MODULE 3

CHAPTER – 1

INTRODUCTION TO INTELLECTUAL PROPERTY

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

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

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

Creativity being the keystone of progress, no civilized society can afford to ignore the basic requirement of
encouraging the same. The economic and social development of a society is largely dependent on creativity. The
protection provided by the IPR to the creators/innovators is in fact an act of incentivization for encouraging them to
create more and motivates others to create new and novel things.

However, if IPR is practiced rigidly, it may have a negative impact on the progress of society. For example,
compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement has affected the
farming community as they are unable to store seeds for the next crop. Multinational companies regulate the price
of seeds, which is generally beyond the reach of a majority of the farmers.

To circumvent the negative impact of IPR, certain laws, exceptions and limitations associated with IPR have
been enacted to maintain a balance between the interests of the creators/inventors and the community. For example,
farmers ‘rights under the Protection of Plant Varieties and Farmers‘ Rights (PVP&FR) Act, 2001 entitles them to
many privileges, such as ‘Rights on seeds’ provides rights to the farmers to save seeds, use seeds and share,
exchange or sell seeds to other farmers and ‗Right to protection against accusations of infringement’ protects the
farmers from infringement and other legal accusation levied upon them due to this legal ignorance in using other‘s
plant varieties. The use of copyrighted material for education and religious ceremonies is exempted from the
operation of the rights granted in the Copyright Act. Similarly, a patent can be revoked in favor of compulsory
licensing by the government during an emergency or a natural calamity. In addition, if an invention/creation is not
in the interest of society, it is not registered by the government for grant of any rights associated with IP. For

1
MODULE 3

example, cloning of human embryos is banned for IP protection, and so is the creation of super microbial
pathogens, which can play havoc with human lives.

In addition, India is enriched with massive biodiversity and genetic resources and their use is embodied in
what is referred to as Traditional Knowledge (TK). However, the use of such knowledge and resources are not
limited to local contexts as many innovations relate to and draw on them. Therefore, the main issue of concern is
to protect TK and genetic resources, which are rapidly coming under the governance of sometimes conflicting IPR
policies. To derive maximum benefit from them, the establishment of adequate legal infrastructure and
enforcement is required. With initiatives like
‗Make in India‘, ‗Atmanirbhar Bharat‘ and supporting local

homegrown brands, and easy as well as accessible approach to patents and trademarks registration, it is possible
to reap the benefits of our resources.

1.2. IP Governance

Since IP is an integral component of human society, each and every nation has dedicated agencies for laying
out the guidelines, implementation and enforcement of IP related matters. In India, many organizations/agencies
deal with various aspects of IP. The governance of all categories of IP, except the Plant Variety and Farmers‘
Rights Act, is carried out by the Department for Promotion of Industry & Internal Trade (DPIIT) under the aegis
of Ministry of Commerce and Industry, GoI. There are a few other dedicated organizations/departments
established by the government to promote patent-ecosystem (patent awareness, patent filing and patent
commercialization) in India e.g. Technology Information Forecasting and Assessment Council (TIFAC), National
Research Development Corporation (NRDC) and Cell for IPR Promotion and Management (CIPAM), etc.

In order to create a hassle-free exchange of IP related activities amongst all the nations, it is imperative to have
minimum standards of rules and regulations pertaining to all aspects of IP including rights, empowerment,
exceptions, etc. To achieve this goal, the United Nations (UN) has established an organization called the World
Intellectual Property Organization (WIPO). This agency is at the forefront of imparting knowledge about IP and
governs international filing and registration of IP through various Conventions and Treaties like Paris Conventions,
Patent Cooperation Treaty (PCT), Rome Convention, Berne Convention, etc.

1.3. IP as a Global Indicator of Innovation

IP, especially patents, is considered as one of the important cogs in assessing the innovation index of a nation.
The global ranking organizations always have IP or a subset of IP as one of the parameters for understanding and
grading the Science, Technology and Innovation (STI) ecosystem of a nation. For example, the Scimago (publicly
available online portal which ranks journals and countries based on the data taken from Scopus) 2020 report

 ranked India at 4th position in the parameter of a number of Research Publications.

 50th position in the parameter of Intellectual Property Rights‘
The global ranking can be improved by sensitizing the teaching and scientific communities about the importance of
IP and creating infrastructure for the same in the institutes of higher learning.

2
MODULE 3

1.4. Origin of IP

Though there is no official record of the origin of IP, it is believed that a rudimentary form of IP was being
practiced around 500 Before the Common Era (BCE) in Sybaris, a state of Greece. The natives of Sybaris were
granted a year‘s protection for using their intellect to create ―any new improvement in luxury.‖

A practical and pragmatic approach for IP governance started taking shape in medieval Europe. In 1623,
Britain passed an Intellectual Property Legislation which entitled guilds (association of artisans or merchants) to
create innovations and bring them to market for trade purposes. However, this legislation brought a lot of
resentment amongst the public, and thus was replaced by the Statute of Monopolies‘, which gave the rights to the
original creator/inventor for 14 years. Another legislation, Statute of Anne‘, was passed by the British parliament
in 1710. This legislation aimed at strengthening copyrights by providing rights to the authors for recreation and
distribution of their work. The work could also be renewed for another 14 years. By the end of the 18 th century
and the beginning of the 19th century, almost every country started laying down IP legislation to protect their novel
inventions and creations.

1.5. History of IP in India

1.5.1. Patents

The history of the Indian patent system dates back to the pre- independence era of British rule. The first patent
related legislation in India was Act VI of 1856, adapted from the British Patent Law of 1852. The objective of this
legislation was to encourage the inventions of new and useful manufactures. The rights conferred to the inventor
were termed as ‗Exclusive Privileges‘. In 1859, certain amendments were made to the Act, such as:

● Grant of exclusive privileges to useful inventions.

