RESEARCH METHODOLOGY &

INTELLECTUAL PROPERTY RIGHTS (IPR)

MODULE -3
Introduction to Intellectual
Property: Patents & Process of
Patenting
 Module 3
Introduction to Intellectual Property: Patents & Process of Patenting

Introduction to Intellectual Property

1.1 Intellectual Property (IP): There are many ways to describe IP as follows

 Intellectual Property (IP) is a special category of property created by

human intellect (mind) in arts, literature, science, trade, etc.
 IP is something produced using the human mind that has commercial value.
 It also refers to creations of the mind, such as inventions; literary and
artistic works; designs; and symbols, names and images used in commerce.
 Intellectual Property (IP) is a property that arises from the human intellect. It
is a product of human creation.
 IP is a novel creation of the mind, it is intangible (i.e. invisible and indivisible)
in nature and differs from tangible property, such as land, house, car etc.

Intellectual Property Rights (IPR): It can be defined in multiple ways as follows

 The term “Intellectual Property Right” refers to the legal rights granted to
protect the creations of the mind or intellect. The creations have both moral
and commercial value.
 Intellectual Property Rights (IPR) refer to legal rights granted to individuals
or entities for their creations or inventions, which are typically intangible.
 Intellectual Property Rights (IPR) are the privileges granted to the creator
/inventor (of IP) in conformance with the laws.

Importance of IPR
 The inventor is conferred with the special rights to use, sell, distribute, offer
for sale and restrict others from using the invention without his prior
permission.
 IPR aims to exclude third parties from exploiting the protected subject matter
for a certain period (normally 20 years), without explicit authorization from
the right holders.
 IPR owners can use or disclose their creations without fear of loss of control
over their usage during the dissemination of their creation/invention.
Types of Intellectual Property (IP): IP is often divided into TWO main branches

1. Copyrights and Related Rights: These rights refer to the creative

expressions in the fields of literature and art, such as books, publications,
architecture, music wood /stone carvings, pictures, portraits, sculptures,
films and computer-based software/databases.
2. Industrial Property Rights: The Industrial Property Rights refer to
the Patents, Trademarks, Trade Services, Industrial Designs and
Geographical Indications.

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

 The economic and social development of a society of any nation is largely
dependent on creativity.
 The protection provided by the IPR to the creators/innovators is an act of reward
for encouraging them to create more and motivates others to create new and
novel things.
 Property (IP) plays a crucial role in the cultural development of society by
providing a framework for protecting and rewarding cultural expressions.
 If IPRs are followed too strictly, it can harm society's progress. For example,
the implementation of the Trade-Related Aspects of Intellectual Property Rights
(TRIPS) Agreement has affected the farming community adversely.
 The farmers are unable to store seeds for the next crop as multinational
companies regulate the seed prices, which is usually unaffordable for a vast
majority of farmers. To solve the negative impact of IPR, certain laws,
exceptions & limitations associated with IPR have been enacted to maintain a
balance between the interests of the creators/inventors and the community.
 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 favor of compulsory licensing by the
government during an emergency or a natural calamity.
 If an invention is not in the interest of society, it is not granted IP rights. For
example, the cloning of human embryos and the creation of super microbial
pathogens are banned from IP protection.
 India has abundant biodiversity and genetic resources, known as Traditional
 Knowledge. Initiatives like "Make in India" and "Atmanirbhar Bharat" support
local brands, and easy processes for patents and trademarks are available to
benefit from these resources.

IP Governance: IP is an integral component of human society, every nation has

dedicated agencies for laying out the guidelines, implementation and enforcement
of IP-related matters.

In India:
1. Department for Promotion of Industry & Internal Trade (DPIIT): It is a
department under the Ministry of Commerce and Industry in India. Its
role in the formulation and implementation of industrial policy and
promotion measures to foster overall economic growth in the country.
Some of the primary functions and responsibilities of DPIIT include
a. Intellectual Property Rights (IPR) Promotion.
b. Formulation and Implementation of Industrial Policy.
c. Promotion of Make in India Initiative.
d. Start-up Ecosystem Promotion.
e. Monitoring and Implementation of Industrial Schemes, etc.

