variety of sources that can be used to conduct an initial Trade
Mark search, including on line subscription services, CD ROMs, The Patent & Trade Mark
depository libraries, and the USPTO web site search services. Following are some resources
commonly used for conducting a preliminary search.
❖ Electronic Databases & CD-ROMs:
Online databases are owned by Thomson CompuMark, a renowned Trade Mark search firm,
which provides information on all active registered Trade Marks and service mark and
applications for registration filed at the USPTO.
❖ Patent and Trade Mark depository Libraries:
It is located near Washington, DC, The USPTO maintains a public search facility in Alexandria,
Virginia, that allows online searching of pending, registered and dead trademarks using the
trademark examining attorney automated system called “X-search”.
A complete trademark collection since 1870 is available online and in bound paper volumes or
on microfilm. This search facility is open to the public every weak-day.
Additionally more than 80 libraries throughout the United States are designated as Patent &
Trademark Depository Libraries. These libraries receive a wealth of information from the
USPTO, and trademark searching can be done at these libraries.
❖ USPTO website
It perhaps the easiest and least expensive way to conduct a very preliminary search is to review
the records of the USPTO (http://www.uspto.gov). The USPTO offers free public searching of
 its trademark database through its service called “Trademark Electronic Search System
(TESS)”, which allows searching of more than 4 million pending, registered, abandoned,
canceled or expired trademark records.
 Step Two:
• Comprehensive Search: It is most complete analysis of potentially conflicting marks is
provided by professional trademark search firms.
a) International Searching
A client interested in protecting his/her mark in foreign countries should conduct a search of
records of each country in which an application will be filed.
The International Trademark Association (INTA) offers direct linking to the databases of
trademark offices for Australia, Canada, European Union, Japan and the United Kingdome
(among other countries) though its website at http://www.inta.org. The USPTO’s website also
offers linking to foreign IP offices.
b) Professional search firms
Some of the better-known search firms included the following.
➢ Micro patent 250 Dodge Avenue, East Haven, CT 06512; (800)648-6787
(http://www.micropat.com) - Micro patent offers full professional searching as well as
access to its TRADEMARK.COM database.
➢ Government Liaison services (http;?/www.trademarkinfo.com) – It offers full
professional searching as well as document preparation and retrieval services.
➢ CT Corsearch, 345 Hudson street, New Yark, NY 10014; (800) 732-7241
(http://www.ctcorsearch.com) – It offers a full suite of trademark searching services,
including professional searching, document retrieval and monitoring services to ensure a
Clint’s trademark is not infringed.
• EVALUATING A TRADE MARK:
Once the results of the search have been obtained, they must be evaluated so that the
fundamental questions whether the mark is available for use and registration can be
answered.The evaluation begins with an analysis of each mark or name provided in the report
and a comparison of it to proposed mark to determine whether they are confusingly similar.
This analysis requires one to take in to account the overall commercial impressions presented
by the marks; there similarity in regard to sight, sound, and meaning; the relative strength or
weakness of the marks based on their descriptiveness or suggestiveness; and the goods are
services are offered under each mark.
➢ Reporting the results to the client
A formal written report will then be prepared for client. The letter, often called an
“availability or clearance report”, typically includes the following elements
▪ A description of the mark that was the subject of the search.
 ▪ A description of the method of the search, the databases that were checked, and the
dates applicable to the search parameters.
▪ A section describing limitations on the search report, such as a disclaimer or statement
that the results of the search cannot be guaranteed and that, due to errors in cataloging
records and files and time delays in entering marks in to databases, some marks might
not be disclosed in the search.
▪ A discussion of potentially conflicting marks.
▪ The opinion in regard to availability of the mark for use and registration and
recommendations for further action or investigation, if needed.
• Investigating and Resolving Conflicts
The report of the trademark search results may disclose several potential conflicts, and the IP
team may seek the client’s permission to investigate these conflicts further. Alternatively,
some investigations may be done before the report is provided to the client. If the client is
wedded to a mark that may be barred by another mark, several options can be explored
▪ Investigation & Research
▪ Consent to Use
▪ License & Assignment
▪ Revising the Mark

TRADE MARK REGISTRATION PROCESSES

Any person who claims to be a proprietor of a trademark and is desirous of registration of the
mark can apply. The application may be made in the name of an individual, partners of a
firm, a Corporation, any Government Department, a trust or joint applicants.
Application
1. After completing all specifications on the prescribed application form, an application
shall be filed in the office of the trademark Registrar "within whose territorial limits
the principle place of business in India of the applicant or in the case of the joint
applicants the principal place of business in India of the applicant whose name is the
first mentioned in the application, as having the place of business is situated.
2. Every application for registration of a trademark shall contain a representation of the
mark in the place provided in the form for the purpose.
3. Upon submission of an application for registration of a trademark, there can be four
outcomes:
• The application is accepted as it is.
• The application is accepted subject to certain amendment.
• The application is accepted but latter it is found to have been accepted in error.
• The application stands rejected.
• The application is thus either accepted completely or is accepted subject to
amendments.
Particulars to be filed with application for registration
The application should be filed in triplicate with the following particulars – Graphic
representation of the trademark. Five Additional representations are to be provided
corresponding exactly with one another. In the case of three dimensional mark, the
reproduction of the mark should consist of a two dimensional or photographic reproduction.
Where the trade mark contains a word or words in scripts other than Hindi or English, a
transliteration and translation of each word in English or in Hindi should be given
indicating the language to which the word belongs, at the time of filing the application to
facilitate completion of data entry at the initial stage itself.
The application may contain a declaration claiming priority as per the Paris Convention.
Procedure for series registration
Section 15 (3) makes provision for registration of trade mark as series in respect of the
same or similar goods /services where the marks, while resembling each other in the material
particulars thereof and yet differ in respect of –
1. Statement of goods or services in relation to which they are respectively used or
proposed to be used; or
2. Statement of number, price, quality or names of places; or
3. Other matter of a non-distinctive character which does not substantially affect the
identity of the trade mark.
 Location & Jurisdiction of Trademarks Office
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M. Road , Antop Hill,
Mumbai 400037 Tel: 022-2410 1144, 24101177, 24148251, 24112211 Fax: 24120808,
24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa.

