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RNS INSTITUTE OF TECHNOLOGY

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V SEMESTER Academic Year: 2023 – 24 Faculty: Dr. Andhe Pallavi

SUBJECT CODE SUBJECT NAME Hand Out details
Research Methodology &
21RMI56 Module III
Intellectual Property Rights

Module 3
Syllabus: Introduction To Intellectual Property: Role of IP in the Economic and Cultural Development of the
Society, IP Governance, IP as a Global Indicator of Innovation, Origin of IP History of IP in India. Major
Amendments in IP Laws and Acts in India.
Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent an Invention.
Rights Associated with Patents. Enforcement of Patent Rights. Inventions Eligible for Patenting. Non-
Patentable Matters. Patent Infringements. Avoid Public Disclosure of an Invention before Patenting.
Process of Patenting. Prior Art Search. Choice of Application to be Filed. Patent Application Forms.
Jurisdiction of Filing Patent Application. Publication. Pre-grant Opposition. Examination. Grant of a Patent.
Validity of Patent Protection. Post-grant Opposition. Commercialization of a Patent. Need for a Patent
Attorney/Agent. Can a Worldwide Patent be Obtained. Do I Need First to File a Patent in India.
Patent Related Forms. Fee Structure. Types of Patent Applications. Commonly Used Terms in Patenting.
National Bodies Dealing with Patent Affairs. Utility Models.

Intellectual Property (IP) is a special category of property created by human intellect (mind) in the fields
of arts, literature, science, trade, etc. Since IP is a novel creation of the mind, it is intangible (i.e. invisible
and indivisible) in nature and differs from the tangible property, such as land, house, gold and car with
which we are quite familiar. Intellectual Property Rights (IPR) are the privileges accorded to the
creator/inventor (of IP) in conformance with the laws. These rights are given to the creator/inventor in
exchange for revealing the process of creation/invention in the public domain. The inventor is conferred
with the special rights to use, sell, distribute, offering for sale and restricting others from using the
invention without his prior permission. The aforementioned rights do not apply to the physical object (e.g.
book or computer or mobile phone) in which the creation may be embodied but attributed to the
intellectual creativity.

Broadly, IP comprises of two branches i.e. ‘Copyrights and Related Rights’ and ‘Industrial Property
Rights’. ‘Copyrights and Related Rights’ refer to the creative expressions in the fields of literature and art,
such as books, publications, architecture, music, wood/stone carvings, pictures, portrays, sculptures, films
and computer-based softwares/databases. The ‘Industrial Property Rights’ refer to the Patents,
Trademarks, Trade Services, Industrial Designs and Geographical Indications. The salient features of all
the above-mentioned categories are discussed in the ensuing chapters.

Role of IP in the Economic and Cultural Development of the Society

Dr. Andhe Pallavi, RNSIT

Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement
of encouraging the same.
The economic and social development of a society is largely dependent on creativity. The protection
provided by the IPR to the creators/innovators is in fact an act of incentivization for encouraging them to
create more and motivates others to create new and novel things.
However, if IPR is practised rigidly, it may have a negative impact on the progress of society. For
example, compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement
has affected the farming community as they are unable to store seeds for the next crop. Multinational
companies regulate
the price of seeds, which is generally beyond the reach of a majority of the farmers.
To circumvent the negative impact of IPR, certain laws, exceptions and limitations associated with IPR
have been enacted to maintain a balance between the interests of the creators/inventors and the
community. For example, farmers’ rights under the Protection of Plant Varieties and Farmers’ Rights
(PVP&FR) Act,
2001 entitles them to many privileges, such as ‘Rights on seeds’ provides rights to the farmers to save
seeds, use seeds and share, exchange or sell seeds to other farmers and ‘Right to protection against
accusations of infringement’ protects the farmers from infringement and other legal accusation levied
upon them due to his legal ignorance in using other’s plant varieties. The use of copyrighted material for
education and religious ceremonies is exempted from the operation of the rights granted in the Copyright
Act. Similarly, a patent can be revoked in favour of compulsory licensing by the government during an
emergency or a natural calamity. In addition, if an invention/creation is not in the interest of society, it is
not registered by the government for grant of any rights associated with IP. For example, cloning of
human embryos is banned for IP protection, and so is the creation of super microbial pathogens, which
can play havoc with human lives.
In addition, India is enriched with massive biodiversity and genetic resources and their use is embodied in
what is referred to as Traditional Knowledge (TK). However, the use of such knowledge and resources
are not limited to local contexts as many innovations relate to and draw on them. Therefore, the main
issue of concern is to protect TK and genetic resources, which are rapidly coming under the governance
of sometimes conflicting IPR policies. To derive maximum benefit from them, the establishment of
adequate legal infrastructure and enforcement is required. With initiatives like ‘Make in India’,
‘Atmanirbhar Bharat’ and supporting local homegrown brands, and easy as well as accessible approach to
patents and trademarks registration, it is possible to reap the benefits of our resources.

IP Governance
Since IP is an integral component of human society, each and every nation has dedicated agencies for
laying out the guidelines, implementation and enforcement of IP related matters. In India, many
organizations/ agencies deal with various aspects of IP. The governance of all categories of IP, except the
Plant Variety and Farmers’ Rights Act, is carried out by the Department for Promotion of Industry &
Internal Trade (DPIIT) under the aegis of Ministry of Commerce and Industry, GoI. There are a few other
dedicated organizations/departments established by the government to promote patent-ecosystem (patent
awareness, patent filing and patent commercialization) in India e.g. Technology Information Forecasting
and Assessment Council (TIFAC), National Research Development Corporation (NRDC) and Cell for
IPR Promotion and Management (CIPAM), etc.
In order to create a hassle-free exchange of IP related activities amongst all the nations, it is imperative to
have minimum standards of rules and regulations pertaining to all aspects of IP including rights,
empowerment, exceptions, etc. To achieve this goal, the United Nations (UN) has established an
organization called the World Intellectual Property Organization (WIPO). This agency is at the forefront
of imparting knowledge about IP and governs international filing and registration of IP through various
Conventions and Treaties like Paris Conventions, Patent Cooperation Treaty (PCT), Rome Convention,
Berne Convention, etc.