2. Technology Information Forecasting and Assessment Council

(TIFAC): It is an autonomous organization under the Department of
Science and Technology (DST) in India. It assesses the state-of-the-art
technology and sets directions for future technological development in
India in important socio-economic sectors.
3. National Research Development Corporation (NRDC): It is a
government- owned enterprise in India established with the primary
objective of promoting, developing, and commercializing technologies
and IP that come out from various research & development institutions,
universities and industrial establishments.
4. Cell for IPR Promotion and Management (CIPAM): It assists in
simplifying and streamlining IP processes, apart from undertaking steps
for accelerating IPR awareness, commercialization and enforcement.
  At International level:
o World Intellectual Property Organization (WIPO): The United
Nations (UN) has established this organization to govern international
filing and registration of IP through various Conventions and Treaties
like the Paris Conventions, Patent Cooperation Treaty (PCT), Rome
Convention, Berne Convention, etc.

IP as a Global Indicator of Innovation: IP, especially patents, is considered

one of the important parameters in assessing the innovation index of a nation.
For example, the 2020 report of Scopus ranked India in 4th position in
Research Publications and 50th position in Intellectual Property Rights. The
teaching and scientific communities need to be educated on the importance of
IP and infrastructure needs to be created in institutes of higher learning to
improve global ranking.

History of IP in India: *** The main branches of IP are

1. Patents
2. Copyrights and Related Rights
3. Trademarks
4. Geographical Indications
5. Trade Secrets
6. Semiconductor Integrated Circuits and Layout Designs
7. Plant Varieties
8. Traditional Knowledge
9. Industrial Designs
10. Biodiversity Conservation
1. Patents
o The first legislation in India relating to patents was the Act VI of 1856. The
objective of this legislation was to encourage the invention of new and
useful manufactures and to induce inventors to disclose the secrets of their
inventions.
o In India, the first patent was awarded in 1856 to a civil engineer, George
Alfred DePenning from Calcutta, for his invention, ‘An Efficient Punkah
Pulling Machine’.
o The Patterns and Designs Protection Act of 1872 includes the provision of
protection for Novelty in the invention.
o Introduce the Indian Patents and Designs Act, 1911‘(Act II of 1911). As per
this Act, the governance of patents was placed under the management of
the Controller of Patents. 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 applying.
o A committee chaired by Justice Bakshi Tek Chand was formed in 1949 to
review the benefits of the patent system. The committee submitted the
following recommendations.
- Misuse of patent rights needs to be prevented.
- The food, medicine, surgical and curative devices should be made available
to the masses at the cheapest rate by providing reasonable compensation to
the patent owner.
o In 1952, Act LXX was made to provide compulsory licensing of patents
related to food, drugs and chemicals killing insects and microbes.
o In 1995, India signed the TRIPS Agreement and got a transition period of
10 years to make domestic laws compatible with the international treaty.
o In 1999, The Patents Act was introduced providing for the filing of
applications for product Patents in the areas of drugs, pharmaceuticals
and Agrochemicals.
o In 1970 patent Act was made This Act introduced new Patent Rules, in
2003, thus replacing the earlier patent rules, in 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.
- Provisions concerning convention countries simplified.
- Establishment of Appellate Board.
- Compulsory license provisions strengthened and simplification of procedures.
- Harmonization with Patent Cooperation Treaty (PCT) provisions.

o With the rapidly changing scenario of IPR at a global level, In 2005 a new
amendment. The highlights of the Patents (Amendments) Act 2005 were:
- Product patents 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.
2. Copyrights and Related Rights: The evolution of copyright 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 during
the East India Company ‘s regime. The term of copyrights was for the
lifetime of the author plus seven years after death. The registration of
copyright was mandatory for the enforcement of rights under the Act. The
government can allow publication of a book through a compulsory license
if the owner of the copyright, after the death of the author, denies
permission.
 Second phase: The Indian legislature, enacted the Imperial Copyright Act
of the UK. An Act for criminal sanction for an infringement was
introduced.
 Third phase: During post-independence, the Copyright Act of 1957 was
enacted, superseding the Indian Copyright Act, of 1914, to suit the
provisions of the Berne Convention (1886).
 India is an active member of nearly all significant international
conventions/Treaties related to Copyright Law.

3. Trademarks: The Trade Marks Act, 1940 was India's first law related to
Trademarks (TM), followed by the inclusion of TM provisions in the Indian
Penal Code, Criminal Procedure Code, and the Sea Customs Act. The Trade
Marks Act, of 1999 repealed the previous Act after almost four decades.
4. Geographical Indications: India, as a member of WTO, enacted the
Geographical Indications of Goods (Registration and Protection) Act, of
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.
5. Trade Secrets: 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.

