JSS MAHAVIDYAPEETHA

JSS ACADEMY OF TECHNICAL EDUCATION, BENGALURU

Affiliated to Visvesvaraya Technological University, Belagavi, Karnataka, INDIA
Approved by All India Council for Technical Education, New Delhi
Accredited by NAAC with A+ Grade

Sub: Research Methodology and IPR (21RM156)

Ref: Text Book 2

INTRODUCTION TO INTELLECTUAL PROPERTY

- Intellectual Property (IP) is the terminology attributed to intangible assets having commercial value,
and arising from human intelligence, creativity, and imagination, but typically lacking physical form.
- Intellectual Property Rights (IPR) is 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.
- 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 software's/databases.
• The Industrial Property Rights refer to the Patents, Trademarks, Trade Services, Industrial
Designs and Geographical Indications.
o Copyright: Copyright is the right bestowed on the owner or creator in relation to
publication, and distribution of a piece of writing, music, picture or related works.
Copyright also applies to technical contents such as software, datasheets and
related documents.
o Patents: A patent is a legal record that bestows the holder the exclusive right over
an invention as per the claims, in a limited geographical domain and for a limited
duration by thwarting possible interested parties from any form of manufacture,
use or sale of the product or outcome of the invention
o Trademarks: A trademark is a sign that suitably differentiates the owner's goods
or services from those of others

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 o Trade services: Any services in relation to trade or any trade related financing,
lending or other financial accommodation provided(or to be provided) by the
bank, including but not limited to issuance/amendment of letter of credit,
document arrival under letter of credit, application for negotiation and inquiries
etc.,
o Industrial Designs: An industrial design protection is related to certain specific
ornamental shapes associated with products whose duplication the owner may
wish to prevent
o Geographical Indications: A geographical indication (GI) is a name or sign used on
products which corresponds to a specific geographical location or origin. Items
that meet geographical origin and quality standards may be endorsed with a
government-issued stamp which acts as official certification of the origins and
standards of the product.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

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

- Creativity is a fundamental aspect of progress, and the protection provided by Intellectual

Property Rights (IPR) incentivizes creators to create more and motivate others to do the same.
- However, rigid IPR practices can negatively impact society's progress. For example,
compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement
has affected the farming community, as multinational companies regulate seed prices, which
are generally beyond the reach of most farmers.
- To counteract this, certain laws, exceptions, and limitations have been enacted to maintain a
balance between the interests of creators and the community. For example: Farmers Rights
under PVP&FR (Protection of Plant Varieties and Farmers‘ Rights) Act, 2001"
• Provides "Rights on seeds."
• Offers protection against infringement accusations.
• Allows use of copyrighted material for education and religious ceremonies.
- Moreover, patents can be revoked in favor of compulsory licensing during emergencies or
natural disasters.
- If an invention or creation is not in the interest of society, it is not registered for IP rights. For
example, cloning human embryos is banned for IP protection, and super microbial pathogens
are banned for IP protection.
- India is rich in biodiversity and genetic resources, which are used in traditional knowledge
(TK). However, these resources are not limited to local contexts, as many innovations draw on
them. To maximize the benefits of these resources, adequate legal infrastructure and
enforcement are required. Initiatives like 'Make in India', 'Atmanirbhar Bharat', supporting
local homegrown brands, and an accessible approach to patents and trademarks registration
can help harness the potential of these resources.

IP Governance

- IP is an integral component of human society, hence each and every nation has dedicated
agencies for laying out the guidelines, implementation and enforcement of IP related matters.
- Also India has dedicated agencies for IP guidelines, implementation, and enforcement. To
name them:
• The Department for Promotion of Industry & Internal Trade (DPIIT) oversees all IP
categories, except Plant Variety and Farmers' Rights Act.
• Other government departments promote patent-ecosystem (patent awareness,
filing, commercialization):
o Technology Information Forecasting and Assessment Council (TIFAC)
o National Research Development Corporation (NRDC)
o Cell for IPR Promotion and Management (CIPAM).

