V SEM ISE RM & IPR (BRMK557)

RESEARCH METHODOLOGY &

INTELLECTUAL PROPERTY RIGHTS
(BRMK557)

Course Notes

Prepared By :

Mrs. Jyothi. M & Mrs. Manjushree C V

Asst. Professor, Dept. of ISE,
Vemana Institute of Technology, Bengaluru

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Module 1: Introduction & Ethics in Engineering Research

Syllabus:
Introduction: Meaning of Research, Objectives of Engineering Research, and Motivation in
Engineering Research, Types of Engineering Research, Finding and Solving a Worthwhile
Problem.
Ethics in Engineering Research, Ethics in Engineering Research Practice, Types of Research
Misconduct, Ethical Issues Related to Authorship.

Textbook:
1. Dr. Santosh M Nejakar, Dr. Harish Bendigeri “Research Methodology and Intellectual
Property Rights”, ISBN 978-93-5987-928-4, Edition: 2023-24.

Reference Book:
1. David V. Thiel “Research Methods for Engineers” Cambridge University Press, 978-1-
107-03488- 4
2. Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978-93-
81849-30-9

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Module 1
1. Introduction: What Is Research?
 Research refers to a careful, well-defined (or redefined), objective, and systematic
method of search for knowledge, or formulation of a theory that is driven by
inquisitiveness for that which is unknown and useful on a particular aspect so as to
make an original contribution to expand the existing knowledge base.
 Research involves formulation of hypothesis or proposition of solutions, data
analysis, and deductions; and ascertaining whether the conclusions fit the
hypothesis.
 Research is a process of creating, or formulating knowledge that does not yet exist.
 Booth et al. explains that the research cycle starts with basically a practical
problem: one must be clear what the problem being attempted to solve is and why
it is important.
 This problem motivates a research question without which one can tend to get lost
in a giant swamp of information.
 The question helps one zero in onto manageable volume of information, and in turn
defines a research project which is an activity or set of activities that ultimately
leads to result or answer, which in turn helps to solve the practical problem that one
started with in the first place as shown in Fig. 1.1.
 The building up of background for doing research includes one to acquire the
ability to connect different areas.
 The purpose is to prepare the mind for active work as opposed to becoming a
repository or an encyclopedia.
 Research is not just about reading a lot of books and finding a lot of, gathering a lot
of existing information.
 It is instead adding, maybe small and specific, yet original, contribution to that
existing body of knowledge.
 So, research is about how one poses a question which has relevance to the world
that we are living in, and while looking for that answer one has to be as systematic
as one can be.
 There must be a balance between what is achievable in a research program with a
finite endpoint and also, the contribution it is going to make.
 The objective of a good research program is to try and gain insight into something.

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Or indeed, to try and solve a problem.

 Good research questions develop throughout the project actually and one can even
keep modifying them.
 Through research, one would like to make, or develop, new knowledge about the
world around us which can be written down or recorded in some way, and that
knowledge can be accessed through that writing or recording.

Fig. 1.1 The research flow

diagram [1]

The ways of developing and accessing knowledge come in three, somewhat over-
lapping, broad categories:

(i) Observation is the most fundamental way of obtaining information from a source, and
it could be significant in itself if the thing that we are trying to observe is really
strange or exciting, or is difficult to observe. Observation takes different forms from
something like measurements in a laboratory to a survey among a group of subjects to
the time it takes for a firmware routine to run. The observational data often needs to be
processed in some form and this leads to the second category of knowledge, the
model.
(ii) Models are approximated, often simplified ways of describing sometimes very
complex interactions in the form of a statistical relationship, a figure, or a set of
mathematical equations. For instance, the modeling equation captures the relationship
between different attributes or the behavior of the device in an abstract form and
enables us to understand the observed phenomena.
(iii) The final category is a way of arranging or doing things through processes, algorithms,
procedures, arrangements, or reference designs, to get a certain desired result.

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 The categories of knowledge as enumerated above are shown in Fig. 1.2.

Fig. 1.2 The categories of knowledge in research

 Good research involves systematic collection and analysis of information and is followed
by an attempt to infer a little bit beyond the already known information in a way that is a
significant value addition.
 → that traverses
Usually, engineering research is a journey → from a research area (example:
Control Systems), to the topic (example: Control of Microbial Fuel Cells) and finally onto
the problem (example: Adaptive Control of Single Chamber Microbial Fuel Cells)

 Getting a good problem to solve is more than half the work done.
 However, sometimes the journey can be reverse, for example, the traversal from
(Problem → Topic →Area).
 This can happen when one is led to a problem through a connection to another problem
whose top structure is different.
 Engineering research is the process of developing the perspectives and seeking
improvements in knowledge and skills to enable the recognition, planning, design, and
execution of research in a wide range of forms relevant for engineering and technology
investigations and developments.
 We can start off by describing some problem in the world that exists that is bugging or
worrying us and that we should be addressing.
 It could be that there is something we would like to do or accomplish but currently
cannot because we lack the knowledge to do so.
 It could be that there is something that already works, but we do not know why and we

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would like to understand it better. It could be that we want to do something to see what
will happen.

