IPR
Topic 05 Characteristics
Topic 5 — Characteristics of Intellectual Property Rights
Intellectual property rights share a common DNA. Once you understand the four cardinal characteristics — Territoriality, Exclusivity, Limited Duration and Assignability — you can predict how any specific IP regime will behave. These four features run through every statute, every international treaty and every judgment, and form the most repeated MCQ block in judiciary preliminary papers.
T · E · L · A — Territorial · Exclusive · Limited · Assignable |
Characteristic 1 — Territoriality
IPRs are creations of national law and operate only within the territory of the granting State. An Indian patent confers no rights in the United Kingdom; a German trademark registration is unenforceable in Japan unless the mark is also registered there or treaty protection is invoked.
Three Practical Consequences
- Independent registration — to obtain protection abroad, one must file in each country, either directly or through international filing systems.
- Independent enforcement — infringement and remedies are governed by the law of the country where the alleged infringement occurs (lex loci delicti).
- Independent validity — a patent invalidated in one jurisdiction may remain valid in another. The Novartis decision in India did not affect Glivec patents in the EU.
Indian Statutes — Express Territoriality · Section 48, Patents Act 1970 — rights of patentee operate "within India". · Section 14, Copyright Act 1957 — exclusive rights are exercisable "in respect of work in India". · Section 28, Trade Marks Act 1999 — registration confers exclusive right to use the mark "in relation to the goods or services in respect of which the trade mark is registered". |
International Filing Systems — Softening Territoriality
To reduce the cost and delay of multi-country filing, several international systems allow a single application to produce a bundle of national rights:
System | Year | Subject Matter |
|---|---|---|
Patent Cooperation Treaty (PCT) | 1970 | Single international patent application; later "nationalised" in 157+ states. |
Madrid System (Agreement + Protocol) | 1891 / 1989 | One international trademark application designates multiple states. |
Hague Agreement | 1925 / 1999 | One international design application across designated states. |
Berne Convention | 1886 | Automatic copyright protection in member states without formality. |
✅ Watch Out — Berne is automatic, not transnational The Berne Convention does not create a single supranational copyright. It obliges each member state to protect foreign works under national treatment. The copyright remains a bundle of national rights — territoriality is preserved. |
Characteristic 2 — Exclusivity (Right to Exclude)
An IPR is essentially a right to exclude others from doing acts within the scope of the right. The holder need not himself exploit the work; he can simply prevent others from doing so. The right is therefore monopolistic in a defined and limited sense.
Scope of Exclusion
- Patents — Section 48 of the Patents Act 1970 grants the right to prevent third parties from making, using, offering for sale, selling or importing the patented product (or product directly obtained by the patented process) without the patentee's consent.
- Copyright — Section 14 lists the bundle of exclusive rights — reproduction, issue of copies, public performance, communication to the public, translation, adaptation and so on, varying with the type of work.
- Trademarks — Section 28 grants the exclusive right to use the registered trademark in relation to the goods or services for which it is registered.
- Designs — Section 11 of the Designs Act 2000 grants the exclusive right to apply the design to any article in the class for which it is registered.
Statutory Exceptions to Exclusivity
Exclusivity is never absolute. Each statute carves out exceptions in the public interest:
Statute | Exception / Limitation | Section |
|---|---|---|
Copyright Act 1957 | Fair dealing for research, review, news reporting, etc. | Section 52 |
Patents Act 1970 | Bolar / research exemption; experimental use | Section 107A; Section 47(3) |
Patents Act 1970 | Compulsory licensing in case of non-working / unaffordability | Sections 84-92 |
Trade Marks Act 1999 | Honest concurrent user; honest descriptive use | Sections 12, 30(2) |
Designs Act 2000 | No exclusive right to design dictated by function | Section 2(d) excludes purely functional features |
GI Act 1999 | Continued use of personal name | Section 26 |
Characteristic 3 — Limited Duration
No IPR is perpetual. After a defined term, the subject-matter falls into the public domain and may be exploited by anyone without permission or payment. This is the "social bargain" — temporary monopoly for ultimate enrichment of the commons.