UNIT -3
LAWS OF COPYRIGHT &PATENT

FUNDAMENTALS OF COPYRIGHTS
COPYRIGHT
Copyright is the set of exclusive rights granted to the author or creator of an original work, including
the right to copy, distribute and adapt the work. Copyright lasts for a certain time period after which the
work is said to enter the public domain. Copyright gives protection for the expression of an idea and
not for the idea itself.
What does copyright protect?
Copyright protects the written expression of an idea or concept - it does not protect the actual idea or
concept itself. Copyright doesn’t give the author of a work a monopoly over the ideas or information
expressed in that work – anyone can use the ideas contained in a work provided they do not use the
exact words used by the author to describe the idea or concept.
works
Literary works books, letters, articles in periodicals, newspapers and magazines,poems,
assignments, theses

Dramatic works plays, film and television scripts

Musical works notated music, i.e. scores and lyrics to a song

Artistic works photos, paintings, drawings, maps, charts, diagrams

works
Films DVDs, videos, TV programs, TV advertisements, short films, full length
theatrical releases

Broadcasts Communication to the public delivered by a broadcasting service

Performances Dance, circus act, puppet theatre, poetry reading, music concert

COPYRIGHT LAW IN INDIA

The Copyright Act of 1957, The Copyright Rules, 1958 and the International Copyright Order, 1999
 governs the copyright protection in India. It came into effect from January 1958. The Act has been
amended in 1983, 1984, 1992, 1994 and 1999. Before the Act of 1957, copyright protection was
governed by the Copyright Act of 1914 which was the extension of British Copyright Act, 1911.
The Copyright Act, 1957 consists of 79 sections under15 chapters while the Copyright Rules, 1958
consists of 28 rules under 9 chapters and 2 schedules.
Works of authorship
It refer to original creations that are eligible for copyright protection. These works are the result of
creative effort and can take various forms. The key characteristic is that they must be fixed in a tangible
medium of expression, meaning they can be perceived either directly or with the aid of a machine or
device. Here are the main categories of works of authorship typically recognized under copyright law:
1. Literary Works
• Books (novels, textbooks, poetry)
• Articles (journalism, essays)
• Scripts and screenplays
2. Musical Works
• Songs (including music and lyrics)
• Instrumental compositions
• Sheet music
3. Dramatic Works
• Plays (including spoken dialogue and stage directions)
• Choreographic works (if recorded in some fixed form)
4. Artistic Works
• Visual art (paintings, drawings, sculptures)
• Photographs
• Graphic art
• Crafts
5. Audiovisual Works
• Films and movies
• Television shows
• Videos and online content
6. Sound Recordings
• Recordings of music, spoken word, and other sounds
7. Architectural Works
• Architectural drawings and designs
• Construction of buildings (the design of the building itself)
8. Software and Computer Programs
• Code (both source code and object code)
 • Software applications
9. Compilations
• Databases (if the selection and arrangement are original)
• Anthologies (collections of literary works)
10. Derivative Works
• Works that are based on one or more pre-existing works, such as adaptations, translations, or
modifications, provided that they incorporate enough original material.
Important Characteristics
• Originality: To qualify for copyright, a work must be original, meaning it contains a minimal
amount of creativity and is not directly copied from another source.
• Fixation: The work must be fixed in a tangible medium of expression, which generally means it
must be written down, recorded, or otherwise captured in a form that allows it to be perceived or
reproduced.
Copyright Registration
The purpose of copyright registration is to place on record a verifiable account of the date and content
of the work in question, so that in the event of a legal claim, or case of infringement or plagiarism, the
copyright owner can produce a copy of the work froman official government source.
Before 1978, in the United States, federal copyright was generally secured by the actof publication

with notice of copyright or by registration of an unpublished work.[1]This has now been largely
superseded by international conventions, principally the Berne Convention, which provide rights
harmonized at an international level without a requirement for national registration. However, the U.S.
still provides legal advantages for registering works of U.S. origin.
The application for copyright registration

• Parties who may file applications: The following persons are entitled to submit an application
for registration of copyright.
o The Author
o The Copyright Claimant
o The owner of exclusive rights
THE APPLICATION PROCESS AND REGISTRATION OF COPYRIGHT

 Filing the application: After the correct application form has been selected and completed and the
correct deposit materials have been identified, the application may be filed with the US copyright
office. The application may be sent by regular or express mail.
 Examinations of the application and copyright registration: The copyright office will assign the
application to a specialist. There are four major examining sections inthe copyright office.
o One for Literary Works
o One for Works of the performing arts
o One for Works of Visual Arts
o One for Renewals
 ✓ The examiner will review the application to ensure all information is complete and compare the
application and deposit for consistency.
✓ The Copyright Office provides information within approximately 12 to 16 weeks of filing the
application.
✓ The copyright office will either issue a certificate of registration or contact the applicant by
letter or phone asking for additional information or explaining why the application has been
rejected.
✓ If the copyright office has questions, the applicant usually has 120 days to respond. If failure
to respond within the time required generally results in closing of the file without further
notification.
✓ If registration is later desired a new application, deposit and fee must be submitted.
✓ If the application is acceptable, the copyright office will register the copyright by returning a
certificate of registration, namely, a copy of the application stamped with a seal, a registration
number and date of registration.
✓ A copyright registration is effective on the date the copyright office receives a complete
application package in acceptable form, regardless of how long it may take to process the
application.
✓ The copyright right is in the process of implementing an electronic filing system called the
Copyright Office Electronic Registration, Recordation, and Deposit System (CORDS).
✓ The CORDS project aims to develop and implement a totally electronic system of receipt and
processing of copyright applications, deposited works, and related documents over
communication networks such as the internet.
✓ The copyright right office began beta testing online filing of applications. Those who file online
will be given a reduced application fee i.e. $35 than the paper application fee of $45.

 Refusal of Registration: If registration is refused by the copyright office, reconsideration can be