In order to have trade across nations, The World Intellectual Property Organization (WIPO) is a key
organization established by the United Nations (UN) to promote a hassle-free exchange of IP-related
activities among nations. WIPO governs international filing and registration of IP through various
Conventions and Treaties, including the Paris Conventions, Patent Cooperation Treaty (PCT), Rome
Convention, and Berne Convention.

IP as a Global Indicator of Innovation

The IP Index serves as a roadmap for policymakers who look to support creativity, innovation and
economic growth through more robust IP policy.

Recently, India has improved its overall IP score from 38.4 percent to 38.6 per cent, and the country is
ranked 43 out of 55 countries on the International Intellectual Property Index. In the year (2022) the index
is topped by the US with 95.4%.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

International Intellectual Property Index is released annually by US Chamber of Commerce Global
Innovation Policy Centre (GIPC).The Intellectual Property (IP) Index evaluates each economy’s ecosystem
based on 50 unique indicators which the industry believes represent economies with the most effective
IP systems. The index ranks countries based on 50 unique indicators. These indicators are divided across
nine categories of protection: 1) Patents, 2) copyrights, 3) trademarks, 4) design rights, 5) trade secrets,
6) commercialization of IP assets, 7) enforcement, 8) systemic efficiency and 9) membership and
ratification of international treaties.

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

It begins in 500 BCE when Sybaris, a Greek state, made it possible for citizens to obtain a one year patent
for “any new refinement in luxury.”

A practical and pragmatic approach for IP governance started taking shape in medieval Europe.

✓ In 1623, Britain passed Intellectual Property Legislation allowing guilds to create and market
innovations.
✓ The 'Statute of Monopolies' replaced this legislation, granting rights to original creators for 14 years.
✓ The 'Statute of Anne' was passed in 1710 to strengthen copyrights, granting rights to authors for
recreation and distribution of their work.
✓ By the end of the 18th and early 19th centuries, almost every country began implementing IP
legislation to protect their inventions.

History of IP in India

1) Patents: Indian Patent System History and Amendments

✓ The Indian patent system dates back to the pre-independence era of British rule.
✓ The first patent legislation was Act VI of 1856, adapted from British Patent Law of 1852.
✓ The rights conferred to the inventor were termed “Exclusive Privileges”.
✓ Amendments to the Act in 1859 included the grant of exclusive privileges to useful inventions,
increased priority time, and excluded importers from the definition of the inventor.
✓ Act XIII of 1872 included 'Designs' in the Patent Act.
✓ Act XVI of 1883 amended to include 'Novelty' protection in invention.
✓ The Indian Patents and Designs Act, 1911 introduced the Indian Patents and Designs Act,
1911, which included the use of invention by the government, Patent of Addition (which
means, an application made for a patent in respect of improvement or modification of the
invention described or disclosed in the main application for which the patentee has already
applied for or has obtained a patent.), and enhanced patent term.
✓ After India's independence in 1947, a committee was constituted to review the advantages of
the patent system.
✓ The committee submitted recommendations to prevent misuse of patents rights, make food,
medicine, and surgical and curative devices available to the masses at a cheapest rate, and
make patents related to food, drugs, and chemicals compulsory.
✓ The revised patent legislation was submitted to the Lok Sabha in 1965, and the Patents Act,
1970 was introduced, superseding all previous laws related to the patents.
✓ The Indian Patents and Designs Act of 1911 remained applicable for designs only till 1994.
✓ India signed the TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights is an
international legal agreement between all the member nations of the World Trade
Organization) in 1995, allowing a transition period of 10 years (1995-2005) to make domestic
laws compatible with the international treaty.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 ✓ The Patents (Amendment) Act, 1999 was introduced in 1999, providing for the filing of
applications for 'Product Patents' in the areas of drugs, pharmaceuticals, and agrochemicals.
✓ The Patents (Amendment) Act, 2002 introduced new Patent Rules, 2003, which included the
protection term of 20 years for all inventions from the date of filing, expanded scope of non-
patentable inventions, compulsory disclosure of source and geographical origin of biological
material, simplified provisions concerning convention countries, and harmonized with Patent
Cooperation Treaty provisions.
✓ The Patents (Amendments) Act 2005 included product patent for inventions in all fields of
technology, excluded new forms of known substances, rationalized the opposition procedure,
introduced pre-grant opposition by representation, post-grant opposition, compulsory license
for export purposes, and extended grace period for filing a patent.

