10 Solved Problems (IRAC Method) — Intellectual Property Rights I

These ten problems are worked in the IRAC method — Issue, Rule, Analysis, Conclusion — the way a KSLU answer sheet expects; the full Question Bank has 40+ more.

Problem 1 — An employee, after much effort in the laboratory, comes out… (Unit 1)

Problem: An employee, after much effort in the laboratory, comes out with an invention; after the invention the employer obtains a patent in the name of the firm. Who owns the patent? Advise. (Decoy: the employer automatically owns whatever the employee makes.)

I — Issue. Where an employee devises an invention through his own effort but the employer files and obtains the patent in the firm’s name, who is entitled to the patent?

R — Rule. 1. Under s.6, an application may be made only by the true and first inventor, his assignee, or the legal representative of a deceased entitled person. The true and first inventor (s.2(1)(y)) is the person who actually devised the invention. 2. An employer can own the patent only if the employee has assigned his rights (as an assignee under s.6), and an assignment must be in writing and registered (s.68). Mere employment does not, by itself, transfer inventorship.

A — Analysis. 1. The decoy is that the employer automatically owns whatever an employee produces. That is wrong — inventorship follows the person who devised the invention, and ownership passes to the employer only by a valid assignment or a contract of employment expressly assigning inventions. 2. Here the employee devised the invention through his own laboratory effort, so he is the true and first inventor under s.6. There is no mention of a written assignment; the employer’s act of filing in the firm’s name does not create ownership. Absent an assignment, the firm was not entitled to apply.

C — Conclusion. The employee is the true and first inventor and entitled to the patent. The firm’s patent, taken without an assignment, is liable to be challenged; the employee may seek correction of the register or apply on the ground that the patent was obtained by a person not entitled under s.6. Only a written, registered assignment (s.68) would have given the employer good title.

Problem 2 — A physics teacher explains a principle in class (Unit 1)

Problem: A physics teacher explains a principle in class. A student uses that principle to make a working invention producing a new result. The student claims a patent. Who is entitled? (Decoy: the idea “came from” the teacher, so the teacher owns it.)

I — Issue. Where a student applies a principle taught by a teacher to build a new, working, result-producing invention, is the teacher or the student the true and first inventor?

R — Rule. 1. Under s.6, only the true and first inventor may apply, and under s.2(1)(y) that is the person who actually devised the invention — not one who merely stated a known principle. 2. A known scientific principle is not itself an invention (compare s.3(c), which bars a mere discovery of a scientific principle); inventorship attaches to the person who applies it to produce a new working result.

A — Analysis. 1. The decoy is that because the idea “came from” the teacher’s lecture, the teacher is the inventor. That is wrong — teaching a principle is not inventing a device, and the principle was already known. 2. Here the student took the known principle and applied it to create a new working invention producing a new result. That act of devising the working invention makes the student the true and first inventor; the teacher contributed only pre-existing knowledge.

C — Conclusion. The student is the true and first inventor and is entitled to apply for and own the patent under s.6. The teacher, having merely explained a known principle, has no claim to the patent.

Problem 3 — A professor invents something in his spare time using the… (Unit 1)

Problem: A professor invents something in his spare time using the university’s infrastructure and claims a patent. The university claims the patent. Who owns it? (Decoy: using the employer’s facilities transfers ownership to the employer.)

I — Issue. Where a professor devises an invention in his spare time but using university infrastructure, and no assignment exists, does the professor or the university own the patent?

R — Rule. 1. Under s.6, the true and first inventor (s.2(1)(y)) — the one who actually devised the invention — is entitled to apply, unless he has assigned his rights. 2. An assignment must be in writing and registered (s.68). Employment or the use of an employer’s facilities does not, without an assignment, transfer inventorship.

A — Analysis. 1. The decoy is that using the university’s infrastructure transfers ownership to the university. Mere use of facilities does not make the university the inventor or the owner; ownership turns on who devised the invention and on any assignment. 2. Here the professor devised the invention in his spare time; he is the true and first inventor. There is no written assignment to the university, and the invention was not made in the course of an assigned duty. The university’s provision of infrastructure, without more, gives it no title.

C — Conclusion. The professor is the true and first inventor and entitled to the patent under s.6. The university cannot claim it merely because its infrastructure was used; only a written, registered assignment (s.68) — or an express service condition assigning inventions — would have given the university ownership.

Problem 4 — ‘A’ comes up with an invention and dies before filing for a… (Unit 1)

Problem: ‘A’ comes up with an invention and dies before filing for a patent. ‘C’, ‘A’s laboratory assistant who knew about the invention, acquires a patent on it. Advise. (Decoy: whoever knows the invention and files first owns it.)

I — Issue. Where the true inventor A dies before filing and his laboratory assistant C — who merely knew of the invention — obtains the patent, is C entitled to it?

R — Rule. 1. Under s.6, an application may be made by the true and first inventor, his assignee, or the legal representative of a deceased person who was entitled to apply. 2. The true and first inventor (s.2(1)(y)) is the one who devised the invention — not someone who merely learned of it from another. A person who only knew of the invention is expressly not the true and first inventor.