6. Semiconductor Integrated Circuits and Layout Designs: The protection

of Semiconductor Integrated Circuits and Layout Designs (SICLD), India
passed an Act called the SICLD Act, 2000. This Act is TRIPS compliant and
fulfils the conditions of the TRIPS &WTO agreement concerning the
protection of SICLD.

7. Plant Varieties: The Indian Patents Act, of 1970 excludes ―plants and
animals in whole or any part thereof other than microorganisms from
patentability. India adopted the PPV&FR Act, 2001 as a sui generis regime
protecting not only new plant varieties but also farmers' rights.

8. Traditional Knowledge(TK): Traditional Knowledge (TK) is the ancient

and indigenous knowledge held by communities and groups of people. It
includes the use of plants for medical treatments, traditional dance,
hunting techniques, and craft skills. The Government of India has created
a digital library called Traditional Knowledge Digital Library (TKDL) that
houses 250,000 Indian medicine formulations.

9. Industrial Designs (ID): It refers to the creations of the human mind that
need protection. The concept of ID was recognized in the 18th century, and
for the first time, the Indian legislation enacted the 'Patterns and Designs
Act' in 1872 to safeguard the rights of inventors over their designs and
novel patterns. The Act was replaced by the British Patents and Designs
Act in 1907 after several changes. Finally, in the year 2000, a dedicated Act
for Industrial Designs was passed to provide comprehensive protection to
inventors.
10. Biodiversity Conservation: Biodiversity is an inseparable part of
human livelihood. In 1927 the Indian Forest Act and later on the Wildlife
Protection Act, 1972 was enacted to provide legal protection to
biodiversity. The Acts and policies in force to protect the environment and
biodiversity in India include
o Mining and Mineral Development Regulation Act, 1957.
o Water (prevention and control of pollution) Act, 1974.
o Forest Conservation Act, 1980.
o Biological Diversity Act, 2002.
o Scheduled Tribes and Other Traditional Forest Dwellers Act, 2006.
o National Environment Policy, 2006.
o National Biodiversity Action Plan, 2009.

Major Amendments in IP Laws and Acts in India: The table below

summarizes the history of Laws and Acts of intellectual property in India.
Sl.
No Year Historical Proceedings
Patents
1856 The Act VI of 1856 on the protection of inventions is based on the British Patent Law of
1. 1852.
1859 - Rights renamed as ‗Exclusive Privileges.
2. - Time for the priority increased from 6 months to 12 months.
1883 - The Patterns and Designs Protection Act and introduction of novelty in the invention.
3. - A grace period of 6 months for the disclosure of the invention.
1911 - Renamed The Indian Patent and Design Act and brought under the management of
4. Controller of Patents.
1930 - Introduction of Patent of Addition & Government can use the invention if required.
5. - The term of patent protection increased from 14 to 16 years.
1945 - Filing of the provisional specification to secure the priority date.
6. - Provision of submitting complete specifications within 9 months.
1949 - A dedicated Committee was formed under the leadership of Justice Bakshi Tek Chand
7. to review the patent system as per the national environment.
- A working statement needs to be submitted to the Patent Office.
1950 - Endorsement of the Patents with the words' License of Right on the application made by
8.
the government so that the Controller could grant the license.
- Provision of Compulsory Licenses in the areas of food, medicine and insecticide
1952 germicide.
9.
- Process for producing substance or any invention relating to surgical or curative devices
1965 - After incorporation of the recommendation submitted by the committee formed in 1949,
10. a new bill was introduced in Lok Sabha but was not cleared
1967 - Again submitted to Parliamentary Committee.
11. - The 1911 Act remained applicable to Designs
12. 1970 - The Patent Act, of 1970 was passed by the Parliament Committee.
 CATEGORIES OF INTELLECTUAL PROPERTY

