NATIONALLAWSCHOOLOFINDIAUNIVERSITY

BANGALORE MBLPARTIIANNUALEXAMINATION(JUNE)2012 LAWOFINTELLECTUALPROPERTYRIGHTS

AnswerKey

[Candidatesareexpectedtorefertotherelevantcasesandprovisionsofthelegislationaswellas InternationalAgreementsAnalysiswiththehelpoflatestcasesisdesirable]

Time: Three Hours Max. Marks: 100 Instructions: 1. Answer any FIVE questions. All questions carry equal Marks 2. Answers should be supported by reference to relevant provisions and appropriate case laws. 3. No clarification can be sought on the question paper. In case of any ambiguity in the question paper, students are expected to rely on the question paper as it is and respond to it. 4. Bare Acts are NOT permitted. 5. Candidates shall not carry mobile phones into the examination hall. Q. 1. a. Examine the patentability of i. plants and animals, ii. Medical methods, iii. computer programs in US, EPO and India 10 Key to Answer : Candidates are expected to address the following: Plants and Animals: US: Supreme Court in Diamond v chakravarthy case while granting the patent for pseudomonas bacteria stated that anything under the sun is patentable [where there is human intervention] followed by that animals and plants satisfying the criteria for patentability has been granted [oncomouse etc]EPO: Article 52, 52, Biotechnology Directive should be examinedExceptions in case of plant and animal varieties and essential biological processes INDIA: section 3(j) of the Patent Act that excludes plant and animals from patentable subject matter has to be referred. Medical methods: Exclusion in India and EPO should be referredNon-exclusion in US and non-enforceability in US will have to be discussed. Computer Programs: Brief overview of developments in US up to Kappos v Bilski [discussing the Machine or Transformation Test for granting patent protection for computer programs/business methods] should be given: The technical effect and further technical effect test should be discussed in respect of EPO position; 3(k) in respect of Indian position should be discussed. b. What is the test for determining originality of a copyrightable work? Explain. Key to Answer: ULP case stating the skill and labour test, FEIST case highlighting the modicum of creativity test, EBC case on the application of CCH dictum [creativity not in the sense of novelty or non-obviousness] shall be discussed. Relevant cases apart from the above may be referred.

10 Q. 2. a. What is the procedure for obtaining registration of a Trademark? What are the circumstances under which registration may be refused? Explain Key to Answer: Procedure for obtaining registration from the stage of Application, Acceptance, publication, opposition, hearing, registration shall be discussed. Section 9 relating to Absolute grounds of refusal for registration and section 11 relating to Relative Grounds of refusal for registration should be discussed by the candidate. 10 b. How do you distinguish Trademark from Geographical Indications? How a Geographical Indication can be registered in India? 10 Key to Answer: Candidate shall be expected to draw distinction pointing out that trademark is individual right while GI is collective right, trademark is associated with goods and services while GI is associated with goods only, trademark is registered by individual/company while GI can be registered by an association representing the interests of producers, trademark stands on distinctiveness while GI is based on quality, reputation and characteristics essentially attributable to a geographical place. Candidate shall address the procedure of filing the application by the association, the contents of the application, documents accompanying the application, advertisement, opposition, registration. Q. 3. a. Discuss the copyright protection given to literary works, including the computer programs. How infringement of computer program is determined? 10 Key to Answer: Literary works include anything in print or writing [ULP case]Berne convention, TRIPs and section 13 of Indian Copyright Act provide for the protection of literary workcandidate shall also examine what are the different categories of literary works. Protection of computer program as literary work is provided in Article 10 of TRIPs and in the definition of literary work in the Copyright Act in India. As regards the tests for determining the infringement of copyright in computer program, candidates are expected to discuss Abstraction, Filtration, and Comparison test. b. What are the circumstances under which compulsory license can be granted under the law of Patents? Discuss. 10 Key to Answer: Candidates shall examine briefly provisions of Patents Act from section 84 to section 92A and highlight the circumstances under which compulsory licensing is possible. Q. 4. a. Examine the US and Indian law of patents relating to Bolar Exception & experimental use exception. 10 Key to Answer: Candidates shall examine the Roche v Bolar case in US where the use of patented drug for clinical test purpose was also held to be infringement. To remedy this US passed Hatch Waxman Act providing for an exception to infringementthat if it is solely for the uses reasonably related to the development and submission of information required .. for approval will not amount to infringement. The developments in US in Merk v Integra Life Sciences may be referred. Section 107A (a) of the patents Act 1970 of India should be referred.