Dr. Andhe Pallavi, RNSIT

IP as a Global Indicator of Innovation
IP, especially patents, is considered as one of the important cogs in assessing the innovation index of a
nation. The global ranking organizations always have IP or a subset of IP as one of the parameters for
understanding and grading the Science, Technology and Innovation (STI) ecosystem of a nation. For
example, the Scimago (publically available online portal which ranks journals and countries based on the
data taken from Scopus) 2020 report ranked India at 4th position in the parameter of a number of
‘Research Publications’, and 50th position in the parameter of ‘Intellectual Property Rights’. The global
ranking can be improved by sensitizing the teaching and scientific communities about the importance of
IP and creating infrastructure for the same in the institutes of higher learning.

Origin of IP
Though there is no official record of the origin of IP, it is believed that a rudimentary form of IP was
being practised around 500 Before the Common Era (BCE) in Sybaris, a state of Greece.
The natives of Sybaris were granted a year’s protection for using their intellect to create any new
improvement in luxury.
A practical and pragmatic approach for IP governance started taking shape in medieval Europe. In 1623,
Britain passed an Intellectual Property Legislation which entitled guilds (association of artisans or
merchants) to create innovations and bring them to market for trade purposes. However, this legislation
brought a lot of resentment amongst the public, and thus was replaced by the ‘Statute of Monopolies’,
which gave the rights to the original creator/inventor for 14 years. Another legislation, ‘Statute of Anne’,
was passed by the British parliament in 1710. This legislation aimed at strengthening copyrights by
providing rights to the authors for recreation and distribution of their work. The work could also be
renewed for another 14 years. By the end of the 18th century and the beginning of the 19th century, almost
every country started laying down IP legislation to protect their novel inventions and creations.

History of IP in India
Patents
The history of the Indian patent system dates back to the pre-independence era of British rule. The first
patent related legislation in India was Act VI of 1856, adapted from the British Patent Law of 1852. The
objective of this legislation was to encourage the inventions of new and useful manufactures. The rights
conferred to the inventor were termed as ‘Exclusive Privileges’. In 1859, certain amendments were made
to the Act, such as:
 Grant of exclusive privileges to useful inventions.
 Increase of priority time from 6 months to 12 months.
 Exclusion of importers from the definition of the inventor.

The world’s first patent was granted in 1790 to Samuel Hopkins in USA for the "making of pot ash and
pearl ash by a new apparatus and process". In India, the first patent (known as ‘Exclusive Privileges’ at
that time) was awarded in 1856 to a civil engineer, George Alfred DePenning from Calcutta, for his
invention, ‘An Efficient Punkah Pulling Machine’.

A few years later, it was felt that ‘Designs’ could also pass the criteria of the invention and thus should be
included in the Patent Act. The new Act was rechristened as ‘The Patterns and Designs Protection Act’
under Act XIII of 1872. This Act was further amended in 1883 (XVI of 1883) to include the provision of
protection for ‘Novelty’ in the invention.
At the beginning of the 20th century, all the earlier Acts related to inventions and designs were done away
with the introduction of ‘The Indian Patents and Designs Act, 1911’ (Act II of 1911). As per this Act, the

Dr. Andhe Pallavi, RNSIT

governance of patents was placed under the management of the Controller of Patents. In the next three
decades, many amendments were introduced for reciprocal arrangements with other countries for securing
priority dates. These amendments dealt with;
 Use of invention by the government.
 Patent of Addition.
 Enhancing the term of the patent from 14 years to 16 years.
 Filing of ‘Provisional Application’ and submission of ‘Complete Application’ within 9 months from
the date of filing the application.

Priority Date:
The date on which the first application for the invention is filed, whether it is provisional or with
complete specifications.
After India got independence in 1947, many patent experts felt the need to review the Indian Patents and
Designs Act, 1911, keeping the national interest (economic and political) in mind. A dedicated committee,
chaired by a renowned Justice Bakshi Tek Chand (retired Judge of Lahore High Court), was constituted in
1949 to review the advantages of the patent system.
The committee submitted a plethora of recommendations, including:
 Misuse of patents rights needs to be prevented.
 There must be a clear indication in the Act that food, medicine and surgical and curative devices
should be made available to the masses at the cheapest rate by giving reasonable compensation to the
owner of the patent.
 Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on the lines of the UK
Patent Act.
These recommendations were introduced in the Act XXXII of 1950.
Two years later, another amendment (Act LXX of 1952) was made to provide compulsory licencing of
patents related to food, drugs and chemicals killing insects and microbes. Based on these amendments, a
bill was presented in the parliament in 1953 but was rejected.
In 1957, the central government constituted yet another powerful committee under the chairmanship of
Justice N. Rajagopala Ayyangar to seek inputs for further strengthening the Indian Patent Law. The
committee submitted its report to the government in 1959. It comprised of two segments addressing a)
General aspects of the patent laws, and b) Bill rejected back in 1953.
The revised patent legislation was submitted to the Lok Sabha in 1965. After many hiccups, clarifications
and modifications the Patents Act, 1970 (http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/
1_31_1_patent-act-1970-11march2015.pdf) was introduced, superseding all the previous laws related to
the patents. However, the Indian Patents and Designs Act of 1911 remained applicable for designs only
till 1994.
In 1995, India signed the TRIPS Agreement and got a transition period of 10 years (1995-2005) to make
domestic laws compatible with the international treaty.
In 1999, The Patents (Amendment) Act, 1999 was introduced providing for the filing of applications for
‘Product Patents’ in the areas of drugs, pharmaceuticals and agrochemicals (earlier, only ‘processes’ were
protected under the Patent Act). The new Patent Act also included provisions for the grant of Exclusive
Market Rights (EMRs) for the distribution and sale of pharma products on fulfilment of certain conditions.
The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 of
2002). This Act introduced new Patent Rules, 2003, thus replacing the earlier Patents Rules, 1972.

