Intellectual Property Rights Law – II
This paper continues the study of Intellectual Property Rights from Part I, now covering Copyright law (including related rights and digital copyright), Patent law (including pharmaceutical patents and compulsory licensing), Plant Variety Protection and Farmers’ Rights, Trade Secret Law, Traditional Knowledge, and the major International IP Conventions. Special emphasis is placed on the balance between IP rights and public interest — a recurring theme in Indian IPR jurisprudence, particularly in the pharmaceutical patent context.
- Copyright Law (Copyright Act, 1957)
- Patent Law (Patents Act, 1970)
- Plant Varieties & Farmers’ Rights Act, 2001
- Trade Secret Law
- Traditional Knowledge & Folklore
- International IP Conventions
📋 Table of Contents
- Copyright Law
- Subject Matter of Copyright – S.13, S.16
- Idea-Expression Dichotomy
- Doctrine of Originality
- Rights in Respect of Works – S.14
- Term of Copyright – Ss.22–29
- Authorship, Ownership and Assignment – Ss.17–19A
- Licensing of Copyright – Ss.30–36A
- Infringement and Fair Dealing – Ss.51–52
- Related Rights – Ss.37–39
- Remedies for Infringement
- Patent Law
- Plant Varieties and Farmers’ Rights
- Trade Secret Law
- Traditional Knowledge and Folklore
- International IP Conventions
- Important Case Laws Summary
- Important Questions for Exam
- Quick Revision Summary
I. Copyright Law
Governing Legislation: The Copyright Act, 1957 (as amended up to 2012), read with the Copyright Rules, 2013.
1.1 Subject Matter of Copyright – S.13, S.16
Copyright shall subsist throughout India in the following classes of works:
(a) Original literary, dramatic, musical and artistic works;
(b) Cinematograph films;
(c) Sound recordings.
No person shall be entitled to copyright or any similar right in any work, whether published or unpublished, otherwise than under and in accordance with the provisions of this Act or any other law for the time being in force, but nothing in this section shall be construed as abrogating any right or jurisdiction to restrain a breach of trust or confidence.
Definitions of Works (S.2):
- S.2(o) — Literary Work: Includes computer programmes, tables and compilations including computer databases.
- S.2(h) — Dramatic Work: Includes any piece for recitation, choreographic work or entertainment in dumb show, the scenic arrangement or acting form of which is fixed in writing or otherwise, but does not include a cinematograph film.
- S.2(p) — Musical Work: Means a work consisting of music and includes any graphical notation of such work but does not include any words or any action intended to be sung, spoken or performed with the music.
- S.2(c) — Artistic Work: Includes (i) painting, sculpture, drawing, engraving, photograph; (ii) work of architecture; (iii) work of artistic craftsmanship.
- S.2(f) — Cinematograph Film: Means any work of visual recording on any medium produced through a process from which a moving image may be produced by any means and includes a sound recording accompanying such visual recording.
- S.2(xx) — Sound Recording: Means a recording of sounds from which sounds may be reproduced regardless of the medium on which recording is made or the method by which the sounds are reproduced.
After the 1994 Amendment, computer programmes are expressly included in “literary works” under S.2(o). They are protectable by copyright as literary works, not patents (in India). This aligns with TRIPs Art. 10.
1.2 Idea-Expression Dichotomy
Copyright protects expression, not ideas. This is the fundamental principle of copyright law — the idea-expression dichotomy. An author can freely use ideas, themes, facts, or concepts from other works, but cannot copy the specific expression (words, phrases, sentences, images) in which those ideas are expressed. This principle is also codified in TRIPs Art. 9(2) and the WIPO Copyright Treaty (WCT).
Author A writes a novel about a boy who discovers he has magical powers and attends a school of magic. Author B cannot copy A’s exact words, characters, and plot details — these are A’s expression. But B can write their own novel using the general idea of a “magical school” since ideas per se are not protectable.
A journalist writes an article about the history of the Mughal Empire. Another journalist may write about the same historical facts (facts are not protectable) but may not copy the exact paragraphs, sentence structures, and distinctive commentary of the first article.
Facts: Donoghue, a jockey, gave his racing stories orally to journalist Felstead, who wrote and published them in the News of the World. Later, Felstead wanted to use the same stories for other publications. Donoghue claimed copyright in the stories.
Issue: Who is the author of a work — the person who provides the ideas and information, or the person who reduces them to writing?
Held: Farwell J. held that copyright vests in the person who expresses ideas in a fixed form, not merely the person who has the ideas. Donoghue provided the “raw material” (ideas, experiences) but Felstead provided the expression by writing the articles. Felstead (or the newspaper employing him) owned the copyright.
Facts: University of London Press alleged copyright in examination papers set by university examiners. The question was whether examination papers could be “literary works” eligible for copyright.
Issue: What does “original” mean in copyright law? Do examination papers constitute “literary works”?
Held: Peterson J. held that “original” in copyright law does not mean novel or inventive — it simply means the work must originate from the author (not be copied from another source) and must involve a degree of skill, labour, and effort. Examination papers are original literary works. The classic “labour, skill and judgment” test was established.