1.1Objectives of Engineering Research

 The objective of engineering research is to solve new and important problems, and
since the conclusion at the end of one’s research outcome has to be new, but when
one starts, the conclusion is unknown.
 So, the start itself is tricky, one may say.
 The answer is, based on “circumstantial evidence”, intuition, and imagination, one
guesses what may be a possible conclusion.
 A guess gives a target to work toward, and after initial attempts, it may turn out that
the guess is incorrect.
 But the work may suggest new worthy avenues or targets which may be based on
some modifications of the initial target, or may need new techniques, or one may
obtain negative results which may render the initial target or some other targets as
not realizable, or may lead to fortunate discoveries while looking for something
else (serendipity).
 Research objectives can sometimes be convoluted and difficult to follow. Knowing
where and how to find different types of information helps one solve engineering
problems, in both academic and professional career.
 Lack of investigation into engineering guidelines, standards, and best practices
result in failures with severe repercussions.
 As an engineer, the ability to conduct thorough and accurate research while clearly
communicating the results is extremely important in decision- making.
 The main aim of the research is to apply scientific approaches to seek answers to
open questions, and although each research study is particularly suited for a certain
approach, in general, the following are different types of research studies:
exploratory or formulative, descriptive, diagnostic, and hypothesis-testing.
 The objectives of engineering research should be to develop new theoretical or
applied knowledge and not necessarily limited to obtaining abilities to obtain the
desired result.
 The objectives should be framed such that in the event of not being able to achieve
the desired result that is being sought, one can fall back to understanding why it is
not possible, because that is also a contribution toward ongoing research in solving

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that problem.
 Of course, someone else might come along and actually propose a different
approach where the desired objective is indeed possible to be achieved.

1.2Motivation in Engineering Research

The possible motives may be the result of one or more of the following desires:
(i) Studies have shown that intrinsic motivations like interest, challenge, learning,
meaning, purpose, are linked to strong creative performance;
(ii) Extrinsic motivating factors like rewards for good work include money, fame,
awards, praise, and status are very strong motivators, but may block creativity. For
example: Research outcome may enable obtaining a patent which is a good way to
become rich and famous.
(iii) Influences from others like competition, collaboration, commitment, and
encouragement are also motivating factors in research. For example: my friends are all
doing research and so should I, or, a person that I dislike is doing well and I want to do
better.
(iv) Personal motivation in solving unsolved problems, intellectual joy, service to
community, and respectability are all driving factors.
 The following factors would be a mix of extrinsic and intrinsic aspects: (i) Wanting to
do better than what has been achieved in the world, (ii) improve the state of the art in
technology, (iii) Contribute to the improvement of society, (iv) Fulfillment of the
historical legacy in the immediate sociocultural context.
 Several other factors like government directives, funding opportunities in certain areas,
and terms of employment, can motivate people to get involved in engineering research.

1.3 Types of Engineering Research

The different types of research are:

(i) Descriptive versus Analytical:

 Descriptive research includes comparative and correlational methods, and fact-
finding inquiries, to effectively describe the present state of art.
 The researcher holds no control over the variables; rather only reports as it is.
Descriptive research also includes attempts to determine causes even though the
variables cannot be controlled.
 On the contrary, in analytical research, already available facts for analysis and

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critical evaluation are utilized. Some research studies can be both descriptive and
analytical.
(ii) Applied versus Fundamental:
 Research can either be applied research or funda- mental (basic or pure) research.
 Applied research seeks to solve an immediate problem facing the organization,
whereas fundamental research is concerned with generalizations and formulation of
a theory.
 Research concerning natural phenomena or relating to pure mathematics are
examples of fundamental research.
 Research to identify social or economic trends, or those that find out whether
certain communications will be read and understood are examples of applied
research.
 The primary objective of applied research is to determine a solution for compelling
problems in actual practice, while basic research is aimed at seeking information
which could have a broad base of applications in the medium to long term.
(iii) Quantitative versus Qualitative:
 Quantitative research uses statistical observations of a sufficiently large number of
representative cases to draw any conclusions, while qualitative researchers rely on a
few non-representative cases or verbal narrative in behavioral studies such as
clustering effect in intersections in Transportation engineering to make a
proposition.