The major amendments were:

 The protection term of 20 years for all inventions from the date of filing.
 Scope of non-patentable inventions including Traditional Knowledge expanded.
 Disclosure of source and geographical origin of biological material made compulsory.

Dr. Andhe Pallavi, RNSIT

 Provisions concerning convention countries simplified.
 Establishment of Appellate Board.
 Compulsory license provisions strengthened.
 Simplification of procedures.
 Harmonization with Patent Cooperation Treaty (PCT) provisions.

With the rapidly changing scenario of IPR at a global level, a need was felt to further amend the Patent
Act, 1970. The highlight of the Patents (Amendments) Act 2005 were:
 Product patent for inventions in all fields of technology.
 New forms of known substances excluded to prevent evergreening of the patent.
 Rationalization of the opposition procedure.
 Introduction of pre-grant opposition by representation.
 Introduction of post-grant opposition.
 Compulsory license for export purposes.
 Compulsory license for manufacture.
 Extension of grace period from 6 months to 12 months for filing a patent, if published in government
exhibition.
India is a member of all prominent Conventions and Treaties related to the facilitation of the inventors for
international filing and protecting the rights over the inventions globally. The important international
agreements to which India is a signatory party are TRIPS Agreement (1995), Paris Convention (1883),
PCT (1970) and Budapest Treaty (1977) and many more.

Copyrights and Related Rights

The concept of copyrights started way back in the 15th century.
However, the actual need for copyrights law was felt only after the invention of printers and copiers.
Before the invention of printers, writing could be created only once. It was highly laborious and the risk
of errors was involved in the manual process of copying by a scribe. During the 15th and 16th centuries,
printing was invented and widely established in Europe. Copies of ‘Bibles’ were the first to be printed.
The government had allowed the printing of the documents without any restrictions, but this led to the
spreading of a lot of
governmental information. Subsequently, the government started issuing licenses for printing.
The evolution of copyrights law in India occurred in three phases. First, two phases were enacted during
the British Raj. In the first phase, the concept of copyrights was introduced in 1847 through an enactment
during the East India Company’s regime. The term of copyrights was for the lifetime of the author plus
seven years after death. Unlike today, copyrights in work were not automatic. The registration of
copyright was mandatory for the enforcement of rights under the Act. The government could grant a
compulsory license to publish a book if the owner of the copyright, upon the death of the author, refused
to allow its publication.
In the second phase Indian legislature, under the British Raj, enacted the Copyright Act of 1914 based on
the Imperial Copyright Act (1911) of the UK. An Act for criminal sanction for an infringement was
introduced.
The third phase of the copyrights regime was witnessed post independence.

The Copyright Act 1957 was enacted, superseding the Indian Copyright Act, 1914, in order to suit the
provisions of the Berne Convention (1886). The 1957 Act has been amended six times (1983, 1984, 1992,
1994 and 1999, 2012), to comply with WIPO Copyright Treaty (WCT), 1996 and WIPO Performances
and Phonograms Treaty (WPPT), 1996.

Dr. Andhe Pallavi, RNSIT

Most of the amendments in copyright laws were in the digital environment, such as penalties for
circumvention of technological protection measures; rights of management information; liability of
internet service provider; introduction of statutory licenses for the cover versions (the cover version is re-
recording or re-composition of the original song by other artists or composers and is also termed as a
remake, cover song, revival, etc.) and broadcasting organizations; ensuring the right to receive royalties
for authors and music composers; exclusive economic and moral rights to performers; equal membership
rights in copyrights societies for authors and other right owners and exception of copyrights for physically
disabled to access any works.
India is an active member of nearly all significant international Conventions/Treaties related to Copyright
Law e.g. the Berne Convention as modified in Paris in 1971, the Universal Copyright Convention (1951),
the Rome Convention (1961), WCT, WPPT and (TRIPS, 1995).

Trademarks
The first statutory law related to Trademarks (TM) in India was the Trade Marks Act, 1940, which was
carved out from the Trade Marks Act, 1938 of the UK. It was followed by the incorporation of provisions
of TM stated in the Indian Penal Code, Criminal Procedure Code and the Sea Customs Act. Later on,
Trade Marks Act, 1940 was rechristened as Trade and Merchandise Marks Act, 1958. Nearly four
decades later, this Act was repealed by the Trade Marks Act, 1999. The need for this occurred to comply
with the provisions of the TRIPS. It is the current governing law related to registered TM.

Geographical Indications
India, as a member of WTO, enacted the Geographical Indications of Goods (Registration and Protection)
Act, 1999. It came into force with effect from 15th September 2003.
Geographical Indicators have been defined under Article 22 (1) of the WTO Agreement on TRIPS.

Trade Secrets
Although India has no specific Trade Secrets Laws, Indian courts have upheld Trade Secrets protection
under various statutes, including contract law, Copyright law, the principles of equity and the common
law action of breach of confidence (which in effect amounts to a breach of contractual obligation).

Semiconductor Integrated Circuits and Layout Designs

In the 21st century, Information Technology (IT) has revolutionized the economic and societal growth of
the world economy. The rapid and tremendous scientific advancements in the field of IT resulted in the
creation of a new class of IP called the Layout-Design of the Semiconductor Integrated Circuits. Various
organizations, including WTO and TRIPS Agreement laid down rules and regulations regarding the
protection of Semiconductor Integrated Circuits and Layout Designs (SICLD) India being a member of
the WTO also passed an Act called the SICLD Act, 2000. This Act is TRIPS compliant and fulfils the
conditions of the TRIPS agreement (Articles. 35 to 38) concerning the protection of SICLD.

