1. Contracts, Agreements and Intellectual Property Main contractual agreements for transfer of technology? Non-Disclosure Agreement (NDA) to protect IP By CHANDER M. LALL Managing Partner Lall & Sethi Advocates

2. There are 5 different types of IP: Trade Marks source identifier Patents technology protector Designsprotection to product shape Copyrightsprotection of creativity Confidential Protection of trade secrets Information © 2012 Lall & Sethi Advocates2 Intellectual Property Rights (IPR)

3. © 2012 Lall & Sethi Advocates3 TM What is a Trade Mark / Brand An invisible link between the product source (known or unknown) and the consumer

4. © 2012 Lall & Sethi Advocates4 What constitutes a Trade Mark / Brand ? word slogan GUCCI device label NameNumerals Product Shape Sound Character signature

5. © 2012 Lall & Sethi Advocates5 USE not Registration the Key... The existence and life of a trade mark depends on use. Registration provides additional remedy of infringement only.

6. © 2002 Lall & Sethi Advocates6 TM Trade Mark / Brand Audit  Are the marks being used ?  Are the marks registered ?  Are the registrations use based or on intent to use ?  Are the registrations periodically renewed ?  Are the registrations susceptible to cancellation for non-use or other grounds ?  Are there any cancellation actions pending against the mark ?  How many successful enforcement actions have been initiated based on the mark ?  Were any actions unsuccessful ?

7. © 2002 Lall & Sethi Advocates7 TM Trade Mark / Brand Audit….contd.  Are there any licenses for the mark ?  If yes, are these licenses properly monitored ?  What is the state of the Register ? Are there other similar / identical marks on the Register ?  Are there similar / identical marks in use by third parties ? For how long ?  Are there any third parties who can claim concurrent / parallel rights in the mark ?  Has the mark been diluted for any reason ?

8. Copyrights

9. –Films –Musical works –Sound recordings –Literary works Subject matter of Copyrights –Artistic works –Dramatic works

10. Term and Registration Copyrights extend for the life of the authour + 60 years. No statutory requirement for registration Copyrights subsist with the creation of the work India a member of UCC & the Berne Convention Copyrights enjoy international protect on a reciprocal basis.

11. ACQUISITION OF RIGHTS BY ASSIGNMENT OR LICENSE IN WRITING

12. ASSIGNMENT / LICENSE ESSENTIALS Territorial extent Amount of Royalty Period Identify the work One year to exercise rights

13. What does this bundle contain? FOR BOOKS An exclusive right to: make additional copies (back to back copies) ; make electronic copies ; sell or distribute copies to the public ; read out the work publicly ; make a film i.e. film script ; make a sound recording i.e. use it as lyrics ; translate ; make an adaptation ; reproduce in material form.

14. What does this bundle contain? FOR SOFTWARE An exclusive right to: make additional copies (back to back copies) ; make electronic copies ; sell or distribute copies to the public ; Sell or rent a copy make an adaptation ; reproduce in material form.

15. What does this bundle contain? FOR SOUND RECORDINGS An exclusive right to: make additional copies ; to sell ; to give on rent / hire ; to publicly play the recording

16. What does this bundle contain? FOR CINEMATOGRAPH FILMS An exclusive right to: make additional copies ; use one screen shot and make a photograph ; to sell ; to give on rent / hire ; to display publicly

17. What does this bundle contain? FOR MUSICAL WORKS An exclusive right to: make additional copies (back to back copies) ; make electronic copies ; sell or distribute copies to the public ; Play the work on an instrument or sing it publicly ; make a film i.e. film music; make a sound recording ; make an adaptation ; reproduce in material form.