2) Copyrights and Related Rights

➢ The concept of copyrights originated in the 15th century, but its need for law was heightened
after the invention of printers and copiers.
➢ Before printers, writing was a laborious process with high risk of errors.
➢ The 15th and 16th centuries saw widespread printing in Europe, with copies of "Bibles" being
the first to be printed.
➢ The government allowed printing without restrictions, leading to the spread of governmental
information.
➢ Subsequently, the government started issuing licenses for printing.

Copyrights law in India evolved in three phases:

1. The first phase introduced copyrights in 1847 during the East India Company's regime.
Copyrights were not automatic and registration was mandatory for enforcement.
2. The second phase introduced the Copyright Act of 1914, based on the Imperial Copyright Act of
the UK.
3. The third phase occurred post-independence with the Copyright Act 1957, superseding the Indian
Copyright Act, 1914, and being amended six times to comply with the WIPO Copyright Treaty and
WIPO Performances and Phonograms Treaty.

India's Copyright Law Amendments

• Penalties for circumvention of technological protection measures.

• Rights of management information.
• Liability of internet service providers.
• Introduction of statutory licenses for cover versions and broadcasting organizations.
• Ensures royalties for authors and music composers.
• Exclusive economic and moral rights to performers.
• Equal membership rights in copyright societies.
• Exception of copyrights for physically disabled to access works.
• Active member of significant international Conventions/Treaties related to Copyright Law.
3) Trademarks
➢ First statutory law related to Trademarks (TM) was the Trade Marks Act, 1940, derived from the
UK's Trade Marks Act, 1938.
➢ Incorporated provisions of TM in the Indian Penal Code, Criminal Procedure Code, and Sea
Customs Act.
➢ Trade Marks Act, 1940 was renamed as Trade and Merchandise Marks Act, 1958.
➢ This Act was repealed (cancelled) 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.

4) Geographical Indications

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 - India, as a member of WTO, endorsed 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.

5) Trade Secrets

• India has "No specific Trade Secrets Laws".

• Courts uphold protection under contract, copyright, equity principles, and breach of confidence.

6) Semiconductor Integrated Circuits and Layout Designs

- In 21st Century, IT has revolutionized global economic growth.

- Rapid advancements in IT led to the creation of creation of a new class of IP called the Layout-
Design of the Semiconductor Integrated Circuits.
- Organizations like WTO and TRIPS Agreement set rules and regulations for Semiconductor
Integrated Circuits and Layout Designs (SICLD) protection.
- 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.

7) 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.
- A new sui generis law was enacted under the International Convention for the Protection of
New Varieties of Plants (UPOV, 1978) and UPOV, 1991 to include all biological materials.
- The Indian Patents Act, 1970 excluded plants and animals except microorganisms from
patentability.
- To comply with Article 27.3 (b) of TRIPS, India adopted the PPV&FR Act, 2001 as a sui generis
regime protecting new plant varieties and farmers' rights.

8) Traditional Knowledge (TK)

• TK is ancient, indigenous knowledge held by communities or groups.

• TK was passed down verbally, not recorded.
• TK covers various fields, including plant use for medical treatments, dance, hunting techniques,
and craft skills.
• TK is not officially recorded but appears in culture, stories, legends, folklore, rituals, and songs.
• TK has been recognized as Intellectual Property (IPR) under the TRIPS Agreement.
• The Government of India has created a Digital Library (TKDL) to store 2,50,000 formulations of
Indian medicine systems.

9) Industrial Designs (ID)

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.