● Increase of priority time from 6 months to 12 months.
● Exclusion of importers from the definition of the inventor.
The world’s first patent was granted in 1790 to Samuel Hopkinsin USA for the "making of pot ash and pearl
ash by a new apparatus and process". In India, the first patent (known as ‘Exclusive Privileges’ at that time)
was awarded in 1856 to a civilengineer, George Alfred DePenning from Calcutta, for his invention, ‘An Efficient
Punkah Pulling Machine’.

A few years later, it was felt that Designs could also pass the criteria of the invention and thus should be included
in the Patent Act. The new Act was rechristened as The Patterns and Designs Protection Act‖ under Act XIII
of 1872. This Act was further amended in 1883 (XVI of 1883) to include the provision of protection for Novelty
in the invention.
At the beginning of the 20th century, all the earlier Acts related to inventions and designs were done away with the
introduction of The Indian Patents and Designs Act, 1911‘ (Act II of 1911). As per this Act, the governance of
patents was placed under the management of the Controller of Patents. In the next three decades, many amendments
were introduced for reciprocal arrangements with other countries for securing priority dates. These amendments
dealt with;

3
MODULE 3

● Use of invention by the government.

priority Date:
● Patent of Addition. The date on which the first application for
● Enhancing the term of the patent from 14 years to 16 the invention is filed, whether it is
years. provisional or with complete
● Filing of Provisional Application and submission of specifications.
Complete Application within 9 months from the date
of filing the application.

After India got independence in 1947, many patent experts felt the need to review the Indian Patents and Designs
Act, 1911 keeping the national interest (economic and political) in mind. A dedicated committee, chaired by a
renowned Justice Bakshi Tek Chand (retired Judge of Lahore High Court), was constituted in 1949 to review the
advantages of the patent system. The committee submitted a plethora of recommendations, including:

1. Misuse of patents rights needs to be prevented.

2. There must be a clear indication in the Act that food, medicine and surgical and curative devices should be
made available to the masses at the cheapest rate by giving reasonable compensation to the owner of the
patent.
3. Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on the lines of the UK Patent
Act.

These recommendations were introduced in the Act XXXII of 1950. Two years later, another amendment (Act
LXX of 1952) was made to provide compulsory licensing of patents related to food, drugs and chemicals killing
insects and microbes. Based on these amendments, a bill was presented in the parliament in 1953 but was rejected.

In 1957, the central government constituted yet another powerful committee under the chairmanship of Justice N.
Rajagopala Ayyangar to seek inputs for further strengthening the Indian Patent Law. The committee submitted its
report to the government in 1959. It comprised of two segments addressing a) General aspects of the patent laws,
and b) Bill rejected back in 1953. The revised patent legislation was submitted to the Lok Sabha in 1965. After
many hiccups, clarifications and modifications the Patents Act, 1970
(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-11march2015.pdf) was
introduced, superseding all the previous laws related to the patents. However, the Indian Patents and Designs Act
of 1911 remained applicable for designs only till 1994.

In 1995, India signed the TRIPS Agreement and got a transition period of 10 years (1995-2005) to make domestic
laws compatible with the international treaty. In 1999, The Patents (Amendment) Act, 1999 was introduced
providing for the filing of applications for Product Patents in the areas of drugs, pharmaceuticals and agrochemicals
(earlier, only processes were protected under the Patent Act). The new Patent Act also included provisions for the
grant of Exclusive Market Rights (EMRs) for the distribution and sale of pharma products on fulfilment of certain
conditions.

The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 of 2002).
This Act introduced new Patent Rules, 2003, thus replacing the earlier Patents Rules, 1972. The major amendments
were:

1. The protection term of 20 years for all inventions from the date of filing.
4
MODULE 3

2. Scope of non-patentable inventions including Traditional Knowledge expanded.

3. Disclosure of source and geographical origin of biological material made compulsory.
4. Provisions concerning convention countries simplified.
5. Establishment of Appellate Board.
6. Compulsory license provisions strengthened.
7. Simplification of procedures.
8. Harmonization with Patent Cooperation Treaty (PCT) provisions. With the rapidly changing
scenario of IPR at a global level, a need was felt to further amend the Patent Act, 1970. The highlight of the
Patents (Amendments) Act 2005 were:

9. Product patent for inventions in all fields of technology.

10. New forms of known substances excluded to prevent evergreening of the patent.
11. Rationalization of the opposition procedure.
12. Introduction of pre-grant opposition by representation.
13. Introduction of post-grant opposition.
14. Compulsory license for export purposes.
15. Compulsory license for manufacture.
16. Extension of grace period from 6 months to 12 months for filing a patent, if published in government
exhibition.

India is a member of all prominent Conventions and Treaties related to the facilitation of the inventors for
international filing and protecting the rights over the inventions globally. The important international agreements
to which India is a signatory party are TRIPS Agreement (1995), Paris Convention (1883), PCT (1970) and
Budapest Treaty (1977) and many more.

1.5.2. Copyrights and Related Rights

The concept of copyrights started way back in the 15th century. However, the actual need for copyrights law was
felt only after the invention of printers and copiers. Before the invention of printers, writing could be created only
once. It was highly laborious and the risk of errors was involved in the manual process of copying by a scribe.
During the 15th and 16th centuries, printing was invented and widely established in Europe. Copies of Bibles were
the first to be printed. The government had allowed the printing of the documents without any restrictions, but this
led to the spreading of a lot of governmental information. Subsequently, the government started issuing licenses
for printing.

The evolution of copyrights law in India occurred in three phases. First, two phases were enacted during the British
Raj. In the first phase, the concept of copyrights was introduced in 1847 through an enactment during the East
India Company ‘s regime. The term of copyrights was for the lifetime of the author plus seven years after death.
Unlike today, copyrights in work were not automatic. The registration of copyright was mandatory for the
enforcement of rights under the Act. The government could grant a compulsory license to publish a book if the
owner of the copyright, upon the death of the author, refused to allow its publication.