18. What does this bundle contain? FOR ARTISTIC WORKS An exclusive right to: make additional copies ; make a 3 dimensional image of a 2 dimensional work and visa versa ; i.e. making a sculpture of a sketch or a sketch of a sculpture ; display publicly ; include in a film ;

19. © 2002 Lall & Sethi Advocates19 © Copyright Audit  Is the work Original ?  Is the work registered (Note : Registration is not compulsory) ?  Is the Assignor / Licensor the Author of the work ?  Does the Assignor / Licensor have the necessary authority to assign / license the work ?  Are there any joint authors ?  If the Author of the work is a corporate entity, are the employees bound by proper contracts ?  Is the work easily identifiable ?

20. 20 Designs

21. “When Companies are competing at equal price & functionality, Design is the only differential that matters” Mark Dzeirsk © 2012 Lall & Sethi Advocates21

22. © 2002 Lall & Sethi Advocates22 Designs Feature of shape, Configuration, Pattern, Ornament, Composition of lines or colours applied to any article, whether in two dimensions or three dimensions

23. © 2012 Lall & Sethi Advocates23 Designs Relates solely to appearance - appeal to the eye Does not include mode or principle of construction or mere mechanical devices Registration mandatory prior to publication Valid for 10 years, with one renewal for 5 years

24. © 2012 Lall & Sethi Advocates24 Protection granted to New and Novel designs. Novelty is the fundamental reason for the protection granted. Eye is the ultimate judge, thus novelty should be substantial. Novelty not Originality the Key..

25. © 2012 Lall & Sethi Advocates25 Unregisterable Designs Designs that are not new or original Designs disclosed to public anywhere, by publication in tangible form, or by use or in any other way. Designs not significantly distinguishable Scandalous or obscene designs

26. © 2012 Lall & Sethi Advocates26 Does your Design look familiar? Examination of Design application: to point out defects in the application Prior – Art Search: to ensure that similar Design is not published anywhere in the world prior to your filing date Your registered design can be challenged for piracy!

27. Protection of INNOVATION © 2002 Lall & Sethi Advocates27 Patents

28. Patent laws give protection to inventions. Invention must be new, non-obvious and have industrial application. Invention must be related to a product or a process. A significant improvement can also be patented. Term of protection 20 Years © 2002 Lall & Sethi Advocates28 Patents

29. Right to exclude others, not ‘freedom to operate’: Product patent: exclusive right to prevent others from making, using, offering for sale, selling or importing that product Process Patent: exclusive right to prevent others from using the process, and from the act of using, offering for sale, selling or importing the product obtained directly from the process. © 2002 Lall & Sethi Advocates29 Rights Granted by Patents

30. Discoveries, theories or scientific principles Frivolous or contrary to natural laws Second use Contrary to public order or morality Method of agriculture or horticulture Treatment of human beings or animals © 2012 Lall & Sethi Advocates30 Non Patentable Subject Matter

31. Mixture of known components acting independent of each other Rearrangement of known devices Plants or animals in whole A mathematical or business method Computer program per se Traditional Knowledge Inventions related to Atomic Energy © 2012 Lall & Sethi Advocates31 Non Patentable Subject Matter

32. License or assignment In writing and duly executed Registration with the Patent Office Copies of all agreements to be submitted to the Patent Office – terms of license may remain undisclosed © 2012 Lall & Sethi Advocates32 Transfer of Rights

33. Review of existing patents and patent applications Review of maintenance of fee records Review of technology transfer agreements Review of license agreements Review of invention disclosures Review of employment agreements of the R & D staff © 2012 Lall & Sethi Advocates33 Patent Audit

34. Cost and benefit analysis for new filings or maintaining the existing patents Errors in patent disclosures Review if any opposition, revocation or infringement proceedings against patents © 2012 Lall & Sethi Advocates34 Patent Audit

35. © 2002 Lall & Sethi Advocates35 Confidential Information

36. No Statutory protection Protection depends upon :  extent to which the information is known  Measures taken to guard the information  Value of the information to the concern  Tight employment contract  Ease of identification © 2012 Lall & Sethi Advocates36 Confidential Information

37. © 2012 Lall & Sethi Advocates37 THANK YOU