Introduction: To understand intellectual property (IP) in India, it has been

categorized into patents, copyrights, trademarks, trade secrets, industrial
designs, geographical indications, and semiconductor integrated circuits
layout designs.
Patents:
o A patent is a legal right granted to an inventor, giving them exclusive
ownership and control over the production and selling of their
invention for a set period.
o A patent is a legal document that gives the holder exclusive rights
to an invention, product, or process for a set period.
o Examples of patents include Thomas Edison’s patent for the light
bulb and Alexander Graham Bell’s patent for the telephone.
Conditions for Obtaining Patent Protection: *** Following the
criterion that must be fulfilled for a product or a process to qualify for
the grant of a patent.
1. Novelty: The invention must be new and has not been disclosed or
published anywhere in the world before the date of filing the patent
application. 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.
2. Inventive step: The innovation is
a. A technical advancement over the existing knowledge.
b. Possesses economic significance.
c. A person skilled in the concerned subject.
3. 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

o Inventors must choose between exploiting their inventions for personal
gain or making them public. Most choose the former. Few inventions are
made public without any benefits. Anyone can use public inventions for
free.
o If an inventor wants to earn money from their invention, they can choose
to either “Patent” it or keep it as a “Trade Secret.”
o The trade secret option is better chosen if the inventor is confident that they
can keep the invention a secret for a very long time (maybe 100 years or
more) and there is almost no chance that anyone can reverse engineer the
technology.
o Patent is a better option to prefer, if the invention has a short lifespan or
can only be kept secret for a short period (a couple of years or so), or if the
chances of someone reverse engineering the invention are high once it
becomes public knowledge.

Rights Associated with Patents: Under patent law, the owner of an

invention has exclusive rights to make, use, distribute, import and sell the
invention. Others may not do any of these without the owner's consent. The
owner may choose to allow others to use their invention by mutual agreement.
The patent rights are negative 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 the illegal use of the patent and also ask
for compensation for the unauthorized use.

Enforcement of Patent Rights: Enforcement refers to the steps taken to ensure

that laws, regulations, rules, standards, and social norms are followed. Patent
rights are typically enforced through the judicial court system, which has the
power to stop infringement. However, it is primarily the responsibility of the
patent owner to monitor, identify, and take action against those who violate the
patent.

Inventions Eligible for Patenting:

 Patents can be granted for any invention or technology, not just major scientific
breakthroughs. It ranges from a paper clip to a nanotechnology chip.

 Most patents are granted to inventions that demonstrate an

improvement over existing inventions. For instance, a single molecule,
such as penicillin and its derivatives, can receive multiple patents.
These derivatives are created by making subtle changes to the
 penicillin's structure, resulting in new or improved properties. The new
antibiotic molecules, referred to as second, third, or fourth-generation
penicillin, can also be patented.

 In our daily lives, we use many patented items, such as toothbrushes,

toothpaste, shoes, pens, eyeglasses, textiles, mobile phones,
wristwatches, bicycles, scooters, cars, television, cold drinks, beverages
and many more.

 It is common for products to contain multiple patented inventions. For

example, a laptop computer requires hundreds of inventions to work
together. Similarly, cars, mobile phones, and televisions consist of many
patented components.

Non-Patentable Matters: *****

In the Patent Act, there are some exclusions (products and processes) that
cannot be patented, here are some examples of non- patentable matters:

1. Invention contrary to public morality: a method for human cloning, a

gambling method. diagnostic, therapeutic and surgical methods for the
treatment of humans or animals.

2. Mere discovery: In the context of patent law, mere discoveries are often
considered ineligible for patent protection. Patents are typically granted
for inventions that involve a degree of human ingenuity, creativity, or
innovation beyond merely observing or discovering something that
already exists. Example Finding a new micro-organism occurring freely in
nature, laws of gravity.

3. Mere discovery of a new form of a known substance: In many jurisdictions, the

mere discovery of a new form of a known substance may not be considered
eligible for patent protection. Example Use of aspirin for heart treatment.
Aspirin was patented for reducing fever and mild pains.

4. Frivolous invention: A frivolous (silly) invention refers to an idea, creation,

or innovation that is perceived as trivial, impractical, or lacking in serious
 value or usefulness. For example, dough supplemented with herbs, merely
changing the taste of the dough, 100 years’ calendar, bus timetable.

5. Arrangement or rearrangement: For example, an umbrella fitted with a fan,

or a torch attached to a bucket.

6. Inventions falling within Section 20(1) of the Atomic Energy Act: Inventions
relating to compounds of Uranium, Beryllium, Thorium, Radium, Graphite,
Lithium and more as notified by the Central Government from time to time.

7. Literary, dramatic, musical, artistic work: Books, sculptures, drawings,

paintings, computer programs, mathematical calculations, online chatting
methods, methods of teaching, and methods of learning a language as they
are the subject matter of the Copyright Act. 1957.