A — Analysis. 1. The decoy is that C, having known the invention and filed first, owns it. First-to-file operates among rival inventors, not in favour of a person who did not devise the invention at all. C merely learned of A’s work. 2. A devised the invention, so A was the true and first inventor. On A’s death, the right to apply passes to A’s legal representative under s.6, not to the assistant. C, who neither devised nor was assigned nor is A’s legal representative, was not entitled to apply, so his patent was wrongfully obtained.

C — Conclusion. C is not entitled to the patent. The right belonged to A and, on his death, to A’s legal representative under s.6. C’s patent, obtained by a person not entitled, is liable to be revoked under s.64 (wrongful obtaining), and A’s legal representative may claim it.

Problem 5 — The plaintiff holds a registered trade mark (‘Mark A’) (Unit 2)

Problem: The plaintiff holds a registered trade mark (‘Mark A’); the defendant begins to use a closely resembling mark (‘Mark B’) for the same or similar goods (e.g. M-SEAL / SM-SEAL, BIOCILLIN / BIOCILIN, Nirma / Nima, Gowardhan / Cowardhan, DON / DAWN, Lakme / like me). The plaintiff challenges it. Decide. (Decoy: a small spelling difference or added letter avoids infringement.)

I — Issue. Is the defendant’s Mark B deceptively similar to the plaintiff’s registered Mark A, so as to infringe, where the two differ only by an added letter, a changed syllable or a homophone?

R — Rule. 1. Under s.2(1)(h), a mark is deceptively similar if it so nearly resembles another as to be likely to deceive or cause confusion; under s.29(2), use of such a mark on identical or similar goods infringes a registered mark. 2. Similarity is tested by phonetic, visual and structural resemblance, through the average consumer of imperfect recollection, comparing the marks as wholes; for medicines a stricter test applies (Cadila Health Care v Cadila Pharmaceuticals, 2001).

A — Analysis. 1. The decoy is that a trivial difference — an extra “S” (SM-SEAL), a dropped letter (BIOCILIN), a changed vowel (Nima, Cowardhan) or a homophone (“like me”) — avoids infringement. It does not: small additions or spelling changes do not save a mark that copies the dominant feature of the registered mark. 2. Applying the tests, the marks share the dominant element and are close in sound and appearance; the goods are identical or closely related, and a buyer of imperfect recollection would likely believe Mark B comes from the plaintiff. Where the goods are medicines (BIOCILLIN/BIOCILIN, and drugs generally), the stricter Cadila standard makes confusion even easier to find.

C — Conclusion. Mark B is deceptively similar to the registered Mark A and infringes under s.29(2) read with s.2(1)(h). The plaintiff is entitled to an injunction restraining its use, and to damages or an account of profits (s.135). The trivial spelling difference is no defence.

Problem 6 — ‘X’, proprietor of a registered trade mark, brings a suit… (Unit 2)

Problem: ‘X’, proprietor of a registered trade mark, brings a suit against ‘Z’ for infringement 15 years after the infringing use openly began. Is there any irregularity in the suit? Comment. (Decoy: a registered proprietor can sue at any time, however long the delay.)

I — Issue. Does a registered proprietor who waits 15 years, knowing of the defendant’s open use, lose his remedy for infringement?

R — Rule. 1. Under s.33, a proprietor who knowingly acquiesces in the use of a registered mark for a continuous period of five years loses the right to seek invalidation or an injunction against that use. 2. Independently, long, unexplained delay (laches) and acquiescence disentitle a plaintiff to the discretionary relief of injunction, though an injunction may still issue where the defendant’s conduct is dishonest (Midas Hygiene Industries v Sudhir Bhatia (2004)).

A — Analysis. 1. The decoy is that a registered proprietor can sue at any time. Registration confers the right, but the remedy of injunction is equitable and can be lost by sleeping on it. 2. X knew of Z’s open use and did nothing for 15 years — far beyond the five-year period in s.33. This is acquiescence: X allowed Z to build a business around the mark and cannot now suddenly restrain it. The delay is the irregularity in the suit.

C — Conclusion. The suit is defective on the ground of acquiescence / delay under s.33: having tolerated the use for 15 years, X is unlikely to obtain an injunction. Only if Z’s adoption were shown to be dishonest might the court still intervene; otherwise X’s long silence bars the equitable relief.

Problem 7 — ‘A’ is the proprietor of a well-known registered trade mark… (Unit 3)

Problem: ‘A’ is the proprietor of a well-known registered trade mark (‘TATA’ / ‘REDIFF’ / ‘TRIDENT HOTELS’ / ‘Yahoo’). ‘B’, to cash in on that reputation, registers a domain name identical or nearly identical to the mark (e.g. tata…, rediff…, tridenthotels.com, yahooindia.com, or kabadibazar.com against kabaribazar.com). Does this amount to infringement? Decide. (Decoy: a domain name is only an address, not a trade mark, so copying it is not actionable.)