• First Indian legislation enacted 'Patterns and Designs Act' in 1872. Act protected rights over design
creation and novel patterns.
• Replaced by British Patents and Designs Act in 1907, forming basis for 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

1.5.10. Biodiversity Conservation

• Biodiversity is essential to human survival; biodiversity conservation began in the Chandragupta

and Ashoka periods.
• Legal protection was granted by the Indian Forest Act of 1927 and the Wildlife Protection Act of
1972.
• The National Forest Policy (1988) revolutionized conservation and management of biodiversity.
• Current legislation includes the Mining and Mineral Development Regulation Act, the Water
(Pollution Prevention and Control) Act, the Forest Conservation Act, the Biological Diversity Act,
and the Scheduled Areas Act.

1.6. Major Amendments in IP Laws and Acts in India

Some of the salient amendments made in Indian Laws and Acts on IPR are mentioned below:

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru
Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru
Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru
 CATEGORIES OF INTELLECTUAL PROPERTY

Introduction
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.

Patents
• A patent is an exclusive right granted for an innovation providing a new way of doing something
or a new technical solution, protecting it from copying or reproduction, and requiring clear and
complete disclosure.
• 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

Patent Grant Criteria in Section 2(1)(j) of the Patents Act, 1970 must be fulfilled for a product or a process
to qualify for the grant of a patent. The criterion encompasses:

• Novelty: The innovation claimed in the patent application is not part of 'State of the Art'. It is not
known to the public, published, or claimed in any other specification by any other applicant.
• Inventive step: The innovation is a technical advancement over existing knowledge, possesses
economic significance, and is not obvious to a person skilled in the art.
• Capable of industrial application: The invention is capable of being made or used in any industry
for the benefit of society.

To Patent or Not to Patent an Invention

Once an invention has been developed, Inventor must 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.

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.

- 'Trade Secret' category preferred for long-term secrecy (may be 100 years or more) and low
reverse engineering probability.
- 'Patent' category preferred for short life span (a couple of years or so) or limited secrecy, high
reverse engineering probability in public domain.

Rights Associated with Patents

• Patent owners have the right to decide who can use patented inventions.
• Patent protection prohibits commercial use without owner's consent.
• Owners can allow mutually agreed use terms.
• Patent rights are negative rights as they restrict unauthorized use.
• Owners can sue infringers for stopping illegal use and seeking compensation.

Enforcement of Patent Rights

Enforcement is the process of ensuring compliance with laws, regulations, rules, standards and social
norms. 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Inventions Eligible for Patenting

- Patents can be granted for inventions in any field, from paper clip to nanotechnology chip.
- Most patents are granted for improvements over existing inventions, not just major scientific
breakthroughs. Examples include penicillins and their derivatives, which have new properties
due to subtle structural changes.
- Patented items include toothbrushes, toothpaste, shoes, eyeglasses, textiles, mobile phones,
wristwatches, bicycles, scooters, cars, televisions, cold drinks, and beverages.
- Many products contain multiple inventions, such as laptop computers and cars, which often
contain multiple 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.
• 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 patent granted to applicant, patent owner retains right to use or exploit invention. Infringement
occurs if others use without owner's permission.

Infringements can be classified into two categories:

• Direct Infringement
o When a product is substantially close to any patented product
o 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.

However, 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Avoid Public Disclosure of an Invention before Patenting

1. Generally, an invention that has been either published or publicly displayed cannot be patented,
as the claimed invention will lose the ‘Novelty‘ criterion.
2. 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.
3. 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.
4. In such a case, it is advisable to sign a Non-Disclosure Agreement (NDA) or any other confidential
agreement to safeguards your interest.

Process of Patenting
Flow chart of major steps involved in the grant of a patent.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Decision 1 - Prior Art Search

Before inventors file a patent, they need to make sure their invention is new. They do this by checking if
anything similar already exists in public information, known as "prior art."

This includes patents, scientific papers, and other publications available before the patent application. If
something similar is already out there, the invention might not be considered new and may not qualify
for a patent. Inventors carefully search for this existing information to ensure their idea is genuinely unique
and eligible for patent protection.

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.

Note: Majority of NPL data is available freely on the public forum, however, 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Decision 2 - Choice of Application to be Filed

When deciding to patent an invention, the next step is choosing the type of application: provisional or
complete. Usually, a provisional patent application is preferred because:

• It's cheaper, quicker, and involves fewer formalities.