In the second phase Indian legislature, under the British Raj, enacted the Copyright Act of 1914 based on the

5
MODULE 3

Imperial Copyright Act (1911) of the UK. An Act for criminal sanction for an infringement was introduced.

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

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

1.5.3. Trademarks

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

1.5.4. Geographical Indications

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

1.5.5. Trade Secrets

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

1.5.6. Semiconductor Integrated Circuits and Layout Designs

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

6
MODULE 3

38) concerning the protection of SICLD.

1.5.7. 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. To include all kinds of biological materials under the
ambit of patent laws, a decision to enact a new sui generis law under the International Convention for the Protection
of New Varieties of Plants (UPOV, 1978) and UPOV, 1991 was taken. These decisions were taken to address
environmental and public interest concerns.

The Indian Patents Act, 1970 excludes ―plants and animals in whole or any part thereof other than
microorganisms‖ from patentability. To comply with the mandate of Article 27.3 (b) of TRIPS, India adopted the
PPV&FR Act, 2001 as a sui generis regime protecting not only new plant varieties but also farmers‘ rights.

1.5.8. Traditional Knowledge

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

1.5.9. Industrial Designs

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

1.5.10. Biodiversity Conservation

Biodiversity is an inseparable part of human livelihood. The mention of protecting biodiversity can be found
in the times of Chandragupta and Ashoka. In those eras, the trees and forest were classified, such as reserved
category. In 1927 the ‗Indian Forest Act‘ and later on the ‗Wildlife Protection Act, 1972‘ was enacted to provide
legal protection to biodiversity. In 1988, the ‗National Forest Policy‘ was passed, which brought revolutionary
changes in the conservation and management of biodiversity. The Acts and policies in force to protect the
environment and biodiversity in India include Mining and Mineral Development Regulation Act, 1957; Water
(prevention and control of pollution) Act, 1974; Forest Conservation Act, 1980; Biological Diversity Act, 2002;
Scheduled
7
MODULE 3

Tribes and other Traditional Forest Dwellers (recognition of rights) Act, 2006; National Biodiversity Action Plan,
2009; National Environment Policy, 2006 and a few more.

1.6. Major Amendments in IP Laws and Acts in India

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

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

S.No. Year Historical Proceedings

Patents
1. 1856 The Act VI of 1856 on the protection of inventions based on the British Patent Law of
1852.
2. 1859 ⮚ Rights renamed as ‗Exclusive Privileges‘.
⮚ Time for the priority increased from 6 months to 12 months.
3. 1883 ⮚ The Patterns and Designs Protection Act
⮚ Introduction of novelty in the invention.
⮚ A grace period of 6 months for the disclosure of the invention.
4. 1911 ⮚ Renamed as ‗The Indian Patent and Design Act‘ and brought under the
management of
‗Controller of Patents‘.
5. 1930 ⮚ Introduction of Patent of Addition.
⮚ Government can use the invention if required.
⮚ The term of patent protection increased from 14 to 16 years.
6. 1945 ⮚ Filing of the provisional specification to secure the priority date.
⮚ Provision of submitting complete specifications within 9 months.

7. 1949 Dedicated Committee formed under the leadership of Justice Bakshi Tek Chand for
reviewing patent system as per the national
environment.
8. 1950 ⮚ A working statement needs to be submitted at the Patent Office.
⮚ Endorsement of the Patents with the words
‗License of Right‘ on the application made by
the government so that the Controller could grant the license.
9. 1952 ⮚ Provision of ‗Compulsory License‘ in the areas of food, medicine and insecticide
germicide.
⮚ Process for producing substance or any invention relating to surgical or curative
devices.

8
MODULE 3

10. 1965 After incorporation of the recommendation submitted by the committee formed in
1949, a new bill was introduced in Lok Sabha but was
not cleared.
11. 1967 ⮚ Again submitted to Parliamentary Committee.
⮚ 1911 Act remained applicable for Designs.
12. 1970 ⮚ The Patent Act, 1970 passed by the Parliament Committee.

13. 1972 The Patent Act, 1970 came into force with the introduction of patent rules.

14. 1995 TRIPS Agreement was signed by India and got

transition period 1995-2005 to make domestic laws compatible with TRIPS.
15. 1999 ⮚ Introducing the provisions for receiving the applications for the product patent in
the field of pharmaceuticals and agro-chemicals (mail box)*.
⮚ Provisions for the grant of EMRs for distribution and sale of pharma products on
fulfilment of certain conditions.
⮚ Grant of EMR subject to certain conditions.
* after the amendments (1999) the product
patents related to the pharmaceuticals and agro-
chemicals were kept on hold for examination till 2005. It is called a mailbox or black
box.
16. 2002 ⮚ The uniform 20-year term of the patent for all inventions.
⮚ Disclosure of source and geographical origin of biological material made
compulsory.
⮚ Establishment of Appellate Board.
⮚ Compulsory License provisions strengthened.
17. 2003 ⮚ The Patents Rules, 2003 were introduced.
18. 2005 ⮚ Product patent for inventions in all fields of technology including food, drug,
chemicals and microorganisms.
⮚ New forms of known substances excluded in order to prevent the ever-greening of
the patent.
⮚ Introduction of the pre-grant opposition.
⮚ Introduction of post-grant opposition.
⮚ Extension of grace period to 12 months.

Copyrights and Related Rights

19. 1847 ⮚ The concept of Copyrights in India was introduced.
⮚ Validity - Lifetime+7 years but not more than
42 years in total.
20. 1914 Copyright Act, 1914 was introduced based on the Imperial Copyright Act, 1911 of
UK.
21. 1957 Copyright Act, 1914 was replaced with Copyright Act, 1957 with minor
modifications.