Plant Varieties
Till 1970s, not much emphasis was laid on patentable matter originating from animals and plants.
However, microbes and microbial products/processes were patentable. To include all kinds of biological
materials under the ambit of patent laws, a decision to enact a new sui generis law under the International
Convention for the Protection of New Varieties of Plants (UPOV, 1978) and UPOV, 1991 was taken.
These decisions were taken to address environmental and public interest concerns.
The Indian Patents Act, 1970 excludes plants and animals in whole or any part thereof other than
microorganisms from patentability. To comply with the mandate of Article 27.3 (b) of TRIPS, India
adopted the PPV&FR Act, 2001 as a sui generis regime protecting not only new plant varieties but also
farmers’ rights.

Dr. Andhe Pallavi, RNSIT

Traditional Knowledge
It is the ancient and indigenous knowledge held by any community or a group of people. In olden times it
was not recorded anywhere and was available only in oral form. So, Traditional Knowledge (TK) was
verbally passed on to future generations. TK is not limited to a particular field. It covers a wide area, such
as the use of plants or their extracts for medical treatments, a traditional form of dance, particular
techniques used for hunting, craft knowledge/skills and so on. Though there is no official record but some
forms of TK find appearance in the culture, stories, legends, folklore, rituals, songs, etc. Previously, there
was no mechanism available to protect TK, but now, it has been recognized as IPR under TRIPS
Agreement. The Government of India has created a digital library termed as Traditional Knowledge
Digital Library (TKDL) as a repository of 2,50,000 formulations of various systems of Indian medicine.

Industrial Designs
A design is a creation of the human mind, which is appealing to the eyes and attracts the attention of the
viewers. The need to protect Industrial Designs (ID) was recognized in the 18th century and the Indian
legislation enacted the ‘Patterns and Designs Act’ in 1872 for the first time. The Act was enacted to
protect the rights over the creation of the designs and novel patterns by the inventors. The Act was
replaced by the British Patents and Designs Act in 1907, which later became the basis for the Indian
Patents and Designs Act, 1911.
In 1970, a separate Act was enacted for the patent, i.e. the Patent Act, 1970. The Indian Patents and
Designs Act, 1911, remained in force for designs only. Finally, in the year 2000, a dedicated Act for the
ID was passed, which came into force in 2001.

Biodiversity Conservation
Biodiversity is an inseparable part of human livelihood. The mention of protecting biodiversity can be
found in the times of Chandragupta and Ashoka. In those eras, the trees and forest were classified, such as
reserved category. In 1927 the ‘Indian Forest Act’ and later on the ‘Wildlife Protection Act, 1972’ was
enacted to provide legal protection to biodiversity. In 1988, the ‘National Forest Policy’ was passed,
which brought revolutionary changes in the conservation and management of biodiversity. The Acts and
policies in force to protect the environment and biodiversity in India include Mining and Mineral
Development Regulation Act, 1957; Water (prevention and control of pollution) Act, 1974; Forest
Conservation Act, 1980; Biological Diversity Act, 2002; Scheduled Tribes and other Traditional Forest
Dwellers (recognition of rights) Act, 2006; National Biodiversity Action Plan, 2009; National
Environment Policy, 2006 and a few more.

Major Amendments in IP Laws and Acts in India

In order to fill the gaps existing in the IP Laws and Acts and also to introduce new guidelines/directions
based on the current scenario (socially and politically), each nation keeps on updating the concerned IP
Laws and Acts. Some of the salient amendments made in Indian Laws and Acts on IPR are mentioned
below:

Table 1.1: History of Laws and Acts pertaining to intellectual property in India.

See ppt for Table

Dr. Andhe Pallavi, RNSIT

CATEGORIES OF INTELLECTUAL PROPERTY
Intellectual Property (IP) is a vast field comprising of technology-led inventions, work of artisans, novel
Industrial Designs, unique brands of commercial items, and Traditional Knowledge being practised
continuously over centuries for the production of goods (carpets, textiles, food products, etc.). In order to
understand the extensive field of IP, it has been divided into various categories. In India, these categories
include Patents, Copyright and Related Rights, Trademark, Trade Secrets, Industrial Designs,
Geographical Indications and Semiconductor Integrated Circuits Layout Designs. Each of these categories
is described in the following sections.

Patents
A patent is an exclusive right granted for an innovation that generally provides a new way of doing
something or offers a new technical solution to a problem. The exclusive right legally protects the
invention from being copied or reproduced by others. In return, the invention must be disclosed in an
application in a manner sufficiently clear and complete to enable it to be replicated by a person with an
ordinary level of skill in the relevant field.

Invention is the creation of a new idea or concept.

Innovation is the process of translating an invention into commercial entity or widespread use.

Conditions for Obtaining a Patent Protection

There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be fulfilled for
a product or a process to qualify for the grant of a patent. The criterion encompasses:
 Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application is new and
not known to anybody in the world. In other words, the innovation is
a) not in the knowledge of the public, b) not published anywhere through any means of publication and c)
not be claimed in any other specification by any other applicant.
 Inventive step - Not obvious to the person (s) skilled in the art.
The innovation is a) a technical advancement over the existing knowledge, b) possesses economic
significance and, c) not obvious to a person skilled in the concerned subject.
 Capable of industrial application - For the benefit of society.
The invention is capable of being made or used in any industry.