• Any improvements made later can be added to the final application.
• It doesn't need complete specifications initially, allowing for flexibility.
• Filing a provisional application secures a priority date for the patent.

However, it's crucial to file the complete patent application within a year of the provisional filing;
otherwise, the application is rejected.

Decision 3: 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 and Form-2.

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.).

The information sought in 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.

For ’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

o Independent Claims (stand-alone claim) and

o 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

Decision 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.

Note: For a foreign applicant filing a patent in India, the location of their patent agent's address or business in India determines
which Patent Office they should use for the application.

Publication

After filing a patent application, it's kept secret for 18 months. After that, or from the filing date, it's
published in the Official Journal of the Patent Office (http://www.ipindia.nic.in/journal-patents.htm) to let
the public know about the invention. This publication is mandatory.

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

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

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

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.

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.

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.
• 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
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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

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.
• Additionally, the laws of many countries mandate that applicants, residing or operating primarily
outside the country, must be represented by a qualified attorney or agent based in that specific
jurisdiction. (which usually means an agent or attorney who resides and practices in that country).

Can a Worldwide Patent be Obtained

• The terms 'Universal Patent,' 'World Patent,' or 'International Patent' do not exist because patent
rights are territorial.
• To seek patent protection, an application must be filed with the Patent Office of the specific
country where protection is desired. However, filing in multiple countries individually can be a
daunting and expensive task.
• To simplify this process, Regional Offices have been established, such as the European Patent
Office and the African Regional Intellectual Property Organization.
• These offices accept patent applications on behalf of a group of nations, allowing a single
application to cover multiple member countries.
• Alternatively, for broader international coverage, filing an international patent under the Patent
Cooperation Treaty (PCT) is recommended.
• The only requirement is that the applicant's country must be a member of the PCT.
• India, among more than 190 nations, is a member of the 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:
o The applicant is not an Indian resident.
o If 6 weeks have expired since the patent application was filed in India by an Indian
resident.
o 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 o 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.
o 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

Fee Structure

Types of Patent Applications

1) Provisional Application – A provisional patent application filed when an invention is still in
experimental stages and not fully developed, a provisional patent application helps establish
a priority date for the invention
2) Ordinary Application - A patent application filed with complete specifications and claims but
without claiming any priority date.
3) 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.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

 4) Divisional Application - When a patent application encompasses multiple inventions, the
applicant may choose to divide it, either voluntarily or to address objections about plurality.
This split-off application is termed a Divisional Application. Importantly, all Divisional
Applications maintain the same priority date as the original (parent) application, a practice
known as ante-dating.
5) 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.
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 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 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,

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru

National Bodies Dealing with Patent Affairs
The various department/organizations dealing with different aspects of patent-related activities are

• Indian Patent Office (IPO)

• Department for Promotion of Industry and Internal Trade (DPIIT)
• Technology Information, Forecasting and Assessment Council (TIFAC), and
• National Research Development Corporation (NRDC)

Utility Models
• Many times, a new invention is just a small improvement on existing products. However, this
improvement might not be unique or significant enough to meet the strict standards for patent
approval, particularly in terms of novelty and non-obviousness.
• Such small innovations can still be legally protected in some countries and termed as ‘Utility
Models’ or ‘Petty Patents’ or ‘Innovation Patents’.
• In these cases, the rules for 'Novelty' and 'Non-obviousness' might be less strict, but the essential
need for industrial application or utility stays the same as in patents.
• A Utility Model is beneficial for Micro, Small, and Medium Enterprises (MSMEs) as it involves a
less strict approval process and comes with minimal costs.
• MSMEs, with limited funds, may not engage in extensive R&D for patents. However, their
innovations can still enhance products or processes, leading to valuable financial rewards. These
inventions meet the criteria for Utility Models but fall short of the requirements 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 presently does not acknowledge utility patents. If these smaller patents receive recognition
for IP protection, it could lead to a substantial increase in the annual count of filed and granted
patents.

Dr. Roopa D N, Assistant Professor, Department of Mechanical Engineering, JSSATE, Bengaluru