9
MODULE 3

22. 1984 Penalty on second and subsequent conviction.

23. 1994 Registration of Copyright Society made mandatory.

24. 2012 ⮚ To comply with international Treaties for copyrights protection in the digital
environment.
⮚ Right to receive royalties for authors and music composers.
⮚ Exception of copyrights for physically
disabled persons to access any work.

25. 2013 Copyrights Rules, 2013 introduced.

Trademarks
26. 1940 Trademarks Registry established in India.
27. 1958 The Trade and Merchandise Marks Act, 1958 enacted as per TRIPS Agreement.

28. 1999 Amended to avoid duplicity and ensure securing proprietors‘ trade and goodwill.

29. 2002 Trademarks Rules introduced.

30. 2010 ⮚ Amended to comply with Madrid Protocol for international filing.
⮚ Provision for filing opposition of the registration within 4 months.

31. 2013 Trademarks Rules introduced.

Geographical Indications
32. 1999 Being a member of the World Trade Organization (TRIPS), GI of goods (Registration
and Protection) Act was introduced.

33. 2002 The Geographical Indications of Goods (Registration and Protection) Rules, 2002 was
introduced.

34. 2003 The Geographical Indications of Goods (Registration & Protection) Act
came into force.

Designs
35. 1872 Patterns and Designs Protection Act introduced for the protection of new patterns and
designs.
36. 1888 Amended as Invention and Design Act, 1988 for the protection of new inventions and
designs.
37. 1911 Renamed as The Indian Patent and Design Act.
38. 2000 Design Act, 2000 was introduced; separated from the Indian Patent and Design Act.

39. 2001 Design Rules, 2001 introduced.

Semiconductor Integrated Circuits Layout Design (SICLD)

40. 2000 Semiconductor Integrated Circuits Layout Design
(SICLD) Act 2000 introduced as a signatory of WTO.
41. 2001 SICLD Rules introduced.

10
MODULE 3

Protection of Plant Varieties and Farmers' Rights (PPV&FR)

42. 1970 The Patent Act, 1970 excluded plants and animals in whole or in any part from
patentability
(in 1999 amendments).
43. 1991 Enactment of protection of new varieties of plants on sui generis basis on the lines of
UPOV.
44. 2001 In line with TRIPS Agreement enactment of PPV&FR Act was introduced.

Biological Diversity
45. 2002 The Biological Diversity Act, 2002 introduced on
the lines of the Convention on Biological Diversity (CBD, 1992).
46. 2003 ⮚ Establishment of National Biodiversity Authority.
⮚ Designation of repositories under the Biological Diversity Act.

47. 2004 Biological Diversity Rules introduced.

Source: http://www.ipindia.nic.in/history-of-indian-patent-system.htm

CHAPTER-2

CATEGORIES OF INTELLECTUAL PROPERTY

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

2.1. Patents

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

2.1.1. Conditions for Obtaining a Patent Protection

There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be fulfilled for a
product or a process to qualify for the grant of a patent. The criterion encompasses:

1. Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application is new and not
known to anybody in the world. In other words, the innovation is a) not in the knowledge of the public,
b) not published anywhere through any means of publication and c) not be claimed in any other
specification by any other applicant.

11
MODULE 3

2. Inventive step - Not obvious to the person (s) skilled in the art. The innovation is a) a technical
advancement over the existing knowledge, b) possesses economic significance and, c) not obvious to a
person skilled in the concerned subject.
3. Capable of industrial application - For the benefit of society. The invention is capable of being made or
used in any industry.

2.1.2. To Patent or Not to Patent an Invention

Once an invention has been developed, the inventor has to decide whether to exploit the invention for personal
benefits as provided by the statutory laws of the country or put it in the public domain. By and large, the inventor
prefers the former option. Only a miniscule of inventions are placed in the public domain without claiming any
benefits. In the latter case, anybody can exploit the innovation for commercial or societal benefit without paying
any money to the inventor.

If the owner of an invention wishes to seek monetary gains, he can choose from either of the two options, i.e.
patenting or Trade Secret. If the inventor is absolutely sure of maintaining the secrecy of invention for a very long
period (maybe 100 years or more) and the probability of reverse engineering of the technology is nil or very low,
then the ‗Trade Secret 'category is preferred. If the invention has a short life span or can be kept secret only for a
small period of time (a couple of years or so) or the probability of reverse engineering is high once the invention
is in the public domain, then the patent‘ category is preferred.

2.1.3. Rights Associated with Patents

As per the Court of Law, a patent owner has the right to decide who may or may not use the patented invention.
In other words, the patent protection provided by the law states that the invention cannot be commercially made,
used, distributed, imported, or sold by others without the patent owner's consent. The patent owner may permit
other parties to use the invention on mutually agreed terms. As a matter of fact, the patent rights are negative rights
as the owner

is restricting others from using the patent in any manner without his prior permission. The patent holder may
choose to sue the infringing party to stop illegal use of the patent and also ask for compensation for the
unauthorized use.

2.1.4. Enforcement of Patent Rights

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

2.1.5. Inventions Eligible for Patenting

Patents may be granted for inventions/technologies in any field, ranging from a paper clip or ballpoint pen to
a nanotechnology chip or a Harvard mouse (mouse with cancer genes).

It is a general belief that patents are awarded only to major scientific breakthroughs. But, it is not true. In fact,

12
MODULE 3

the majority of patents are granted to inventions displaying an improvement over the existing invention. For
example, many patents can be awarded to a single molecule e.g. penicillin (an antibiotic that kills microbes) and
its derivatives. The derivatives are made by making subtle changes in the structure of the penicillin resulting in
new/improved properties, such as acid stability or temperature stability or killing a wide range of microbes (germs).
The new antibiotic molecules, known as second, third or fourth generation penicillin can also be patented.

