Tuesday, April 23, 2013


Copyright Registration: Is it required?

-by Anita Kalia

MSc, LLB, PGDIPR (NLSIU)

IP Attorney, Origiin IP Solutions LLP


The status of copyright registered software is much better than that of an unregistered one...What could be the consequences and risk if you developed software application and launched it in the market without any Intellectual Property protection. If the software is free or paid one, and another company claims to be the owner of such software, what will be the course of action? In such case you will be asked to produce the evidence to prove the originality and ownership or valid title of the work, in the absence of which it becomes difficult to safeguard the interests of your own work. However, if you have registered the work with the registrar of copyrights, the certificate of registration is a valid proof of ownership that can be produced as evidence. In another situation, you want to raise capital by taking loan for the business against the software developed by you, the bank may refuse to grant a loan without having any
intellectual property protection on the software. 

Why copyright, not patent? 

Now the question arises as to why to go for copyright protection when we have a strong patent regime in India. Patents generally protect inventions which are new/novel, inventive and have an industrial application. Moreover, the subject matter should not fall under any of the categories defined under Section 3 [Inventions not patentable] and 4 [Inventions relating to atomic energy] of the Indian Patents Act 1970. Section 3(k) of Indian Patents Act, 1970 clearly states that “computer program per se is not patentable”. This, however, does not include those software programs that control the hardware in some or the other form such as embedded system software and more. However, pure software applications, such as a banking software, railways software system, software for general everyday use, web browsers, word processors, and spreadsheet, specialized software such as computer aided design software, accountancy software and others, come within the purview of non-patentable inventions under Indian Patent Law. For such software application, the only recourse for intellectual property protection is under copyright law, which does not protect the basic idea or concept behind the software program, but only the form and the manner in which it is expressed. 

The basic difference between patents and copyright is that patents protect the Idea or the concept behind an invention whereas a copyright protects the expression of that Idea. There is another good reason to go for copyright rather than a patent is that generally the software patent applications should be limited to inventions having significant present and future commercial value. If the commercial life of software is only a few years, patent protection may not make much sense because it will take at least three to four years for the software patent to be granted and that too is not sure thing to happen due to strict patent laws in India. The period for patent registration is a long one in the light of technology boom where a latest technology becomes obsolete in few months. 

Extent of copyright protection
Since copyright protects the expression of Idea, now the meaning of the term “expression” has to be understood well before any further discussion. We all know that one idea can be expressed in a number of different ways by different people. A person who expresses an idea can first claim copyright individually on such expression of the idea. A person who writes such a software program first, gets a copyright only in the manner it is written and not the methods and algorithms behind it. Copyright protection subsists in both source code and object code that are protected against literal copying. However, look and feel of the software gets protection as artistic work. 


Registration of the copyright

Copyright is a form of intellectual property protection granted under Indian Copyright Act 1956, to the creators of original works of authorship such as literary works, dramatic, musical and artistic works, cinematographic films and sound recordings. 

Registration of the copyright creates a public record of the claim of copyright ownership with the statutory authorities that index the records on the copyright register which contains work’s title and the author’s name. The copyright register is accessible to anyone and helps people find out the owners of copyright whom they can get licenses from to use a copyright work and helps to prevent fraudulent transfers of copyright ownership. 

The purpose of copyright is to promote learning and progress in intellectual pursuits by encouraging authors to make their works available to the public. Since the copyright protection for abstract ideas would undermine that goal by permitting one author to have a monopoly on the idea itself, the idea is left in the public domain while leaving various expressions to the exclusive exploitation by the authors. 

Copyright Protection worldwide

It is interesting to note that even though copyrights operate territorially, it is recognized virtually worldwide under the Berne Convention and is applicable uniformly to its 184 member states that include countries such as India, U.S., UK, China, Japan and more. This basically means that a copyright registration in one of the member states will have the same effect, in terms of copyright protection, in the rest of the member states from the date of its registration. Conventions and bilateral agreements address the availability of protection for foreign authors and grant protection to foreign authors under the principles of national treatment or formal reciprocity. 