8. Topography of integrated circuits: Protection of layout designs of IC is

provided separately under the Semiconductor Integrated Circuit Layout
Designs Act, 2000.

9. 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.

10.Traditional knowledge(TK): An invention that in effect is traditional

knowledge or which is an aggregation or duplication of known properties
of traditionally known components is also excluded from patents. Example
different dance forms.

Patent Infringements:

If anyone uses the invention without the prior permission of the owner, that
act will be considered an infringement (violation) of the invention.
Infringements can be classified into TWO categories:

1. Direct Infringement: When a product is too similar to a patented product, or

if the invention is used for commercial purposes without the owner's
permission.
2. Indirect Infringement: If someone unintentionally commits an act of fraud
 or infringement, the patent holder has the right to take legal action against
them. Every country has laws in place to handle such situations. The
following reliefs are made available to the patentee:

a. Interlocutory/interim injunction.
b. Damages or accounts of profits.
c. Permanent injunction.

Avoid Public Disclosure of an Invention Before Patenting:

o Publicly displayed or published inventions can't be patented, but the

Patents Act allows a 12-month grace period to file for a patent application
from the date of its publication or presentation in a reputed scientific
society or exhibition.

o In some cases, it may be necessary to disclose details about your invention

before filing a patent application. For example, if you're trying to sell your
invention to a potential investor or business partner, they may want all the
details to assess its commercial value. In such situations, it's important to
protect yourself by signing a Non-Disclosure Agreement (NDA) or another
type of confidential agreement. This will help to safeguard your interests
and prevent your invention from being misused or stolen.

Process of Patenting: *****

In India, the process of granting a patent is a lengthy procedure that may take
anywhere from 3-4 years or more. The major steps involved in this process
are listed in Figure.

https://ipindiaonline.gov.in/ePatentfiling/goForLogin/doLogin

Grant of the Patent

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

The process of granting a patent involves several steps. These steps are
as follows: *****
1. Prior Art Search
2. Choice of Application to be Filed
3. Patent Application Forms
4. Jurisdiction of Filing Patent Application
5. Publication
6. Pre-grant Opposition
7. Examination
8. Grant of a Patent
9. Validity of Patent Protection
10. Post-grant Opposition

1. Prior Art Search:

o It ensures to finding of any previously disclosed information that can help
prove the patentability of an invention.
o A patent application will be compared to the prior art to determine whether
it describes a new invention, and whether or not a patent should be granted.
o An inventor has to check whether or not his invention already exists in the
public domain.

o 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.
o The prior art search is carried out on parameters such as novelty,
patentability, state of the art, infringement, validity and freedom to
operate.
o The commonly used databases for prior art search fall into Two categories
i.e.
A. Patents’ Databases

B. Non-Patent Literature (NPL) database: The following are the suitable

resources to access the NPL database
1. Scholarly publications: Handbooks, Textbooks, Withdrawn Patents,
Encyclopedias, Journals (IEEE, Research Gate, Springer, Wiley Online
Library, etc.), Dissertations, NCBI ‘s PubMed, Conference Proceedings,
Technical Reports, Public Conferences, etc.
2. Industry/trade publications: Industry reviews and public disclosures
(Social media, YouTube, Books, Magazines, datasets, Blueprints, etc.).
3. Major Patent Offices: such as the United States Patent and Trademark
Office (USPTO), European Patent Office (EPO), and Japan Patent Office
(JPO), etc. are maintaining in-house NPL databases to make the patent
examination more effective.
4. Others: Newspapers, Websites, Technology blogs, Researchers websites,
etc.

2.Choice of Application to be Filed:

1. There are two types of applications used to file patents: (1) Provisional
patent application or (2) Complete (Final) patent application.
2. Generally, the provisional patent application is preferred for the
 following reasons:
o It is cheaper, takes less time, and involves fewer formalities.
o Any improvements made in the invention after the filing of the provisional application
can be included in the final application.
o A provisional application allows you to secure a priority date for the patent applied.
o However, file a complete patent within 1 year of provisional or it will be rejected.
3. Patent Application Forms: Two application forms are used to file a
patent
a. Form-1: The application for the grant of patent. It is general including,
Title of Application, Names of Applicant(s) and Inventor(s), Type of
Application, Divisional, Patent of Addition, etc.
b. Form-2: It includes technical and specification information and whether
to file the provisional application or complete the application. For
Provisional Application, only the Description of the Invention and the
Abstract are to be furnished. Whereas, Complete Application requires a
Description of the Invention, Abstract, Claims and how the invention has
to be performed.
o The details about the patent application template and format can be
obtained from Source: http://www.ipindia.nic.in

4. 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.

