Copyright Registration: Is It Necessary?

Bindu Sharma, Origiin IP Solutions LLP

A copyright is a form of intellectual property which protects original works of authorship such as literary (books, periodicals, computer programmes, tables and compilations including computer and databases), dramatic, musical (songs and graphical notation of the same), artistic, cinematographic and sound recording. In fact, it is a bundle of rights including, inter alia, rights of reproduction, communication to the public, adaptation and translation of the work. There could be slight variations in the composition of the rights depending on the work.

The history of copyright law starts with early privileges and monopolies granted to printers of books. The British Statute of Anne 1709, full title "An Act for the Encouragement of Learning, by vesting the Copies of Printed Books in the Authors or purchasers of such Copies, during the Times therein mentioned", was the first copyright statute. Initially copyright law only applied to the copying of books but over the period of time other uses such as translations and derivative works were made subject to copyright and copyright now covers a wide range of works, including maps, performances, paintings, photographs, sound recordings, motion pictures and computer programs.

It is interesting to note that copyright law does not protect the ideas but only expression of the idea. For example there are hundreds of movies based on love stories. Here idea is love story, which is not protected by copyright law. Expression of idea when expressed by different directors in different way is considered as different expression and hence gets protection under copyright law. Each expression and each movie will have individual copyrights. Additionally, the work shall have substantial amount of skill, judgment, labor and the work shall be fixed in a tangible form e.g., if it is a song or drama it should be recorded, if it is a computer program it should be written..

The most frequently asked question about copyright is whether it is necessary to register copyright or not. The answer is NO because copyright is statutory as well as inherent right and comes into being automatically after competition of the work. The legal copyright notice can be put even without registration of copyright but registration of copyright with copyright registry is important under certain circumstances such as:

1. The certification of copyright registration is an authentic proof of valid title and ownership that can be produced in the court as a prima facie evidence of ownership in case of any dispute or litigation. In some jurisdictions, copyright registration is a prerequisite for bringing a copyright infringement lawsuit. Therefore, when a work is to be used commercially; it is advisable to get copyright registration done. However, it is highly recommended to put copyright notice on the work even if it is not registered.

2. Copyright registration is even more important in case of computer software program because the copied work looks identical to the original work and it is extremely difficult to differentiate between the two.

3. Copyright registration establishes a public record of the copyright claim.

4. Registration certificate is very important to have, if it becomes necessary for the copyright owner to obtain a preliminary injunction against a copyright infringer, such as the immediate cessation of the distribution of the infringer's work. The presumption of validity will only apply if the work has been registered.

Therefore, even though the copyright registration is not mandatory, it is good idea to get it done especially when the work has to be used commercially. It is proof of ownership and valid title. The copyright can be registered at Copyright Registry, New Delhi.

Article Source: http://EzineArticles.com/6241408

IP Audit: Way of assessment of the intangible assets

Bindu Sharma, Origiin IP Solutions LLP

Intellectual Property (IP) has gained more importance than ever before in India as well as around the world. Creation of IP requires huge financial investments along with tremendous human efforts. This is the reason it has become increasingly important for companies to keep track of the extent, quality, and use of their intangible assets, as well as to have processes  and procedures in place to create, inventory, perfect and use intellectual property rights associated with those assets.

 One traditional definition of an intellectual property audit is, “the cataloguing of an organization's intellectual property assets” but practically IP audit has a wider meaning and may be defined as, “a systematic review of the IP owned, used or acquired by a business”. Its purpose is to uncover under-utilized assets, to identify any threats to a company's bottom line and to enable business strategists to devise informed strategies that maintain and improve their company's market share and brand equity.

The processes and stages in which audit is carried out varies from organization to organization depending upon their business goals and areas of business. Patents may be important for one organization wherein for the other organization copyright or industrial designs may be critical. The process of IP audit includes review of IP processes within the organization, identification of trade secrets and providing best solutions to secure it by advising on the various methodologies necessary to maintain security and confidentiality.

IP audit starts from the reviewing of an area of business and the goals that a company wants to achieve. This reveals the kind of IP a company needs to focus upon. The aim of audit typically is to examine and evaluate strengths and weaknesses in the procedures that are used to protect each intangible asset, secure appropriate intellectual property rights, to develop additional processes and to make improvements to existing processes. Most of the times, companies have a particular reason for the requirement of audit. The reason could be acquisition or merging of the company or it may be because the company has undergone some misappropriation of IP and by means of audit; it wants to identify the reason of such misappropriation and flaws in the agreements, security processes or sensitization level among employees. It’s essential to define scope of the audit. After getting the requirements and reasons for audit, the proper plan will be devised and then the executed in best possible manner.

The typical components of audit are: reviewing and documentation of existing intellectual property, registered, to-be-registered or not-to-be registered. Registered IP shall be checked for its validity; review of agreements such as Non-Disclosure Agreement (NDA), Employment agreement, agreements with contractors, license agreement etc, to ensure that agreements are sufficiently binding on the employees and contractors to secure proprietor IP interview of employees to assess IP awareness level; monitoring of the processes in the company to ensure confidentiality and security of IP; monitoring systems in R & D wing such as maintaining record book, general practices, IP disclosure forms etc.