1.3 Doctrine of Originality — Labour, Skill and Effort vs Minimal Creativity
Two competing doctrines define “originality” in copyright law:
| Basis | Labour/Skill/Effort Doctrine (UK/India – Traditional) | Minimal Creativity Doctrine (US – Feist) |
|---|---|---|
| Test | Work originates from author + some labour/effort invested | Work must involve independent creation + at least minimal degree of creativity |
| Leading case | University of London Press (1916) | Feist Publications v. Rural Telephone Service (1991) US SC |
| Factual compilations | Protected (Sweat of the Brow — even alphabetical lists) | Not protected unless selection/arrangement involves creativity |
| India’s position | Traditionally UK doctrine; Eastern Book Company moved towards minimal creativity | EBC v. D.B. Modak adopted middle ground for compilations |
| Implication | Broader protection; phone directories protectable | Narrower protection; pure alphabetical listings not protectable |
| TRIPs provision | Art. 10 — compilations protectable “by reason of selection or arrangement” | Same Art. 10 — creativity in selection/arrangement required |
Facts: Eastern Book Company (EBC) published Supreme Court judgments with added headnotes, footnotes, editorial notes, cross-references, and para numbering. D.B. Modak used EBC’s edited version. EBC claimed copyright in the edited judicial opinions.
Issue: Can there be copyright in edited/compiled versions of judicial opinions? What is the standard of originality for compilations in India?
Held: The Supreme Court held that (i) raw judicial opinions are in the public domain — no copyright; (ii) however, the original additions (headnotes, catchwords, editorial notes created by EBC’s skill and judgment) are protected by copyright. Mere copying of judgments with para numbering (without skill/judgment) is not protectable. The court adopted a “modicum of creativity” standard — pure mechanical labour is insufficient; some intellectual contribution is needed.
1.4 Rights in Respect of Works – S.14
For the purposes of this Act, “copyright” means the exclusive right, subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:
(a) In the case of a literary, dramatic or musical work — to reproduce, issue copies, perform in public, communicate to public, make cinematographic film/sound recording, make translation/adaptation;
(b) In the case of a computer programme — reproduce, issue copies, perform, communicate, make adaptation, sell/give on hire;
(c) In the case of an artistic work — reproduce, communicate, issue copies, include in cinematographic film, make adaptation;
(d) In the case of a cinematograph film — make copy, sell or hire, communicate to public;
(e) In the case of a sound recording — make any other sound recording, sell or hire, communicate to public.
Author’s Special Rights (Moral Rights) – S.57:
Independently of the author’s copyright and even after assignment of the said copyright, the author of a work shall have the right:
(a) to claim authorship of the work; and
(b) to restrain or claim damages in respect of any distortion, mutilation, modification or other act in relation to the said work which is done before the expiration of the term of copyright if such distortion, mutilation, modification or other act would be prejudicial to his honour or reputation.
Facts: Amar Nath Sehgal was a renowned sculptor who created a large mural for the Vigyan Bhavan (Government of India). The government demolished and stored the mural in a warehouse, causing physical damage to the artistic work.
Issue: Whether the author’s moral rights under S.57 survive assignment of copyright and whether destruction/mutilation of a physical work violates the author’s moral rights.
Held: The Delhi High Court recognised the moral rights of the author under S.57. Even after the copyright was assigned to the Government, Sehgal’s right to integrity of his work survived. The government’s mutilation/storage of the mural was a violation of his moral rights. The court awarded damages and ordered the mural to be handed back to the artist.
1.5 Term of Copyright – Ss.22–29
| Type of Work | Term of Copyright | Section |
|---|---|---|
| Literary/Dramatic/Musical/Artistic work (published during author’s lifetime) | Author’s lifetime + 60 years from beginning of calendar year following author’s death | S.22 |
| Anonymous / Pseudonymous works | 60 years from beginning of calendar year of publication | S.23 |
| Posthumous works (literary/dramatic/musical) | 60 years from beginning of calendar year of publication | S.24 |
| Photographs | 60 years from beginning of calendar year of publication | S.25 |
| Cinematograph films | 60 years from beginning of calendar year of publication | S.26 |
| Sound recordings | 60 years from beginning of calendar year of publication | S.27 |
| Government works | 60 years from beginning of calendar year of publication | S.28 |
| Works of international organisations | 60 years from beginning of calendar year of publication | S.29 |
India follows the international standard of “life + 60 years” (TRIPs Art. 12 requires “life + 50 years” minimum; India gives more). After this period, works enter the PUBLIC DOMAIN and can be freely used by anyone.
1.6 Authorship, Ownership, Joint Authorship – Ss.2(d), 17, 19A
“Author” means:
(i) in relation to a literary or dramatic work, the author of the work;
(ii) in relation to a musical work, the composer;
(iii) in relation to an artistic work (not photograph), the artist;
(iv) in relation to a photograph, the photographer;
(v) in relation to a cinematograph film or sound recording, the producer;
(vi) in relation to any literary, dramatic, musical or artistic work which is computer generated, the person who causes the work to be created.
Subject to the provisions of this Act, the author of a work shall be the first owner of the copyright therein. Exceptions:
(a) Work made by author in the course of employment under a contract of service or apprenticeship — the employer shall be the first owner;
(b) Photograph taken, painting/portrait, engraving made for a consideration — the person who commissioned it is the first owner (in absence of agreement to the contrary);
(c) Work made/produced for a newspaper/magazine — proprietor of that publication is the first owner (to the extent of inclusion in the publication).
Copyright and Artificial Intelligence:
A contemporary issue: Who is the “author” when an AI system generates a work? S.2(d)(vi) of the Copyright Act refers to “the person who causes the work to be created” for computer-generated works. However, if an AI operates autonomously without specific human direction, the authorship question becomes more complex. Courts internationally (e.g., Naruto v. Slater in the USA — 9th Circuit 2018) have held that copyright does not subsist in works created by non-human entities. In India, the 2(d)(vi) formulation may extend to AI-assisted works where a human is meaningfully directing the creation.