requested. The applicant appeals the adverse decision by making a return request for reconsideration
and paying the fee of $250 within three months after refusal.
✓ A response in writing will made by the examining division, Further reconsideration may
requested may be requested of the copyright office board of review upon payment of an
additional fee of $500.
✓ If registration is still refused the application may seek judicial review in the United States
District Court for the District of Columbia.
 Special Handling: In Some instances applicants may not be able to wait 12 to 16 weeks to
receive motivation that a copyright has been registered.
✓ Special handling is grated only in special circumstances. These are
• Pending or prospective litigation
• Customs matters
 • Contract or publishing deadlines that necessitate the expedited process (expedited
means something happen more quickly)
✓ Special handling is typically requested by letter stating the reasons why special handling is
needed. The request must also include a signed statement certifying that the information
contained in the request is correct to the best of the requester’s knowledge.
✓ Once a request for special handling is approved, every effort is made by the copyright office to
process the application or request for recordation within five working days.
✓ The present fee for a special handling request for an application is $685(plus the usual
application filing fee of $45).
 Supplementary Copyright Registration: If information in a registration is incorrect or
incomplete, an application may be field for Supplementary copyright registration to correct the error
or amplify the information given. Supplementary registration can be made only if a basic copyright
registration for the same work has already been issued.
Supplementary Copyright Registration is required are the following
o The original application identified an incorrect author.
o The work was registered as published when publication had not yet takenplace.
o A coauthor was omitted.
o A change in the name or title of the work has occurred.
 Benefits of securing registration: Because of Copyright protection exists from the time a work is
created, securing a registration from the copyright office is not necessary to protect copyright
material. Federal copyright law provides several inducements to encourage copyright owners to
secure registration. Among these advantages are the following:
✓ Registration establishes a public record of the clime of copyright.
✓ Before an infringement suit may be filed in courts, registration is necessary for works of US
origin and for foreign works not originated in Berne Union Country.
✓ If made before or within five years of publication, registration constitutes prima facie evidence
of the validity of the copyright and of the facts stated in the certificate.
 Preregistration: A new procedure in the Copyright Office allows preregistration for
certain classes of works that have a history of prereleases infringement. Preregistration
allows a copyright owner to sue for infringement while a work is still being prepared
for commercial releases.
Preregistration is not a substitute for regular registration but an simply an indication of
intent to register a work once it is completed or published.
 SEARCHING FOR COPYRIGHT OFFICE RECORDS
It is necessary to determine whether copyright for a work has been registered whether copyright are
roistered to a company or individual.
Ex: If a company is selling of all its assets to another, the buyer will typically conductdue diligence
and review records of the USPTO and the copyright office to determine what patents, trademarks
and copyrights are registered in the sellers name so these can be transfer to the buyer.
There is a verity of ways to search Copyright Office records
✓ The records of the Copyright Office are open for inspection and searching by the public. The
Copyright Office cannot give legal advice, answer questions on possible infringement,
recommended publishers, or enforce contacts.
✓ The library of Congress cad catalog can be searched; however, only a portion of the work
deposited for copyright are selected for inclusion in the libraries collections and the library does
not always fully catalog those works it selects.
✓ Most Copyright records since 1978 can be searched over the internet. This is an experimental
system best used for short and simple searches.
✓ The Copyright Office itself will conduct searches for &150 per hour. The reference and
bibliography section of the copyright office will conduct a search and provide an factual report
on the results of the search.
✓ Private companies can conduct searches. Just as companies will search USPTO records and
provide report of the trademark, they will conduct searches of Copyright Office records, file
applications and other documents and provides copies of documents.
COPYRIGHTS NOTICE
Copyright is a form of protection provided by U.S. law to authors of “original works of authorship.”
When a work is published under the authority of the copyright owner, a notice of copyright may be
placed on all publicly distributed copies or phonorecords. The use of the notice is the responsibility
of the copyright owner and does not require permission from, or registration with, the Copyright
Office. The notice for visually perceptible copies should contain all three elements described below.
They should appear together or in close proximity on the copies.
1. The symbol © (letter C in a circle); the word “Copyright”; or the abbreviation “Copr.” The year
of first publication. If the work is a derivative work or a compilation incorporating previously
published material, the year date of first publication of the derivative work or compilation is
sufficient.
2. The name of the copyright owner, an abbreviation by which the name can be recognized, or a
generally known alternative designation of owner
 PATENTS

FUNDATION OF PATENT LAW

A patent is a grant from the US Government that permits its owner to exclude others from making, selling,
using, or importing an invention. Patents exist only up on issuance by the US Patent and Trademark Office
(USPTO).
There are three types of patents
• Utility Patent is the most common patents and which cover useful inventions anddiscoveries
(such as the type writer, the auto mobile and genetically altered mice).
 • Design Patent is cover new, original and ornamental designs for articles (such asfurniture).
• Plant Patents are new and distinct asexually reproduced plant varieties (Such asHybrid
flowers or trees).
What is protectable?

➢ Patent protection exists for 20 years from date of filing of an application for Utility Patent
and Plant Patents and 14 years from the date of grant for Design Patent. After this period
of time, the invention falls in to the public domain and may be used by any person without
permission.
• After the Patent expires, any number of public is free to use, manufacture or sell the
invention. Thus, patent law strikes a balance between the need to protect inventors and need
to allow public access to important discoveries.
RIGHTS UNDER THE FEDERAL LAW &PATENTABILITY

As stated Patent Law derives from the constitution, in 1790, pursuant to the direction
provided in the constitution, congress passed the fist Patent statute, which in large part
relied upon English law. Patent law and specified the four basic conditions, still existing that
an invention must satisfy to secure Patent protection.
1. The invention must be a Utility, Design or Plant patent.
2. It must be useful.
3. It must be novel in relation to the prior art in the field.
4. It must not be obvious to a person of ordinary skill in the field.
PATENT SEARCHING PROCESS
THE NEED FOR SEARCH
Patentability requires novelty and non-obviousness. The only predictable methods ofdetermining
whether an invention is new and non-obvious to conduct a search for the prior art including
patent records and printed publications. The patentability search, sometimes called a novelty
search or prior search.
PATENT SEARCH RESOURCES
USPTO Patent Search Rooms: The USPTO maintains a Patent Search Room at its Alexandria
Virginia office. The search rooms are open to the public and hoses all US patents granted since 1970.
Searching is usually accomplished by using state-of-the-art computer database. The USPTO also
offers a Scientific and Technical Information Cener at its office, which offers more than 120000 volumes
of scientific and technical books as well as numerous journals and foreign patents.
Patent and Trademark Depository Library (PTDL): For many decades, the Patentand Trademark
Depository Library Program has done an admirable job of educating the public on patent and trademark
resources and search tools and in communicating important information regarding USPTO initiatives.
 In the early years, much effort was devoted toward distributing print and later CDs containing patent
and trademark documents. Over the past decade, the technology landscape has shifted profoundly with
the availability of a number of free patent databases on the Internet.
UPSTO online database:
The USPTO online database includes all patents issued science 1790 and applications published
science March 2001. The database more than seven million patents includes information about US
patents, offering the full text of patent granted science 1976, and the patent number and current US
classification for all patents granted from 1790 through 1975. Copies of patents may easily be ordered
through the USPTO web site or via telephone upon payment of moderate fee.
PATENT SEARCH METHODS
There are two primary methods that can be used t search for prior art i.e.
I. The Keyword Search Methods
II. The Classification Search Method.

➢ The Keyword Search Methods: The main pitfall of keyword searching is the English Language
as it is used and abused. However, here in detail are the specific problems:

• Poor Translations
• Too Many Synonyms
• No Spelling Standards
• Different Spin
• The Classification Search Method: The theory of classification searching is based on
professionals in patent office’s making judgment calls to classify patentdocuments according to
the subject matter claimed. Thus, classified patent files should be a perfect search tool.
Unfortunately, the decisions of classifiers are often subjective, incomplete and random.
THE PATENT APPLICATION PROCESS
• Preparing the appilcaton:
➢ Patent specification: A patent specification is a document describing the invention for which a
patent is sought and setting out the scope of the protection of the patent.
➢ Claims: The claims of a patent specification define the scope of protection of a patent granted by
the patent. Claims are often amended during prosecution to narrow or expand their scope.
➢ Filing date: The filing date of an application is important as it sets a cutoff date after which any
public disclosures will not form prior art. The first person to file an application for protection of
that invention. To obtain a filing date, the documents filed must comply with the regulations of
the patent office in which it was filed. A full specification complying with all rules may not be
required to obtain a filing date.
➢ Security issues: Many national patent office’s require that security clearance isgiven prior to
the filing of a patent application in foreign countries. Suchclearance is intended to protect
national security by preventing the spread andpublication of technologies related to (amongst
 others) warfare or nuclear arms.
➢ Publication: Patent applications are generally published 18 months after the earliest priority date
of the application. Prior to that publication the applicationis confidential to the patent office.
Filing the patent Application

