RM & IPR

Module 3
Introduction To Intellectual Property
Patents
Process of Patenting
3. INTRODUCTION TO INTELLECTUAL PROPERTY
Intellectual Property (IP): There are many ways to describe IP as follows
 Intellectual Property (IP) is a special category of property created by
human intellect (mind) in arts, literature, science, trade, etc.
 It is something produced using the human mind that has commercial
value.
 It also refers to creations of the mind, such as inventions; literary and
artistic works; designs; and symbols, names and images used in
commerce.
 IP is a novel creation of the mind, it is intangible (i.e. invisible and
indivisible) in nature and differs from tangible property, such as land,
house, car etc.
Intellectual Property Rights (IPR): It can be defined in multiple ways as follows
 The term “Intellectual Property Right” refers to the legal rights granted to
protect the creations of the mind or intellect. The creations have both moral
and commercial value.
 Intellectual Property Rights (IPR) refer to legal rights granted to individuals
or entities for their creations or inventions, which are typically intangible.
 Intellectual Property Rights (IPR) are the privileges granted to the
creator/inventor (of IP) in conformance with the laws.
Importance of IPR:
 The inventor is conferred with the special rights to use, sell, distribute, offer
for sale and restrict others from using the invention without his prior
permission.
 IPR aims to exclude third parties from exploiting the protected subject
matter for a certain period (normally 20 years), without explicit authorization
from the right holders.
3.1 Types of Intellectual Property (IP)

IP is often divided into TWO main branches

1. Copyrights and Related Rights:
These rights refer to the creative expressions in the fields of
literature and art, such as books, publications, architecture,
music, wood /stone carvings, pictures, portraits, sculptures,
films and computer-based software/databases.
2. Industrial Property Rights:
The Industrial Property Rights refer to the Patents,
Trademarks, Trade Services, Industrial Designs and
Geographical Indications.
3.2 Role of IP in the Economic and Cultural
Development of the Society
 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.
 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.
 The use of copyrighted material for education and religious
ceremonies is exempted from the operation of the rights
granted in the Copyright Act.
 If an invention/creation is not in the interest of society, it is
not registered by the government for grant of any rights
associated with IP. For example, cloning of human
embryos is banned for IP protection.
 The main issue of concern is to protect Traditional
Knowledge 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 easy as well as accessible approach to
patents and trademarks registration, it is possible to reap
the benefits of our resources.
 IP Governance
 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, to achieve this
goal, the United Nations (UN) has established an organization
called the World Intellectual Property Organization (WIPO).
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.
 For example, the Scimago (publically available online portal
which ranks journals and countries based on the data taken from
Scopus) 2020 report ranked India at 4th position in the parameter
of a number of ‗Research Publications‘, and 50th position in the
parameter of ‗Intellectual Property Rights‘.
 The global ranking can be improved by sensitizing the teaching
and scientific communities about the importance of IP and
creating infrastructure for the same in the institutes of higher
Origin of IP
 Though there is no official record of the origin of IP, it is
believed that a simple 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 approach for IP governance started taking shape
in medieval Europe. In 1623, Britain passed an Intellectual
Property Legislation which entitled association of artisans or
merchants to create innovations and bring them to market
for trade purposes.
 However, this legislation brought a lot of unfair amongst the
public, and thus was replaced by the Statute of Monopolies‘,
which gave the rights to the original creator/inventor for 14
years.
 Another legislation, Statute of Anne‘, was passed by the
British parliament in 1710. This legislation aimed at
strengthening copyrights by providing rights to the authors
for recreation and distribution of their work. The work could
also be renewed for another 14 years.
 By the end of the 18th century and the beginning of the
19th century, almost every country started laying down IP
legislation to protect their novel inventions and creations.
3.3 History of IP in India
3.3.1 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.
3.3.2 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.
 During the 15th and 16th centuries, printing was invented
and widely established in Europe. Copies of ‘Bibles‘ were the
first to be printed.
