Comparing and Contrasting the Intellectual Property Regimes in India and US
This Blog is written by Nayantara Rao from Amity University, Mumbai. Edited by Karan Dutt.
On all key dimensions, substantial intercountry differences in IPR regimes can be seen in the level and scope of protection, the strictness with which legislation is enforced, the mechanisms used and the way violations are penalized. The duration in the case of patents varies considerably from around 5 to 20 years, and usually shorter terms are more commonly found in industrializing countries. Most countries have exclusionary rules regarding the scope of patents, except countries such as the United States and Canada where only abstract theorems, scientific principles, and atomic weapons are unprotected. There is a widespread usage of compulsory licensing and working requirements. The former is permitted usually when patents go unworked for around one to four years, with short periods in Latin American countries, moderate period which is around three years in Southeast Asia and Australia, and longer period in European countries. There are no working requirements present in Canada or the U.S. A greater agreement regarding what comes under copyright (which comprises generally of literary and artistic expression) and trademark protection (which mainly focuses on any message or symbol which serves the purpose to identify and confer a certain reputation to a firm or a product) is present, but there are differences which still remain in the length of protection and, more importantly in enforcement practices which includes penalty levels for violators. In countries that recognize the legitimacy of upholding the rights of firms relying on trade secrets (on the basis of the lack of disclosure disqualifies proprietary and closely held information from being protected by the IPR regime many countries do not recognise the legitimacy) a critical barrier is formed due to difficulty in enforcement.
The USA has been a part of World Trade Organization (WTO) since the year 1995. India has been a member since 1995 too. WTO member nations must include some IP protection in their national laws whose effect is in line with minimum standards. This means that if one doing business with the USA, similarity will be found between local Intellectual Property law and enforcement procedures, and those in force in the India. Also, as a result, there should be certain major differences between U.S. and Indian laws.
TREATIES AND RECIPROCAL AGREEMENTS
To the following international IP agreements, the US is a signatory:
-The Paris Convention – Any person, under this, who hails from a signatory state can apply for a trade mark or a patent in any other signatory state, and would be given the same enforcement rights and status which a national of that country would be given.
-The Berne Convention – Each member of the state under this recognises the copyright of authors from other member states in the same way as the copyright of its own nationals
– The Madrid Protocol – this is a central system for obtaining a ‘bundle’ of national trade mark registrations through a single application in different jurisdictions,
-The Patent Co-operation Treaty – the Madrid Protocol and the patent co-operation work in the same way, but the patent co-operation is for patent applications.
India is a signatory to the following international Intellectual Property agreements:
– the Paris Convention
– the Berne Convention
– the Patent Cooperation Treaty
– The Madrid Protocol
The USA is not a signatory to the Hague Agreement. And India, like the U.S., is also not a signatory to the Hague Agreement. This agreement allows through a single filing the protection of designs in multiple countries.
INTELLECTUAL PROPERTY RIGHTS – SYSTEMS IN THE US AND IN INDIA
Creative work in the United States is automatically protected by copyright when it is both original and fixed in a tangible form.
• Original – which means that it is not copied from someone else’s work and independently created.
• Fixed in a tangible form – Which means that over a long period of time the creation must be easy to see, reproduce or communicate.
A Copyright can only protect the tangible form of the creative work and it can protect only the form it takes and not the idea itself.
It is advisable to register copyright though it is not a legal requirement in the US. This is because it:
• Helps to establish a public record of ownership and strengthens one’s position in the case of a copyright infringement;
• In Federal courts registration is necessary if one needs to press charges for copyright infringement;
• To prevent infringing imports from entering the US registration is required; and
• In the case of copyright infringement statutory damages can be claimed and attorney’s fees – rather than needing to prove actual damages.