Facts: A macaque monkey (Naruto) took “selfie” photographs with a photographer’s camera. PETA sued on behalf of the monkey claiming copyright in the photographs. Slater claimed the photographs were his.
Issue: Can a non-human animal hold copyright? Must a copyright holder be a human?
Held: The 9th Circuit held that copyright can only vest in human authors — animals (and by extension, autonomous AI systems without human authorship) cannot hold copyright. PETA had no standing to sue on behalf of the monkey.
1.7 Licensing of Copyright – Ss.30–36A
Assignment (S.19):
Copyright can be assigned. An assignment must be in writing and signed by the owner. Assignment can be of the entire copyright or of any part thereof. After the 2012 Amendment, the assignee of copyright in a cinematograph film or sound recording cannot claim royalties payable to authors of underlying works (e.g., lyricists, composers) — this protects authors’ rights against oppressive contracts.
Compulsory Licences (Ss.31–31D):
- S.31 — Compulsory Licence on Refusal: If owner refuses to republish/translate a work against public interest, Copyright Board may grant compulsory licence.
- S.31A — Licences to Create Accessible Formats: For the benefit of disabled persons.
- S.31D — Statutory Licence for Broadcast of Literary and Musical Works: Broadcasting organisations may obtain a statutory licence on payment of royalties.
Facts: Radio broadcasters sought to broadcast copyrighted music and refused to pay royalties demanded by Super Cassette (T-Series). The issue was whether S.31D provides a statutory licence to radio broadcasters.
Issue: Whether radio stations can be compelled to pay royalties to copyright owners under S.31D; what is the role of the Copyright Board in fixing rates?
Held: The Supreme Court held that broadcasting of copyrighted works requires either a licence from the owner or a statutory licence under S.31D with royalty to be determined by the Copyright Board. No broadcaster can use copyrighted music without either a consensual licence or invoking S.31D before the Copyright Board.
1.8 Infringement of Copyright and Fair Dealing – Ss.51–52
Copyright in a work shall be deemed to be infringed when:
(a) any person, without a licence from the owner or the Registrar of Copyrights, does anything that the exclusive right of the copyright owner entitles him to do; or
(b) permits for profit any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work.
The following shall not constitute infringement:
(a) A fair dealing with a literary, dramatic, musical or artistic work (not a computer programme) for the purposes of:
(i) private or personal use including research;
(ii) criticism or review;
(iii) reporting current events and affairs;
(b) Reproduction for judicial proceedings or for the purposes of a legislative body;
(c) Reproduction in the course of instruction (education);
(d) Reproduction by public libraries, educational institutions;
…and many other enumerated exceptions.
Facts: R.G. Anand wrote a play “Hum Hindustani.” He met film producers who showed interest. Later, a film “New Delhi” was released which Anand claimed copied his play substantially.
Issue: What is the test for copyright infringement — what constitutes “substantial copying”?
Held: The Supreme Court laid down the following test for infringement: (i) If the same idea is expressed differently — no infringement; (ii) If the expression itself is copied, infringement may occur; (iii) The test is whether an ordinary observer would consider the alleged copy to have been made from the original; (iv) Insignificant/trivial similarities in two works do not constitute infringement. The court found that while the theme was similar (communal harmony), the expression was different, so no infringement.
Facts: Oxford, Cambridge, and other publishers sued a photocopy shop (near Delhi University) for reproducing portions of academic textbooks for students as “course packs” without paying royalties or obtaining licences.
Issue: Whether photocopying of textbooks for educational/academic purposes by students through a photocopy shop constitutes infringement or fair dealing under S.52.
Held: The Delhi HC held that making photocopies for educational purposes by students falls within the educational fair dealing exception under S.52(1)(i) and related provisions. The court dismissed the publishers’ suit. The “right to education” was balanced against copyright protection, and educational use was deemed fair dealing.
Facts: Cooper published an abridgement of Macmillan’s book without permission. The issue was whether an abridgement/adaptation constitutes copyright infringement.
Issue: Does abridging or condensing a copyrighted work constitute infringement?
Held: The Privy Council held that a mere abridgement that takes the substance and essential parts of an original work without any real independent creation constitutes infringement. To make a legitimate adaptation/abridgement, the adapter must contribute original skill and labour — not merely reproduce the original in shorter form.
1.9 Related/Neighbouring Rights – Ss.37–39
Every broadcasting organisation shall have a special right, called “broadcast reproduction right” in respect of its broadcasts. No person shall, during a period of 25 years from the beginning of the calendar year next following the year in which the broadcast is made, without a licence from the broadcasting organisation, do any act that would infringe the copyright in a work if performed with respect to that work.
Where any performer appears or participates in a performance, he shall have a special right (called “performer’s right”) in relation to such performance. Duration: 50 years from beginning of calendar year following the year in which performance is made. Includes moral rights of performers after 2012 Amendment.
Moral Rights of Performers (S.38B — inserted by 2012 Amendment):
Performers (actors, dancers, singers, musicians) now have moral rights: (i) right to be identified as a performer; (ii) right to prevent distortion, mutilation, or modification of the performance that would prejudice the performer’s reputation.
1.10 Remedies for Copyright Infringement
- Civil Remedies (S.55): Injunction, damages, account of profits, delivery up of infringing copies.