Table 2.1: Jurisdiction to file a patent in India.

Region States Address
Haryana, Himachal Pradesh, Punjab, Rajasthan, UP, Uttarakhand, Delhi
Northern New Delhi
and the Union Territory of Chandigarh, J&K and Ladakh.
Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Telangana and the
Southern Chennai
Union Territories of Pondicherry and Lakshadweep
Maharashtra, Gujarat, MP, Goa and Chhattisgarh and the Union
Western Mumbai
Territories of Daman and Diu & Dadra and Nagar Haveli
Rest of India Remaining States Kolkata
5. 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, the application is published in the Official
Journal of Patent Office (http://www.ipindia.nic.in/journalpatents.). The
purpose of publishing the application is to inform the public about the
invention. The publication of an application is a mandatory step.

6. Pre-grant Opposition:

o If anyone objects to the invention claimed in the patent application,

they can challenge i t b y approaching the Controller of Patents within 6
months of publication. This is called pre-grant opposition.
o Depending on the outcome of the case, the patent application may be
rejected or recommended for the next step, i.e. patent examination.
o Patent applications are secret for 18 months but can be reduced if the
patentee/applicant plans to sell or license the patent or seek an investor.
Submitting Form-9 to the Controller General is required in such cases.

7. Examination:

Patent examination is a critical step in the process of granting 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's important to note that a patent application does not undergo

automatic examination after publication. The applicant or their
representative needs to file Form-18A and make a request for examination
of the patent within 48 months of filing the initial application.

8. Grant of a Patent:
o After meeting all the requirements, including addressing objections from
the Patent Examiner and the public, the applicant is granted the patent.
o After a patent is granted, it is published every Friday in the Official
Journal of the Patent Office. This journal contains information regarding
 patent applications under section 11A, post-grant publication,
restoration of patents, notifications, list of non-working patents, and
public notices.

9. Validity of Patent Protection:

o When an applicant files for a patent, they are granted protection for a
limited period of 20 years.
o To maintain a patent in India, the Patent Renewal Fee must be paid
annually as per Section 53, Rule 80 of the Indian Patents Act until the
patent grant period expires.
o Non-payment of the Patent Renewal Fee might result in the cancellation
of the patent.
o Some countries extend patent protection beyond 20 years to account for
the time-consuming administrative approval process before products
can be marketed. As a result, patent owners may not benefit from their
rights for a considerable time after obtaining the patent.

10. Post-grant Opposition: A granted patent can be challenged within a

year. Challenges can be made through the Patent Office or in a Court of
Law. If successful, the patent may be invalidated or revoked. A successful
challenge by the interested party on the grounds mentioned below:
o The applicant for the patent wrongfully obtained the invention or any part
of the invention.
o The invention claimed has been published before the priority date.
o The invention claimed was publicly known/used before the priority date.
o The invention claimed is obvious and does not involve an inventive step.
o The subject of the claim is not patentable as per the Patent Act, of 1970.
o The details/specifications of the invention do not sufficiently and clearly
describe the invention.

Commercialization of a Patent: The patent owner may allow an individual,

organization, or industry to manufacture, use, and sell their patented
invention, subject to agreed-upon terms and conditions. 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.

 The licensing of a patent can be

1. Exclusive License: An Exclusive License, the patent is sold to only one
individual/organization for a fixed period. During this period, no other
person or entity can exploit the relevant IP except the named licensee.
2. Non-exclusive License: In a Non-Exclusive License, a patentee can sell his
patent rights to as many individuals/parties as he likes.

 Compulsory Licensing: 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 the grant of
“Compulsory Licensing” subject to the fulfilment of following conditions:
a) Reasonable requirements of the public concerning the patented
invention have not been satisfied.
b) The patented invention is not available to the public at a reasonable
price.
c) The patented invention has not worked in the territory of India.

Need for a Patent Attorney/Agent

• Although individuals can file patent applications on their own, it is
recommended to seek legal assistance from a patent attorney or agent due
to the complexity of patent documents.
• Some countries require foreign applicants to have a local attorney or agent
to represent them.
Figure 2.4: Flowchart for the process of filing a patent application.

