UNIR-V

RM & IPR
 New Developments in IPR
Syllabus
• Administration of Patent System
• New Developments in IPR
• IPR of Biological Systems, Computer Software,
etc.
• Traditional knowledge
• Case Studies
• IPR and IITs
 Administration of Patent System
The Patent System

• Patent
A contract between the inventor or applicant for the patent and the
State, whereby the inventor or applicant gets a monopoly from the
state for a certain period in return for disclosing full details of the
invention

• Patent System
Ensures that information on new inventions is made available for
eventual public use so as to encourage technical and economic
development

• Necessity of Patent
To enjoy the exclusive rights over the invention
If the inventor does not get the patent rights over his invention and
introduce his product/ process based on his invention in the
market, any body can copy his invention and exploits it commercialy
 Patent Acts in India
Year Event
1856 Act for protection of inventions on the basis of British law of 1852
1859 Patent monopolies called exclusive privileges
1872 Patents and Designs Act
1883 Protection of Inventions Act 1888 Inventions and Designs Act 1911-1947
Modern patent era by Patents and Designs Act. First time an authority
call Controller General of Patents appointed
1959 Justice Ayyangar’s report
1967 Patent Act bill introduced in the Parliament
1970 The Patents Act passed by the parliament
1972 The Patents Act-1970 came into force on April 20, 1972
1994 Amendment by ordinance to include Exclusive Marketing Rights (EMR’s)

1999 Amendment passed by the parliament. New patent amendment bill

referred to select committee
2003- 2005 Patents Act 1970 with second amendment comes into force Patent Act
1970 (2005 Amendment) comes in to force from 1-1-2005
 What to Patent
(Patent Subject Matter)
Suitability of patenting an invention should be
• Related to a process or product or both
• Novelty – not disclosed to the public at the time
that the patent application was made
• An inventive step - involving a technical
advancement and an economic significance and
also makes the invention not obvious to a person
skilled in the art
• Capable of industrial application
 Patent Subject Matter (Cont.)
Not fall under section 3 and 4 :
1) Frivolous Inventions:
Inventions contrary to well established natural laws.
[Section 3(a)] e.g. 100% efficiency machine
2) Commercial exploitation :
Primary use of inventions which is contrary to public order or
morality. [Section 3(b)] e.g. gambling machine

3) Mere Discovery of a Scientific Principle or formulation of an

Abstract Theory or discovery of any living thing or discovery of non–
living substance occurring in nature [Section 3(c)]

4) Mere arrangement or re-arrangement or duplication of known

devices, each functioning independently of one another in a known
way [Section3(d)] e.g. A bucket fitted with torch

5) Inventions falling within Section 20(1) of the Atomic Energy Act, 1962
are not patentable [Section 4]
 Types of Patent Applications
Ordinary Patent Application
A simple application for patent without any priority claim and not
being convention or National Phase Application

Convention Application
An applicant who files an application for patent in a convention
country can make convention application in India within 12 months
from the date of basic application

PCT- International Application

The Patent Cooperation Treaty or PCT is an international agreement
for filing patent applications
It does not provide for the grant of an international patent, it simply
provides a streamlined process for the patent application process
in many countries at the same time
 Types of Patent Applications (cont.)
National Phase Application under PCT
The PCT-national phase must follow the international phase. The
applicant must individually 'enter into the national phase'. i.e. file a
National phase application in each county he wishes to enter.

If the applicant does not enter the national phase within the
prescribed time limit, the International Application loses its effect in
the designated or elected States

Patent of Addition
Patent of addition is an application made for a patent in respect of
any improvement or modification of an invention described or
disclosed in the complete specification already applied for or has a
patent
 Types of Patent Applications (cont.)
Divisional Application
A divisional application is one which has been
"divided" from an existing application

The applicant, at any time before the grant of a patent,

can file a further application on the ground that the
claims disclosed in the complete specification relates to
more than one invention

A divisional application is useful if a unity of invention

objection is issued, in which case the second invention
can be protected as a divisional application
STAGES - FILING TO GRANT OF PATENT
 Steps in detail
Filing a patent
File an application for patent with one of the patent offices based on
territorial jurisdiction of the place of office or residence of the applicant
/agent
Pay the required fee
Information concerning application form and details of fee available at
www.ipindia.nic.in

Formality Check
An Examiner immediately checks the formal requirements before
accepting the application and the fee
Issue of application number and the cash receipt is done on the same day

Publication
Application is kept secret for a period of 18 months from the date of filing
In 19th month, the application is published in the official journal – this
journal is made available on the website weekly
Applicant has an option to get his application published before 18 months
also on request
 Steps in detail (contd.)
Request for Examination
Application is examined on request
Request for examination can be made by the applicant/by a third party
A period of 48 months, from the date of filing, is available for making
request for Examination