To Patent or Not to Patent an Invention

Once an invention has been developed, the inventor has to decide whether to exploit the invention for
personal benefits as provided by the statutory laws of the country or put it in the public domain. By and
large, the inventor prefers the former option. Only a miniscule of inventions are placed in the public
domain without claiming any benefits. In the latter case, anybody can exploit the innovation for
commercial or societal benefit without paying any money to the inventor.
If the owner of an invention wishes to seek monetary gains, he can choose from either of the two options,
i.e. patenting or Trade Secret. If the inventor is absolutely sure of maintaining the secrecy of invention
for a very long period (maybe 100 years or more) and the probability of reverse engineering of the
technology is nil or very low, then the ‘Trade Secret’ category is preferred. If the invention has a short life
span or can be kept secret only for a small period of time (a couple of years or so) or the probability of
reverse engineering is high once the invention is in the public domain, then the ‘patent’ category is
preferred.

Rights Associated with Patents

Dr. Andhe Pallavi, RNSIT

As per the Court of Law, a patent owner has the right to decide who may or may not use the patented
invention. In other words, the patent protection provided by the law states that the invention cannot be
commercially made, used, distributed, imported, or sold by others without the patent owner's consent. The
patent owner may permit other parties to use the invention on mutually agreed terms.
As a matter of fact, the patent rights are negative rights as the owner is restricting others from using the
patent in any manner without his prior permission. The patent holder may choose to sue the infringing
party to stop illegal use of the patent and also ask for compensation for the unauthorized use.

Enforcement of Patent Rights

Enforcement is the process of ensuring compliance with laws, regulations, rules, standards and social
norms. Patent rights are usually enforced by the judicial courts. The Court of Law has the authority to
stop patent infringement. However, the main responsibility for monitoring, identifying and taking action
against infringers of a patent lies with the patent owner.

Inventions Eligible for Patenting

Patents may be granted for inventions/technologies in any field, ranging from a paper clip or ballpoint pen
to a nanotechnology chip or a Harvard mouse (mouse with cancer genes).
It is a general belief that patents are awarded only to major scientific breakthroughs. But, it is not true. In
fact, the majority of patents are granted to inventions displaying an improvement over the existing
invention. For example, many patents can be awarded to a single molecule e.g. penicillins (an antibiotic
that kills microbes) and its derivatives. The derivatives are made by making subtle changes in the
structure of the penicillin resulting in new/improved properties, such as acid stability or temperature
stability or killing a wide range of microbes (germs). The new antibiotic molecules, known as second,
third or fourth generation penicillins can also be patented.
In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen, eyeglasses,
textiles, mobile phones, wrist watch, bicycle, scooter, car, television, cold drinks, beverages and many
more. It is not uncommon that many products contain several inventions (patents) e.g. the laptop
computer involves hundreds of inventions working together. Similarly, cars, mobile phones and
televisions have many patented components.

Non-Patentable Matters
In the ‘Patent Act, 1970’, there are some exclusions (product and processes) that cannot be patented, such
as:
 Invention contrary to public morality - a method for human cloning, a method for gambling.
 Mere discovery - finding a new micro-organism occurring freely in nature, laws of gravity.
 Mere discovery of a new form of a known substance - use of aspirin for heart treatment. Aspirin
was patented for reducing fever and mild pains.
 Frivolous invention - dough supplemented with herbs, merely changing the taste of the dough, 100
years calendar, bus timetable.
 Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to a bucket.
 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 - inventions relating to
compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as
notified by the Central Government from time to time.
 Literary, dramatic, musical, artistic work - books, sculptures, drawings, paintings, computer
programmes, mathematical calculations, online chatting method, method of teaching, method of learning
a language as they are the subject matter of Copyright Act. 1957.
 Topography of integrated circuits - protection of layout designs of integrated circuits is provided
separately under the Semiconductor Integrated Circuit Layout Designs Act, 2000.

Dr. Andhe Pallavi, RNSIT

 Plants and animals - plants and animals in whole or any part including seeds, varieties and species
and essentially biological processes for the production or propagation of plants and animals are excluded
from the scope of protection under patents.
 Traditional knowledge - an invention which in effect is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known components are also excluded.

Patent Infringements
Once the patent is granted to the applicant, he owns the right to use or exploit the invention in any
capacity. If anyone uses the invention without the prior permission of the owner, that act will be
considered an infringement of the invention. Infringements can be classified into two categories:
Direct Infringement - when a product is substantially close to any patented product or in a case where
the marketing or commercial use of the invention is carried out without the permission of the owner of the
invention.
Indirect Infringement - When some amount of deceit or accidental infringement happens without any
intention of infringement.
If such an unlawful act has been committed, the patentee holds the right to sue the infringer through
judicial intervention. Every country has certain laws to deal with such unlawful acts. Following
reliefs are made available to the patentee:
 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.
It is pertinent to mention that the Central government always holds the rights (Section 100 of the Patent
Act, 1970, Rule 32 of the Patent Rules, 2003) to use the invention in the case of national emergency or
other circumstances of extreme urgency after notifying the owner.

Avoid Public Disclosure of an Invention before Patenting

Generally, an invention that has been either published or publicly displayed cannot be patented, as the
claimed invention will lose the ‘Novelty’ criterion. However, under certain circumstances, the Patents Act
provides a grace period of 12 months for filing a patent application from the date of its publication in a
journal or presentation in a reputed scientific society or exhibition.
Sometimes, disclosure of an invention before filing a patent application is unavoidable, e.g. selling your
invention to a potential investor or a business partner who would like to know complete details of the
invention in order to judge its commercial value. In such a case, it is advisable to sign a Non-Disclosure
Agreement (NDA) or any other confidential agreement to safeguards your interest.

Dr. Andhe Pallavi, RNSIT

Process of Patenting
In India, the process of grant of a patent is a lengthy procedure that may take anywhere 3-4 years or more.
The major steps involved in this process are listed in figure 2.1.