• A patent application should contain:

• Application for grant of patent in Form-1.
• Applicant has to obtain a proof of right to file the application from the inventor. The Proof of
Right is either an endorsement at the end of the Application Form-1or a separate assignment.
• Provisional / complete specification in Form-2.
• Statement and undertaking under Section 8 in Form-3, if applicable.
• An applicant must file Form 3 either along with the application or within 6 months from the date
of application.
• Declaration as to inventor ship shall be filed in Form 5 for Applications accompanying a Complete
Specification or a Convention Application or a PCT Application designating India. However, the
Controller may allow Form-5 to be filed within one month from the date of filing of application,
if a request is made to the Controller in Form-4.
• Power of authority in Form-26, if filed through a Patent Agent. In case a general power of
authority has already been filed in another application, a self attested copy of the same may be
filed by the Agent. In case the original general power of authority has been filed in another
jurisdiction, that fact may also be mentioned in the self attested copy.
• Priority document is required in the following cases:
• Convention Application (under Paris Convention).
• PCT National Phase Application wherein requirements of Rule 17.1(a or b) of regulations made
under the PCT have not been fulfilled.
• The priority document may be filed along with the application or before the expiry of eighteen
months from the date of priority, so as to enable publication of the application. In case of a request
for early publication, the priority document shall be filed before/along with such request.
• Every application shall bear the Signature of the applicant or authorized person / Patent Agent
along with name and date in the appropriate space provided in the forms.
• The Specification shall be signed by the agent/applicant with date on the last page of the
Specification. The drawing sheets should bear the signature of an applicant or his agent in the
right hand bottom corner.
• If the Application pertains to a biological material obtained from India, the applicant is required
to submit the permission from the National Biodiversity Authority any time before the grant of
the patent. However, it would be sufficient if the permission from the National Biodiversity
Authority is submitted before the grant of the patent.
• The Application form shall also indicate clearly the source of geographical origin ofany biological
material used in the Specification, wherever applicable.
Patent application flow chart

Patentability search conducted

Invention satisfies patentability

requirements; file application

Prepare and file invention

disclosure statement with
application or within 3 months of
filing date

Prepare and file invention

disclosure statement with
application or within 3 months of
filing date

Application is examined byUSPTO

close file Application is rejected;
close file

Notice of allowance issued by

USPTO

Application pays issue fee and

publication fee (if required) within
three months

Patent is issued
 UNIT -4

TRADE SECRETS

Trade secret:
A trade secret is any practice or process of a company that is generally not known outside of the
company. Information considered a trade secret gives the company a competitive advantage over its
competitors and is often a product of internal research and development.
To be legally considered a trade secret in the United States, a company must make a reasonable effort in
concealing the information from the public; the secret must intrinsically have economic value, and the trade
secret must contain information. Trade secrets are a part of a company's intellectual property. Unlike a patent,
a trade secret is not publicly known.
Trade secrets may take a variety of forms, such as a proprietary process, instrument, pattern, design, formula,
recipe, method, or practice that is not evident to others and may be used as a means to create an enterprise
that offers an advantage over competitors or provides value to customers.
Trade secrets are defined differently based on jurisdiction, but all have the following characteristics in
common:
• They are not public information.
• Their secrecy provides an economic benefit to their holder.
• Their secrecy is actively protected.
As confidential information (as trade secrets are known in some jurisdictions), trade secrets are the
"classified documents" of the business world, just as top-secret documents are closely guarded by
government agencies.

❖ To protect its trade secrets, a company may require employees privy to the information to
sign non-disclosure agreements (NDA) upon hire.
Real-World Examples

➢ There are many examples of trade secrets that are tangible and intangible. For
example, Google's search algorithm exists as intellectual property in code and is regularly
updated to improve and protect its operations.
➢ The secret formula for Coca-Cola, which is locked in a vault, is an example of a trade secret
that is a formula or recipe. Since it has not been patented, it has never been revealed.
➢ The New York Times Bestseller list is an example of a process trade secret. While the list
does factor in book sales by compiling chain and independent store sales, as well
as wholesaler data, the list is not merely sales numbers (books with lower overall sales may
make the list while a book with higher sales may not).
Advantages of Trade Secrets

1. Indefinite Protection: Unlike patents, which typically last for a limited time (20 years in the U.S.
after filing), trade secrets can last indefinitely as long as they remain secret.

2. Cost-Effectiveness: There are no registration fees or costs associated with maintaining a trade
secret, unlike patents or trademarks.

3. No Disclosure Requirement: Companies do not need to disclose their trade secrets to a government
agency, which is necessary for patents and trademarks.

Disadvantages of Trade Secrets

1. Risk of Disclosure: If a trade secret is independently discovered or reverse-engineered by others,

the protection is lost. Also, if confidentiality measures fail, the information may become public.

2. Limited Legal Recourse: Legal protection is contingent on keeping the information secret, and if
it becomes public knowledge, it cannot be protected.

3. Challenge in Proving Misappropriation: The burden of proof lies with the trade secret holder to
show that the information was indeed a secret and that misappropriation occurred.

Key Aspects of Trade Secret Laws

Trade secrets are protected under various laws, depending on the jurisdiction. In the United States, the
primary law governing trade secrets is the Defend Trade Secrets Act (DTSA) and the Uniform Trade Secrets
Act (UTSA), which provide a legal framework for the protection and enforcement of trade secrets.

1. Definition of Trade Secret:

o The legal definition of a trade secret often includes three key elements:

▪ Information: The information must be a type of knowledge, such as formulas,

processes, designs, or customer lists.

▪ Secrecy: The information must not be generally known or easily accessible to others
in the same business sector.

▪ Economic Value: The information must provide economic value to the owner
because it is not publicly known.

2. Federal Law:

o The primary federal law governing trade secrets is the Defend Trade Secrets Act (DTSA),
enacted in 2016. This act allows trade secret owners to file civil lawsuits in federal court for
the misappropriation of trade secrets.
 o Key provisions of the DTSA:

▪ Right to seek damages: This includes actual damages, unjust enrichment, and
potentially punitive damages for willful and malicious misappropriation.

▪ Injunctive relief: Plaintiffs can seek injunctions to prevent further disclosure or use
of their trade secrets.

▪ Whistleblower protection: It provides immunity to individuals who disclose trade

secrets in connection with reporting suspected violations of law.

3. State Laws:

o In addition to the DTSA, most states have adopted some form of the Uniform Trade Secrets
Act (UTSA), which standardizes trade secret laws across jurisdictions. States can have their
own specific interpretations and applications of trade secret laws, but they generally adhere
to the principles outlined in the UTSA.

o Under state laws, businesses can pursue claims for misappropriation of trade secrets in state
courts.

4. Misappropriation:

o Misappropriation of a trade secret occurs when someone acquires, discloses, or uses a trade
secret without consent. This can happen through various means, such as:

▪ Theft or espionage: Physically stealing documents or using illegal surveillance.

