Emerging IP rights

16 November 2022
  • Dr. Mohan Dewan


An incentive to innovate enhances the growth rate. The impact of Intellectual Property (IP) regimes on developing, or developed countries, is substantial. A prerequisite for sustainable development in any country is the development of an indigenous scientific and technological capacity.

The laws and procedures relating to IP have their roots in Europe where granting of Patents dates back to the 14th century. In comparison to other European countries, England was technologically advanced and used to attract artisans from elsewhere, on special terms whereas the first known Copyrights appeared in Italy. Venice can be considered the cradle of IP system as the foundations of IP were laid; laws and systems were made for the first time in the world, and other countries followed this in due course.

Originally, only Patents, Trademarks, and Industrial designs were protected as IP, however the term ‘Intellectual Property’ has wider meaning in the present times.

IPR enhances technology advancement in the following ways:

a) It provides a mechanism of handling infringement, piracy, and unauthorized use.

b) It provides information to the general public since all forms of IP are published except in case of trade secrets.

IP has seen numerous modifications. Different IPs have come about to exist, as a matter of necessity of the changing times, which reminds one of Victor Hugo who quoted that, “no power on earth can stop an idea whose time has come.”

Emerging new IPs

SEPs and FRAND Licensing

Standards are technical requirements which provide a common design for a product or process. For example, a modern-day laptop computer implements approximately 251 interoperability standards. Similarly, examples of standards for mobile devices or Near-Field Communication (NFC) in smart cards are Wi-Fi, Bluetooth, and LTE. Patents that protect a technology that is necessary, or which is “essential” to comply with what are known as specific industry standards are called as standard-essential patents (SEPs).

The concept of SEPs evolved in India in 2011 when Ericson objected to the importation of handsets by Kingtech Electronics (India), claiming that the handsets infringed several of their SEPs in AMR Codec (Adaptive Multi-Rate) technology.

The Indian Patents Act, 1970 does not contain any special provisions for SEPs.  

FRAND stands for Fair, Reasonable, and Non-Discriminatory. SEP holders commit themselves to make their patented technology accessible and compliant in exchange for a mutually agreed royalty. In other words, FRAND terms can be said to be a method to ensure that the SEP implementers are able to license and use standard technology on fair grounds.

However, it is important to consider the fact that there is no specific entity designated to enforce such FRAND terms. Therefore, what may be fair, reasonable, and non-discriminatory to one person, may not be the same to others, as there is no universally accepted rule for the specific circumstances under which a license complies with FRAND terms. It is a general practice that the interpretation of FRAND depends upon the nature of the transactions between the SEP holder (licensor) and the SEP implementer (licensee).

Data Exclusivity

Data Exclusivity is a concept of protecting of exclusive test data in the form of publicly undisclosed information which is in the form of trade secrets based on the principles of equity and good faith and the domain of patent protection which requires invention to be new, having an inventive step and capable of industrial application. Data exclusivity provides rights to the originator to preclude any third parties from relying on the data for a specific period of time.

Data exclusivity of registration date is a limited period of non-reliance and non-disclosure or when the drug regulatory authorities do not allow the test data (Data created to satisfy the execution preconditions and input content required to execute one or more test cases), new chemical entities, pharmaceutical compositions, and agrochemical registration data to be used to register the generic version of the drug. It is an independent intellectual property right and ought not to be confused with the protection provided by other rights, especially patents.

A much debated in India, it arises from the interpretation of Article 39 of the Trade Related Intellectual Property Rights Agreement (TRIPS), which mandates for steps to be taken to ensure that the data is protected against unfair commercial use, wherein the big Pharmaceuticals and countries like the USA interpret, “protection against unfair commercial use” to obviously mean, “protection of clinical data required to be submitted to a regulatory agency to prove safety and efficacy of a new drug, and prevention of generic drug manufacturers from relying on this data in their own applications.” 

The Drugs and Cosmetics Act, 1940 provides for data exclusivity for a “new drug” under Section 122E for a total period of 4 years from the date of approval. There were considerations in November 2016 that this period of four years to be increased to ten years. Such exclusivity is itself protection and does not depend upon the validity of the patent associated with the same drug, so even if the patent associated with the drug stands invalidated, the exclusivity stands unaffected and the drug remains out of the reach of the generic producers.


Orphan Drug Exclusivity

An orphan drug is developed specifically to treat a rare medical condition. Orphan drug exclusivity only rarely extends beyond the exclusivity derived from patent protection to delay competitive entry, and when orphan exclusivity does extend later, it is typically due to a very short period of protection or other market exclusivity protections. India does not have a law or regulations for manufacturing or selling on orphan drugs as yet but the draft rules released by the health ministry on a regulatory framework for clinical trials in India define orphan drugs as those intended to treat a condition which affects fewer than 200,000 people.

Although there may still be challenges, orphan drugs have offered a key to recovery and stability within the market. Governments of several countries have implemented special incentives for the manufacturers of orphan drugs like regulations for accelerated marketing procedures, marketing exclusivity, tax credit grants for research, reconsideration of applications for orphan designation.