Examination
Application is sent to an Examiner within 1 month from the date of
request for examination
Examiner undertakes examination w.r.t.
– whether the claimed invention is not prohibited for grant of patent
– whether the invention meets the criteria of Patentability

Issue of FER
A period of 1 to 3 months is available to Examiner to submit the report to
the Controller
One month’s time available to Controller to vet the Examiner’s report
First Examination Report (FER) containing gist of the objections is issued
within 6 months from the date of filing of request
 Steps in detail (contd.)
Response from the Applicant
12 months’ time, from the date of issue of FER, is
available to the applicant to meet the objections
If objections are met, grant of patent is approved by
the Controller – within a periodof 1 month

Pre-grant Opposition
After publication, an opposition can be filed within a
period of 6 months
Opportunity of hearing the opponent is also available

Examination of Pre-grant Opposition

Opposition (documents) is sent to the applicant
A period of 3 months is allowed for receipt of response
 Steps in detail (contd.)
Consideration of Pre-grant Opposition
After examining the opposition and the submissions made during the
hearing, Controller may
– Either reject the opposition and grant the patent
– Or accept the opposition and modify/reject the patent application

Grant of a Patent
A certificate of patent is issued within 7 days
Grant of patent is published in the official journal

Renewal Fee
To be paid within 36 months from date of recording in the register
[sec 142 (4) ]
No fee for 1st and 2nd year
Renewal fee, on yearly basis, is required to be paid for 3rd to 20th for
keeping the patent in force
Delay up to six months from due date permissible on payment of fee for
extension of time
Patent lapses if renewal fee is not paid within the prescribed period
NEW DEVELOPMENTS OF INTELLECTUAL PROPERTY
NEW DEVELOPMENT IN TRADE MARKS LAW

The Internet

Trademark owners are struggling with new issues presented by increased

electronic communication, primarily that occurring through the Internet

The Internet derives from a network set up in the 1970s by the DoD to
connect military and research sites that could continue to communicate
even in the event of nuclear attract

In the 1980s, the National Science Foundation expanded on the system,

and its first significant users were government agencies and universities

In the early1990s, however, it became apparent that the system could

provide a global communication network, allowing people from all over
the world to talk with each other; send written messages, pictures, and
text to each other; and establish web pages to advertise their ware and
provide information to their customers.
NEW DEVELOPMENT IN TRADE MARKS LAW (cont.)
Assignment of Domain Names

A company’s presence on the internet begins with its address or

domain name not only serves as a locator for a company but also
functions as a designation of origin and a symbol of goodwill---a
trademark.

There are two portions to a domain name: the generic top-level

domain, which is the portion of the name to the right of a period
(such as .gov or .com) and the secondary level domain, which is the
portion of the name to the left of a period (such as “kraft” in
Kraft.com”).

Disputes frequently arise between owners of registered mark and

owners of domain names whose domain names similar or identical
to the registered marks
NEW DEVELOPMENT IN TRADE MARKS LAW (cont.)
Internet Corporation for Assigned Names and Numbers [ICANN]:

To help resolve the problems in the domain names registration and use process

The government created the ICANN

It is a non-profit corporation

Governed by a board of directors elected in part by the Internet community

ICANN are authorized to register domain names ending with .com, .org and .net

Registrations usually last one year, at which time they can be removed/will expire.

Registration requires a representation that the person seeing to register the name
is not doing so far an unlawful purpose and does not know of any infringement

ICANN recently added seven new top-level domains, including .biz and .info
 NEW DEVELOPMENT IN TRADE MARKS LAW (cont.)
PROTECTING A DOMAIN NAME

People register well-known marks as domain names to prey on consumer confusion by misusing the
domain name to divert customers from the legitimate mark owner’s site. This practice is commonly called
cyber squatting

There are three approaches for against cyber squatter

An action can be brought under the Federal Trademark dilution Act
A civil suit can be instituted under the recent Anti cyber squatting consumer protection Act, or
An arbitration proceeding can be instituted through ICANN’s disputes resolutions process

Cyber squatter and the dilution doctrine: Federal trademark dilution Act (15 U.S.C § 1125 (C)

Cyber squatters and Anti cyber squatting consumer protection Act (15 U.S.C § 1125 (d)
[ACPA: Anti cyber squatting consumer Protection Act]
To prevail in a civil action under ACPA, a plaintiff must prove three thing:
1. The plaintiff’s mark is a distinctive or famous mark deserving of protection
2. The alleged cyber squatter’s infringing domain name is identical to or confusingly similar to the
plaintiff mark
3. The cyber squatter registered the domain name is bad faith