- Criminal Remedies (S.63): Infringement is a cognisable offence — imprisonment up to 3 years and/or fine up to ₹2 lakh (enhanced for repeat offences).
- Protection of Technological Measures (S.65A): Circumventing effective technological protection measures (e.g., DRM — digital rights management) is an offence.
- Protection of Rights Management Information (S.65B): Removing or altering rights management information is an offence.
II. Patent Law
Governing Legislation: The Patents Act, 1970 (as amended in 2005), read with the Patents Rules, 2003 (amended 2016). India is a member of the Patent Cooperation Treaty (PCT) and the Paris Convention.
2.1 Introduction and Overview
A patent is an exclusive right granted by the government to an inventor for a limited period (20 years in India) in exchange for public disclosure of the invention. After 20 years, the invention enters the public domain. The patent system rests on a social bargain: the inventor receives a temporary monopoly; society receives full disclosure of the invention and eventual free access.
India’s Patents Act, 1970 originally excluded pharmaceutical and agricultural product patents. TRIPs Art. 27 mandates patents for all fields of technology. India amended the Act in 2005 to allow product patents in pharma/agriculture. Transitional provisions (the “mailbox system”) were used during 1995–2005. The 2005 Amendment introduced S.3(d) — the famous “evergreening” provision unique to India.
2.2 Patentability Criteria – Ss.2, 3
Conditions for Patentability (S.2(1)(j) + S.2(1)(ja)):
An invention is patentable if it:
(1) is Novel/New — not previously published/used anywhere in the world (prior art);
(2) involves an Inventive Step — not obvious to a person skilled in the art [S.2(1)(ja)];
(3) has Industrial Application/Utility — capable of being made or used in an industry [S.2(1)(ac)].
Non-Patentable Subject Matter (S.3):
The following are not inventions and hence not patentable:
- S.3(a): Frivolous inventions or contrary to natural laws
- S.3(b): Inventions contrary to public order or morality, or harmful to environment
- S.3(c): Discovery of scientific principles or abstract theories
- S.3(d): New form of known substance (salt, ester, polymorphs, metabolites, etc.) unless they differ significantly in efficacy — THE ANTI-EVERGREENING PROVISION
- S.3(e): Substance obtained by mere admixture resulting only in aggregation of properties
- S.3(f): Mere arrangement or rearrangement or duplication of known devices
- S.3(i): Treatment of human/animal bodies by surgery or therapy, or diagnostic methods
- S.3(j): Plants, animals, seeds, biological processes for production of plants/animals (except micro-organisms and microbiological processes)
- S.3(k): Computer programmes per se, mathematical methods, mental acts, business methods
- S.3(p): Traditional knowledge or aggregation/duplication of known properties of traditionally known components
Facts: Novartis sought a patent for the beta-crystalline form of imatinib mesylate — the active ingredient in Gleevec/Glivec (a life-saving cancer drug). Indian generic companies (including Cipla) and NGOs challenged the patent. Novartis relied on the 1993 patent of imatinib and argued that the beta-crystalline form was a novel and inventive improvement.
Issue: Whether the beta-crystalline form of imatinib (a new polymorph of a known substance) satisfied patentability under S.3(d) of the Patents Act, 1970 — i.e., did it show a significant improvement in “efficacy” over the known substance?
Held: The Supreme Court dismissed Novartis’s appeal. The Court held that S.3(d) sets a high bar: a new form of a known substance is only patentable if it shows significantly enhanced therapeutic efficacy. Novartis could only show improved bioavailability, not improved therapeutic efficacy. The beta-crystalline form was held to be a new form of a known substance without enhanced efficacy — not patentable. S.3(d) is India’s unique tool against evergreening of pharmaceutical patents.
Facts: Dhanpat Seth claimed a patent for a new type of paddy/grain crate design. Nil Kamal challenged its validity claiming lack of inventive step.
Issue: What constitutes an “inventive step” for a patent to be valid? What is the test for obviousness?
Held: The HP HC discussed the test for inventive step. A patent is only valid if the invention is non-obvious to a person “skilled in the art” — i.e., someone with ordinary professional knowledge in that technical field. If a person of ordinary skill in the field would find the combination of known elements obvious, there is no inventive step. The “inventive step” must be a genuine leap of ingenuity, not a routine step.
2.3 Procedure for Patent Application – Ss.7–11B
Types of Applications:
- Ordinary Application (S.7): Filed directly in India without claiming any priority.
- Convention Application (S.135): Filed in India claiming priority from an application filed in a Paris Convention country (within 12 months).
- PCT Application (S.7(1A)): International application filed under the Patent Cooperation Treaty, entering India as a national phase application.
- Divisional Application (S.16): Filed when the original application claims more than one invention; the applicant may divide it.
Specification:
- Provisional Specification (S.9): Filed when complete specification is not ready. Gives 12 months to file complete specification.
- Complete Specification (S.10): Must fully and particularly describe the invention, disclose the best method of performing it, and end with claims defining the scope of the patent.
Opposition to Grant of Patent:
- Pre-Grant Opposition (S.25(1)): Any person may oppose after publication of the application but before grant, on enumerated grounds.
- Post-Grant Opposition (S.25(2)): Any person interested may oppose within 12 months of grant of the patent, on the same enumerated grounds.