 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.
 In the second phase Indian legislature, under the British Raj,
enacted the Copyright Act of 1914 based on the Imperial
Copyright Act (1911) of the UK. An Act for criminal sanction
for an infringement was introduced.
 The third phase of the copyrights regime was witnessed
postindependence. 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.
3.3.3. 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.
 Later on, Trade Marks Act, 1940 was rechristened as Trade and
Merchandise Marks Act, 1958.
 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.
3.3.4. 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.
3.3.5. 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.
3.3.6. 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.
3.4. 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.
 Table 1.1: History of Laws and Acts pertaining to intellectual
property in India.
The Intellectual Property Appellate Board (IPAB) was a quasi-judicial body in India that
handled appeals related to patents, trademarks, and geographical indications
*The Madrid Protocol is an international treaty that allows trademark owners to
register their trademarks in multiple countries with one application
* International
Union for the
Protection of
New Varieties
of Plants
(UPOV)
3.5. Patents
 A patent is an exclusive right granted for an innovation.
 The exclusive right legally protects the invention from being
copied or reproduced by others.
 3.5.1. 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.
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
3.5.2. 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.
3.5.3. 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.
3.5.4. 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.
 3.5.5. 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).
 The majority of patents are granted to inventions displaying an
improvement over the existing invention.
 For example, many patents can be awarded to a single
molecule e.g. penicillins (an antibiotic that kills microbes) and its
derivatives.
 The derivatives are made by making subtle changes in the
structure of the penicillin resulting in new/improved properties,
such as acid stability or temperature stability or killing a wide
range of microbes (germs). The new antibiotic molecules, known
as second, third or fourth generation penicillins can also be
patented.
 In our daily life, we use many patented items, such as
toothbrush, toothpaste, shoes, pen, eyeglasses, textiles,
mobile phones, wrist watch, bicycle, scooter, car, television,
cold drinks, beverages and many more.
 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.
3.5.6. 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 are excluded from the scope
of protection under patents.
 Traditional knowledge - an invention which in effect is traditional
knowledge.
3.5.7. Patent Infringements
 If anyone uses the invention without the prior permission of the
owner, that act will be considered an infringement of the
invention. Infringements can be classified into two categories:
 Direct Infringement - when a product is substantially close to
any patented product or in a case where the marketing or
commercial use of the invention is carried out without the
permission of the owner of the invention.
 Indirect Infringement - When some amount of deceit or
accidental infringement happens without any intention of
infringement.
 If such an unlawful act has been committed, the patentee
holds the right to sue the infringer through judicial
intervention. Every country has certain laws to deal with such
unlawful acts.
 Following reliefs are made available to the patentee:
Interlocutory/interim injunction. (judgement to stop temporarily)
Damages or accounts of profits. (A compensatory remedy)
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.
3.5.8. 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.
3.5.9. 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.
 Intellectual Property Offices (IPOs), these offices are
responsible for delivering patents and other intellectual
property (IP) rights.
 Every application for patent is published after expiry of 18
months from the date of its filing or priority date whichever is
earlier.
 Patent examination is the process of reviewing a patent
application to determine if it meets the legal requirements
and patentability criteria.
 The patent shall be granted as expeditiously as possible to
the applicant or, in the case of a joint application, to the
applicants jointly, with the seal of the patent office and the
date on which the patent is granted shall be entered in the
register.
3.5.9.1. 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 invention, is termed as
Prior Art.
 The commonly used databases for prior art search fall in two
categories i.e. Patents Databases and NPL.
 Non-Patent Literature (NPL)
 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.
 Industry/trade publications: Industry reviews and public disclosures
(Social media, YouTube, Books, Magazines, Datasheets, Blueprints,
etc.).
 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.
 The United States Patent and Trademark Office's (USPTO),
European Patent Office (EPO), Japan Patent Office (JPO), etc.
are maintaining inhouse NPL databases.
3.5.9.2. 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:
 It is cheaper, takes less time, and involves fewer formalities.