▪ Breach of confidentiality: Disclosing a trade secret to a third party without

authorization.

▪ Independently discovering the secret: If someone lawfully discovers the trade

secret, they may not be liable for misappropriation; however, if they used improper
means, liability may arise.

5.Legal Protections:

o To maintain trade secret protection, companies must take reasonable measures to keep the
information confidential. This may include:

▪ Nondisclosure agreements (NDAs): Contracts with employees or partners that

prohibit the sharing of confidential information.

▪ Physical security measures: Restricted access to sensitive information and secure

storage methods.

▪ Employee training: Ensuring employees understand the importance of

confidentiality and the specific measures in place.
 Duration of Protection:

o Unlike patents, which have a finite duration (typically 20 years), trade secret protection
could last indefinitely, as long as the information remains confidential.

Remedies:

o In the event of misappropriation, remedies may include:

▪ Injunctions: Court orders to stop the wrongful use or disclosure of a trade secret.

▪ Monetary damages: Compensation for actual damages suffered due to the

misappropriation, as well as any profits gained by the infringer.

▪ Attorney fees: Courts may also award attorney fees to the prevailing party in certain
circumstances.

Types of Trade Secrets

Trade secrets can encompass a wide range of information, including:

• Formulas and Recipes: For example, the secret recipe for Coca-Cola.

• Manufacturing Processes: Specific methods or processes that give a company an edge over
competitors.

• Customer Lists: Detailed lists containing customer information that are not publicly available.

• Marketing Strategies: Unique methods and strategies used to promote products and services.

• Research and Development: Information regarding new inventions or innovations that have not
yet been patented.

Trade Secret Litigation

Trade secret litigation refers to legal proceedings that arise when a party alleges the misappropriation of
trade secrets. This type of litigation often involves disputes between businesses over the theft, unauthorized
disclosure, or misuse of proprietary information that is considered a trade secret.

Elements of Trade Secret Litigation

1. Basis for Litigation:
o The plaintiff (the party alleging trade secret misappropriation) typically claims that the
defendant has wrongfully acquired or used information that qualifies as a trade secret. This could
involve theft, breach of confidentiality agreements, or other improper means of acquisition.
2.Legal Framework:
o As previously mentioned, trade secret litigation can be governed by both federal and state laws,
particularly:
▪ Defend Trade Secrets Act (DTSA): Allows plaintiffs to pursue claims in federal court.
 ▪ Uniform Trade Secrets Act (UTSA): Most states have adopted this act, which provides
a framework for addressing trade secret misappropriation.
3.Proving Trade Secret Status:
o The plaintiff must prove three elements to establish that the information is a trade secret:
▪ The information is secret (not generally known or readily accessible).
▪ The information has economic value due to its secrecy.
▪ The plaintiff has taken reasonable measures to keep the information confidential.
4.Proving Misappropriation:
o The plaintiff must demonstrate that the defendant misappropriated the trade secret. Evidence
might include:
▪ Direct evidence of theft or breach of confidentiality.
▪ Evidence of improper means used to acquire the trade secret.
▪ Circumstantial evidence, such as proximity to the trade secret information, especially if
a former employee moves to a competing company.
5.Defenses:
o The defendant may present various defenses in trade secret litigation, such as:
▪ Arguing that the information was not a trade secret (e.g., it was public or easily reverse-
engineered).
▪ Claiming that the trade secret was independently discovered.
▪ Assertive legal protections or whistleblower defenses if reporting illegal activities.

Stages of Trade Secret Litigation

1. Pre-Litigation:

o Before filing a lawsuit, the plaintiff may conduct internal investigations to gather evidence
of misappropriation and determine the viability of a claim.

o Alternative dispute resolution (ADR) methods, such as mediation or arbitration, may be

attempted to resolve disputes without litigation.

2. Filing a Complaint:

o The plaintiff files a complaint outlining the allegations and legal claims, including details
about the trade secrets in question and the nature of the misappropriation.

3.Discovery:

o Both parties engage in discovery, a pre-trial phase where they exchange information and
evidence, including documents, interrogatories, expert testimony, and depositions. This
stage is crucial for building each side's case.
 4.Motions:
o Parties may file motions, including motions to dismiss (to dismiss claims) or motions for
summary judgment (to resolve the case without a trial), based on evidence uncovered in
discovery.

5. Trial:

o If the case does not settle, it proceeds to trial. The plaintiff bears the burden of proof and
must demonstrate the elements of trade secret protection and misappropriation to prevail.

6. Judgment and Appeals:

o After the trial, the court issues a judgment. Either party may have the option to appeal the
decision to a higher court if they believe a legal error has occurred during the trial.

Unfair Competition and Trade Secrets

Unfair competition in the context of trade secrets encompasses a range of unlawful or unethical
practices that harm a business's ability to compete fairly in the marketplace by misappropriating
its confidential information. Trade secrets are proprietary business information that provide a
competitive advantage, such as formulas, processes, customer lists, and strategies. When
competitors engage in unfair practices related to trade secrets, they undermine the principles of
fair competition and consumer trust.

Overview of Unfair Competition and Trade Secrets

1. Definition of Unfair Competition:
o Unfair competition refers to unlawful practices by businesses that cause harm to other
businesses or consumers. These practices can include deceptive advertising, infringement
on trademarks, and misappropriation of trade secrets. The aim is to promote fair competition
and protect businesses from practices that distort market dynamics.
2. Misappropriation of Trade Secrets:
o Misappropriation is a primary form of unfair competition related to trade secrets. It involves
the unauthorized acquisition, disclosure, or use of a trade secret by individuals or businesses.
Misappropriation can occur through:
▪ Theft: Physically stealing documents or digital files containing trade secrets.
▪ Espionage: Engaging in clandestine activities to access confidential information.
▪ Breach of Confidentiality: A current or former employee disclosing trade secrets to
a competitor in violation of a non-disclosure agreement (NDA) or other contractual
obligations.
▪ Improper Means: Using unethical practices to obtain trade secrets, such as coercion
or fraud.
Legal Framework
1. Statutory Protections:
o Many jurisdictions have laws addressing unfair competition and trade secret misappropriation.
In the United States, these include:
▪ Defend Trade Secrets Act (DTSA): Provides a federal cause of action for
trade secret misappropriation and outlines remedies available to businesses.
▪ Uniform Trade Secrets Act (UTSA): Most states have adopted this model
law, which defines trade secret misappropriation and provides a legal
framework for seeking remedies.
2. Common Law Protections:
o In addition to statutory protections, common law principles (derived from court decisions)
provide avenues for addressing unfair competition. Courts may recognize claims based on the
unfair methods of competition or breach of fiduciary duties.
Examples of Unfair Competition Related to Trade Secrets
1. Employee Poaching:
o A competitor may hire employees from another company with the intent of acquiring
trade secrets. If the employees are incentivized to disclose proprietary information,
this can be considered an unfair competition practice.
2. Reverse Engineering:
o While reverse engineering a product can sometimes be legal, it becomes unfair
competition when it is done maliciously or in violation of contractual agreements
(e.g., if there is a specific agreement prohibiting reverse engineering).
3. Competing Business Models:
o A business that adopts a competitor's successful model or strategies unlawfully can
also be engaging in unfair competition. For instance, if a business uses a competitor's
confidential market research to develop products, this harms fair competition.

