Governing Technology through Law: Issues and Concerns

A. B. Suraj PGP Business Law 2012

Session Objectives
To appreciate the importance of and the criteria to recognize, establish and enforce intellectual property rights To understand the principles of Cyber Law prevalent legal

Relevant Issues
Lack of internationally coordinated legal framework or enforcement mechanism
Relevance of TRIPs and procedures; Jurisdiction

Regulating use of technology ever changing standards and concerns

Uniformity in standards

Emergence of specialized forms of legal institutions

Special Courts/Tribunals

Intellectual Property Rights

IPRs Basis & Rationale

Economic (and technological) rationale aids overall development Social benefits enriches Public Domain and furthers Basic Research IPRs are legally monopolistic need to be fairly enforced/regulated

Forms of IPRs
Patents Patents Act, 1970 Copyrights Copyright Act, 1957 Trade Marks Trade Marks Act, 1999 Industrial Designs Designs Act, 2000

Forms of IPRs
Layout Designs of ICs Semiconductor Integrated Circuits Layout-Design Act, 2000 Geographical Indications Geographical Indications of Goods (Registration and Protection) Act, 1999 Plant varieties Protection of Plant Varieties and Farmers Rights Act, 2001

Forms of IPRs
Traditional Knowledge partly by Biological Diversity Act, 2002
Turmeric and Neem disputes Basmati and Yoga controversy

Trade Secrets Contractual no legislation in India

Evolution of IPR regime

Early 17th Century Monopolies Statute
Maximum flexibility to national governments no global enforcement Commerce based; not invention as motive

Paris Convention (1883); Berne Convention (1886); Madrid Agreement (1891)

Minimum obligations but with flexibilities National Treatment; and Reciprocal obligations though not mandated

TRIPs Regime
TRIPs (1995) common minimum institutional framework what about flexibilities?
Scope of Patents exclusions Patentability content criteria interpretative

Enforcement mechanisms Civil and Criminal remedies

TRIPs Regime Salient Features

Basic Principles
MFN status; National Treatment

Forms of protection

IPRs

and

bases

of

Aiming for uniformity Multilateralism impact on national laws

TRIPs Features
Special Provisions for Developing nations
Accent on technology transfer & promotion

Enforcement Mechanisms
Civil and Criminal; Border measures

What is a Patent?
Patent a monopoly right to an inventor 20 year period of monopoly granted for inventions that satisfy:
Novelty Inventive Step or Non-obviousness Utility or industrial application

What can you do with a Patent?

Section 48 of the Patents Act, 1970:
Make Use Sell Distribute Import

the invention within India Effect of Patents only territorial

Patent Law in India

The Patents Act, 1970 The Patents Rules, 2003 Registering Authority Controller General of Patents, Designs and Trade Marks HO at Kolkata Branches at Chennai, Delhi & Mumbai Registration no guarantee of validity

Subject Matter of Patents

Must relate to any new process and/or a new product improvements also considered across any field of technology (TRIPs) Any process, machine, manufacture, composition of matter or material

Non-patentability
Exclusions abstract ideas, laws of nature, natural phenomena Section 3 enlists :

Medical & Treatment procedures; Topography of ICs; Traditional Knowledge; Mathematical or Business methods;

Computer programs per se or algorithms;

US Case Studies
Gottschalk v. Benson (1972) NO unless there is a physical effect Diamond v. Diehr (1981) YES if part of an otherwise patentable process State Street Bank (1998) YES useful computation is in itself a tangible result

Patent Cooperation Treaty (PCT)

Treaty for International Rationalization and Cooperation in:
Filing; Searching; Examination; of Patent specifications Dissemination of technical information contained in various applications

No grant of international patents procedural facilitation ultimate grant by countries only

Patent Applications
Who can apply for a Patent?
True and first inventor principle idea, effort and disclosure An assignee of right Legal representative

Firms/Corporations cannot be inventors but can apply as assignees or joint holders