Is registration really needed?

The most interesting fact about copyright is that the copyright protection arises automatically and is inherent when an author fixes an original work on any tangible medium of expression. Under the Indian Copyright Act, the owner of a copyright may register his or her copyright claim with the Copyright Office, but no formal registration is required to create the rights of copyright. Registration is, however, a prerequisite to initiating an action for copyright infringement as it establishes prima facie proof of rights. As per the Indian Copyright Act, the Registers of Copyrights shall be prima facie evidence of the particulars entered therein and documents purporting to be copies of any entries therein, or extracts there from certified by the Registrar of Copyrights and sealed with the seal of the Copyright Office shall be admissible in evidence in all courts without proof or production of the original. Copyright registration is compulsory in case the owner wants to raise a loan from a bank based upon the copyright work. In order to qualify for copyright registration, the work should be original, without any strict prerequisite to novelty or uniqueness as is required under Indian Patent Law. To be original, a work should be created independently rather than being copied from someone else’s work. In other words, the work should be the personal expression of the author. This factor must be distinguished from the concept of novelty, which usually is not required. Independent development is valid defense to a claim of copyright infringement. Copyright protection is conferred automatically the moment the software code is embodied in some medium like ROM, Magnetic Tape, diskette, paper or any other tangible medium. One point worth noting here is that even though the copyright protection arises automatically upon it fixation on a tangible medium, the real problem arises when someone copies an unregistered work. In such a case the protection is no longer automatic and even being an owner, one can not file lawsuit without registering the work. One can not stop infringement without copyright registration. Apart from that there is one more reason to file for copyright registration as soon as possible, is that one can save a decent amount of money that may be wasted in a lawsuit for copyright infringement which includes lawyer fees and litigation costs. 

Even if not registered, a copyright notice can be affixed on the work and generally consists of the following four elements: 

* The symbol © (the letter C in a circle) or the word "Copyright"

* The year of first publication of the work; and

* The name of the owner of copyright.

* “All rights reserved” at the end. 

Conclusion

A prompt copyright registration of software is necessary to prevent unauthorized claiming and copying by others. It also greatly benefits in extracting maximum benefits by way of assigning, licensing and raising capital. It is also true that not all the works are worth registering but in most situations, a work is valuable enough to be registered.

Tuesday, April 16, 2013


PATENTALK:          Dr. Swaranjit Singh Cameotra Deputy Director in Institute of Microbial Technology, Chandigarh

On deposition of micro organisms under Budapest Treaty               

Please tell us something about Budapest treaty. What is purpose of this treaty? 

The Budapest Treaty on the international recognition of the deposit of microorganisms for the purpose of patent procedure. It is recognizes “International Depositary Authorities (IDA) for microorganism, sets out the minimum standards for such collecting authorities, and also sets out the guidelines for the deposit of microorganisms. It started on August 9, 1980. The treaty was amended on September 26, 1980. Budapest treaty is administered by the World Intellectual Property Organization (WIPO). The purpose of this treaty is to deposit the microorganism in order to satisfy the terms required for the patenting the modified microbes/processes/products. Deposit of the biological material is needed only at one recognized institution, and this deposit is acceptable and recognized in all the countries that follow the Budapest Treaty.

As micro organisms are living organisms, are they patentable in India?
 

The answer is no, in their native or original form. However, if the microbe is genetically modified it is ready to be accepted as a Patent deposit, it may be patentable. Even though one has to patent a microbial process or a product, the respective microbe has to be deposited in a Patent depository. 

What is the procedure of deposition of micro organism?

The procedure for the deposition of cultures can be made in four categories;

1. General Deposits: There is no fee for deposit of cultures in the general category. The details of the culture need to fill in a culture data sheet.

2. Safe Deposits: These cultures are handled with confidentiality and are kept under security. Only the depositor has access to these cultures. There is an annual fee for such a deposit. An agreement needs to be signed between the depositor and the Collection.