Grounds for Opposition (S.25):
- Wrongful obtaining of invention
- Anticipation by prior publication or prior use in India
- Obviousness / lack of inventive step
- Not an invention under S.3
- Failure to disclose information as required
- Non-disclosure of biological source of material
- Anticipation by traditional knowledge
2.4 Compulsory Licensing – Ss.84, 92, 92A
At any time after 3 years from grant of a patent, any person may apply to the Controller for grant of compulsory licence on any of the following grounds:
(a) The reasonable requirements of the public with respect to the patented invention have not been satisfied;
(b) The patented invention is not available to the public at a reasonably affordable price;
(c) The patented invention is not worked in the territory of India.
In cases of national emergency or extreme urgency or in case of public non-commercial use, the Central Government may direct the Controller to grant compulsory licences for the patent. FRAND (Fair, Reasonable and Non-Discriminatory) licensing obligations also arise in this context.
Compulsory licence may be granted to manufacture and export a patented pharmaceutical product to any country that has insufficient manufacturing capacity in the pharmaceutical sector, to address public health problems, provided that such country has either granted a compulsory licence or permits importation of the patented pharmaceutical product.
Facts: Bayer held the patent for sorafenib tosylate (Nexavar) — a kidney/liver cancer drug priced at approximately ₹2.84 lakh per month. Natco applied for a compulsory licence under S.84 of the Patents Act, arguing the drug was not available to the public at a reasonably affordable price and not worked sufficiently in India.
Issue: Whether grounds for compulsory licensing under S.84 were satisfied? What is the meaning of “reasonably affordable price” and “reasonable requirements of the public”?
Held: India’s first compulsory licence was granted in favour of Natco. The Bombay HC upheld the Controller’s grant of compulsory licence. Bayer’s pricing was held unreasonable (₹2.84 lakh vs Natco’s proposed generic at ₹8,880). Bayer was working the patent insufficiently — importing 200 bottles vs the estimated requirement of 8,842 patients. Natco was required to pay a 6% royalty to Bayer and sell the drug at ₹8,880/month.
Standard Essential Patents (SEP) and FRAND:
Standard Essential Patents (SEPs) are patents that protect technologies essential to comply with industry standards (e.g., 3G, 4G/LTE, Wi-Fi standards). Holders of SEPs commit to licensing them on FRAND (Fair, Reasonable and Non-Discriminatory) terms to ensure standards are accessible. Courts in India (Delhi HC) have increasingly dealt with SEP licensing disputes in telecom.
2.5 Rights of Patentee and Patent Infringement – Ss.47–48, 104–107
Subject to other provisions, a patent granted under this Act shall confer on the patentee:
(a) Where the patent is for an ARTICLE, the exclusive right to prevent third parties from making, using, offering for sale, selling or importing the article;
(b) Where the patent is for a PROCESS, the exclusive right to prevent third parties from using the process and from doing the acts above in respect of a product directly obtained by the process.
A patent grant shall not prevent:
(a) Making/using a patented article for experiments or research purposes (research exemption);
(b) Making/using a patented article for the purpose of imparting instructions to pupils;
(c) Use for Government purposes (S.100);
(d) Importing patented products by the Government from a patentee or licensee.
Bolar/Regulatory Exemption (S.107A):
(a) Any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law (i.e., for drug regulatory approval) — the “Bolar exemption” allowing generic manufacturers to begin regulatory work before the patent expires.
(b) Importation of patented products by any person from a person who is duly authorised by the patentee — permits parallel imports.
Facts: Roche held a patent for erlotinib (Tarceva) — a lung cancer drug priced at approximately ₹4,800 per tablet. Cipla launched a generic version (Erlocip) at ₹1,600 per tablet. Roche sued Cipla for patent infringement and sought an interim injunction.
Issue: Should the court grant an interim injunction in a pharmaceutical patent infringement case when public health considerations are significant? What is the “balance of convenience”?
Held: The Delhi HC (Division Bench) refused the interim injunction. The court held that the “balance of convenience” in a pharmaceutical patent case must include considerations of public health and access to affordable medicines. Withholding affordable cancer medication from thousands of patients outweighed Roche’s commercial interest in maintaining its patent monopoly. The court also discussed the “Gillette defence” (prior art invalidates infringement claim) as a relevant consideration.
III. Plant Varieties and Farmers’ Rights
Governing Legislation: The Protection of Plant Varieties and Farmers’ Rights Act, 2001 (PPVFR Act) — unique to India; no direct equivalent in most developed countries. India is also a member of UPOV (International Union for the Protection of New Varieties of Plants), though did not ratify UPOV 1991.
3.1 Overview and Key Features
The PPVFR Act was enacted to provide an effective system for protection of plant varieties, the rights of farmers and plant breeders, and to encourage development of new varieties of plants. India took a balanced approach — protecting breeders’ rights while also expressly protecting farmers’ traditional rights and researchers’ rights.
Key Definitions (S.2):
- Breeder (S.2(c)): Person who has bred, developed or discovered a variety; includes a successor in title.
- Farmer (S.2(k)): Any person who cultivates crops by cultivating the land himself or through hired labour; includes a tribal or rural family.
- Variety (S.2(za)): A plant grouping (below species) defined by expression of characteristics resulting from a given genotype, distinguishable from any other plant grouping.
- Essentially Derived Variety (S.2(j)): A variety is essentially derived from an initial variety if it is predominantly derived from such initial variety, distinct from such initial variety, conforms to the initial variety in all essential characteristics.