Employee Employer relations

Mere contract of employment does not ordinarily provide any rights to the employer Principle of Trusteeship and fiduciary duty must be established by the employer If specially employed to exercise inventive faculty then employer is the assignee even over the patentable improvements developed

Employee Employer
If specially employed for a purpose but the invention is not pursuant to it then the employee owns it Comprehensive factual analysis nature and scope of employment; obligations and duties arising thereof; conduct of employer and employee; extent of trust

Employer Employee
UK Patents Act, 1977 Ss. 39-43
Reasonably expected of normal duties Special or assigned obligations Fair compensation to the inventor employee provided no such specific contract exists Effort and Skill based evaluation

Effect of Prior Disclosure

USPTO allows for Disclosure Documents accepted and preserved for 2 years
Evidence of date of conception of invention No effect of an application Confidentiality ensured Declaration of diligence also mandated

India strongly discourages prior publication or disclosure results in anticipation prefers Provisional Application

Specifications Key Strategies

Legal, Technical, Commercial strategic drafting of terms required to meet future demands Corresponding rights of persons involved must be clarified else, heavy legal suits Distinguish between old and the new Summarize each stage effectively this is apart from an overall Abstract

Patent Infringement
All District Courts empowered to examine infringement as civil disputes However, only a High Court can declare on the validity of a Patent plaint may be with the District Court, but if validity is challenged, then the High Court shall decide and declare

Remedies and Strategies

Suit for Damages Suit for Account on Profits and for damages to be assessed Demand security for value of claim and costs Injunction at the end of the trial Though not usually granted, even interim injunction

WHAT IS COPYRIGHT?
Statutorily provided privilege to authors, aiming towards:
Creative and Intellectual enrichment of the public Progress of Scientific and useful Arts (literary, artistic, musical, dramatic, cinematographic films, sound recordings and now performances & broadcasting) Copyleft emerging notions of open access

Bundle of rights right to make copies; communicate to the public; make adaptations and allow translations

Notions of Originality
Common Law what is not copied, is original US & Australia minimum criteria of creativity and originality Moving towards authors own personal creation apart from common stock

Basic Concepts
Authorship & Ownership labour, skill and judgement could be even joint
Films, song-recordings, broadcasts entrepreneurship model producers Song lyricist, composer, singer, performing musicians, and the producer Government presumed ownership, unless contracted otherwise

Moral Rights to the Author

Right to be acknowledged and against any false attribution Right against derogatory treatment of the work Enforceable even if economic rights have been assigned or licensed

Legal Framework
Registration not compulsory, but useful when copyright is infringed - territorial Indian Copyright Act, 1957 International recognition:
Berne Convention (1886) and Universal Copyright Convention (1952)

Civil & Criminal Remedies

Evidentiary registration is best proof else, presumptions based on publication Civil remedy enforceable by a District Court compensatory and injunctions Criminal remedy Metropolitan Magistrate or the JMFC minimum imprisonment and fines offence is cognizable

Fair Use and Defences

Berne Convention and TRIPs authorize reproduction of protected works in certain special cases if: - it does not conflict with normal exploitation of the work; and - it does not unreasonably prejudice the legitimate interests of the author

Some instances of Fair use

For Research or Private Study For criticism or review For reporting current events For Non-commercial performances

Fair Use Factors in U.K.

Quantum and value of the matter quoted Purpose Good Faith? Whether the work is published, circulated or not Likelihood of competition

Fair Use Factors in U.S.

Purpose and Character of use The nature of the Copyrighted work Amount and substantiality of use The effect on potential market or value

Relevant Debates
Trade secrets vs. Patents/Copyrights Enforcement mechanisms procedural; and evidentiary highly

Emergence of and Compliance International consensus

with

CYBER LAWS, E-GOVERNANCE & DATA PROTECTION

Geography, is History!
Contracts & Commerce in Cyberspace and in Electronic format Detection, Investigation and Prosecution of Cyber Crimes across the globe Re-appreciation of legal principles jurisdiction, privacy, IPRs, evidence, etc.