 Any improvements made in the invention after the filing of the
provisional application can be included in the final application. In
other words, the provisional application does not require complete
specifications of the inventions. The application can be filed even
though some data is yet to be collected from pending experiments.
 A provisional application allows you to secure a priority date for the
patent applied.
 However, it is mandatory to file the complete patent application
within one year of the filing of the provisional application; otherwise,
the application stands rejected.
 3.5.9.3. 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 and Form-2.
3.5.9.4. 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.
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.
3.5.9.6. Publication
Once the patent application has been filed at the
Regional Patent Office, the patent application is kept
secret for 18 months in the Patent Office.
After the expiry of 18 months (from the date of filing of
the application or the priority claimed date, whichever
is earlier), the application is published in the Official
Journal of Patent Office
(http://www.ipindia.nic.in/journalpatents.htm).
The purpose of publishing the application is to inform
the public about the invention. The publication of an
application is a mandatory step.
3.5.9.7. 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.
3.5.9.8. 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.
3.5.9.9. Grant of a Patent
 After fulfilling all the requirements for the grant of a patent,
including all objections/queries raised by the ‘Patent
Examiner‘ and the public at large, the patent is granted to
the applicant.
 The granted patent is published in the Official Journal of the
Patent Office.
 This journal is published every Friday and contains information
related to patent applications published under section (u/s)
11A, post-grant publication, restoration of patent,
notifications, list of non-working patents and public notices
issued by the Patent Office.
3.5.9.10. 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 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.
3.5.9.11. 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
3.5.9.12. Commercialization of a Patent
 The patent owner may grant permission to an
individual/organization/industry to make, use, and sell his
patented invention.
 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.
 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).
3.5.9.13. 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).
3.5.9.14. Can a Worldwide Patent be Obtained
 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.
 3.5.9.15. Do I Need First to File a Patent in India
 Yes, in general, Indian residents are required to file the patent application first in
India. Subsequently, they may file for patent protection in other countries. But for
this, prior approval is needed from the Patent Office. However, this approval
can be waived off under the following circumstances:
 The applicant is not an Indian resident.
 If 6 weeks have expired since the patent application was filed in India by an Indian
resident.
 If two or more inventors are working on an invention in a foreign country and one of
the inventors is an Indian resident. The invention does not have a potential market in
India and hence does not wish to file the patent in India. In such a scenario, the
Indian resident has to seek Foreign Filing Permission (FFP) from an Indian Patent
Office.
 In case of international collaboration, if one part of the invention originated in India
and the inventor is an Indian resident, he has to seek permission to file the patent
outside India.
 If the invention is related to defense or atomic energy or utility model, the inventor/s
needs to seek permission from the Indian Patent Office because inventions related to
these domains are not the subject matter of patentability in India.
3.5.9.16. Patent Related Forms
 There are over 30 patent-related forms. Some of them are mentioned below.
3.5.9.17. 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.
3.5.9.17. Types of Patent Applications
 Provisional Application - A patent application filed when the invention is not fully
finalized and some part of the invention is still under experimentation. Such type of
application helps to obtain the priority date for the invention.
 Ordinary Application - A patent application filed with complete specifications and
claims but without claiming any priority date.
 PCT Application - An international application filed in accordance with PCT. A single
application can be filed to seek patent protection and claim priority in all the member
countries of PCT.
 Divisional Application - When an application claims more than one invention, 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.
 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.
 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.
3.5.9.18. Commonly Used Terms in Patenting
3.5.9.19 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).
3.5.9.20. 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.
 The life of the Utility Model is less as compared to the
patents. It varies from 7-15 years in different countries.
 Nearly 80 countries, including France, Germany, Japan,
South Korea, China, Finland, Russian Federation and Spain,
provide protection for Utility Models under their IPR laws.
 India till date does not recognize utility patents. If these small
patents are recognised under IP protection in India, it will
catapult the number of patents (filed and granted) on
annual basis.