Registrable Varieties (S.15):
A variety is registrable under PPVFR if it is:
- D — Distinct (clearly distinguishable from existing varieties)
- U — Uniform (sufficiently uniform in its relevant characteristics)
- S — Stable (remains unchanged after repeated propagation)
And must be new (not previously sold or marketed in India before 1 year of application, or in a foreign country before 6 years for vines/trees, or 4 years for other plants).
Rights of Breeders (S.28–30):
The breeder of a registered variety has an exclusive right to produce, sell, market, distribute, import, and export the variety. The breeder can also authorise others to do these acts. Duration: 15 years for new varieties, 18 years for trees and vines, and 15 years for extant varieties.
Farmers’ Rights (S.39):
A farmer shall be deemed to be entitled to save, use, sow, resow, exchange, share or sell his farm produce including seed of a variety protected under this Act in the same manner as he was entitled before the coming into force of this Act — PROVIDED that the farmer shall not be entitled to sell branded seed of a variety protected under this Act.
Farmers can save and re-use seeds from their own harvest, exchange seeds with neighbours, and even sell farm produce/seed in unbranded form. But they CANNOT sell seeds under the registered variety’s brand name — that would compete directly with the breeder’s commercial rights. This is the “farmer’s privilege” — unique to India’s approach, not found in UPOV 1991.
Researchers’ Rights:
Any person may use a registered variety as initial material for the purpose of creating other varieties. This is the “research exemption” — breeders can freely use registered varieties to develop new varieties. The essentially derived variety provision prevents simple cosmetic modifications from circumventing the initial variety’s protection.
Facts: Monsanto held a patent for Bt cotton technology (Bollgard II) and licensed it to Indian seed companies including Nuziveedu. Monsanto claimed patent infringement when Nuziveedu continued using the technology after disputes over trait value fees. Nuziveedu argued that plant varieties are governed by the PPVFR Act and cannot be patented under S.3(j) of the Patents Act.
Issue: Can Monsanto’s patent on Bt cotton (a genetic trait inserted into plant varieties) be enforced against seed companies? Is there a conflict between the Patents Act (S.3(j)) and the PPVFR Act?
Held: The Supreme Court remanded the matter for trial but made important observations: S.3(j) of the Patents Act excludes essentially biological processes and plants from patentability; the PPVFR Act governs plant variety protection; there may be an irreconcilable conflict between patent claims over genetic traits and the PPVFR Act’s protection of farmers’ rights. The judgment highlighted the tension between agri-biotech patents and farmers’ access rights.
IV. Trade Secret Law
4.1 Overview
India does not have a dedicated Trade Secrets Act. Trade secrets are protected through a combination of: (i) contract law (confidentiality agreements, NDAs); (ii) equity (breach of confidence doctrine); (iii) common law (tort of misappropriation); and (iv) now also through criminal law (in certain circumstances).
What Constitutes a Trade Secret?
- Commercial value: The information has economic value from being secret.
- Secrecy: The information is not generally known or readily accessible to persons in the relevant industry.
- Reasonable steps: The owner has taken reasonable steps to keep it secret (e.g., NDAs, restricted access, encryption).
Subject Matter:
Formula, recipe, process, design, pattern, compilation, programme, technique, or other business information (e.g., customer lists, pricing strategies, marketing plans) can be trade secrets. The most famous example globally is the Coca-Cola formula.
International Framework:
TRIPs Art. 39 mandates protection of “undisclosed information” (trade secrets). It requires: (i) the information is secret; (ii) it has commercial value because it is secret; (iii) the owner has taken reasonable steps to keep it secret. This is the international minimum standard for trade secret protection.
Protection Mechanism in India:
- Contractual protection: Non-Disclosure Agreements (NDAs), non-compete clauses in employment contracts.
- Equity: Courts will grant injunctions to prevent breach of confidence on equitable principles even without a contract.
- Tort of misappropriation: Wrongful acquisition or disclosure of trade secrets can ground a tortious claim.
- Criminal remedies: Depending on the manner of theft, criminal provisions of IPC (criminal breach of trust, cheating) may apply.
An inventor must choose between patent protection (public disclosure + time-limited monopoly) and trade secret protection (perpetual secrecy but vulnerable to reverse engineering and independent discovery). If a competitor independently develops the same information, the trade secret holder has no recourse — unlike a patent holder who can prevent any use.
V. Traditional Knowledge and Folklore (TCE)
5.1 Introduction
Traditional Knowledge (TK) refers to knowledge, innovations, and practices of indigenous and local communities embodying traditional lifestyles. It includes medicinal knowledge, agricultural practices, ecological knowledge, and genetic resources. Traditional Cultural Expressions (TCE) or folklore include music, stories, handicrafts, dances, songs, and oral traditions of indigenous communities.
5.2 The Problem: Bio-Piracy
Bio-piracy refers to the unauthorised commercial exploitation of biological resources and traditional knowledge originating in developing countries. Famous examples from India include:
- Turmeric patent (USA, 1995): US patent granted for use of turmeric to heal wounds — a practice known in India for centuries. India challenged and the patent was revoked in 1997.
- Neem patent (EPO): European patent for a neem-based biopesticide — challenged by India on grounds of prior art.
- Basmati patent (USA): RiceTec Inc. granted US patent for a basmati-like rice — partially revoked after India’s challenge.
5.3 India’s Response — TKDL
India created the Traditional Knowledge Digital Library (TKDL) — a database of 0.9 million formulations of traditional Indian medicine (Ayurveda, Unani, Siddha, Yoga) documented in five languages and all patent classification codes. TKDL is accessible to patent offices of USA, EU, Japan, Australia, and Canada to serve as prior art, preventing re-patenting of traditional knowledge.