Figure 2.1: Flow chart of major steps involved in the grant of a patent

Prior Art Search - Before an inventor embarks upon the patent filing process, he has to ensure that his
invention is ‘novel’ as per the criterion for the grant of a patent. For this, he has to check whether or not
his invention already exists in the public domain. For this, he needs to read patent documents and Non-
Patent Literature(NPL), scientific journals/reports/magazines, etc. The information lying in the public
domain in any form, either before the filing of the patent application or the priority date of the patent
application claiming the invention, is termed as Prior Art.
Conducting a prior art search before filing the patent has advantages as it averts infringement, tracks
research and development and provides access to detailed information on the invention. The prior art
search is carried out on the parameters such as novelty, patentability, state of the art, infringement,
validity and freedom to operate. The commonly used databases for prior art search fall in two categories
i.e. Patents Databases and NPL.

Patents’ Databases

Dr. Andhe Pallavi, RNSIT

Although, majority of NPL data is available freely on the public forum, some of the journals are paid and
can be accessed after paying the subscription. Major Patent Offices such as the United States Patent and
Trademark Office's (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), etc. are
maintaining inhouse NPL databases to make patents examination more effective.

Choice of Application to be Filed - Once a decision has been made to patent the invention, the next step
is, what kind of application needs to be filed i.e. provisional patent application or complete (Final) patent
application - generally, the provisional patent application is preferred for the following reasons:
 It is cheaper, takes less time, and involves fewer formalities.
 Any improvements made in the invention after the filing of the provisional application can be included
in the final application. In other words, the provisional application does not require complete
specifications of the inventions. The application can be filed even though some data is yet to be collected
from pending experiments.
 A provisional application allows you to secure a priority date for the patent applied.
However, it is mandatory to file the complete patent application within one year of the filing of the
provisional application; otherwise, the application stands rejected.

Patent Application Forms

As per the Patent Act, 1970 (Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and subrule(1) of
rule 20, the application for the grant of patent is filed using Form-1 (Fig. 2.2) and Form-2 (Fig. 2.3). The
information sought in Form-1 is general in nature i.e. Title of Application, Names of Applicant(s) and
Inventor(s), Type of Application (Ordinary, Convention, PCT-NP (PCT- National Phase), Divisional,
Patent of Addition, etc.).
Whereas Form-2 seeks technical information and whether to file the provisional application or complete
the application. For ‘Provisional Application‘, only ‘Description of the Invention’ and the ‘Abstract’ is to
be furnished.
Whereas, ‘Complete Application’ requires ‘Description of the Invention’, ‘Abstract’, ‘Claims’ and the
manner in which invention has to be performed.
The ‘Claims’ of the patent are a very crucial part of the specifications because they define the actual
boundary of the invention.
‘Claims’ specify what is actually claimed by the invention and what is being sought to be protected. It
clearly describes what the patent does and does not cover. The Claims are usually expressed as a
declaration of technical particulars articulated in legal terms. Claims can be classified into two types a)

Dr. Andhe Pallavi, RNSIT

Independent Claims (stand alone claim) and b) Dependent Claims (dependent on independent claim).
The Claims must be drafted precisely and carefully in order to seek patent protection and also to protect
the invention against potential infringers.
Below mentioned are two important forms Form-1 and Form-2 for filing the patent application
(http://www.ip india.nic.in/writereaddata/Portal/IPORule/1_10_1_patents-amend ments-rules-2005.pdf).

Dr. Andhe Pallavi, RNSIT

Dr. Andhe Pallavi, RNSIT
Dr. Andhe Pallavi, RNSIT
Dr. Andhe Pallavi, RNSIT
Jurisdiction of Filing Patent Application - India has four offices for filing patent applications (Table 2.1).
The applications can be filed only in one of the offices based on the applicant‘s residence or domicile or
place of business or origin of the invention.
These are termed as jurisdictions to file patents.
For a foreign applicant, the address for service in India or place of business of his patent agent determines
the appropriate Patent Office for filing a patent application. In the case of joint applications, all the
applicants are bestowed with equal rights and consideration.

Publication - Once the patent application has been filed at the Regional Patent Office, the patent
application is kept secret for 18 months in the Patent Office. After the expiry of 18 months (from the date
of filing of the application or the priority claimed date, whichever is earlier), the application is published
in the Official Journal of Patent Office (http://www.ipindia.nic.in/journalpatents.htm).
The purpose of publishing the application is to inform the public about the invention.
The publication of an application is a mandatory step.

Dr. Andhe Pallavi, RNSIT

 Pre-grant Opposition - If anybody has an objection to the invention claimed in the patent application, he
can challenge the application by approaching the Controller of Patents within 6 months from the date of
publication. It is termed as Pre-grant Opposition. Depending on the outcome of the case, the patent
application may be rejected or recommended for the next step, i.e. patent examination.

Although the patent application is kept secret for 18 months, but under special circumstances, this period
can be reduced when the patentee/applicant plans to sell or license the patent or seek an investor). For this,
the applicant has to fill a Form-9 and submit it to the Controller General.

Patentee: A person/ Organization who owns the patent (granted)

Examination - Patent examination is a critical step in the process of grant of a patent. All the important
criteria (novel, inventive step, etc.) are scrutinized by the professionals depending on the content of the
invention. Usually, the examiner raises certain queries/doubts which need to be addressed by the
inventors. Once the examiner is satisfied with the answers received from the inventors, the application is
recommended for the grant of a patent.
It is pertinent to mention that a patent application is not examined automatically after clearing the
publication stage. The applicant or his representative has to make a request for examination of the patent
by filing Form-18A and submitting the same within 48 months from the date of filing of the application.

Grant of a Patent - After fulfilling all the requirements for the grant of a patent, including all
objections/queries raised by the ‘Patent Examiner’ and the public at large, the patent is granted to the
applicant. The granted patent is published in the Official Journal of the Patent Office. This journal is
published every Friday and contains information related to patent applications published under section
(u/s) 11A, post-grant publication, restoration of patent, notifications, list of non-working patents and
public notices issued by the Patent Office.