Resolving Disputes through the Uniform Domain Name Dispute Resolution Policy: [UDRP] 1999
The allegedly wrongful domain name is identical or confusingly similar to the complainants’ trademark;
The domain name registrant has no legitimate interest in the domain name and
The domain name is being used in bad faith
 NEW DEVELOPMENT IN COPYRIGHT LAW
Clothing, not subject to copyright protection, a New York Federal court ruled that lace
design, copyrighted as writing and incorporated into wedding dresses, were
protectable and enjoined another maker of wedding dresses from making or
marketing copies. Similarly, detailed embroiders or some other two dimensional
drawing or graphic work affixed to a portion of a garment may be copyrightable

A federal court in California recently held that while type fonts themselves are not
protectable under copyright law, a software program that generated and created
the typefaces was protectable

As soon as Stephen King sold his book riding the Bullet exclusively in an Internet format,
an individual cracked the copyright protection software and posted free copies of the
book on the Internet. The publishers responded by adopting stronger encryption
technology. Similarly, in 2000, Mr. King suspended online publication of a serial novel
because too many individuals were downloading the work without paying it

It late 1997 President Clinton signed into law the No Electronic Theft [NET] Act
[amending 18 U.S.C §2319] to enhance criminal penalties for copyright infringement,
even if the infringer does not profit from the transaction. It also extends the statutes of
limitations for criminal copyright infringement from three to five years, and allows law
enforcement officers to use federal copyright law against online copyright violation,
thereby extending the same copyright protection to the Internet that is provided to
other media
 NEW DEVELOPMENT IN COPYRIGHT LAW (cont.)
In September 1999, the Clinton administration relaxed government
restrictions on the export of encryption products and simultaneously
introduced new legislation to give law enforcement agencies greater
authority to combat the use of computers by terrorists and criminals
and to create a new code cracking unit within the FBI [Foreign Bureau
of Investigation]

In mid-2000, president Clinton signed the Electronic signatures in Global

and National Commerce Act, making digital execution, called e-
signatures, as legally binding as their paper counterparts

In 2000, federal prosecutors in Chicago indicted seventeen people who

called themselves “Pirates with Attitude” for pirating thousands of
software program. The case was brought under the NET Act. Some
of the individuals were former employees of Intel and Microsoft

The copyright office has recommended that congress amend section

110 of the copyright Act to grant educators the right to transmit
copyrighted works for distance learning if certain conditions are met
 NEW DEVELOPMENT IN PATENT LAW
The patent Act has proven remarkably flexible in accommodating change
and development in technology, thus advisement in technology generally
has not necessitated changes in the stately governing patent protection

Business method and software patent

Many of the cutting-edge issues in patent law related to patents for
computer software. For several years, the conventional wisdom has
been that unless a computer program had significant commercial value
and application patent protection was often counterproductive or
ineffective in that the PTO often took two years to issue a patent, roughly
the same time it took for the software program to become absolute

Biotechnology patent
Medicines, Science, agricultural and pharmacology present the other
cutting-edge issues in patent law. Research into genes may hold the key
to curing disease throughout the world. Agricultural research may hold the
key to providing sufficient food for the world’s ever- increasing population

The development of strains of plants and crops that are resistant to

brought and disease has also led to an increasing number of patents
issued, and attendant litigation. In the field of “agbiotech”
 NEW DEVELOPMENT IN PATENT LAW (cont.)
American Investors Protection Act of 1999 [AIPA]:
The AIPA was signed into law in 1999 and represents the most significant changes to patent law in
twenty years. Although some of the provisions of AIPA have been discussed earlier, its key
subtitles are as follows
Inventors’ Right Act of 1999
The First Inventor Defense Act of 1999
The patent term guarantee act of 1999
The domestic publication of Foreign filed patent application act of 1999
The optional Inter parts reexamination procedure Act of 1999

Introduction of International Patent protection:

The rights granted by a U.S Patent extend only throughout the U.S and have no effect in a foreign
country. Therefore, an inventor who desires patent protection in other countries must apply for a
patent in each of the other countries or in regional patent office
The Paris convention (already it is in previous units)
The European patent organization
Agreement on Trade-Related Aspects of IPR (already it is in previous units)
The patent Law Treaty
Foreign Filling Licenses
Applications for United States Patents by Foreign applicants

The European patent organization:

The European Patent Organization (EPO) was founded in 1973 to provide a uniform patent system
in Europe. A European patent can be obtained by filing a single application with the EPO
headquartered in Munich (or its subbranches in The Hague or Berlin or with the national offices in
the contracting nations). Once granted, the patent in valid in any of the EPO countries designated
in the application and has the same force as patent granted in any one of the contracting nations