Trade Secrets

Businesses normally collect and use innovative in addition to modern thoughts which can be unknown to their competition to benefit a part over and keep the individuality in their product/service. Information that isn’t usually acknowledged to competition and is included through confidentiality agreements is acknowledged as ‘Trade secrets’ and is eligible for safety under tort or contracts regulation against disclosure or unauthorized use of the trade secret.

For example, the formula to make Coca-Cola is a trade secret of Coca-Cola Company. In India, the only protection that trade secrets have received is through traditional judicial rulings and through provisions and aspects of equitable law, contracts law and torts.

Integrated circuits

With the advancement of information technology, an emerging branch in the field of IP has flourished, called as the Layout-Design or the of the semiconductor integrated circuits. The Indian legislation therefore provides a comprehensive protection to the layout designs and topography of the semiconductor integrated circuits as recognized intellectual property under the Semiconductor Integrated Circuits Layout-Design Act (SICLDA) enacted in 2000.

Olfactory marks

Smell is the most basic of five senses and it means to "perceive the odour or scent of something through stimuli affecting the olfactory nerves". This creates images in a person's mind, which play a significant influence in a consumer's choice to purchase a product. Olfactory mark, also known as a ‘Scent mark’ is one such non-conventional trademark. Despite its significance, the idea of olfactory marks lacks general acceptance due to the ambiguous position and non-uniformity of national legislation. As a result, there have been several disputes over the legality of such olfactory marks and their registration.

The TRIPS agreement does not explicitly include non-conventional trademarks, nor does it rule out the possibility of registering a non-conventional trademark.

Position in India - The word "non-conventional trademark" refers to a trademark that does not fit within the standard definition of a trademark. Examples of these marks are hologram marks, sound marks, smell marks, motion marks, and taste marks. For a smell-mark that ought to be registered, the same should not be the natural fragrance emerging out of the properties of that commodity and must be explicitly related to the concerned commodity as well as should be giving it a sense of uniqueness and distinction to qualify as a trademark. This makes the registration procedure more complicated because a basic description of chemical composition cannot be considered as an appropriate graphical depiction. USA and Singapore allow for partial registration of olfactory marks, however the Indian legislation is yet to recognise olfactory mark under trademark law.

Movie Names and Titles of the books

A Title of the film or book plays a crucial role in its first impression among the consumers. A Title is not considered as a ‘literary work’ and hence is not protected under the Copyright Act, 1957. Hence, the producers and writers have resorted to the Trademark Laws. Currently if any producer wants to protect his title then he may protect under service mark under the trademark law.

Recently in case of Sholay Media Entertainment Pvt Ltd vs Yogesh Patel and Ors, where one Yogesh Patel had registered a domain name ‘www.sholay.com’. The makers of Sholay thereafter filed a suit in Delhi HC claiming trademark infringement. The Hon’ble Delhi High Court held that, ‘Sholay’ was  landmark film and recognised as a well- known trademark and common public is likely to get confused and possible that they may think that the film ‘Sholay’ association with the website. The Court awarded damages to Sholay Media Entertainment Pvt Ltd and Sippy Films Pvt Ltd and restrained the infringers by passing an injunction.

Registration of titles helps the owner to knock the doors of the judiciary for relief that are justified and righteous. Such suits can also help the registered owners to get compensation for any kind of loss occurred or a royalty (if applied) can be collected by the infringer. India recognizes trademark rights to the title of the movie even in case of single literary work under the Trademark protection in India. A title that acquires secondary meaning and the use of the same by another may cause overlapping of the source and likely to create confusion in the mind of the consumer.



Utility Models

In order to protect such minor innovations the WIPO has introduced the Utility Model. Utility models are a form of patent-like protection for minor or incremental innovations. They tend to protect the functional aspect of a product (examples of utility models apply to the functional aspects of toys, watches, optical fibres, machinery, etc.) Utility models are common in the mechanical, optical and electronic fields and persons registering their innovation under Utility Model get a short period protection for his innovation i.e. up to 6 to 10 years.

India has set up WTO Cell in the Ministry of Small Scale Industry to assist the Small, Medium and Micro Enterprises (SMMEs) to take advantage of global IP System in order to protect their intellectual creations. Despite these efforts, there is no law as of yet for the protection of utility model which can protect the small innovations which have lesser innovative steps and novelty but have practical benefits in order to satisfy the customers need and requirements.


A metaverse is a network of virtual worlds focusing primarily on social connections and interactions. Metaverse being a technological advancement taps Patent Law; any creative protection taps Copyright Law, for customer to be able to distinguish one metaverse from another taps trademark law. Assignment and Licensing of IPs are few upcoming niche areas for IP professionals to work.

3D Printing and Artificial Intelligence

Copyright Law protects original and creative work of the person. So if any author creates his work in 3D, then it is protected under copyright law with the bundle rights. AI gets protection under traditional software part of computer program. AI per se cannot be protected under copyright or patent law.