Dr. Andhe Pallavi, RNSIT

Figure: Flowchart for the process of filing a patent application

Validity of Patent Protection - The patent protection is granted to an applicant for a limited period,
generally 20 years, starting from the date of filing of the application. Once a patent is granted for an
invention in India, the next vital step is to ensure that it is renewed annually by paying Patent Renewal
Fee as per Section 53, Rule 80 of the Indian Patents Act, till the expiry of the patent grant period. Non-
payment of Patent Renewal Fee might result in the cancellation of the patent.
In some countries, patent protection may be extended beyond 20 years. The extension aims to compensate
for the time expended on the administrative approval procedure before products can be put on the market.
The time taken for this procedure means that the patent owner may sometimes not be able to benefit from
his right for a considerable period after the grant of the patent.
Post-grant Opposition - Once the patent has been granted by the Patent Office, it still can be challenged
by anyone within one year from the date of publication of the grant of the patent. The granted patent can
be challenged either via a Patent Office or in a Court of Law. These bodies may invalidate or revoke a
patent upon a successful challenge by the interested party on the grounds mentioned below:
 The applicant for the patent wrongfully obtained the invention or any part of the invention.
 The invention claimed has been published before the priority date.

Dr. Andhe Pallavi, RNSIT

 The invention claimed was publicly known/used before the priority date.
 The invention claimed is obvious and does not involve an inventive step.
 The subject of the claim is not patentable as per Chapter II of the Patent Act, 1970.
 The details/specifications of the invention do not sufficiently and clearly describe the invention.

Commercialization of a Patent
The patent owner may grant permission to an individual/organization/industry to make, use, and sell his
patented invention. This takes place according to agreed terms and conditions between the involving
parties. A patent owner may grant a license to a third party for the reasons mentioned below:
 The patent owner has a decent job e.g. university professor and has no desire or aptitude to exploit the
patent on his own.
 The patent owner may not have the necessary manufacturing facilities.
 The manufacturing facility is not able to meet the market demand.
 The patent owner wishes to concentrate on one geographic market; for other geographical markets, he
may choose to license the patent rights.
Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the exclusive
rights to use the patented invention. Only the patentee has the right to licence or deal with the patent for
any deliberations. Although, the validity of the granted patent is for 20 years (from the date of filing a
patent application), but the patentee is required to furnish information (Form-27), on an annual basis
relating to the commercialization/selling of the patent.
It is called as ‘Working/Licensing of the Patent’. The licensing of a patent can be exclusive or non-
exclusive. In an Exclusive Licence, the patent is sold to only one individual/organization for a fixed
time period. During this time period, no other person or entity can exploit the relevant IP except the
named licensee. In Non-Exclusive Licence, a patentee can sell his patent rights to as many
individuals/parties as he likes.
If the patentee is not able to commercialize his patent within three years from the date of the grant of a
patent, any person may submit an application to the Controller of Patents for grant of Compulsory
Licensing (of the patent), subject to the fulfilment of following conditions:
 Reasonable requirements of the public concerning the patented invention have not been satisfied.
 The patented invention is not available to the public at a reasonable price.
 The patented invention is not worked in the territory of India.

Need for a Patent Attorney/Agent

In general, applicants can prepare their patent applications and file them without assistance from a patent
attorney. However, given the complexity of patent documents, it is advisable to seek legal assistance from
a patent attorney/agent when drafting a patent application. Furthermore, the legislation of many countries
requires that an applicant, whose ordinary residence or principal place of business is outside the country,
be represented by an attorney or agent qualified in the country (which usually means an agent or attorney
who resides and practices in that country).

Can a Worldwide Patent be Obtained

There is no such term as ‘Universal Patent’ or ‘World Patent’ or ‘International Patent’ as the patent rights
are territorial. An application for a patent must be filed with a Patent Office of the country in which one
wishes to seek patent protection.
Unfortunately, this option becomes laborious, cumbersome, time consuming and expensive if one wishes
to file a patent application in many countries. To ease out this issue, many Regional Offices have been
established which receive patent applications on behalf of a group of nations e.g. European Patent Office

Dr. Andhe Pallavi, RNSIT

and African Regional Intellectual Property Organization. A single application is sufficient to cover many
nations that are members of a particular regional office/organization. However, if one wishes to seek
patent protection in several countries worldwide, it is preferred to file an international patent under the
Patent Cooperation Treaty (PCT). The only condition is that the applicant’s country should be a member
of PCT. India, along with over 190 nations, is a member of PCT.

Do I Need First to File a Patent in India

Yes, in general, Indian residents are required to file the patent application first in India. Subsequently,
they may file for patent protection in other countries. But for this, prior approval is needed from the
Patent Office. However, this approval can be waived off under the following circumstances:
 The applicant is not an Indian resident.
 If 6 weeks have expired since the patent application was filed in India by an Indian resident.
 If two or more inventors are working on an invention in a foreign country and one of the inventors is
an Indian resident. The invention does not have a potential market in India and hence does not wish to file
the patent in India. In such a scenario, the Indian resident has to seek Foreign Filing Permission (FFP)
from an Indian Patent Office.
 In case of international collaboration, if one part of the invention originated in India and the inventor is
an Indian resident, he has to seek permission to file the patent outside India.
 If the invention is related to defense or atomic energy or utility model, the inventor/s needs to seek
permission from the Indian Patent Office because inventions related to these domains are not the subject
matter of patentability in India.

Patent Related Forms

There are over 30 patent-related forms. Some of them are mentioned below.
Table 2.2: List of important patent application forms.