1.4 Finding and Solving a Worthwhile Problem

 A researcher may start out with the research problems stated by the Supervisor or
posed by others that are yet to be solved.
 Alternately, it may involve rethinking of a basic theory, or need to be formulated or
put together from the information provided in a group of papers suggested by the
Supervisor.
 Research scholars are faced with the task of finding an appropriate problem on
which to begin their research.
 Skills needed to accomplish such a task at the outset, while taking care of possible
implications are critically important but often not taught.
 Once the problem is vaguely identified, the process of literature survey and
technical reading, as described in the next chapter, would take place for more

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certainty of the worthiness of the intended problem.

 However, an initial spark is ideally required before the process of literature survey
may duly begin.
 Sometimes, an oral presentation by somebody which is followed by asking
questions or introspection provides this perspective which reading papers do not.
 At other times, a development in another subject may have produced a tool or a
result which has direct implications to the researcher’s subject and may lead to
problem identification.
 A worthwhile research problem would have one or more attributes.
 It could be nonintuitive/counterintuitive even to someone who knows the area,
something that the research community had been expecting for some time, a major
simplification of a central part of the theory, a new result which would start off a
new subject or an area, provides a new method or improves upon known methods of
doing something which has practical applications, or a result which stops further
work in an area.
 The researcher has to be convinced that the problem is worthwhile before beginning
to tackle it because best efforts come when the work is worth doing, and the
problem and/or solution has a better chance of being accepted by the research
community.
 Not all problems that one solves will be great, and sometimes major advancements
are made through solutions to small problems dealt with effectively.
 Some problems are universally considered hard and open, and have deep
implications and connections to different concepts.
 The reality is that most researchers in their lifetime do not get into such problems.
 However, hard problems get solved only because people tackle them.
 The question a researcher has to grapple with whether the time investment is worth
it given that the likely outcome is negative, and so it is a difficult personal decision
to make.
 At the same time, even in the case of failure to solve the intended hard problem,
there may be partial/side results that serve the immediate need of producing some
results for the dissertation.
 George Pólya (1887–1985) suggested a 4-step procedure for mathematical problem-
solving which is relevant to engineering researchers as well.
 Recent work such as suggest the relevance of these recommendations.

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 The recommended steps to solve a research problem are:

(i) Understand the problem, restate it as if it’s your own, visualize the problem by
drawing figures, and determine if something more is needed.
(ii) One must start somewhere and systematically explore possible strategies to
solve the problem or a simpler version of it while looking for patterns.
(iii) Execute the plan to see if it works, and if it does not then start over with
another approach. Having delved into the problem and returned to it multiple
times, one might have a flash of insight or a new idea to solve the problem.
(iv)Looking back and reflecting helps in understanding and assimilating the
strategy, and is a sort of investment into the future.

2. Ethics in Engineering Research

 Ethics generally refers to a set of rules distinguishing acceptable and unacceptable
conduct, distinguishing right from wrong, or wise aphorisms like the sayings of
Chanakya.
 Most people learn such norms in their formative years, but moral development
continues through different stages of growth.
 Although everyone recognizes some common ethical norms, but there is difference
in interpretation and application.
 Ethical principles can be used for evaluation, proposition or interpretation of laws.
 Although ethics are not laws, but laws often follow ethics because ethics are our
shared values.
 International norms for the ethical conduct of research have been there since the
adoption of the Nuremberg Code in 1947.
 According to Whitbeck, the issues related to research credit dates back to the
establishment of the British Royal Society (BRS) in the seventeenth century to
refine the methods and practices of modern science.
 This event altered the timing and credit issues on the release of research results
since BRS gave priority to whoever first submitted findings for publication, rather
than trying to find out who had first discovered.
 Whitbeck raised two simple but significant questions to address the tricky issue of
authorship in research:
(1) who should be included as an author and
(2) the appropriate order of listing of authors

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 In an increasingly interconnected world, the issue of co-authorship is very relevant

to all researchers.
 There are issues around individuals who may be deeply involved during the
conduct of the research work, but may not contribute in the drafting phase.
 Additionally, certain universities now put restrictions on co-authorship to prevent
malpractices.
 Government bodies, and universities worldwide have adopted certain codes for
research ethics.
 Research ethics and the responsible conduct of research are often erroneously used
interchangeably.
 Research ethics examines the appropriate application of research outcomes, while
responsible conduct of research deals with the way the work is undertaken.