In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen, eyeglasses, textiles,
mobile phones, wrist watch, bicycle, scooter, car, television, cold drinks, beverages and many more. It is not
uncommon that many products contain several inventions (patents) e.g. the laptop computer involves hundreds of
inventions working together. Similarly, cars, mobile phones and televisions have many patented components.

2.1.6. Non-Patentable Matters

In the ‗Patent Act, 1970, there are some exclusions (product and processes) that cannot be patented, such as:

17. Invention contrary to public morality - a method for human cloning, a method for gambling.
18. Mere discovery - finding a new micro-organism occurring freely in nature, laws of gravity.
19. 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.
20. Frivolous invention - dough supplemented with herbs, merely changing the taste of the dough, 100 years
calendar, bus timetable.
21. Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to a bucket.
22. 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.
23. 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.
24. Topography of integrated circuits - protection of layout designs of integrated circuits is provided separately
under the Semiconductor Integrated Circuit Layout Designs Act, 2000.
25. 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.
26. 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.

2.1.7. Patent Infringements

Once the patent is granted to the applicant, he owns the right to use or exploit the invention in any capacity. If
anyone uses the invention without the prior permission of the owner, that act will be considered an infringement
of the invention. Infringements can be classified into two categories:

Direct Infringement - when a product is substantially close to any patented product or in a case where the
marketing or commercial use of the invention is carried out without the permission of the owner of the invention.
Indirect Infringement - When some amount of deceit or accidental infringement happens without any
13
MODULE 3

intention of infringement.
If such an unlawful act has been committed, the patentee holds the right to sue the infringer through judicial
intervention. Every country has certain laws to deal with such unlawful acts. Following reliefs are made available
to the patentee:

● Interlocutory/interim injunction.
● Damages or accounts of profits.
● Permanent injunction.

It is pertinent to mention that the Central government always holds the rights (Section 100 of the Patent Act,
1970, Rule 32 of the Patent Rules, 2003) to use the invention in the case of national emergency or other
circumstances of extreme urgency after notifying the owner.

2.1.8. Avoid Public Disclosure of an Invention before Patenting

Generally, an invention that has been either published or publicly displayed cannot be patented, as the claimed
invention will lose the ‗Novelty‘ criterion. However, under certain circumstances, the Patents Act provides a grace
period of 12 months for filing a patent application from the date of its publication in a journal or presentation in a
reputed scientific society or exhibition.

Sometimes, disclosure of an invention before filing a patent application is unavoidable, e.g. selling your
invention to a potential investor or a business partner who would like to know complete details of the invention in
order to judge its commercial value. In such a case, it is advisable to sign a Non-Disclosure Agreement (NDA) or
any other confidential agreement to safeguards your interest.

2.1.9. Process of Patenting

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

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

Filing of Application with IPO

Publishing

Examination

Grant of the Patent

2.1.9.1. Prior Art Search - Before an inventor embarks upon the patent filing process, he has to ensure that his
invention is ‗novel‘ as per the criterion for the grant of a patent. For this, he has to check whether or not his
invention already exists in the public domain. For this, he needs to read patent documents and Non-Patent
Literature (NPL), scientific journals/reports/magazines, etc. The information lying in the public domain in any
form, either before the filing of the patent application or the priority date of the patent application claiming the

14
MODULE 3

invention, is termed as Prior Art.

Conducting a prior art search before filing the patent has advantages as it averts infringement, tracks research
and development and provides access to detailed information on the invention. The prior art search is carried out
on the parameters such as novelty, patentability, state of the art, infringement, validity and freedom to operate.
The commonly used databases for prior art search fall in two categories i.e. Patents Databases and NPL.

Patents’ Databases
1. Indian Patent Advanced Search System
(InPASS- http://ipindiaservices.gov.in/publicsearch/).

Unpaid
2. Patentscope(WIPO- https://www.wipo.int/patentscope/en/).
3. Espacenet(EU- https://worldwide.espacenet.com/patent/).
4. USPTO(USA- https://www.uspto.gov/).
5. Google Patents Advanced Search
(https://patents.google.com/advanc
ed).
1. Orbit Intelligence
(https://www.questel.com/business-intelligence-software/
orbit-intelligence/).
2. Derwent Innovation
(https://clarivate.com/derwent/solutions/derwent-
innovation/).
3. PROQUEST
(https://about.proquest.com/search/?searchKeyword=paten
t+).
Paid

Non-Patent Literature (NPL)

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, Datasheets, Blueprints, etc.).
3. Others: Newspapers, Websites, Technology blogs, Researchers websites, etc.
Although, majority of NPL data is available freely on the public forum, some of the journals are paid and can
be accessed after paying the subscription. Major Patent Offices such as the United States Patent and Trademark
Office's (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), etc. are maintaining in- house NPL
databases to make patents examination more effective.

2.1.9.2. Choice of Application to be Filed - Once a decision has been made to patent the invention, the next step
is, what kind of application needs to be filed i.e. provisional patent application or complete (Final) patent
application - generally, the provisional patent application is preferred for the following reasons:

4. It is cheaper, takes less time, and involves fewer formalities.

5. Any improvements made in the invention after the filing of the provisional application can be included in the
final application. In other words, the provisional application does not require complete specifications of the
inventions. The application can be filed even though some data is yet to be collected from pending
experiments.

15
MODULE 3

6. A provisional application allows you to secure a priority date for the patent applied.
However, it is mandatory to file the complete patent application within one year of the filing of the provisional
application; otherwise, the application stands rejected.