IT Law Objects & Concerns

To provide privacy and guarantee security in public and unregulated space To authenticate and authorize transactions undertaken across several countries To keep the legal framework in pace with the changing forms of technology

Online Piracy
RIAA v. Charter Comm. (2005 USCoA)
P2P; MP3 technology enabled piracy 2.6 billion music works in a month! John Doe suits and summons Disclosure of subscriber details Safe harbour (DMCA, 2000) for ISPs = mere transmit and route; system caching temporary storage; user determined process; mere provision of links prompt action upon notification

Online Piracy
Contributory liability only if:
Reasonable knowledge of infringement Expected knowledge of storage on site Fails to prevent viral distribution

Due diligence given prominence in Indian Law Intermediaries liability

Legal Framework
Information Technology Act, 2000
Latest Amendments Procedural and Evidentiary

UNCITRAL Model Law on E-Commerce, 1996 Convention on Cyber Crimes EU+ Members US Acts and EU Directives

E-Governance
Recognizes electronic records signatures as valid forms and

Government can accept, issue, create, retain and preserve records electronically though not mandatorily Mandate of the Right to Information Act

E-Record and Contractual Principles

Attribution Principles
Originator/representative/automatic

Acknowledgement conditions
Notice of acceptance

Time and Place of despatch of e-record

Secured Transactions
Government prescribes the security procedure considering the technological capacity of the Parties; volume of transactions; and general procedures Certifying Authorities (licensed):
Issues Electronic/Digital Signature Certificates Recognizes foreign Certifying Authorities Repository of Certificates and PKI

Cyber Crimes and Penalties

Section 43 damage to computer or computer system destroy, alter, delete, add, modify or rearrange any computer resource Fines up to Rs. 1 Crore !!
Penalty to Compensation

Factual factors = unfair advantage; amount of loss caused; the repetitive nature

Cyber Offences
Tampering computer source code or related documents 3 yrs + 2 lakhs Hacking into computer resource 3 yrs + 2 lakhs Publishing or transmitting obscene material in electronic form = 5 yrs + 10 lakh Extra-territoriality application of the law if Indian computer is involved

Latest Amendments
DATA PROTECTION & PRIVACY
Compensatory remedy = up to 5 Crores Applicable to body corporate (commercial or professional activities); Reasonable security procedures; Protection of sensitive personal data/ information Disclosure of confidential information penalized Violation of Privacy made punishable even in the IPC

Latest amendments
Punishments identity theft, phishing, cyber terrorism Critical information infrastructure essential to protect national interests

Indian Computer Emergency Response Team formed

Latest amendments
Electronic Signature inclusive of Digital Definition of Cyber Caf; Cyber Security; Computer source code Elaborates intermediary = ISPs, cyber cafes, telecom SPs, Network SPs, Search Engines, E-Com sites, etc. Power of Govt. to authorize/order any private individual or firm to provide services in an electronic form service charges may also be specified

Latest amendments
Security procedures and practices as Govt. considers appropriate Formation of Examiner of Electronic Evidence guarantee of expert opinion Audit of allowed Electronic records expressly

Latest amendments
Working of Cyber Appellate Tribunal techno-legal characteristics Creation of Cyber Regulations Advisory Committee Grounds of sovereignty Govt. has powers to intercept/ monitor/ decrypt any information on computer resource

Liability of Intermediaries
Service Providers are exempted from liability if lack of knowledge despite due diligence Service Providers can be ordered to preserve and retain information
Full cooperation is legally mandated

Comprehensive Search & Seizure Powers given to the Police

Jurisdiction Issues
Conduct of activity wholly or substantially within a territory Conduct outside the territory but directed against the interests of the country Standard of reasonableness applied Active, Passive, Territoriality, Sovereignty
Yahoo Inc. matter French Law vs. Rights in US

Discussion