Form No. Title of Form

1 Application for a grant of a patent
2 Provisional/Complete specifications
7 Notice of opposition on grant of a patent
7A For filing a representation opposing grant of a patent
17 Application for compulsory license
18 Request for examination of the application for patent
21 Request for termination of compulsory license
22 Application for registration of patent agent
27 Statement regarding the working of the patented invention on a commercial scale in India
30 Miscellaneous form to be used when no other form is prescribed

Fee Structure
As per the patent Act, 1970 and The Patents Rules (1972), the requisite fee has been specified based on
the type of form/s to be submitted to the Office (Table 2.3). Electronically filed applications are 10%
cheaper than physical filing.

Dr. Andhe Pallavi, RNSIT

Table: Fee for obtaining a patent via electronic filing

Types of Patent Applications

 Provisional Application - A patent application filed when the invention is not fully finalized and
some part of the invention is still under experimentation. Such type of application helps to obtain the
priority date for the invention.
 Ordinary Application - A patent application filed with complete specifications and claims but
without claiming any priority date.
 PCT Application - An international application filed in accordance with PCT. A single application
can be filed to seek patent protection and claim priority in all the member countries of PCT.
 Divisional Application - When an application claims more than one invention, the applicant on his
own or to meet the official objection on the ground of plurality may divide the application and file two or
more applications. This application divided out of the parent one is known as a Divisional Application.
The priority date for all the divisional applications will be the same as that of the main (the Parent)
Application (Ante-dating).
 Patent of Addition Application - When an invention is a slight modification of the earlier invention
for which the patentee has already applied for or has obtained a patent, the applicant can go for ‘Patent of
Addition’, if the modification in the invention is new. Benefit - There is no need to pay a separate renewal
fee for the ‘Patent of Addition’, during the term of the main patent. It expires along with the main patent.
 Convention Application - If a patent application has been filed in the Indian Patent Office, and the
applicant wishes to file the same invention in the one or more Convention countries (e.g. Paris
Convention) by claiming the same priority date on which application was filed in India, such an

Dr. Andhe Pallavi, RNSIT

application is known as Convention Application. The applicant has to file Convention Application within
12 months from the date of filing in India to claim the same priority date.

Commonly Used Terms in Patenting

There are certain terms that are commonly used in the field of patenting, as listed in table 2.4.
Table 2.4: Commonly used terms in the domain of patenting

Dr. Andhe Pallavi, RNSIT

National Bodies Dealing with Patent Affairs
There are many departments/organizations/bodies dealing with various aspects of patents, namely, the
Indian Patent Office (IPO), Department for Promotion for Industry and Internal Trade (DPIIT);
Technology Information, Forecasting and Assessment Council (TIFAC) and National Research
Development Corporation (NRDC). Above mentioned organizations are discussed in detail in chapter 5

Utility Models
In many cases, a new invention involves an incremental improvement over the existing products, but this
technical improvement is not sufficient enough to pass the stringent criterion of ‘Novelty’ and ‘Non-
obviousness’ set aside for the grant of a patent. Such small innovations can still be legally protected in
some countries and termed as ‘Utility Models’ or ‘Petty Patents’ or ‘Innovation Patents’. In this case,
the criterion of ‘Novelty’ and ‘Non-obviousness’ are diluted or relinquished. But the requirement of
industrial application or utility is the same as that for patents.
Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since the grant of a
‘Utility Model’ is usually less rigorous and involves minimal cost. MSMEs do not have deep pockets to
carry out intensive R&D leading to the grant of patents.
But their innovations are good enough for improving their products/processes and bringing more financial
rewards. Such inventions pass the requirements set aside for Utility Models but not for patents. The life of
the Utility Model is less as compared to the patents. It varies from 7-15 years in different countries.
Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland, Russian Federation
and Spain, provide protection for Utility Models under their IPR laws. India till date does not recognize
utility patents. If these small patents are recognised under IP protection in India, it will catapult the
number of patents (filed and granted) on annual basis.

Additional Information
 The patent system in India is governed by the Patents Act, 1970 (No.39 of 1970) as amended by the
Patents (Amendment) Act, 42 2005 and the Patents Rules, 2003. The Patent Rules are regularly amended
in accordance with the changing environment, the most recent being in 2020.
 First patent filed in India - On 3rd March 1856, a civil engineer and inventor named George Alfred
DePenning of Calcutta, India, filed the first petition for grant of Exclusive Privileges (term used for
patents at that time) under this Act for his invention called ‘An Efficient Punkah-Pulling Machine’.
This patent was also first ever granted in India.
 As per the Budapest Treaty (1977), microorganisms, which are a part of the patent disclosure
procedure, must be deposited with units of the International Depositary Authority (IDA).

Dr. Andhe Pallavi, RNSIT

Patents that have changed the world:
 Patent number: US 223 898. Edison’s electric bulb (1880).
 The telephone (US 174 465): The first telephone was invented and patented by Alexander Graham
Bell in 1876. Bell went on to cofound the American Telephone & Telegraph Company (AT&T). Later,
the company expanded to control all telecommunications and became the world‘s most significant
industry.
 Maximum number of patents (9700) have been granted to a Japanese Shunpei Yamazaki in a span
of 49 years (1972 December, 2020) at the rate of 196 patents per year.
 Maximum number of Patents (1299) granted to a person of Indian origin is Gurtej Sandhu in a
span of 30 years (1991December - 2020) at the rate of 43 patents per year.

Patent Status (India): The number of patent applications filed in India is considerably low vis a vis
many countries. However, during 10 years period (2010-20) an increase of nearly 30% and 86% was
observed in the number of patent applications filed and examined respectively (Fig. 2.5). In case of
patents granted, data of first three years (2010-13) showed a dip in the numbers followed by a significant
rise (nearly six folds) in the ensuing years (2013-20). It could be attributed to the increase in the number
of patent applications processed as the government hired more patent examiners. The number of patent
examined rose to 80,088 in 2019-20 as compared to 11,208 in 2010-11.

Dr. Andhe Pallavi, RNSIT