Based on the observation and information collected, the final report will be prepared and presented to the key people in the organization. The report might reveal strengths and weaknesses of the organization and it may also suggest remedies to rectify the flaws in the processes.

Prior Art Search: Essential for innovation driven organizations

Bindu Sharma, Origiin IP Solutions LLP

The word “prior-art” in patent law means any information that relates to the knowledge existing prior to the date of invention, which is already available in the public domain. This knowledge may be in any form such as a patent, scientific literature, publications (such as articles in journal, proceedings of conferences, data books and display information from technical exhibitions), public discussions or news from anywhere in the world. The prior-art search is performed by a patent attorney or a patent agent or a patent searcher and is conducted through various patent and non-patent databases and other relevant technological websites to identify the prior-arts.

Prior art search is performed at various stages of product/process development and the purpose of doing it may vary depending upon the requirements. The main reasons for which prior art search is done are:

A. Before filing patent

Inventor may perform prior art search for his invention before filing a patent to make sure that on the day of filing patent application, his invention is novel and there is no existing patent or publication of the invention before he files the patent application.

 B. At the time of planning R & D

Due to heavy competition, today companies spend lots of time and resources for Research and Development. Novelty search may be performed by researchers in a particular area of technology to assess the work already done and based upon such existing knowledge they can plan R & D in a better and effective manner. Prior art search gives a fair idea on the research already done in a particular area of technology and the inventor can work further on it instead of working again on the same area. Prior art search also provides ideas to refine and improve the invention by identifying whether the invention has significant improvement over existing inventions.

C. Before product launch

A company may perform prior art search before launching product in a specific market to make sure that they are not infringing patent rights of any third parties by the product launch. This search is called as “Freedom To Operate search (FTO Serach)” or “Clearance Search”.

D. Technology Landscape studies for devising IP Strategy

The purpose of Technology Landscapes study is to understand the technology trend, strength of competitors, to learn latest technology advancement and analyze the patent activity related to technology of interest. Based on Technology Landscape Analysis (also called as Patent Landscape Analysis), appropriate IP strategy, complaint with business strategy is devised for the companies because a good IP strategy is a critical part of business plan and growth at any stage.

 E. During opposition or revocation

If anyone wants to oppose or revoke a patent application or a granted patent, patent search is necessary to identify the grounds on the basis of which validity of a patent/application shall be contested.

The prior art or patent search is essential for innovation driven companies not only to plan research, take decision on patent filing but also to formulated appropriate IP strategies.

Filing first patent application: Important

Bindu Sharma, Origiin IP Solutions, LLP

 Not maintaining confidentiality before filing patent application is the most common mistake inventors make......

After working intensely for months on the amazing idea, investing money, resources, it’s time to fulfill dreams, set-up new business with the idea and invention that has not been thought about or performed by anyone else in the world before.

This is the most common thought an inventor has before he approaches a patent attorney.

Is there anything else that is required to be done much before? Yes, before commercialization and filing a patent application, there are a few essential steps to be performed before meeting your attorney.

Following are the most crucial issues to be considered by an inventor to help him in enhancing quality of research and file patent application in a cost-effective manner:

1.       Prior art search: Get a thorough prior art search done right in the beginning when you get an idea. The scope of the search is not only the granted patents but also patent applications that are published or paper publication. The search, often done globally using various paid or unpaid databases, helps to identify the closest and the most relevant patents/patent application that would help you to assess the weight and commercial value of your invention. Prior art search works as a strong base not only to assess novelty of the invention, but, at later stages, it also helps in drafting of the patent application. Prior art search is an essential and crucial step to give shape to your idea and hence it’s a good idea to take professional help to get the search done.

2.       Maintain confidentiality: Inventors often are extremely passionate and enthusiastic about their invention. Having invented something feels great and one feels like disclosing it to the world. But stop! It is strictly essential to maintain confidentiality of the invention till the patent application is filed. One of the critical requirements of getting a patent is that invention shall be novel on the date of filing. Hence, never disclose, publish or make your invention available to public till you file a patent application. Additionally, do have an NDA (Non-Disclosure Agreement) with your attorney as well before initiating discussion on filing patent application.

 A classic example is when Archimedes solved the problem of checking the purity of a gold crown without damaging the crown. While taking a bath, he noticed that the level of the water in the tub rose as he got in, and realized that this effect could be used to determine the volume of the crown. Archimedes then ran in the street naked, so excited by his discovery that he had forgotten to dress, crying "Eureka!"

3.       Documentation: Documentation of an invention is extremely critical. Step-wise documentations shall be done and the novel features of the invention, existing technical problem which your invention overcomes, how your invention works shall be highlighted. Explain the process or the product with drawing and\or flow diagrams. Thorough understanding of the invention by your attorney is necessary. Don’t get lazy to fill the invention disclosure form if given by your attorney in order to describe the invention systematically.

