26 Sept 20131

By

D. Calab Gabriel Senior Partner Patent Practice

COMMERCIAL AGREEMENTS INVOLVING IPR

PATENTS

DESIGNS

PLANT VARIETY

TRADE SECRETS

TRADEMARKS

COPYRIGHT

GEOGRAPHICAL INDICATIONS

A FEW IP AGREEMENTS

SYNOPSIS

2

Overview Patent can be assigned, transferred, licensed and

mortgaged Patent Assignment, transfer agreement, license,

mortgage etc. – shall be in writing and duly executed - mandatory to register with IPO – non registered document not admissible by Court as evidence.

Provision for securing terms of license on request by patentee or licensee – not disclosed to any person except under order of Court.

PATENTS

3

Restrictive condition to be avoided:- a condition the effect of which may be to -

require the party to acquire from the vendor, lessor or licensor or his nominees or to prohibit him from acquiring; or

prohibit from using or to restrict the right to use an article other than the patented article or article other than that made by patented process which is not supplied by the vendor, lessor or licensor (Patentee) or his nominee; or

prohibit to use any process other than the patented process, provide exclusive grant back, prevention to challenges to

validity of patent and coercive package licensing

4

Compulsory Licensing – after expiry of 3 years from date of grant.

Grounds for seeking compulsory license - reasonable requirement of the public reasonably affordable price not working in India

Terms & Conditions: reasonable royalty and other remuneration for patentee –

considering nature of invention, expenditure incurred by patentee etc.;

Invention is worked to fullest extent by licensee with reasonable profits;

Invention available to public at reasonably affordable price; non-exclusive license; non-assignable license;

5

license for balance term of patent or shorter if consistent with public interest;

predetermined purpose of supply in Indian market and licensee may also export in accordance with Sec 84;

6

Overview Design can be assigned, transferred, licensed and

mortgaged An assignment, license, mortgage or any instrument

creating right in the design must be in writing embodying all the terms and conditions governing their rights and obligations

Application for registration of title is filed before the Controller within 6 months from execution of instrument which can be extended by maximum 6 months.

DESIGNS

7

Overview Plant variety can be assigned A plant breeder may through an assignment agreement

transfer his right of ownership upon the plant strain he created to another person.

Plant Varieties Act acknowledges the legal validity of assignment agreements. [Sec 16(1)(c)]

Application for registration made by virtue of an assignment of the right to apply for registration - at the time of making application - a proof of the rights to make the such application.

Plant Varieties

8

Hence the validity of transfer of the IP is gauged at the time of registration itself.

Compulsory Licensing – after expiry of 3 years from date of registration.

Grounds for seeking compulsory license - non availability of the seed or the propagating material to

the public at reasonably price. Terms & Conditions: reasonable compensation to breeder – considering

nature of variety, expenditure incurred by breeder etc.; Adequate means to provide to the farmers, the seed or

other propagating material of such variety, timely and at reasonable market price.

Duration: decided by the Authority

9

General Definition:- A trade secret is commonly any Formula, Pattern, Device or Compilation of information which is used in one’s business, and which gives human opportunity to obtain advantage over competitors.

TRIPS Agreement (Article 39):- Recognizes Trade Secrets under ‘undisclosed information’- remains silent on the mechanism and modalities.

India - no specific legislation. Indian Courts recognize under Principles of equity and breach of contractual obligation i.e. breach of Confidentiality or restraint of trade (Section 27 of Contracts Act).

TRADE SECRET

10

Essential Requirements:-

Information not generally known to the public and not disclosed to any third party;

Confers economic benefit by maintaining secrecy and confidentiality;

Reasonable efforts are taken to maintain its secrecy.

Non Disclosure Agreement (NDA), Undertaking, Declaration or a clause in the agreement protecting trade secret - be executed before disclosure.

Unlike other IP rights, protection of trade secrets last until the information becomes public knowledge and enforceable against party who breaches confidentiality.

Caution:- Parallel development of trade secrets and Innocent Acquisition of Information - trade secrets does not give you exclusive rights against these.

11

Overview Registered and unregistered Trade Mark can be

assigned or transmitted with or without the goodwill of the business concerned.

Trademark in India can be assigned with or without goodwill – however assignment without goodwill gets effect after advertisement by Registrar.

Assignment of certification trademark is not possible without the consent of the registrar.

Associated trademarks must be assigned or transmitted together and not separately.

TRADE MARK

12

Assignment or transmission multiple exclusive rights are permitted.

Sec 6 of TM Act, allows for the notification of assignment of trademarks which have been registered and notification of assignments will act as prima facie evidence of the transfer.

13

Overview Assignment be in writing – signed by assignor or

authorized agent Assignment should – Identify work assigned; Rights assigned; Duration of assignment - if not stated – deemed to be 5yrs

from assignment; Territorial extent - if not stated – deemed to extend within

India; Royalty and other consideration;

COPYRIGHT

14

Extension or termination on terms mutually agreed; Not be contrary to the terms of right(s) already assigned to a

copyright society. An assignment of copyright in work to make a

cinematographic film does not affect the right of the author of the work to claim royalties and consideration for utilization of the work in any form other than communication to the public including cinematographic film in a cinema hall.

An assignment of copyright in work to make a sound recording which does not form part of cinematographic film does not affect the right of the author of the work to claim royalties and consideration for utilization of such work in any form.

15

Overview

GI Act indicates that Assignments, Transmission, Licensing, Pledge, Mortgage or any such agreement is prohibited by law. This is mainly because a GI is a public property belonging to the producers of the concerned goods which cannot be used to describe another good as it is indicative of the reputation and quality of another product.

GEOGRAPHICAL INDICATIONS [GI]

16

A FEW IP AGREEMENTSTechnology Transfer AgreementInventor Employer AgreementInventor - Manufacturer AgreementSoftware License AgreementEnd User License AgreementTrademark User agreementPatent License AgreementTrademark License AgreementNon Disclosure AgreementJoint Venture AgreementPlant Experiment Agreement Toll Manufacturing Agreement

17

Technology Collaboration Contract Technical Assist Agreement License and Technical assist agreement Agreement to employ script writer Assignment of Film, Multimedia and associated rights in a

literary work Documentary film agreement Television script contract Film music contract Advertising contract Online Multi-media access Agreement Endorsement Agreement Commercial research and development agreement Manufacturing and Distribution Agreement

18

26 Sept 201319

Thank You

D. Calab Gabrielcalab@knspartners.com