2.1.9.3. Patent Application Forms

As per the Patent Act, 1970 (Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and sub- rule (1) of rule 20,
the application for the grant of patent is filed using Form-1 (Fig. 2.2) and Form-2 (Fig. 2.3). The information
sought in Form-1 is general in nature i.e. Title of Application, Names of Applicant(s) and Inventor(s), Type of
Application (Ordinary, Convention, PCT-NP (PCT- National Phase), Divisional, Patent of Addition, etc.).
Whereas Form-2 seeks technical information and whether to file the provisional application or complete the
application. For ‗Provisional Application‘, only Description of the Invention‘ and the ‗Abstract‘ is to be furnished.
Whereas, ‗Complete Application requires ‗Description of the Invention‘, ‗Abstract‘, ‗Claims‘ and the manner in
which invention has to be performed.

The Claims‘ of the patent are a very crucial part of the specifications because they define the actual boundary
of the invention.Claims‘ specify what is actually claimed by the invention and what is being sought to be protected.
It clearly describes what the patent does and does not cover. The Claims are usually expressed as a declaration of
technical particulars articulated in legal terms. Claims can be classified into two types

a) Independent Claims (stand alone claim) and

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

Figure 2.2: Form-1 (application for the grant of a patent).

"FORM 1 (FOR OFFICE USE ONLY)

THE PATENTS ACT 1970 (39 of 1970) and THE
PATENTS RULES, 2003 APPLICATION FOR
GRANT OF PATENT
(See section 7, 54 and 135 and sub-rule (1) of rule 20)
Application No.
Filing date:
Amountof Feepaid:
CBR No:
Signature:
1. APPLICANT'S REFERENCE /
IDENTIFICATION NO. (AS ALLOTTED BY
OFFICE)
2. TYPE OF APPLICATION [Please tick (1 ) at the appropriate category]

Ordinary ( ) Convention ( ) PCT-NP ( )

16
MODULE 3

Divisional ( ) Patent of Divisional ( ) Patent of Divisional ( ) Patent of

Addition ( ) Addition ( ) Addition ( )

3A APPLICANT(S)
Name in Full Nationality Countryof Address of the Applicant
Residence

House No.
Street
City
State
Country
Pin code

3B CATEGORY OF APPLICANT [Please tick ( ) at the appropriate category]

Natural Person ( ) Other than Natural Person

Small Entity ( ) Start-up ( ) Others ( )
4. INVENTOR(S) [Please tick (1 ) at the appropriate category]

Are all the inventor(s)

Yes ( ) No ( )
same as the applicant(s)
named above?

If "No", furnish the details of the inventor(s)

Country of
Name in Full Nationality Address of the Inventor
Residence
House No.
Street
City
State
Country
Pin code

5. TITLE OF THE INVENTION

IN/PA No.
6. AUTHORISED REGISTERED
Name
PATENT AGENT(S)
Mobile No.
Name
Postal Address
Telephone No.
7. ADDRESS FOR SERVICE OF APPLICANT
Mobile No.

17
MODULE 3

IN INDIA Fax No.

E-mail ID

8. IN CASE OF APPLICATION CLAIMLNG PRIORITY OF APPLICATION FILED IN CONVENTION

COUNTRY, PARTICULARS OF CONVENTION APPLICATION

Application Name of the Title of the IPC (as classified in the

Country Filing date
number applicant invention convention country)

9. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF INTERNATIONAL

APPLICATION FILED UNDER PATENT CO-OPERATION TREATY (PCT)

International application number International filing date

10. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16, PARTICULARS OF

ORIGINAL (FIRST) APPLICATION
Original (first) application No. Date of filing of original (first) application

11. IN CASE OF PATENT OF ADDITION FILED UNDER SECTION 54, PARTICULARS OF MAIN
APPLICATION OR PATENT

Main application/patent No. Date of filing of main application

12. DECLARATIONS
(i) Declaration by the inventor(s)
(In case the applicant is an assignee: the inventors) may sign herein below or the applicant may upload the
assignment or enclose the assignment with this application for patent or send the assignment by post/electronic
transmission duly authenticated within the prescribed period).
I/We,the above named inventor(s) is/are the true & first inventor(s) for this Invention and declare that the
applicant(s) herein is/are my/our assignee or legal representative.
(a) Date

(b) Signature(s)

(c) Name(s)

(ii) Declaration by the applicant(s) in the convention country

(In case the applicant in India is different than the applicant in the convention country: the applicant in
the convention country may sign herein below or applicant in India may upload the assignment from the
applicant in the convention country or enclose the said assignment with this application for patent or send the
assignment by post/electronic transmission duly authenticated within the prescribed period)
I/we, the applicant(s) in the convention country declare that the applicant(s) herein is/are my/our assignee or
legal representative.
(a) Date

18
MODULE 3

(b) Signature(s)

(c) Name(s) of the signatory

Figure 2.3: Form-2 (provisional/complete specifications).

FORM 2
THE PATENT ACT 1970
(39 of 1970)
&
The Patents Rules, 2003
PROVISIONAL/COMPLETE SPECIFICATION
(See section 10 and rule 13)
1. TITLE OF THE INVENTION
2. APPLICANT(S)
(a) NAME:
(b) NATIONALITY:
(c) ADDRESS:
3. PREAMBLE TO THE DESCRIPTION
PROVISIONAL COMPLETE

The following specification The following specification

describes the invention. particularly describes the
invention and the manner in
which it is to be performed.
4. DESCRIPTION (Description shall start from next page)
5. CLAIMS (not applicable for provisional specification. Claims
should start with the preamble — ‗l/we claim‘ on separate page)
6. DATE AND SIGNATURE (to be given at the end of last page of
specification)
7. ABSTRACT OF THE INVENTION (to be given along with
complete specification on separate page)

19
MODULE 3

Note: -
Repeat boxes in case of more than one entry.
To be signed by the applicant(s) or by authorized registered patent
agent.
Name of the applicant should be given in full, family name in the
beginning.
Complete address of the applicant should be given stating the postal
index no. /code, state and country.
Strike out the column which is/are not applicable
Source: http://www.ipindia.nic.in