4.       Consider the cost: Understand why and in which county (ies) or jurisdiction (s) you want to file patent application. Choosing to file provisional or complete application, PCT application or convention application or filing in India based on your requirements can really help you to manage your finances and specify the timelines. Spend some time with your attorney to understand the procedure to work on the most cost-effective package.

5.       Explore options other than patent: Depending upon kind of product, don’t forget to explore other option for protection of the innovation in the form of copyrights, design or trademark.

 Being inventors is takes tremendous amount of innovation and taking invention in right direction, in right manner is imperative to protect it appropriately and reap the revenues.

Trade-secret: an interesting form of Intellectual Property

Bindu Sharma, Origiin IP Solutions LLP

Your secret is no secret once it slips from the mouth

A trade secret is a formula, practice, process, design, instrument, pattern, or compilation of information which:

1.       Is not generally known or reasonably ascertainable, by which a business can obtain an economic advantage over competitors or customers;

2.       Confers some sort of economic benefit on its holder (where this benefit must derive specifically from its not being generally known, not just from the value of the information itself);

3.       Is the subject of reasonable efforts to maintain its secrecy.

The formula for Coca-Cola, sauces of McDonald, KFC chicken recipe and the Hyderabad fish cure for asthma are well-known examples of trade-secret.

In Roman times, the law afforded relief against a person who induced another’s employee (slave) to disclose secrets relating to the master’s commercial affairs. Modern trade secret law evolved in England in the early 19th century in response to the growing accumulation of technology and know-how and the increased mobility of employees.

In Williams v. Williams case, a son sold medicines for his own account, although he had prepared them from formulas given to him by his father on the understanding that the two would use the formulas for their joint benefit. The Chancery trial court issued an injunction restraining the son from using or divulging the trade secret and from selling the medicines. Even on appeal, the court said that the son cannot breach the contract setup by his father but the court did not go into the injunction much because the formula had already been given out.

Trade-secret is an interesting form of Intellectual Property (IP) and has several peculiar features. It is not supposed to be disclosed like other forms of IP and independent creation or reverse engineering of a trade-secret is not an offence. Because it represents nothing more than information, which can be memorized, scribbled down, e-mailed or copied onto some tangible medium and then quietly removed from company premises, it can be easily misappropriated. Duration of a trade-secret is not fixed and once disclosed in public, value is lost forever.

Usually Confidential information and trade-secret terms are used synonymously but both are not the same. Confidential information is the information which company would like to keep secret but may or may not be essential for business. Moreover, confidential Information is generally limited to a single event in the conduct of a business, whereas a trade secret is a process or device for continuous use in the operation of a business. For example, merging or acquisition of company is confidential information but use of combination of yeast strains to make softer bread is a trade-secret.  We can say that all trade secrets are confidential in nature but all confidential information cannot be termed as trade secret.

In USA, the trade-secrets are protected under Uniform Trade Secrets Act but in India, we don’t have any specific legislation to protect it, but common law. There are various ways to prevent misappropriation of trade-secret in an organization such as having appropriate legally enforceable contacts with the employees, restricting access, having processes to ensure confidentiality and security are one of the most effective methods.

Well protected trade-secret can immensely contribute to the business of an organization and hence, its identification and methods to maintain confidentiality is extremely crucial. It is one of the most ignored, the most important and the most difficult to handle assets.

Early publication of patent application: Pros and Cons

Bindu Sharma, Origiin IP Solutions LLP

One of the prime stages in the process of getting a patent is publication of the patent application in official journal of the patent office, which takes place after expiry of 18 months from the date of filing patent application or from the priority date, whichever is earlier. The publication of application happens on its own without any specific request made by the applicant. The date of publication is very crucial because on this date, the patent application is published by the patent office and from this date, the invention forms part of the prior art.

Applicant may request for publication of the application before expiry of 18 months by making request in a prescribed manner for “Early Publication”. It is important to note here that provisional application is never published and it is only the complete specification, which gets published. The advantages and disadvantages of early publication of the application are as below:

1.     Upon publication of the application, the invention forms part of prior art. However, Indian patent law gives a chance to the applicant to withdraw application within 15 months from the date of filing and such withdrawal makes sure that confidentiality of the invention is maintained. In such a case, the inventor can further work on the invention and file the patent application again. If the applicant has opted for early publication, he loses the chance to withdraw the application.

 2.     The pre-grant opposition can be filed by any person upon publication of the application and anytime before grant of the patent provided examination fee has been paid. Thereby, early publication certainly gives more time for the opponents for pre-grant opposition

 3.      On and from the date of publication of application for the patent and until grant of the patent, the applicant has rights and privileges of the patent holder as if the patent for the invention has been granted to him on the date of publication, provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent is granted. Moreover, in case of any infringement, the applicant can claims damages from the date of publication. Here, the applicant gets the advantages if he opts for early publication.

 4.      No suit or other proceedings shall be commenced or prosecuted in respect of an infringement committed before date of publication of the application, meaning that publication of the application is critical to initiate any suit or any other proceeding.

The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is later.

Hence we can conclude that early publication of the application for a patent has certain advantages as well as disadvantages which shall be taken into account depending upon the circumstances and preferences.