I — Issue. Where B registers a domain name identical or deceptively similar to A’s well-known trade mark to exploit its reputation, does this amount to passing off or infringement?

R — Rule. 1. A domain name functions as a trade mark — it identifies and distinguishes a business and its goodwill (Satyam Infoway Ltd v Sifynet Solutions, 2004). 2. Registering a domain identical or deceptively similar to another’s mark, in bad faith, is passing off and infringement under s.29 of the Trade Marks Act, 1999; the tests are likelihood of confusion (s.2(1)(h)) and dishonest intent (cybersquatting).

A — Analysis. 1. The decoy is that a domain name is only an address, not a trade mark, so copying it cannot be actionable. Satyam Infoway rejects this — a domain performs the source-identifying job of a trade mark and attracts the same protection. 2. B has copied a famous mark as his domain purely to exploit its goodwill and divert internet users; there is a clear likelihood of confusion and a bad-faith intent. A one-letter change (kabadibazar for kabaribazar, radiff for rediff) does not save him — near-identical domains are the classic cybersquatting device, as in Rediff Communication Ltd v Cyberbooth (2000) and Tata Sons Ltd v Manu Kosuri (2001).

C — Conclusion. Yes — B’s registration amounts to passing off and infringement under s.29. A is entitled to an injunction restraining B’s use and to transfer or cancellation of the domain; the “only an address” argument fails because a domain name is protected as a trade mark.

Problem 8 — ‘A’ (alternatively ‘X’) sends false information by e-mail to… (Unit 3)

Problem: ‘A’ (alternatively ‘X’) sends false information by e-mail to his friend merely to cause annoyance. Has he committed any offence under the Information Technology Act, 2000? Decide. (Decoy: cite s.66A for sending offensive/annoying messages.)

I — Issue. Is a person who e-mails false information merely to annoy a friend guilty of any offence under the IT Act, 2000?

R — Rule. 1. The section that once punished sending false or annoying messages by computer was s.66A, but it was struck down as unconstitutional in Shreya Singhal v Union of India (2015) for violating Article 19(1)(a). 2. No surviving section punishes mere annoyance; the live offences require obscene content (s.67), a threat to national security (s.66F), or cheating/identity theft (ss.66C/66D).

A — Analysis. 1. The decoy is that the examiner wants s.66A cited confidently. Citing struck-down law loses the marks — s.66A is void and can convict no one. 2. The e-mail here is only false and annoying: it is not obscene, not a threat to security, and involves no cheating or identity theft. The only provision that ever fit was s.66A, which no longer exists in law, so no live offence is made out.

C — Conclusion. The sender commits no offence under the IT Act as it now stands, because s.66A is void (Shreya Singhal, 2015). Mere annoyance or falsity in an e-mail, without obscenity, threat or fraud, is not punishable under the Act.

Problem 9 — An authorised user (‘X’) holding a right in a registered… (Unit 4)

Problem: An authorised user (‘X’) holding a right in a registered geographical indication dies. On whom does his right devolve? (Decoy: the right simply lapses, or must be re-auctioned to other producers.)

I — Issue. When an authorised user of a registered GI dies, does his right lapse, and if not, to whom does it pass?

R — Rule. 1. Under s.24, a right to a registered GI is not the subject of assignment, transmission, licensing, pledge or mortgage. 2. But the proviso to s.24 provides that on the death of an authorised user, his right devolves on his successor in title under the applicable succession law.

A — Analysis. 1. The decoy is that the right simply lapses on death, or must be re-auctioned among producers. That is wrong — s.24 expressly preserves the right and directs where it goes. 2. X’s right does not extinguish and cannot be sold; by the proviso to s.24 it passes automatically to his successor in title (his legal heir), who steps into his place as an authorised user of the GI.

C — Conclusion. X’s right devolves on his successor in title under the proviso to s.24 — the single recurring answer the examiner tests. The right neither lapses nor becomes freely tradeable; only inheritance moves it.

Problem 10 — ‘A’, an authorised user holding a right in a registered… (Unit 4)

Problem: ‘A’, an authorised user holding a right in a registered geographical indication, wants to sell that right to ‘B’. Can he do so? Discuss. (Decoy: a GI right is property, so it can be sold like any other.)

I — Issue. Can an authorised user of a registered GI sell or assign his right to another person?

R — Rule. 1. Under s.24, “any right to a registered geographical indication shall not be the subject matter of assignment, transmission, licensing, pledge, mortgage or any such other agreement.” 2. The only movement s.24 permits is devolution on death to the successor in title; a sale during life is not allowed.

A — Analysis. 1. The decoy is that a GI right is property, so it can be sold like any other asset. A GI is not ordinary private property — it is a community right tied to the region, deliberately made inalienable so it cannot be captured by outsiders. 2. Selling the right to B is an assignment / transmission, exactly what s.24 forbids. The transaction is void; B acquires nothing.

C — Conclusion. A cannot sell his GI right to B. Any such sale is void under s.24, because a GI is a non-assignable community right; it can move only by devolution on death, not by sale.

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