India - IP Glossary

IP terms & definitions

Appellation of Origin (AO)

a special kind of geographical indication, generally consisting of a geographical name or a traditional designation, used in products with a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. Products certified with AOs bear a qualitative and stronger connection between the product and the place of origin, determined by a set of natural factors (such as soil and climate), and by a set of human factors (know-how, production processes).

Arbitration

a method to solve conflicts outside of the court whereby the parties consent to appoint a independent third party – arbitrator(s) – who will take a binding decision for the parties.

Author (Copyright)

creator of a work, who contributes decisively to the creative decisions and efforts that an original work encompasses. As a general rule, authors are granted moral and economic rights over the work and its exploitation.

‘Black box’ strategy

a strategy used in the transfer of technology through which the party receiving the technology is able to use it, despite not understanding it, in as much as such information is kept secret by the technology owner, e.g. delivering stand-alone components necessary to apply the technology, but without disclosing how such stand-alone components work or are made.

CcTLD

Country code top level domain. Example: .cn (China)

Certification mark

(also called guarantee mark) a distinctive sign used for goods or services that comply with the requirements for certification as defined by the certification trade mark owner.

Claim (patents)

a part of a patent application or specification. Defines the matter for which protection is sought in terms of technical features.

Coexistence agreements

agreements between holders of two or more potentially conflicting IP rights where they define the use and scope of these IP rights to prevent conflicts in the marketplace.

Collective mark

a trade mark through which it is possible to distinguish the goods or services belonging to the members of an association from those of companies that are external to the association. The trade mark is owned by the association, which must ensure that the standards required for its use are respected by all the members using the mark in the course of trade.

Confidentiality agreement

c.f. Non-Disclosure Agreement

Copyright

exclusive legal right granted to the author of a literary, musical, artistic or scientific work to publish, reproduce, sell or distribute said work or to authorise a third party to do so. The protection granted by copyright covers the tangible expression of ideas. Therefore, ideas or concepts themselves are not protected.

Counterfeiting

the practice of imitating genuine goods, often of inferior quality, in order to take advantage of the greater value of the imitated product. Counterfeiting may dodge protection under trade mark, copyright, patent or design laws. An example of counterfeiting is selling products that copy genuine goods under a specific brand name without the brand owner's authorisation.

Customs

the governmental agency in charge of examining and authorising imports and exports in a country. In some countries and under certain circumstances, customs officers can temporarily detain potential IP infringing shipments.

Cybersquatting

the act of registering a domain name identical to a company’s product or trade mark names, with the purpose of selling the domain names back to the company (the rightful owner) at a premium price.

Dependent patent

patent that cannot be used without exploiting an earlier patent. In such cases, a licence from the earlier patent owner is necessary to avoid infringement.

Disclosure (patent)

the act of making an invention available to the public. Disclosures made before filing a patent application by the applicant or a third party might affect the novelty requirement and hence render the invention non-patentable.
Within the patent application, applicants are expected to make a full and clear disclosure of their invention.

Divisional application

consists in splitting a patent application into two or more different applications, provided that each of them includes an invention, i.e. a solution to a technical problem.

Domain name

human-friendly forms of Internet Protocol (IP) addresses. They constitute a system of translation of IP address (numbers) into words.

Due Diligence

the evaluation of an asset or a set of assets in order to get reliable knowledge about their status.

Economic rights

a set of exclusive rights granted to a copyright owner (to authorize the reproduction, distribution and communication of a work to the public), which allow the owner of these rights to derive financial reward(s) from the use of their works by others. These rights may be transferred or licensed, usually for a sum of money or royalties, depending on the usage of the work.

Ex officio / ex parte

ex officio prosecution implies that the public prosecutor, without any previous private claims, decides to start legal proceedings against an infringer, whereas in case of ex parte prosecution it is the injured party the one starting the proceedings.

False affiliation

counterfeiters presenting themselves as authorised resellers.

FDI

acronym for Foreign Direct Investment, the investment of another country made by any natural or legal person -public institutions and companies, private companies, etc. In the target country, this inflow of investment is caused by starting an undertaking or by expanding operations of an existing business, establishing a subsidiary in that country. According to the OECD, FDI aims at influencing the acquired or invested undertaking; the requirement for the parent company is that it must own at least 10 % of the subsidiary. 

FOSS

acronym that means Free and Open Source Software, in English. It is a software linked by a licence that allows users to study, modify and improve their design thanks to the availability of the source code.

Franchise

arrangement through which one party (the franchisor) grants another party (the franchisee) the right to use their trade mark or trade name, as well as certain business systems and processes to produce and market a good or service according to certain specifications.

FRAND

acronym that means Fair, Reasonable and Non-Discriminatory. The term FRAND refers to the obligation of the owner of a patent – needed to implement a standard - to grant non-exclusive licences to anyone who applies for it. The conditions are for said licence to be fair, reasonable and non-discriminatory. Determining whether a licence follows FRAND principles is assessed on a case-by-case basis. 

General Public Licence - GNU GPL

a type of open licence that allows the end-user of a software to freely run, modify and share the software code.