b. What are the civil and criminal remedies for infringement of Trademark under the Trademarks Act 1999? Explain. 10 Key to Answer: The candidate shall refer to Sections 101 to 110 of the Trademarks Act 1999 and explain the same. Q. 5. a. Discuss with the help of case laws, if any, how domain name disputes are resolved when domain name is deceptively similar to trademarks. 08 Key to Answer: Domain Name disputes are settled in India by application of passing off action principlesimportant cases are Yahoo v Aakash Arora where yahooindia was considered to be violation of the rights of Yahoo ; Satyam Infoways case wherein siffy.net was considered to be violation of the rights on sifythe cases such as Panavision v Dennis Toeppen or other cases in UK may be referredCandidates are expected to highlight the principles of passing off as applicable in such cases and also refer to the UDRP where likelihood of confusion, absence of legitimate interest and registration in bad faith are considered to be the criteria for determining the rights of the complainant are discussed. b. Explain prosecution history estoppel as a limitation on Doctrine of Equivalents. What are the further limitations on application of prosecution history estoppel? Discuss. 12 Key to Answer: Doctrine of Equivalents rests on the test of an element in the allegedly infringing product performing substantially same function in substantially same way giving same result as that of the element claimed in the invention [cases from Graver Tank onwards shall be referred] where any rights are given up by amending the claim in the course of prosecution of the patent application, Patentee cannot claim it back through Doctrine of Equivalents. This is known as Prosecution History Estoppelcandidates may refer to cases such as Festo and explain the PHE and its limitation Q. 6. a. Discuss the rights of Performers and Broadcasting Organisations. 08 Key to Answer: Sections 37, 38 and 39 of Copyright Act shall be discussed by the candidates. b. Explain the salient features of Paris Convention 1883 06 Key to Answer: candidates shall refer and explain, National Treatment, Priority of rights, principle of independencehighlight how the rights can be restricted through compulsory licensing and when it can /cannot be forfeited by the state. Rights pertaining to each category of industrial property may also be brought forward. c. Who is the First owner of copyright? Comment. 06 Key to Answer: Candidates shall discuss section 17 of the Copyright ActAuthor is the first owner of the copyrightable workExceptions: when a work is created in the course of employment, under a commission, under a contract of service, for the Government, Government undertaking, for an International organisation, the author shall not be the first owner. Q. 7. Write Notes on any FOUR of the following:

5 x 4= 20 a. Essential requirements for registration of Designs Key to Answer: shape, configuration, pattern or ornamentation, combination of lines or colours; they must be original or novel; they must be applied to an article by an industrial process; they must be judged solely by the eye [aesthetic appeal]; should not be functional b. Artistic Works Key to Answer: section 2 (c)of the Copyright Act 1957. c. Traditional knowledge Digital Library Key to Answer; The TKDL, documentation of Ayurveda, siddha, unani and yoga information should be discussedthe importance of the TKDL in preventing the patenting of traditional medicinal knowledge of India -d. Moral Rights of the Author Key to Answer: Section 57 of the Copyright Actright to paternity and right to integrity Candidate shall refer to Mannu Bhandari case and Amarnath Sehgal case. e. Doctrine of purposive construction Key to Answer: The three step test laid down by Lord Diplock in Catnic v Hill should be discussed by the candidate f. Fair use under copyright law. Key to Answer: Four factors [purpose, Nature, Amount, and Effect] applied to determine fair use in US should be referredan overview of section 52 of Copyright Act 1957 should be given. ******************