5.4 International Framework — CBD and Nagoya Protocol
- Convention on Biological Diversity (CBD, 1992): Recognises sovereign rights of nations over their biological resources; requires access and benefit sharing (ABS) with communities.
- Nagoya Protocol (2010): Implements the ABS framework under CBD — requires prior informed consent (PIC) of the provider country and mutually agreed terms (MAT) for access to genetic resources and TK.
- Indian Legislation: The Biological Diversity Act, 2002 implements CBD in India, requiring permission from the National Biodiversity Authority for commercial use of biological resources.
VI. International IP Conventions
| Convention | Year | Subject | Key Feature |
|---|---|---|---|
| Berne Convention | 1886 | Copyright (literary/artistic works) | Automatic copyright (no registration required); national treatment; minimum term life+50 years |
| Rome Convention | 1961 | Related rights (performers, producers, broadcasters) | First treaty on neighbouring rights; minimum 20-year protection |
| Paris Convention | 1883 | Industrial property (patents, TM, GI, designs) | National treatment; right of priority; independence of patents |
| TRIPs Agreement | 1994 | All IP | First binding multilateral IP agreement; WTO enforcement; minimum standards; MFN + national treatment |
| WIPO Copyright Treaty (WCT) | 1996 | Copyright in digital environment | Internet treaties; protection of digital works; anti-circumvention (TPM) |
| WIPO Performances & Phonograms Treaty (WPPT) | 1996 | Related rights in digital environment | Rights of performers and phonogram producers in digital context |
| Patent Cooperation Treaty (PCT) | 1970 | Patents — international filing | Single international application valid in 150+ countries |
| Beijing Treaty | 2012 | Audiovisual performances | Economic and moral rights for performers in audiovisual works |
| Marrakesh VIP Treaty | 2013 | Copyright exceptions for visually impaired | Cross-border exchange of accessible format books for blind/visually impaired |
Berne Convention (1886) — Key Provisions:
- Automatic Protection: Copyright arises automatically — no registration, deposit, or formality required. (Art. 5)
- National Treatment: Authors enjoy same rights in other member countries as those countries give to their own authors.
- Minimum Term: Life of author + 50 years (India provides life + 60 years — more than minimum).
- Moral Rights (Art. 6bis): Right of attribution and right of integrity — personal to the author and cannot be assigned.
- Minimum Rights: The right to translate, right to make adaptations, right of public performance, broadcasting rights, etc.
- Three-Step Test (Art. 9(2)): Exceptions to copyright must pass the three-step test — (i) in certain special cases; (ii) not conflicting with normal exploitation of the work; (iii) not unreasonably prejudicing the legitimate interests of the author.
The Berne Convention’s three-step test (Art. 9(2)) is the international standard for permissible exceptions to copyright. It is also embedded in TRIPs Art. 13. Any fair dealing provision (like S.52 of the Indian Copyright Act) must be interpreted consistently with the three-step test. Courts apply it to determine whether a claimed “exception” is valid.
7. Summary of All Important Case Laws
| Case Name | Year | Court | Key Principle |
|---|---|---|---|
| Donoghue v. Allied Newspapers | 1937 | England | Idea-expression dichotomy; copyright in expression, not idea/information |
| University of London Press v. UTP | 1916 | England | Originality = skill, labour, judgment — not novelty |
| Eastern Book Co. v. D.B. Modak | 2008 | SC | Modicum of creativity required; mere labour insufficient for copyright |
| R.G. Anand v. Deluxe Films | 1978 | SC | Infringement test = ordinary observer recognising copying of expression |
| Oxford v. Rameshwari Photocopy | 2016 | Del HC | Educational photocopying = fair dealing under S.52 |
| Macmillan v. K&J Cooper | 1924 | PC | Mere mechanical abridgement = infringement; adaptation needs creativity |
| Amar Nath Sehgal v. UoI | 2005 | Del HC | Moral rights survive assignment; mutilation of artwork violates S.57 |
| Entertainment Network v. Super Cassette | 2008 | SC | S.31D statutory licence for broadcasting; royalties mandatory |
| Naruto v. Slater | 2018 | US 9th Circuit | Non-humans cannot hold copyright; human authorship required |
| Novartis v. Union of India | 2013 | SC | S.3(d) anti-evergreening; enhanced therapeutic efficacy required for new salt/polymorph |
| Dhanpat Seth v. Nil Kamal | 2008 | HP HC | Inventive step = non-obviousness to a person skilled in the art |
| Bayer v. Natco Pharma | 2014 | Bom HC | First Indian compulsory licence; unreasonable pricing + insufficient working = CL grounds |
| F. Hoffmann-La Roche v. Cipla | 2009 | Del HC DB | Public health = factor in balance of convenience; no auto-injunction in pharma cases |
| Monsanto v. Nuziveedu Seeds | 2019 | SC | S.3(j) excludes plants; tension between Patents Act and PPVFR Act |
📝 Important Questions for Exam
A. Short Answer Questions (2–5 Marks)
B. Long Answer / Essay Questions (10–15 Marks)
C. Problem-Based Questions
D. MCQ Practice (20 Questions)
⚡ Quick Revision Summary
1. Key Definitions Table
| Term | Section | One-Line Definition |
|---|---|---|
| Literary Work | S.2(o) | Includes computer programmes, tables, databases |
| Artistic Work | S.2(c) | Painting, sculpture, drawing, engraving, photograph, architecture, artistic craftsmanship |