3. Patent Deposits: These cultures are not listed in the catalogue / database. Since a depositor needs to declare accession number in the patent application, the information about the culture is also in public domain. These cultures are handled with confidentiality and kept under security and are given to the depositors or authorized persons as per patent regulations. There is one time fee for such a deposit.

4. The Patent Deposits under the Budapest Treaty (IDA): One can deposit cultures under the Budapest Treaty (IDA) for filing international patents or for filing patents in India. 

Is the applicant required to deposit samples in hand or there are other modes of delivery? 

After getting the go ahead signal from the Collection, the samples can be deposited by hand or through Registered Post/Courier.

How much time does it take to get accession number after microbial sample is submitted?

About 4-6 weeks.

What are the security requirements of a Patent depository?

 As the strains are of very high value, care must be taken that the strains are not misused. Only authorized people can enter the Patent depository by punch cards/thumb impressions. The location is under strict electronic surveillance with CCTV etc.

Patentability of Micro-organisms

Dr. Swaranjit Singh Cameotra
Deputy Director in Institute of Microbial Technology, Chandigarh
Bindu Sharma
Founder and CEO
Origiin IP Solutions LLP, Bangalore
Email: bindu@origiin.com

 A patent is a form of intellectual property, consisting of a set of exclusive rights granted by a Government to an inventor or its assignee for a limited period of time in exchange for the public disclosure of an invention. In order to get patent rights, the invention shall fulfil three fundamental statutory conditions of patentability, such as, novelty, inventiveness and industrially usefulness. Often, subject matter of a patent, that is claimed is either a product or a process to prepare a product or both. However, more precisely, as per Indian Patents Act, 1970, the invention means a new product or process involving an inventive step and capable of industrial application. Further, the inventive step means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention non-obvious to a person skilled in the art.

The micro organisms as a subject matter of a patent have always been fascinating, primarily for their being a living form. Conventionally a micro-organism is considered as an organism that is microscopic or too small to be seen by the naked human eye though there are various algae and fungi that are visible by naked eye. Micro-organisms include bacteria, fungi, virus, protists and other prokaryotes as well as some microscopic plants (phytoplankton) and animals (zooplankton).

In order to understand patentability of micro organism, it is important to know that Article 27(3) (b) of TRIPS Agreement, that allows member states to exclude from patentability “plants and animals, other than micro-organisms, and essentially biological processes for the production of plants or animals other than non-biological and microbiological processes.” This clearly indicates that TRIPS makes it obligatory for all its member states to extend patents for micro-organisms, non-biological, and microbiological processes. However, the plant and animals have clearly been indicated to be not patentable.

As far as Indian patent laws are concerned, in order to be compliant with TRIPS agreement, the third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005 that extended product patents to all fields of technology including food, drugs, chemicals and micro organisms provided such inventions fulfil statutory conditions of patentability. It is worth noting here that micro organism that exists in nature is products of nature and mere identification of micro organisms cannot amount to invention but a discovery which is not patentable. Therefore, a naturally occurring micro organism fails to fulfil the critical conditions of patentability, i.e., novelty and inventive step.

What differentiates an invention from a discovery is human intervention, thereby, the most critical issue regarding patentability of micro organisms is assessment of human intervention that draws line between discovery and invention. However, Genetically Modified Micro organisms (GEMs), creation of which involves human effort, resulting in enhancement of its known efficacies compared to state of the art, are patentable. Section 3 j of Indian patent act 1970 states that micro organisms are patentable but it doesn’t categorically mention that only GEMs are patentable. However, relating patentability of micro organism to the statutory definition of an invention depicts that micro organism shall be a new product that involves an inventive step and is capable of industrial application.

The most discussed and landmark case on micro organism is Diamond vs Chakrabarty. A genetic engineer Ananda Mohan Chakrabarty, working for General Electric, developed a bacterium (derived from the Pseudomonas genus) that is capable of breaking down crude oil and hence was used in treating oil spills. Chakrabarty filed for a patent for the bacterium in the United States.. There were three main claims in the patent specification that related to inoculums, bacterium itself and the process to prepare the genetically modied bacterium. Examiner had no problems granting rights over claims related to inoculums and the process but as the law dictated that living things were not patentable, rights were refused for the bacterium as a product. The Board of Patent Appeals and Interferences agreed with the original decision of patent examiner. However, the United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favor, stating that "the fact that micro organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court. The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980.