IP Right | Duration | Statute / Section |
|---|---|---|
Patent | 20 years from filing date, non-renewable | Section 53, Patents Act 1970 |
Copyright (literary, dramatic, musical, artistic) | Lifetime of author + 60 years | Section 22, Copyright Act 1957 |
Copyright (anonymous, posthumous, films, sound recordings, photographs) | 60 years from year of first publication | Sections 23-29 |
Trademark | 10 years; renewable indefinitely for further 10-year terms | Section 25, TM Act 1999 |
Registered Design | 10 years; extendable by 5 years (max 15) | Section 11, Designs Act 2000 |
Geographical Indication | 10 years; renewable indefinitely | Section 18, GI Act 1999 |
Plant Variety | 15 years (trees and vines: 18 years) | Section 24, PPV&FR Act 2001 |
Layout-Design (Semiconductor) | 10 years from filing or first commercial exploitation, whichever earlier | Section 15, SICLD Act 2000 |
✅ Trademark — the only IPR renewable forever Trademarks can be renewed every ten years indefinitely (Section 25(2), TM Act 1999), provided the renewal fee is paid and the mark continues to be used in commerce. This is unique among IPRs — patents expire absolutely after 20 years; copyrights and designs after their fixed terms. The reason: a trademark protects the consumer's ability to identify source, and that public-interest function does not weaken with time. |
Why Time-Limited?
- Utilitarian — once the creator has had reasonable time to recoup investment and earn a return, society's interest in free access takes over.
- Lockean Spoilage Proviso — long-term exclusion would amount to wasting the resource.
- Social Planning — a rich public domain is essential for further creation; cumulative innovation depends on access to past knowledge.
Characteristic 4 — Assignability and Licensability
IPRs are alienable — they can be transferred outright (assignment) or made available for use without transfer of ownership (licence). This characteristic enables IP to function as a commercial asset, capable of being bought, sold, mortgaged, securitised, gifted, inherited and exchanged in mergers and acquisitions.
Assignment vs. Licence
Basis | Assignment | Licence |
|---|---|---|
Effect on ownership | Transfers ownership. | Permits use; ownership remains with licensor. |
Form | Must be in writing (S. 18 Copyright; S. 68 Patents; S. 39 TM Act). | May be exclusive, non-exclusive or sole; usually written. |
Registration | Generally registrable for effect against third parties. | Recordation usually optional but advisable. |
Reversion | Permanent transfer. | Reverts to licensor on expiry / termination. |
Suit for infringement | Assignee can sue in its own name. | Exclusive licensee may sue subject to statute (e.g., S. 109 TM Act). |
Tax / Stamp | Capital transfer; stamp duty applies. | Treated as revenue receipt; royalty taxable. |
Statutory Framework
- Copyright — Sections 18-21 (assignment); Sections 30-32B (licences). Section 19(3) requires the assignment to identify the work, the rights assigned, the duration and the territory; Section 19(5) — if duration is not specified, presumed five years; Section 19(6) — if territory is not specified, presumed to extend to the whole of India.
- Patents — Section 68 — assignment, mortgage, licence or any other interest must be in writing and registered in the Patent Office to take effect against third parties.
- Trade Marks — Sections 37-45. Section 39 permits assignment with or without goodwill (the latter only of a registered trademark and subject to advertisement). Section 45 makes registration of assignments mandatory.
- Designs — Section 30 of the Designs Act 2000 — assignment must be in writing and registered.
- GI — Section 24, GI Act 1999 — geographical indications cannot be assigned, transmitted, licensed, mortgaged or pledged. This is unique: GI is "public property" of the producer-community and cannot be alienated.
Section 24, GI Act 1999 — GI Cannot be Assigned "(1) Notwithstanding anything contained in any law for the time being in force, any right to a registered geographical indication shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement." |
📖 Saregama India Ltd. v. Suresh Jindal, (2007) 2 SCC (J) 1 The Supreme Court held that a Section 19 assignment of copyright must be construed strictly. Where the assignment was silent on the right of communication to the public, the right remained with the assignor. Significance — Establishes the principle of strict construction of IP assignments: a right not expressly assigned is retained by the assignor. |
Other Recognised Characteristics
Beyond the four cardinal features, examiners sometimes test secondary characteristics:
- Intangibility — no physical existence; the medium of expression (book, prototype) is distinct from the IP itself.
- Non-rivalrous Use — multiple users can simultaneously enjoy an IP right without diminishing it. A million people can read the same e-book simultaneously.
- Inexhaustibility — use does not deplete the asset; closely related to non-rivalry but distinct (rivalry = simultaneous use, exhaustion = depletion over time).
- Statutory Origin — IPRs are creatures of statute; there is no common-law copyright in India after the Copyright Act 1957 occupied the field.
- Bundle of Rights — each IPR is not a single right but a bundle that can be split (e.g., translation right separately from reproduction right; manufacturing right separately from selling right).
- Capable of Valuation — IP can be valued under accounting standards (Ind AS 38) and carried as an asset on a company's balance sheet.
🎯 EXAM POINTERS — TOPIC 5
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