| Cinematograph Film | S.2(f) | Visual recording from which moving image can be produced |
| Author (general) | S.2(d) | Person who creates; for films/sound recordings = producer |
| Copyright (general) | S.14 | Exclusive right to reproduce, communicate, perform, adapt the work |
| Invention | S.2(1)(j) Patents | New product/process involving inventive step and capable of industrial application |
| Inventive Step | S.2(1)(ja) Patents | Feature of an invention that involves technical advancement and not obvious to skilled person |
| Variety | S.2(za) PPVFR | Plant grouping below species level, defined by expressed characteristics from a given genotype |
2. All Major Sections Covered
| Section | What It Covers | Key Rule |
|---|---|---|
| S.13 Copyright Act | Works in which copyright subsists | Literary, dramatic, musical, artistic, films, sound recordings |
| S.14 Copyright Act | Meaning of “copyright” | Exclusive rights: reproduce, communicate, perform, adapt |
| S.17 Copyright Act | First owner of copyright | Generally author; employer for works made in employment |
| S.19 Copyright Act | Assignment | Must be in writing + signed; can be partial |
| S.22 Copyright Act | Term for literary works | Life of author + 60 years |
| S.31D Copyright Act | Statutory licence for broadcasting | Broadcasters can use copyrighted works on payment of royalty |
| S.38 Copyright Act | Performer’s right | 50 years from performance |
| S.51 Copyright Act | When copyright infringed | Any act within copyright owner’s exclusive rights without licence |
| S.52 Copyright Act | Fair dealing / acts not infringing | Research, criticism, news reporting, education — fairness required |
| S.57 Copyright Act | Moral rights | Attribution + integrity; survive assignment |
| S.65A Copyright Act | Anti-circumvention (TPM) | Circumventing technological protection measures is an offence |
| S.3(d) Patents Act | Anti-evergreening | New forms of known substances only patentable if enhanced therapeutic efficacy |
| S.3(j) Patents Act | Excludes plants/animals | Essentially biological processes, plants, animals not patentable |
| S.3(p) Patents Act | Excludes traditional knowledge | TK or aggregation of known properties of TK components not patentable |
| S.47 Patents Act | Research exemption | Experiments, research, instruction — no infringement |
| S.84 Patents Act | Compulsory licensing | After 3 years of grant — unmet public need/unreasonable price/not worked |
| S.107A Patents Act | Bolar exemption + parallel imports | Generic regulatory work + import of genuine goods not infringement |
| S.39 PPVFR Act | Farmer’s privilege | Save/use/exchange/sell (unbranded) seed from own harvest |
3. Landmark Cases Table
| Case | Year | Court | Principle |
|---|---|---|---|
| Donoghue v. Allied Newspapers | 1937 | England | Copyright in expression, not ideas; author = person who writes, not who provides ideas |
| University of London Press | 1916 | England | Originality = skill/labour/judgment, not novelty; exam papers are literary works |
| EBC v. D.B. Modak | 2008 | SC India | Modicum of creativity required; compiler’s additions protectable if involve skill |
| R.G. Anand v. Deluxe Films | 1978 | SC India | Infringement test = ordinary observer; idea alone not protectable |
| Amar Nath Sehgal v. UoI | 2005 | Del HC | Moral rights survive assignment; physical destruction violates right of integrity |
| Novartis v. Union of India | 2013 | SC India | S.3(d) requires enhanced therapeutic efficacy; India’s anti-evergreening tool |
| Bayer v. Natco Pharma | 2014 | Bom HC | First Indian CL; unreasonable price + insufficient working = CL granted |
| F. Hoffmann-La Roche v. Cipla | 2009 | Del HC DB | Public health relevant to balance of convenience in pharma injunctions |
| Monsanto v. Nuziveedu Seeds | 2019 | SC India | S.3(j) excludes plants; PPVFR vs Patents Act tension in agri-biotech |
| Oxford v. Rameshwari | 2016 | Del HC | Educational photocopying = fair dealing; right to education considered |
4. Golden Rules / Key Principles
- Copyright protects expression, not ideas — ideas are free for all to use.
- Originality in India = modicum of creativity (EBC) — not mere mechanical labour.
- Copyright arises automatically — no registration required (Berne principle).
- Moral rights survive assignment and cannot be contracted away.
- S.3(d) is India’s unique anti-evergreening provision — Novartis case is landmark.
- Compulsory licensing under S.84 balances patent monopoly with public health access.
- Farmers’ privilege (S.39) — save, use, exchange, sell unbranded seed; cannot sell branded.
- Traditional knowledge is NOT patentable under S.3(p); TKDL protects against bio-piracy.
- Berne Convention three-step test governs all copyright exceptions globally.
- Doha Declaration — TRIPs must be interpreted to support public health; compulsory licensing is a legitimate flexibility.
5. Memory Aids
N — Novel / New (not in prior art)
I — Inventive Step (non-obvious to skilled person)
I — Industrial Applicability (usable in industry)
P — Public requirements not satisfied
A — Affordable price — not available at reasonably affordable price
W — Worked insufficiently — not worked in India
A — Automatic protection (no formality)
N — National Treatment
M — Minimum Term (life + 50 years)
T — Three-Step Test for exceptions
L — Literary works (includes computer programmes)
D — Dramatic works
M — Musical works
A — Artistic works
C — Cinematograph Films
S — Sound Recordings
(Sections 13(1)(a), (b), (c) of Copyright Act)