Challenges in Addressing Unfair Competition

• Burden of Proof: The burden is generally on the plaintiff to prove that the information was
indeed a trade secret and that it was misappropriated through unfair means.
• Change in Business Practices: Rapid innovation and changes in business practices can
make it difficult to define unfair competition, as competitive strategies may evolve.
• Costs of Litigation: Legal battles over trade secret misappropriation can be lengthy and
expensive, deterring some companies from pursuing claims.
Types of Unfair Competition
The various forms of unfair competition can be defined under common law principles, statutory laws, and
business ethics. Below are some of the main types of unfair competition:
1. Misappropriation of Trade Secrets
• Unauthorized acquisition, disclosure, or use of trade secrets can cause economic harm to businesses
that rely on proprietary information. This includes:
o Theft: Stealing confidential information.
o Breach of Confidence: Disclosing trade secrets in violation of a non-disclosure agreement.
o Industrial Espionage: Engaging in secretive methods to uncover confidential information.
2. False Advertising
• Misleading or false claims about a product or service can unfairly influence consumer purchasing
decisions. This includes making unsubstantiated claims, using misleading images, or omitting
important information that could affect a consumer's decision.
3. Breach of Fiduciary Duty
• Employees or agents can engage in unfair competition by violating their obligation to act in the best
interest of their employer, such as:
o Taking clients or trade secrets to a competitor.
o Using confidential information gained during the course of employment for personal gain.
4. Trademark Infringement
• Using a trademark that is identical or confusingly similar to an established brand without permission
can lead to consumer confusion and harm to the brand owner. This includes:
o Counterfeiting products.
o Creating websites that mimic a competitor’s branding or online presence.
5. Passing Off
• This involves a competitor misleading consumers into believing that their goods or services are
associated with, or are the same as, goods or services from an established brand. It typically occurs
when one business misrepresents itself to benefit from the good reputation of another.

6.Dilution of Trademark
• Actions that weaken the distinctiveness of a trademark, even if there is no likelihood of confusion,
can lead to claims of unfair competition. Dilution can occur through blurring (mixing up different
sources) or tarnishment (harming the reputation of the trademark).
7. Predatory Pricing
• Selling goods or services at an extremely low price to drive competitors out of the market constitutes
predatory pricing. Once competition is eliminated, the entity can raise prices, ultimately harming
consumers.
8. Disparagement
• Making false or misleading statements about a competitor’s products or services can be considered
unfair competition. This can involve spreading false rumors or making baseless claims to tarnish a
competitor's reputation.
9. Employee Poaching and Contract Interference
• Actively soliciting employees from a competing business to gain insider knowledge can be an unjust
competitive advantage. This also includes interfering with existing contracts between a company
and its employees or clients.
10. Unlawful Tying Arrangements
• Forcing customers to purchase a particular product or service as a condition for purchasing another
product can be perceived as unfair competition if it restricts consumer choice or diminishes
competition.

Here are some real-world examples of unfair competition across various contexts, illustrating different
practices that have been subject to legal action or public scrutiny:

1. Coca-Cola vs. Pepsi (Beverage Trade Secrets)

Coca-Cola and Pepsi have been engaged in various competitive practices, including disputes over trade
secrets. One notable incident occurred when an employee at a Coca-Cola subsidiary attempted to sell
confidential documents, including recipes and marketing strategies, to Pepsi. Pepsi reported the individual
to Coca-Cola, leading to significant media coverage and legal ramifications. This incident highlights the
importance of protecting trade secrets in highly competitive industries.

2. Samsung vs. Apple (Patent Infringement)

The long-standing legal battle between Apple and Samsung included accusations by Apple that Samsung
copied its product designs and user interface features. Apple's claims of unfair competition centered on patent
infringement and trade dress violation. The case garnered widespread attention and resulted in substantial
financial penalties and injunctions against certain Samsung products.

3. Taco Bell vs. Taco John's (Trademark Dilution)

Taco John's, a regional fast-food chain, has long held the trademark for "Taco Tuesday." However, Taco Bell
attempted to challenge that trademark, claiming it stifled competition. Although Taco Bell's efforts were
ultimately unsuccessful, it raised discussions about the fairness and originality of trademark claims in the
fast-food industry. This case illustrates the complexities surrounding trademark disputes and competition.

4. Blockbuster vs. Netflix (Market Strategies)

During its early years, Blockbuster aggressively pursued legal action against Netflix, alleging that Netflix's
subscription model constituted unfair competition. Blockbuster attempted to create competition by offering
its own subscription service and alleging that Netflix was harming its business model. While Netflix has
since become a market leader, this case serves as an example of how established companies can react
defensively to emerging competition.

5. Lindt vs. Ferrero (Unfair Competition and Trademark Infringement)

Lindt, known for its chocolate products, filed a lawsuit against Ferrero, alleging that Ferrero's Kinder
chocolate products were unfairly competing by copying the signature look and feel of Lindt's products,
including their “golden foil” packaging. This case involved issues of trademark dilution and unfair
competition, demonstrating the challenges faced by brands in protecting their unique identities.

6. Google vs. Oracle (Software Licensing and APIs)

In the long-standing legal battle between Google and Oracle, Oracle accused Google of unfairly utilizing its
Java programming language without proper attribution or licensing in its Android operating system. This
case brought to light issues regarding software copyright, fair use, and the boundaries of competition in the
tech industry.

7. Aloha Airlines vs. Hawaiian Airlines (Disparagement)

Aloha Airlines filed a lawsuit against Hawaiian Airlines, claiming that Hawaiian engaged in unfair
competition by making disparaging comments about Aloha's financial stability. Aloha argued that these
actions were intended to drive consumers away from Aloha and harm its reputation.

8.Ebay vs. Craigslist (Interference with Contracts)

Ebay acquired a stake in Craigslist and was accused of engaging in unfair competition by trying to
undermine Craigslist's business model while using insider information. Craigslist filed a lawsuit
against eBay, alleging interference with its contractual relationships and unfair business practices.