2.1.9.4 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 Intellectual Property Office Building
Pradesh, Punjab, Plot No. 32, Sector 14, Dwarka,
Rajasthan, Uttar New Delhi-110078
Pradesh, Uttarakhand, Phone: 011-28032491
Delhi and the Union Fax: 011-28034301
Northern Territory of
Email: [email protected]
Chandigarh, Jammu
and Kashmir and
Ladakh.
patent Office Intellectual Property Building
Andhra Pradesh,
G.S.T. Road, Guindy, Chennai-600032 Phone: 044-
Karnataka, Kerala,
22505242 Fax: 044-22502066 Email: chennai-
Tamil Nadu, Telangana
[email protected]
and the Union
Southern Territories of
Pondicherry and
Lakshadweep
BoudhikSampada Bhawan, Antop Hill,S. M. Road, Mumbai
Maharashtra, Gujarat,
- 400 037.
Madhya Pradesh, Goa
Phone: 022- 24153651,
and Chhattisgarh and
the Union Territories of 24148165
Western Daman and Diu & Fax: 022-24130387
Dadra and Nagar Email: [email protected]
Haveli

20
MODULE 3

Intellectual Property Office Building,

CP-2 Sector V, Salt Lake City
Kolkata-700091
Phone: 033-23679101,

Rest of 033-23671987
Remaining States
India Fax: 033-23671988
Email: kolkata- [email protected]
Source: http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm

For a foreign applicant, the address for service in India or place of business of his patent agent determines
the appropriate Patent Office for filing a patent application. In the case of joint applications, all the applicants are
bestowed with equal rights and consideration.

2.1.9.5. 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 (from the date of filing
of the application or the priority claimed date, whichever is earlier), the application is published in the Official
Journal of Patent Office (http://www.ipindia.nic.in/journal- patents.htm). The purpose of publishing the
application is to inform the public about the invention. The publication of an application is a mandatory step.

2.1.9.6 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: A person/ Organization
patentee/applicant plans to sell or license the patent or seek an who owns the patent (granted)
investor). For this, the applicant has to fill a Form-9 and submit it to
the Controller General.

2.1.9.7 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.

2.1.9.8. Grant of a Patent - After fulfilling all the requirements for the grant of a patent, including all
objections/queries raised by the
‗Patent Examiner‘ and the public at large, the patent is granted to the applicant. The granted patent is published
in the Official Journal of the Patent Office. This journal is published every Friday and contains information related
21
MODULE 3

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.

Figure 2.4: Flowchart for the process of filing a patent application

2.1.9.9. Validity of Patent Protection

The patent protection is granted to an applicant for a limited period, generally 20 years, starting from the date of
filing of the application. Once a patent is granted for an invention in India, the next vital step is to ensure that it
is renewed annually by paying Patent Renewal Fee as per Section 53, Rule 80 of the Indian Patents Act, till the
expiry of the patent grant period. Non-payment of Patent Renewal Fee might result in the cancellation of the
patent.

In some countries, patent protection may be extended beyond 20 years. The extension aims to compensate
for the time expended on the administrative approval procedure before products can be put on the market. The
time taken for this procedure means that the patent owner may sometimes not be able to benefit from his right for
a considerable period after the grant of the patent.

2.1.9.10. 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:

7. The applicant for the patent wrongfully obtained the invention or any part of the invention.
8. The invention claimed has been published before the priority date.
9. The invention claimed was publicly known/used before the priority date.

10. The invention claimed is obvious and does not involve an inventive step.

22
MODULE 3

11. The subject of the claim is not patentable as per Chapter II of the Patent Act, 1970.

12. The details/specifications of the invention do not sufficiently and clearly describe the invention.

2.1.10. Commercialization of a Patent

The patent owner may grant permission to an individual/organization/industry to make, use, and sell his
patented invention. This takes place according to agreed terms and conditions between the involving parties. A
patent owner may grant a license to a third party for the reasons mentioned below:

13. The patent owner has a decent job e.g. university professor and has no desire or aptitude to exploit the patent
on his own.

14. The patent owner may not have the necessary manufacturing facilities.

15. The manufacturing facility is not able to meet the market demand.

16. The patent owner wishes to concentrate on one geographic market; for other geographical markets, he may
choose to license the patent rights.

Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the exclusive rights
to use the patented invention. Only the patentee has the right to licence or deal with the

patent for any deliberations. Although, the validity of the granted patent is for 20 years (from the date of filing a
patent application), but the patentee is required to furnish information (Form-27), on an annual basis relating to
the commercialization/selling of the patent. It is called as ‗Working/Licensing of the Patent‘.

The licensing of a patent can be exclusive or non-exclusive. In an Exclusive Licence, the patent is sold to
only one individual/organization for a fixed time period. During this time period, no other person or entity can
exploit the relevant IP except the named licensee. In Non-Exclusive Licence, a patentee can sell his patent
rights to as many individuals/parties as he likes.

If the patentee is not able to commercialize his patent within three years from the date of the grant of a patent,
any person may submit an application to the Controller of Patents for grant of Compulsory Licensing (of the
patent), subject to the fulfilment of following conditions:

17. Reasonable requirements of the public concerning the patented invention have not been satisfied.
18. The patented invention is not available to the public at a reasonable price.