Can a Worldwide Patent be Obtained

• Patent rights are territorial, meaning there's no such thing as an

"International Patent." To seek protection, you must apply with the Patent
Office of the country where you want protection. However, filing in
multiple countries is laborious, time- consuming, and expensive.

• To ease this issue, many Regional Offices have been established that
receive patent applications on behalf of a group of nations e.g. European
Patent Office and the 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?
• In general, Indian residents are required to file a 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 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 the 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 the 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
Statement regarding the working of the patented invention on a
27
commercial scale in India
30 Miscellaneous form to be used when no other form is Prescribed
Fee Structure: As per the Patent Act and Rules (1970), the requisite fee
has been specified based on the type of form/s to be submitted to the Office
Electronically filed applications are 10% cheaper than physical filing. Fee
details are shown below
Table 2.3: Fee for obtaining a patent via electronic filing.

Types of Patent Applications: The main types of applications are

1. Provisional Application: This patent application is filed for inventions
that are still under experimentation to obtain a priority date.

2. Ordinary Application: A patent application filed with complete

specifications and claims but without claiming any priority date.
3. Patent Cooperation Treaty (PCT) Application: A single application can
be filed to seek patent protection and claim priority in all the member
countries of PCT.
4. Divisional Application: If an application includes multiple inventions, the
applicant can divide it into two or more applications. This is called a
Divisional Application.
5. Patent of Addition Application: When an invention is a slight
modification of the earlier invention for which the patentee has already
applied or has obtained a patent, the applicant can go for Patent of
Addition, if the modification in the invention is new. The benefit is 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.
6. Convention Application: If a patent application has been filed in the
Indian Patent Office, and the applicant wishes to file the same invention
in one or more Convention countries (e.g. Paris Convention) by claiming
the same priority date on which application was filed in India, such an
application is known as Convention Application. The applicant has to file
a Convention Application within 12 months from the date of filing in India
to claim the same priority date.

Commonly Used Terms in Patenting:

Certain terms are commonly used in the field of patenting, as listed in the
table below
Sl. Term Definition
No
1. Inventor Creator of an invention
2. Organization/individual/industry that files a patent application or
Applicant
applies for a patent
3. Patentee A person/organization who owns the patent (granted)
4. Organization/individual/industry which obtains a license of the
Licensee
patent from the Patentee for commercialization purpose
5. Assignee A person in whose name patent has been assigned legally
6. The applicant is paying the annuity (renewal fee) for the patent to
In force
keep it alive Patent)
7. Working on a The selling of a patent to an individual/party for commercial
Patent exploitation is called as working of a patent
8. Patent Patent specification is a written description of the invention and the
Specification way of representation and process of making and using the same
9. Priority Right A Priority Right or Right of Priority is a time-limited right,
activated by the first filing of an application for a patent
10. The claimed date on which the first application for the invention is
Priority Date
filed
11. Claims can be defined as the scope of the protection conferred by a patent or
the protection sought in a patent application. The purpose of the claims is to
Patent Claims
define which subject matter is protected by the
patent
 12. National
An application filed to obtain patents in different countries
Phase
simultaneously based on a single International/PCT application
Application
13. The revocation means cancellation of the patent due to certain reasons,
Patent
such as lack of patentability or wrongfully obtaining a
Revocation
patent
14. Restoration Once a patent has been ceased (e.g. due to non-payment of the fee) it
of Patent can be restored within a permitted period by paying the requisite fee

National Bodies Dealing with Patent Affairs: There are many departments/
organizations/bodies dealing with various aspects of patents, namely
i. Indian Patent Office (IPO)
ii. Department for Promotion for Industry and Internal Trade (DPIIT)
iii. Technology Information Forecasting and Assessment Council (TIFAC)
iv. National Research Development Corporation (NRDC).

Utility Models:
o In many cases, a new invention involves an incremental improvement over
the existing products, but this technical improvement is not sufficient
enough to grant a patent.

o Such small innovations can still be legally protected in some countries and
termed as ‘Utility Models’ or ‘Petty Patents’ or ‘Innovation Patents’.

o The Utility Model is a helpful tool for Micro, Small and Medium Enterprises
(MSME).

o Grant of a Utility Model is usually less rigorous and involves minimal cost.

o Utility models are good enough for improving products/processes and

bringing more financial rewards.

o The life of the Utility Model is less as compared to the patents. It varies from
7-15 years in different countries.

o Nearly 80 countries protect Utility Models under their IPR laws. India to
date does not recognize utility patents.