Only the rights to copy, change, distribute or publicly display the work, or authorise others to do so is bestowed to the copyright owner. However, one could employ freelancers or other companies for certain works, it could be that they own the copyright. The US is a signatory to the Berne Convention on copyright which makes each member state recognises the copyright of authors from other member states in the same way as the copyright of its own nationals. In the US, any intellectual property work created on or after 1 January 1978 is protected for:
• When the owner is a person- throughout the life of the author with an addition of 70 years.
• When the owner is a corporation or other entity -either 95 years from publication or 120 years from the creation of the work, whichever period is shorter.
The Copyright Act of 1909 governs all the other work which was created before 1978. A chance of subsequent renewal is provided after the initial protection of 28 years. A material is considered to be in public domain once the copyright of a published material has expired and it is made free for anyone to use.
The international standards which are contained in TRIPS are included within the Indian copyright law. The Indian Copyright Act, 1957, followed by it’s amendments in 1999, 2002 and 2012, fully reflects the Universal Copyrights Convention, and the Berne Convention for Protection of Literary and Artistic Works, 1886 where India is a party. To the Geneva Convention for the Protection of Rights of Producers of Phonograms, India is a member and also India is an active member of United Nations Educational, Scientific and Cultural Organization (UNESCO) and the World Intellectual Property Organization (WIPO).
The Copyright Act, 1957, has brought the copyright law in India, in order to keep pace with the global requirement of harmonization, in line with the developments in the information technology industry, be it in the field of digital technology or satellite broadcasting or computer software. Provisions have also been made to protect a performer’s rights as envisaged in the Rome Convention in the amended law. Registration, in India, is considered to be the mere recordal of a fact thus the registration of copyright is not mandatory. The registration is not a prerequisite for initiating action against infringement and it does not create or confer any new right and in a catena of judgments this view has been upheld by the Indian courts. Most of the Intellectual Property litigation is confined to metropolitan cities as the awareness of IP Laws is significantly lower among the enforcement authorities in India. It is advisable for one to register the copyright as the copyright registration certificate has accepted it as being a “proof of ownership” and acted upon smoothly by them by police authorities and in courts, though there is the fact of no mandatory registration of copyright is in India and it is protectable through the International Copyright Order, 1999. Not only civil remedies in the form of delivery of the infringing material for destruction, permanent injunction, accounts or damages of profits, and cost of the legal proceedings. etc. are provided by the copyright law in India but it also has instances of infringement of copyright where it is recognised as a cognizable offence punishable which is awarded with imprisonment for a term which shall not be less than six months and it can be increased to three years with a fine which shall not be less than Rs 50,000 (approx. US$ 800) but may extend to Rs 2,00,000 (approx. US$ 3,000) in the first time of doing an offence. Under the Copyright Act, there are provisions for enhanced fine and punishment for the second and subsequent offences. The Copyright Act, 1957 of India gives power to the police authorities without any intervention of the court to register the Complaint (FIR) and act on its own to arrest the accused, search the premises of the accused and seize the infringing material.
A governmental grant which allows someone to protect an invention is a patent.
In the US, the USPTO (United States Patent and Trademark Office) issues three kinds of patents:
-Utility patent – This patent is for technological advances and innovations which lasts for a minimum of 20 years from the date of application.
-Design patent – This is a 14-year term patent for new and original designs for items.
-Plant patent – This patent is for the invention or discovery of any distinct and new plant varieties that has been asexually reproduced (without seed manipulation). The United States Department of Agriculture administers various different plant variety protection for which this patent provides protection. It is 20-year term patent from the date of application.
A non-disclosure agreement or obtain a provisional patent application would need to be used if an invention or design which has not been patented yet has to be pitched.
America Invents Act (AIA) in September 2011 amended US patent law to make it a “first inventor to file” system, which is in line with patent systems such as the UK. This type of system permits the first person whoever files a patent application would be awarded with a patent. On March 16 2013 this system under the AIA provision had become effective. One-year grace period is allowed by the US for an inventor from the date of public disclosure to register a patent.