9. Red Bull vs. Monster Beverage (Marketing Disparagement)

Red Bull has filed several lawsuits against Monster Beverage, accusing it of false advertising and
unfair competition practices by making misleading claims about its energy drinks. The competition
has involved various instances of marketing disparity, leading to disputes over advertising practices
in the beverage sector.
 UNIT -5

NEW DEVELOPMENT OF INTEIIECTUAL PROPERTY

Introduction
Several new developments and trends in the field of intellectual property (IP) have been emerging.
These changes reflect the rapid evolution of technology, the digital landscape, and global trade.
Here are some notable developments in IP:
1. AI and Copyright Law
The rise of artificial intelligence (AI) tools capable of creating art, music, and written content has
raised questions about copyright ownership. As various jurisdictions begin to wrestle with these
complexities, debates focus on whether AI-generated works can be copyrighted, and if so, who
holds the rights—the creator of the AI, the user, or perhaps no one at all.
2. Increased Focus on Digital Trademarks
With the expansion of e-commerce and digital transactions, the registration and enforcement of
trademarks in digital spaces, including social media and other online platforms, have become
more pertinent. The introduction of new trademark classifications addressing digital goods and
services is increasingly common, particularly with the proliferation of non-fungible tokens
(NFTs).
3. Pharmaceutical Patent Expirations and Generic Competition
As patent protections for several blockbuster pharmaceuticals expire, there is a significant
increase in market competition from generic drug manufacturers. Legislative changes and trade
agreements are being scrutinized for their impact on access to medications, especially in
developing countries.
4. Global Harmonization of IP Laws
Efforts are ongoing to harmonize intellectual property laws internationally, such as through
treaties like the Comprehensive and Progressive Agreement for Trans-Pacific Partnership
(CPTPP) and the Regional Comprehensive Economic Partnership (RCEP). Countries are also
increasingly looking at aligning their IP laws to support innovation and reduce barriers in
international trade.
5. Focus on Traditional Knowledge and Indigenous Rights
There is a growing recognition of the need to protect the intellectual property of traditional
knowledge, especially concerning Indigenous cultures. Various countries are taking steps to
protect Indigenous rights, ensuring that communities have control over their traditional
knowledge and genetic resources.
6. Emergence of Non-Fungible Tokens (NFTs)
NFTs have created novel IP challenges regarding ownership and copyright. Legal issues related
to the sale and transfer of digital art and collectibles are evolving, prompting discussions about
rights and responsibilities associated with NFT creators, buyers, and platforms.
7. Cybersecurity and IP Protection
With increasing cyber threats, companies are now more focused on securing their data and
intellectual property against theft and infringement. Innovative technologies and strategies for
protecting trade secrets and sensitive IP from cyberattacks are being developed.
8. Open Source and Collaborative Innovation
The open-source movement continues to grow, encouraging collaborative innovation.
Organizations are increasingly using open-source licenses, which allow for freer use and
modification of software, balancing collaboration and the protection of proprietary IP.
9. Changes in Patent Examination Processes
Many patent offices are reforming how they examine applications, focusing on issues like clarity,
novelty, and inventive step. Some jurisdictions are adopting fast-track examination processes for
certain industries, such as green technologies, to encourage rapid innovation and
commercialization.
10. Platform Liability for IP Infringement
Legislation is being introduced in various regions to clarify the liability of online platforms for
IP infringement by users. The discussions around the Digital Services Act (DSA) in Europe and
the ongoing debates within the United States regarding Section 230 highlight these concerns.
11. Emerging International Treaties
Negotiations and agreements, such as the Treaty on Audiovisual Performances at WIPO (World
Intellectual Property Organization), aim to provide better protection for performers and
producers in the audiovisual sector, marking a significant step in IP protection standards at the
international level.

New Development In Trademark, Copyright &Patent Laws

Trademark Law
1. Increased Focus on Non-Traditional Marks:
o Trademark offices worldwide are increasingly recognizing non-traditional
trademarks, such as sounds, colors, smells, and even shapes. For instance, sound
marks have received more attention, especially in the context of branding in digital
environments.
2. Use of AI in Trademark Searches:
o Companies are increasingly using AI-powered tools for trademark searches and
analysis, helping businesses to identify potential conflicts early and streamline the
registration process.
3. Brand Protection on Social Media:
o As brands become more reliant on social media, there is growing emphasis on
strategies to protect trademarks within these platforms. Legal frameworks are
evolving to address issues like impersonation and counterfeiting online.
4. Legislation on Bad Faith Filings:
o Some jurisdictions have enacted or are considering laws to curb bad faith trademark
registrations, particularly those that target well-known marks for opportunistic
reasons.
5. Changes in International Trademark Treaties:
o Treaties like the Madrid Protocol continue to evolve, making it easier for businesses
to register trademarks internationally. Reforms in global trademark systems are
being discussed to simplify processes and enhance protections.
Copyright Law
1. AI-Generated Works:
o The legal status of works created by AI remains a significant topic. Various
jurisdictions are debating whether AI-generated content can be copyrighted and if
so, who would hold the copyright (the user, the creator of the AI, etc.).
2. Expansion of Exceptions and Limitations:
o Many countries are revising their copyright laws to include more robust exceptions
and limitations, such as fair use or fair dealing provisions, to balance the interests
of copyright holders with public access, especially in educational and research
contexts.
3. Copyright in the Digital Age:
o The European Union's Digital Services Act and Digital Markets Act are influencing
how platforms handle copyright content. Platforms may face stricter requirements
for monitoring and removing infringing content.
4. Streaming and Licensing Issues:
o With the rise of streaming platforms, ongoing negotiations and disputes over
licensing arrangements are shaping the landscape, influencing revenue distribution
 to creators.
5. Protection of Traditional Cultural Expressions:
o Increasing awareness of the need to protect traditional cultural expressions and
folklore through copyright laws is surfacing in discussions of IP rights for
Indigenous communities.
Patent Law
1. Artificial Intelligence and Patentability:
o The ongoing debate over the examination of AI-generated inventions for
patentability is gaining traction. Various jurisdictions are looking at whether AI can
be considered an inventor under patent laws, and if patent rights can extend to AI-
created innovations.
2. Enhanced Patent Examination Procedures:
o Some patent offices are adopting more stringent examination procedures,
particularly regarding the requirements for novelty and non-obviousness. This is
partly in response to the increase in patent filings related to technology.
3. Preemptive Patent Strategies:
o Companies are increasingly focusing on "defensive patenting," where they file
patents not to use but to prevent competitors from entering certain markets or
technologies.
4. Pharmaceutical Patents and Access to Medicine:
o The ongoing discussions regarding patent expirations for critical drugs and the role
of generics are leading to changes in policies aimed at enhancing access to
medications in developing countries.
5. Global Harmonization Efforts:
o International movements toward harmonizing patent laws, such as the Patent Law
Treaty (PLT) and discussions under the World Intellectual Property Organization
(WIPO), are underway to streamline processes and promote smoother global trade.