19. The patented invention is not worked in the territory of India.

2.1.11. Need for a Patent Attorney/Agent

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

2.1.12. Can a Worldwide Patent be Obtained

23
MODULE 3

There is no such term as ‗Universal Patent‘ or ‗World Patent‘ or International Patent‘ as the patent rights are
territorial. An application for a patent must be filed with the Patent Office of the country in which one wishes to
seek patent protection. Unfortunately, this option becomes laborious, cumbersome, time- consuming and expensive
if one wishes to file a patent application in many countries. To ease out this issue, many Regional Offices have been
established which receive patent applications on behalf of a group of nations e.g. European Patent Office and African
Regional Intellectual Property Organization. A single application is sufficient to cover many nations that are
members of a particular regional office/organization. However, if one wishes to seek patent protection in several
countries worldwide, it is preferred to file an international patent under the Patent Cooperation Treaty (PCT). The
only condition is that the applicant‘s country should be a member of PCT. India, along with over 190 nations, is a
member of PCT.

.Do I Need First to File a Patent in India

Yes, in general, Indian residents are required to file the patent application first in India. Subsequently, they
may file for patent protection in other countries. But for this, prior approval is needed from the Patent Office.
However, this approval can be waived off under the following circumstances:

1. The applicant is not an Indian resident.

2. If 6 weeks have expired since the patent application was filed in India by an Indian resident.

3. 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.

4. 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.
5. 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.

2.1.13. Patent Related Forms

There are over 30 patent-related forms. Some of them are mentioned below.

Table 2.2: List of important patent application forms.

Form No. Title of Form

1 Application for a grant of a patent

2 Provisional/Complete specifications

7 Notice of opposition on grant of a patent

7A For filing a representation opposing grant of a patent

17 Application for compulsory license

18 Request for examination of the application for patent

24
MODULE 3

21 Request for termination of compulsory license

22 Application for registration of patent agent

27 Statement regarding the working of the patented invention on a

commercial scale in India

30 Miscellaneous form to be used when no other form is prescribed

Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The- Patents-Rules-2003-Updated-till-23-June-2017.pdf

2.1.14. Fee Structure

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

Table 2.3: Fee for obtaining a patent via electronic filing.

Small entity alone or Others alone or with

with a natural natural person/
Natural
person startup/ small entity
Item person/
/startup ( ) ()
startup ( )

Provisional/Complete Specifications
1,600 4,000 8,000

Request for Early Publication

2,500 6,250 12,500

Request for Examination 4,000 10,000 20,000

Express Request For Examination

5,600 14,000 28,000
Renewal Fees (Annually)
3rd to 6th Year 6th to 10th Year 11th 800 2,000 4,000
to 15th Year 2,400 6,000 12,000
16th to 20th year 4,800 12,000 24,000
8,000 20,000 40,000

Source: http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/ 1_11_1/ Fees.pdf

2.1.15. Types of Patent Applications

1. Provisional Application - A patent application filed when the invention is not fully finalized and some part
of the invention is still under experimentation. Such type of application helps to obtain the priority date for the
invention.

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.
25
MODULE 3

4. Divisional Application - When an application claims more than one invention, the applicant on his own or
to meet the official objection on the ground of plurality may divide the application and file two or more
applications. This application divided out of the parent one is known as a Divisional Application. The priority
date for all the divisional applications will be the same as that of the main (the Parent) Application (Ante-
dating).
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.

2.1.16. Commonly Used Terms in Patenting

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

Table 2.4: Commonly used terms in the domain of patenting.

S. No. Term Definition

1. Inventor Creator of an invention
Organization/individual/industry that files a patent
2. Applicant
application or applies for a patent
A person/organization who owns the patent (granted)
3. Patentee

Organization/individual/industry which obtains a

4. Licensee license of the patent from the Patentee for
commercialization purpose
A person in whose name patent has been assigned
5. Assignee
legally
The applicant is paying the annuity (renewal fee) for
6. In force the patent to keep it alive (Active Patent)

The selling of a patent to an individual/party for

Working on a commercial exploitation is called as working of a
7.
Patent patent

Patent Patent specification is a written description of the

Specification invention and the way of representation and process

8.
of making and using the same

26
MODULE 3

A ‗Priority Right‘ or ‗Right of Priority‘ is a time-

Priority
9. limited right, activated by the first filing of an
Right
application for a patent
The claimed date on which the first application for the
10. Priority Date
invention is filed
Claims can be defined as the scope of the protection
conferred by a patent, or the protection sought in a
Patent patent application. The purpose of the claims is to
11.
Claims define which subject matter is protected by the patent
National Phase An application filed to obtain patents in different
12. Application countries simultaneously based on a single
International/PCT application
The revocation means cancellation of the patent due
Patent to certain reasons, such as lack of patentability or
13.
Revocation wrongfully obtaining a patent
Once a patent has been ceased (e.g. due to non-
Restoration of payment of the fee) it can be restored within a
14.
Patent permitted period by paying the requisite fee

2.1.17. National Bodies Dealing with Patent Affairs

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

2.1.18. Utility Models

In many cases, a new invention involves an incremental improvement over the existing products, but this
technical improvement is not sufficient enough to pass the stringent criterion of Novelty and Non-obviousness
set aside for the grant of a patent. Such small innovations can still be legally protected in some countries and
termed as ‘Utility Models’ or ‘Petty Patents’ or ‘Innovation Patents’. In this case, the criterion of Novelty and
Non-obviousness‘are diluted or relinquished. But the requirement of industrial application or utility is the same
as that for patents.

Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since the grant of a Utility
Model‘ is usually less rigorous and involves minimal cost. MSMEs do not have deep pockets to carry out intensive
R&D leading to the grant of patents. But their innovations are good enough for improving their products/processes
and bringing more financial rewards. Such inventions pass the requirements set aside for Utility Models but not
for patents. The life of the Utility Model is less as compared to the patents. It varies from 7-15 years in different
countries.

Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland, Russian Federation
27
MODULE 3

and Spain, provide protection for Utility Models under their IPR laws. India till date does not recognize utility
patents. If these small patents are recognized under IP protection in India, it will catapult the number of patents
(filed and granted) on an annual base.

28