From 1911 when the Indian Patents and Designs Act, 1911 was enacted, in India the history of Patent law started. In the year 1972, the present, Patents Act, 1970 came into force in, the existing law relating to Patents in India were amended and consolidated by this Act. This act was again amended by the amended Patents Act, 2005, wherein all fields of technology including food, drugs, chemicals and micro-organisms were given/extended a product patent. After The amendment had repealed the provisions relating to Exclusive Marketing Rights (EMRs) and also introduced a provision for enabling grant of compulsory license. A introduction in the provisions relating to pre-grant and post-grant opposition was observed.
An invention can be patented in India which relates to a process or a product which is new, involving inventive step and capable of industrial application. However, Section 3 and 4 of the (Indian) Patents Act, 1970 provides with the category of inventions which are non-patentable. A patent application in India can be filed, by the true and first inventor or his assignee, either alone or jointly.
In the Indian Patent Office, a request for examination is required to be made after filing the application for the grant of patent, for examination of the application. The Applicant is given an opportunity after the initial Examination Report is issued to meet the objections raised in the report and is given 12 months from the issuance of the First Examination Report to do so. The application is treated to have been abandoned by the applicant when the initial examination report’s requirements are not complied with within the prescribed period of 12 months. The patent is granted and notified, after the removal of objections and requirements are complied, in the Patent Office Journal.
Trademarks are generally only protected if registered in the US and unlike copyright are not automatic. As in the UK, in the US whoever first uses it in commerce establishes the ownership of a trade mark. The trademark in connection with goods or services can be used actually by the ‘First to Use’ system in order to protect one’s trade mark. However, one must also register the trademark through the USPTO in order to completely protect the trade mark. Benefits which are received by registering one’s trademark:
• It publicly declares the trade mark’s ownership
• Registration in other countries can be done easily
• It helps in bringing any legal action to the Federal courts which will prevent any infringed material from being imported
• The registered trade mark symbol (®) with the trade mark can be used after registration.
To the duration of a trade mark there is no limit in the US as the registration is not a necessity. The maintenance of the ownership of the trade mark right is maintained can be done as long as there is continued use of the trade mark.
The common law principles as followed in England of passing off and equity before the enactment of the first Registration Act, 1875 forms the basis for the law of trademark in India before 1940. Similar provisions of UK Trade Marks Act, 1938 can be found in the first statutory law related to trademark in India- the Trade Marks Act, 1940. To comply with the provisions given in the TRIPS, the 1999 Act was enacted. The common law rules primary govern the unregistered trademarks, and these rules are along with the rules which are enacted into the 1999 Act are based on the principles evolved out of the judgments of the Courts. The principles evolved and interpretation made by the Courts in England where the law has been vague have been applied in India by taking the context of the legal laws, procedure and realities of India into consideration. The new trademark rules with effect from 6 March 2017 came into existence. Simplification of the whole trademark registration process, to make it hassle-free and quick was the intention behind these rules. A few features of the new rules are: sound marks and 3 D marks can be registered; promotion of e-filing; a well-known mark’s provisions; For an individual/small enterprise /start-up and for others a separate fee structure is made; expedited processing of application; video conferencing hearing; and from the existing number of 75 forms the number of forms has been cut down to 8 forms.
Only when congruence of intellectual property is achieved between countries, the people that make investment decisions, conduct research, or invent and move technology from place to place can be able to approach their business without having to consider the differences between the intellectual property regimes of particular countries such as India and U.S.
Those differences which remain will be a proper subject just for specialist lawyers. People apart from lawyers, when congruence doesn’t exist, are troubled by system differences when they are making investment, research, and licensing decisions in any other country. A congruent system can only be achieved when all the national systems are very comprehensive. It might not be in a distant future as in both developing countries such as India and developed countries like the US strive to strengthen and simplify their Intellectual Property Regimes.
(2) The Copyright Act 1957
(3) Global Dimensions of Intellectual Property Rights in Science and Technology (1993)
(4) Trademarks Act 1999