In order to bring progressive changes towards a free market society, rapid liberalization of international trade practices and demonstrating its commitments and contributions to the WTO under the TRIPS Agreement, the Government of India undertook a series of steps, to conform India IP legislation with the acceptable international standards by amending or reissuing the regulations relating to all forms of IP in recent years. Some of these developments are enumerated as follows:

(A) Trademark Law brought at par with International practices

India replaced the Trade and Merchandise Marks Act, 1958, with the Trade Marks Act, 1999 in order to bring Indian trademarks law in line with international practices and to ensure implementation of India's commitments under the TRIPS Agreement. Within the Trademarks (Amendments) Rules, 2014, the fee with respect to trademark filing has been increased in certain cases as well as the Trade Marks Registry has issued an Order with respect to alterations that may be made to an application for trademark registration.

(B) Protection to Geographical Indications

India has enacted the Geographical Indications of Goods (Registration and Protection) Act, 1999 (GIG Act)that provides for registration and protection of geographical indicators to help identify the place of origin of goods, quality, reputation and other distinctive characteristics of the goods. The Act has helped to protect unique Indian products originating to some geographical region of India, such as Basmati Rice, Darjeeling Tea, Alphonso Mangoes, Malabar Pepper, Cardamom and Hyderabad Grapes, which are well known in the international market and abroad.

(C) Modification of Copyright Law

Amendments were made in the copyright law in 2012, in order to make the Indian copyright law compliant with the WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty, introduced technological protection measures, ensured that fair use survives in the digital era by providing special fair use provisions, made many author-friendly amendments, special provisions for disabled, amendments facilitating access to works and other amendments to streamline copyright administration.

(D) Patents Law more aligned with TRIPS

Modifications in Indian patent laws have been made in accordance with TRIPS by widening the list of inventions that are not patentable, incorporating greater rights of the patentee, to reverse the burden of proof in an infringement suit on process patents thereby creating a uniform period of patent protection of twenty years for all categories of invention.

(E) Protection for Plant Varieties and Rights of Farmers

India enacted the Protection of Plant Varieties and Farmers Rights Act, 2001, giving effect to the provisions of the TRIPS Agreement, to provide for the establishment of an effective system for protection of plant varieties. The Act recognizes and protects the rights of farmers for their contributions made in conserving, improving and making available plant genetic resources for the development of new plant varieties that conform to the criteria of novelty, distinctiveness, uniformity and stability registrable under law.

(F) Invention in software

Software i.e. computer programme has found its protection in the Indian Copyright Act, 1957. On the other hand, the Indian Patents Act, 1970 expressly excludes computer programmes from the ambit of patentable subject- matter, vis-a-vis including it in Section 3 which deals with what are not inventions.

However, the Patent Office prescribed guidelines to outline various regulations and explanations regarding the patentability of computer-related inventions (CRIs), last updated on 30 June 2017.

The legislative intent to attach the suffix per se to a computer programme is evident by the following view expressed by the Joint Parliamentary Committee while introducing the Patents (Amendment) Act, 2002:

“In the new proposed clause (k) the words “per se” have been inserted. This change has been proposed because sometimes the computer programme may include certain other things, ancillary thereto or development thereon. The intention herein is not to reject them for the grant of the patent if they are inventions. However, computer programmes as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose”.

Case law - Accenture Global Service GMBH Vs. The Assistant Controller Of Patents & Designs relates to an Indian patent application number 1398/DELNP/2003, which is now a granted patent as patent number 256171. This patent application was initially refused for patent registration by the patent office under the provisions of Section 3(k) of the Indian patents act.

However, the patent applicant appealed before the IPAB and as per the Controller’s decision, it was held that the invention as claimed was not a software per se but, a system claimed to have improved the web services and software. Accordingly, it was held that the invention since not falling in the category of section 3(k), viz. software per se, the corresponding objection was waived and the patent was granted.

On the same lines, the European Patent Convention expressly excludes computer programs, from the purview of the patentable subject matter.

Whereas in the USA, there is no specific exclusion of software or business methods from the patentable subject matter. The law states that, “the subject matter, to be patentable, must be a useful process, machine, manufacture, or composition of matter.” According to the US Supreme Court, Congress intended the statutory patentable subject matter to include “anything under the sun made by man,” but the laws of nature, natural phenomena, and abstract ideas are three specific areas which are not patentable.


It is obvious that management of IP and IPR is a multidimensional task and calls for many different programs and strategies which need to be aligned with national laws and international treaties and conventions. IP Rights came into existence with the primary objective of promoting the progress of science. However, it is to be understood that they are seriously influenced by the market needs, market response, cost involved in translating IP into commercial venture and so on. In other words, trade and commerce considerations are important and beneficial in the management of IPR. Different forms of IPR demand different treatment, handling, planning, and strategies and engagement of people with different domain knowledge such as science, engineering, medicines, law, finance, marketing, and economics. Each industry should evolve its own IP policies, management style, practices, strategies, etc. depending on its area of specialty. IPR influence in the current regime is much affected by its awareness and intellect nature.


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