Intellectual Property Audit

An intellectual property (IP) audit is a comprehensive review of an organization's intellectual
property assets and their management. This process helps organizations assess the strengths and
weaknesses of their IP portfolio, identify risks, and ensure compliance with relevant laws and
regulations. Conducting an IP audit can help organizations optimize their IP strategy, enhance
value, and protect their assets.
Objectives of an IP Audit
1. Identify IP Assets:
o Catalog all forms of IP owned or utilized by the organization, including patents,
trademarks, copyrights, trade secrets, and licenses.
2. Evaluate Ownership:
o Assess ownership rights to IP assets to confirm that the organization has clear title
or license rights to use those assets. This may include reviewing contracts with
employees, contractors, and third parties.
3. Assess Value:
o Evaluate the commercial value of the IP assets to understand their contribution to
the business. This can involve estimating revenue generated from IP or assessing
the market potential of certain technologies.
4. Review Protection Status:
o Check the status and validity of IP registrations (patents, trademarks, etc.) and
determine if they need to be renewed or updated.
5. Analyze Utilization:
o Examine how the organization is utilizing its IP assets, identifying any assets that
 are underused or not utilized effectively.
6. Identify Risks:
o Identify potential risks related to IP infringement, misappropriation, and litigation.
This also includes reviewing potential exposure to challenges regarding the
enforceability of the organization's IP.
7. Compliance Review:
o Ensure compliance with relevant IP laws, regulations, and industry standards. This
may involve checking whether proper records and documentation exist regarding IP
ownership, licenses, and usage.
8. Strategic Planning:
o Use the findings from the audit to inform future IP strategy, including decisions on
licensing, enforcement, commercialization, and innovation.
Steps to Conduct an IP Audit
Steps to Conduct an IP Audit

1. Define the Scope and Objectives

• Establish Goals: Determine the purpose of the audit (e.g., compliance, valuation, risk
management, strategic planning).
• Identify Assets: Specify which types of intellectual property will be included (patents,
trademarks, copyrights, trade secrets, etc.).
2. Assemble an Audit Team
• Select Team Members: Form a cross-functional team that may include legal experts, IP
managers, financial analysts, and business unit representatives.
• Assign Roles and Responsibilities: Clearly define who is responsible for each aspect of
the audit process.
3. Gather Documentation and Data
• Inventory of IP Assets: Compile a list of all IP assets, including registrations, applications,
licenses, and any relevant agreements.
• Gather Supporting Documents: Collect documents related to IP transactions, contracts
with employees and contractors, marketing materials, financial records related to IP assets,
etc.
4. Review IP Ownership and Rights
• Ownership Verification: Confirm that the organization has clear title or appropriate
licenses for all IP assets listed.
• Examine Agreements: Review collaboration agreements, licensing contracts, employee
agreements, and any other relevant documents to establish the ownership rights of IP.
5. Evaluate IP Protection Status
• Assess Registrations: Check the status of all registered IP assets (expiration dates,
renewals, geographical coverage).
• Gap Analysis: Identify any gaps in protection (e.g., unregistered trademarks or trade
secrets that lack adequate protection measures).
6. Analyze Utilization of IP Assets
• Assess Usage: Evaluate how IP assets are being used, including tracking sales or revenues
generated from IP and identifying any underutilized or abandoned assets.
• Market Positioning: Analyze the market relevance of IP assets, including competitors’
offerings and potential areas for development.
7. Identify Risks and Challenges
• Infringement Risks: Identify potential infringement of third-party rights or risk of third-
party infringement of the organization’s IP.
• Compliance Issues: Review current practices for compliance with IP laws and regulations,
such as proper record-keeping and licensing requirements.
8. Prepare a Comprehensive Report
• Document Findings: Summarize observations on asset ownership, value, protection
adequacy, utilization, and risks.
• Provide Recommendations: Develop actionable recommendations for improving IP
management and protection strategies.
9. Develop an Action Plan
• Implement Changes: Based on the audit findings, outline steps the organization should
take, such as filing for additional protections, negotiating licenses, or divesting unused
assets.
• Prioritize Actions: Determine the timeline and prioritize recommendations based on
urgency, potential value, and associated risks.
10. Regular Review and Monitoring
• Establish a Periodic Audit Schedule: Plan for regular IP audits (e.g., annually or
biannually) to keep the IP portfolio current.
• Monitor Changes: Continuously monitor the landscape for changes in IP laws, policies,
and market trends that may affect IP strategy.

International Laws Of Trademark Copyright & Patent

International laws governing trademarks, copyrights, and patents are designed to protect
intellectual property (IP) across borders, facilitating trade and encouraging innovation.
These laws are created through treaties, conventions, and agreements among countries
that establish standards for protection and enforcement of IP rights. Here’s a detailed
overview of the international laws related to trademarks, copyrights, and patents:
1. Trademarks
International Treaties and Agreements:
• Paris Convention for the Protection of Industrial Property (1883):
The Paris Convention is one of the first international treaties that established protection for industrial
property, including trademarks. It provides that member countries must grant protection to
trademarks registered in other countries, ensuring that foreign marks receive the same treatment as
domestic marks.
• Madrid Protocol (1989):
Part of the Madrid System, the Madrid Protocol facilitates the international registration of marks. An
applicant can file a single application through the World Intellectual Property Organization (WIPO)
and designate multiple member countries where protection is sought.
• Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement (1994):
An agreement established under the World Trade Organization (WTO), the TRIPS
Agreement sets minimum standards for IP protection, including trademarks. It requires
member countries to provide legal means for the registration and protection of trademarks,
including provisions for enforcement against infringements.
2. Copyright
International Treaties and Agreements:
• Berne Convention for the Protection of Literary and Artistic Works (1886):
The Berne Convention is the cornerstone of international copyright law. It mandates that
member countries recognize the copyright of works originating from other member states
without mandatory formalities, meaning protection is automatic upon creation. The Berne
Convention also establishes the "national treatment" principle, whereby foreign works
receive the same protection as domestic works.
• WIPO Copyright Treaty (WCT) (1996):
This treaty supplements the Berne Convention, addressing new challenges posed by digital
 technology. It provides additional rights related to the distribution and communication of works and
aims to protect the rights of authors in the digital environment.
• TRIPS Agreement:
Similar to trademark protection, TRIPS establishes minimum standards for copyright protection,
requiring member states to provide protection for literary and artistic works, including computer
programs and databases.
3. Patents
International Treaties and Agreements:
• Paris Convention for the Protection of Industrial Property (1883):
The Paris Convention, in addition to trademark protection, sets basic principles for patents, including
the right of priority, which allows an inventor to file in multiple countries within a certain period
based on the first-filed patent application.
• Patent Cooperation Treaty (PCT) (1970):
The PCT simplifies the process for filing patent applications in multiple countries. An inventor can
file a single international application that is recognized by all PCT contracting states, streamlining
the process of obtaining patent protection worldwide.
• TRIPS Agreement:
The TRIPS Agreement also lays out minimum standards for patent protection, requiring member
countries to provide a minimum duration of 20 years for patents on inventions and to ensure that
listed exceptions, such as for public health, are clearly defined.

Principles in International IP Law

• National Treatment:
When a country is a member of an international treaty, it agrees to treat foreign IP rights the same
way as it treats domestic rights. This principle encourages fair treatment of foreign IP holders.
• Most-Favored-Nation Treatment:
Countries cannot discriminate among IP rights holders from different member nations, providing
equal treatment to all.
• Transparency and Fair Enforcement:
International agreements often require signatory countries to provide clear and fair legal mechanisms
for the enforcement of IP rights.