Drawing line between discovery and invention is extremely critical to assess patentability in case of micro organisms. Extent of human intervention is one of the most critical factors to determine patentability. In Dimminaco A.G v. Controller of Patents & Designs, the issue was the patenting of the process for preparation of infectious bursitis vaccine, which was invented for protecting poultry against infectious bursitis. The Controller held that the process of separation of the vaccine which has living entity cannot be considered a manufacture and hence not patentable. He also held that since the vaccine contains living organism it cannot be patented. The court held that the matter involved is of a new process of preparation of vaccine under specific scientific conditions and the said vaccine is useful for protecting poultry against contagious bursitis infection and there is no statuary bar to accept a manner of manufacture as a patentable even if the end products contain living organism.

Apart from basic criteria of patentability, i.e., novelty, inventiveness and industrial use, sufficiency of disclosure of the invention is extremely important and the subject-matter of the invention shall be described in a manner sufficiently clear and complete to be carried out by the person skilled in the art. In case of an invention, claiming micro organism as a product, completely describing the invention in the description to enable a person skilled in the art to carry it out is usually impossible. This is why, in the particular case of inventions involving micro-organisms, where such micro organism is not available in public, a deposition of such micro organism material has been made necessary in the institute recognised by Budapest Treaty.

In India, an essential requirement for filing an application for patent wherein the invention is based on a microorganism, deposition of microbial sample is necessary in the International Depository Authorities (Institute of Microbial Technology, Chandigarh) formed under Article-7 of the Budapest Treaty and accessibility of that micro-organism from the depositories. As per section 10(4) (d) (ii) of the Indian Patent Act, 1970, the micro-organism if not being described fully and is not available to public, it to be deposited before the IDA under the Budapest Treaty before filing of application in India. All the characteristics of the micro-organisms and details of depositary institutions along with accession number shall be mentioned in specification for correctly identifying the same.

Due to short life cycle, rapid growth, easy to culture, micro organisms have been used widely in industry today for producing high value compounds such as enzymes, hormones, polymers, organic acids etc. Various industries like brewery, dairy products are primarily based on various micro organisms. However, microbes are also well known for their vital role in degradation of toxic compounds by transforming them into less toxic forms. It is interesting to note that more than half of the world’s oxygen is produced by the activity of the micro-organisms. Many algae and cyanobacterial strains produce and release oxygen in the atmosphere by means of oxygenic photosynthesis.

Thus, there is a changing trend in the research on the microbial world around the globe and many more new ways to use the power of the single celled micro-organisms will come up in different fields like medicine, drugs, high value compounds production and in removal of toxic pollutants from the environment. In India, we have an IDA in IMTECH, Chandigarh and good progress is made in the conservation of microbial diversity. The IDA also has a Patent Depository where the facility can be availed as per the norms. In India there are two ‘Hotspots’ of Biodiversity, the Western Ghats and the seven states in the Indo-Burma Region. Thus, it is all the more important to have a well defined system for the conservation of the important biodiversity. In Pune a culture collection and an IDA (MCC: Microbial Culture Collection) has been set up so that the rich and new microbial diversity that is isolated is properly maintained. The strains are identified for supply to users in academic institutes and industries. The MCC was recognized by the World Intellectual Property Organization (WIPO), Geneva, Switzerland as an International Depository Authority (IDA) on April, 2011. Setting up of two IDAs in India demonstrates that conservation of microbial diversity isolated from different environmental niches and its detailed study for products and processes is a very important activity.

Further reading:

1 Indian Patent Act 1970

2 Manual of Indian Patent Office, 2008

3 Preservation of micro-organisms as deposits in Patent Applications. Swaranjit Singh Cameotra. BBRC 353(4): 849-850, 2007.

4  Can Microbes be patented. Swaranjit Singh Cameotra. BBRC, Online November 2012.