Geographical Indications (GIs)

a name or a sign used in relation to goods that have a specific geographical origin, as well as certain qualities, a reputation or characteristics that are essentially attributable to that place of origin.

Grace period

a period of time before the filing date of a patent/utility model/design application during which the public disclosure of an invention (under certain conditions) is allowed without affecting the validity of a subsequent patent/utility model/design application, provided that a complete application is subsequently filed. The terms and conditions of grace periods vary from one jurisdiction to another.

Industrial applicability (for patents)

one of the three basic patentability requirements. An invention will be considered industrially applicable if it can be made or used and reproduced in any kind of industry.

Industrial design

Intellectual Property modality that protects the external appearance of a product.

Injunction

a judicial order requested to prevent the alleged infringer(s) to resume potential infringing activities during the course of judicial proceedings. It is usually useful in those cases in which the damage associated to the continuation of the alleged infringement is likely to be high, to assure the evidences of the infringement and/or the effectiveness of the final judicial decision. See also Preliminary Injunction.

Intellectual Property (IP)

the property over creations of the human mind. In a broad sense, it includes inventions, literary and artistic works, as well as symbols, names, images and designs used in trade, among others.

Intellectual Property Rights (IPR)

the legally enforceable rights to intellectual property. They confer a right to exclude others from their use. This includes patents and utility models, industrial designs (or design registrations), trade secrets, trade marks, geographical indications and copyrights.

International Nice Classification

a system used to classify goods and services for the purposes of trade mark registration -i.e. to define which types of goods and/or services are protected by the trade mark.

International Vienna Classification

an international classification system used to categorise the figurative elements of marks. Its full title is International Classification of the Figurative Elements of Marks.

Inventive step

one of the three basic patentability requirements. An invention must not be an obvious result of pre-existing inventions, from the perspective of a person skilled in the field.

IPR enforcement

the use of legal actions, remedies, measures and procedures against the infringement of any IPR. This includes, among others, stopping unauthorized use, deterring future infringements or obtaining compensation for damages resulting from the infringement.

Licence agreement

a contract under which the owner of an intellectual property right (‘licensor’) gives permission to another individual or entity (‘licensee’) to use this right for a period of time and within a defined territory. Therefore, the licence allows the licensee to legitimately use, sell, offer to sell, and import the invention protected by intellectual property rights. In return, in the majority of cases, the licensor receives royalty payments. Signing a licence agreement does not imply the transfer of the ownership of the IPR.

Mediation

an alternative dispute resolution mechanism through which the parties of a conflicting case agree to solve their dispute by means of negotiation under the supervision of a mediator. The main difference between mediation and arbitration is that the Mediator does not impose the final solution but facilitates to reach an agreement.

Moral rights

the personal and non-transferrable rights of the author, including the right to be recognized as such, the right to decide to publish the work and the right to the integrity of the work. These rights are perpetual and non-transferable.

Non-Disclosure Agreements (NDA)

also known as confidentiality agreements, NDAs are contracts that aim to protect the secrecy and confidentiality of the information known and shared by the parties and to impose limits and rules for its use. Penalty clauses are also included for cases of breach of confidentiality. NDAs can be signed with business partners but also with own employees.

Novelty (patents)

one of the basic patentability requirements according to which, before the filing date, no identical invention or utility model shall be publicly disclosed in the country or abroad or be publicly used or made known to the public by any other means.

Open code / Open source

open code or open source means that a software is distributed under a licence that allows its use, change and redistribution. The core requirement to be considered in order to fall within this category is that the source code should be available. It allows to study how the program works and modify it in order to improve or adapt it to a specific purpose. 

Open innovation

an innovation strategy through which companies can cross their internal organisational boundaries and cooperate with external professionals to carry their projects forward and work on R&D.

Opposition

administrative mechanism through which a third party opposes the grant of a patent or a trade mark on the grounds of their prior right.

Patent

exclusive rights granted to an invention -a solution to a technical problem-, which entitles the patent holder to prevent third parties from commercially exploiting -making, using, offering for sale, selling or importing- the invention for a limited period of time (generally 20 years).

Phishing

the act of attempting to acquire credit card information, user names, and passwords via electronic communication (fraudulent e-mails containing fake links). The term ‘phishing’ is a mix of ‘password’ and ‘fishing’.

Piracy

the reproduction and distribution of copies of copyright-protected material, or its communication to the public by making such material available on online communication networks without the authorisation of the owner(s), which is required by the law. 

Plagiarism

the act of misappropriating the literary composition of another author, or excerpts, ideas, or passages thereof, and pretending it is one’s own creation.

Plant variety rights

a sui generis protection system that covers new types and qualities of seeds that provide their holders with certain exclusive rights to the exploitation and reproduction of the seeds.

Power of Attorney (PoA)

a legal document that entitles a legal or natural person to act on behalf of another person.

Preliminary contract

an agreement that is generally signed by the parties before concluding final agreements. They are instruments that help parties draft, review and eventually agree the terms and conditions of a future final agreement, such as a licence or a partnership agreement.

Preliminary injunction

a temporary measure that the court adopts in a fast-track procedure when there are special circumstances that could lead to irreversible damage. 

Prior art search

"prior art’ refers to the disclosure of the patented invention before the date of the patent application, which may, as a consequence, negatively affect the novelty and and/or inventiveness of the patent application. Since an invention must be novel and inventive to be patentable, a prior art search is typically conducted either by a patentee or a person seeking to challenge the validity of the patent, either in a patent invalidation proceeding or in the course of a patent infringement litigation.

Registration certificate

an official document that certifies that an intellectual property right has been granted and it has been registered. 

Research and Development (R&D)

research work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge related to humanities, culture and society, and the use of this knowledge to devise new applications.

Right of priority

Whenever a person from one of the countries party to the Paris Convention files a national application for an IP right (except for copyright) in any of the 177 signatory countries, the date on which the first application was filed is established as the priority date, provided that subsequent patent applications are filed within the 12 months after the first application.

Royalty

a payment made to a right holder for the use of their own intellectual property, such as a patent, trade mark, or copyright. Royalties can be negotiated freely but they usually constitute a percentage of the revenues obtained by using the owner’s right. They are the most used remuneration method in the context of licence agreements.

Second use patentability

the possibility of patenting a different use of an already known object/product (e.g. use of a chemical composition as a medicine to treat heart diseases whilst the original patent claims its use as an antibiotic). In general, in Europe it is possible to patent such second use, provided the novelty and inventive step requirements are fulfilled, while in India, this is not allowed.

Seizure of goods

a measure through which the competent authorities can confiscate goods that allegedly infringe intellectual property rights.

Severability

a legal concept according to which, if any clause of a contract is held unenforceable, such clause cannot affect the validity of the rest of the contract.

Slamming

fraudulent act through which resellers of domain names contact companies claiming that another client of theirs has requested the registration of a domain name identical to their trade mark or company name. Their objective is to encourage the company to make a domain name registration using their services, and in some cases, to access the victim's credit card information.

Small and Medium Enterprises (SMEs)

In Europe, SMEs are companies with less than 250 employees and with either a turnover equal or inferior to 50 € million, or a total balance sheet equal or inferior to 43 € million.

State of the art

anything that has been disclosed or made publicly available before in any place of the world. That disclosure can be made by means of an oral or written description, exploitation, sale or commercialisation, or through any other media or information services, that allow a skilled person to carry out the invention.

Technical Protection Measures (TPM)

devices or software that allow the right holder to control or limit the use of their protected work (also known as digital rights management systems).

Technology transfer

the successful application or adaptation of a technology developed in an organisation with the aim to meet the needs of one or more other organisations.

A technology transfer not only includes the transfer between organisations, but also between different industrial sectors. Some examples of technology transfers are licences, joint ventures,  manufacturing or commercial agreements which include technical assistance.

Trade Dress

the visual appearance of a product or its packaging. It might be protected by trademarks, designs and in certain jurisdictions, unfair competition regulation.

Trade mark

a distinctive sign that differentiates certain goods or services from one company to those produced or provided by another. The holder of a registered trade mark has the exclusive legal right to use said trade mark in relation to the products or services for which it was registered

Trade secrets

any confidential business information that provides a company with a competitive advantage. Trade secrets include manufacturing, industrial or commercial secrets. Depending on the legal system, the protection of trade secrets is a part of the general concept of protection against unfair competition, is based on specific provisions or case law on the protection of confidential information, and/or is treated as a breach of contract, provided there is a confidentiality agreement.

TRIPS

acronym for "Trade-Related Aspects of Intellectual Property Rights". It is a disposition within the agreement established by the World Trade Organization. The aim of TRIPS is the creation of basic principles regarding the government of IP rights in the market, minimising distortions and impediments to international trade, as well as promoting an effective and adequate protection of intellectual property rights.

Typosquatting

the act of registering domain names that are either visually similar to your domain name or are mistyped (one key off on the keyboard). Example: If Europe.eu is the domain name, europ.eu could be the typosquatted domain (visually similar); or if Europe.eu is the domain name, Euripe.eu could be the variant (the letter ‘i’ is next to the letter ‘o’ on the keyboard, making this a common typo). Omitting or doubling characters are also some characteristic options of typosquatting.

Unfair Competition

branch of law that protects operators in the market against competitors trying to get advantage in the market by means other than competition based on merits, such as industrial or commercial behaviours contrary to honest practices. Unfair competition law is complementary to intellectual property protection, but it is not harmonised.

Utility Models

this refers to a subset of patents for inventions that have a lower level of inventiveness than the one required for these patents in some jurisdictions. The subject matter patentable as a utility model varies between jurisdictions, and may exclude methods and compositions. A utility model often has a shorter term of protection than an invention patent. India does not provide for the protection of utility models.

Variation (design)

a design that shares the same purpose and dominant distinctive characteristics as the main design.

Withdrawal or abandonment

the act of not carrying out the whole registration procedure of an intellectual property right. It can also refer to the sanction imposed when the applicant does not comply with all the procedures on time (e.g. non-payment of the fees).