2.1 Ethics in Engineering Research Practice

 Technological developments raise a whole range of ethical concerns such as
privacy issues and data related to surveillance systems, and so engineering
researchers need to make ethical decisions and are answerable for the repercussions
borne out of their research as outcomes.
 The reason that ethics matter in data used in engineering research is usually
because there is impact on humans.
 Certain practices may be acceptable to certain people in certain situations, and the
reasons for unacceptability may be perfectly valid.
 We have unprecedented access to data today, and unprecedented options for
analysis of these data and consequences in engineering research related to such
data.
 Are there things that are possible to do with this data, that we agree we should not
do?
 Engineering ethics gives us the rule book; tells us, how to decide what is okay to do
and what is not.
 Engineering research is not work in isolation to the technological development
taking place.
 Researchers make many choices that matter from an ethical perspective and
influence the effects of technology in many different ways:
(i) By setting the ethically right requirements at the very outset, engineering

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researchers can ultimately influence the effects of the developed technology.

(ii) Influence may also be applied by researchers through design (a process that
translates the requirements into a blueprint to fulfill those requirements). During
the design process, decision is to be made about the priority in importance of the
requirements taking ethical aspects into consideration.
(iii) Thirdly, engineering researchers have to choose between different alternatives
fulfilling similar functions.
 Research outcomes often have unintended and undesirable side effects.
 It is a vital ethical responsibility of researchers to ensure that hazards/risks
associated with the technologies that they develop, are minimized and alternative
safer mechanisms are considered.
 If possible, the designs should be made inherently safe such that they avoid dangers,
or come with safety factors, and multiple independent safety barriers, or if possible a
supervisory mechanism to take control if the primary process fails.

2.2 Types of Research Misconduct

 Engineering research should be conducted to improve the state-of-the-art of
technologies.
 Research integrity encompasses dealing fairly with others, honesty about the
methods and results, replicating the results wherever possible so as to avoid errors,
protecting the welfare of research subjects, ensuring laboratory safety, and so forth.
 In order to prevent mistakes, peer reviews should take place before the research
output is published.
 There may be different types of research misconduct as described in research
articles like [5] and [6], which can be summarized as follows:

(i) Fabrication (Illegitimate creation of data):

 Fabrication is the act of conjuring data or experiments with a belief of
knowledge about what the conclusion of the analysis or experiments would be,
but cannot wait for the results possibly due to timeline pressures from
supervisor or customers.

(ii) Falsification (Inappropriate alteration of data):

 Falsification is the misrepresentation or misinterpretation, or illegitimate
alteration of data or experiments, even if partly, to support a desired

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hypothesis even when the actual data received from experiments suggest
otherwise.
 Falsification and fabrication of data and results, hamper engineering research,
cause false empirical data to percolate in the literature, wreck trustworthiness
of individuals involved, incur additional costs, impede research progress, and
cause actual and avoidable delays in technical advancement.
 Misleading data can also crop up due to poor design of experiments or
incorrect measurement practices.

Fabrication and falsification of data in published content can hurt honest

researchers getting their work published because what they can churn out may
short fall of what is already published through misconduct till the misconduct is
established and subsequently retracted.

 The image of engineering researchers as objective truth seekers is often jeopar-

dized by the discovery of data related frauds.
 Such misconduct can be thwarted by researchers by always trying to reproduce
the results independently when- ever they are interested to do further work in a
published material which is likely to be part of their literature survey.
(iii) Plagiarism (Taking other’s work sans attribution):
Plagiarism takes place when someone uses or reuses the work (including portions) of
others (text, data, tables, figures, illustrations or concepts) as if it were his/her own
without explicit acknowledgement.
Verbatim copying or reusing one’s own published work is termed as self-plagiarism
and is also an unacceptable practice in scientific literature.
The increasing availability of scientific content on the internet seems to encourage
plagiarism in certain cases, but also enables detection of such practices through
automated software packages.
How are supervisors, reviewers or editors alerted to plagiarism?

(i) Original author comes to know and informs everyone concerned.

(ii) Sometimes a reviewer finds out about it during the review process.
(iii) Or, readers who come across the article or book, while doing research.

 Although there are many free tools and also paid tools available that one can
procure institutional license of, one cannot conclusively identify plagiarism, but can
only get a similarity score which is a metric that provides a score of the amount of

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similarity between already published content and the unpublished content under
scrutiny.
 However, a low similarity score does not guarantee that the document is plagiarism
free. It takes a human eye to ascertain whether the content has been plagiarized or
not.
 It is important to see the individual scores of the sources, not just the overall
similarity index.
 Setting a standard of a maximum allowable similarity index is inadequate usage of
the tool.
 Patchwork plagiarism is more difficult to evaluate.
 There are simple and ethical ways to avoid a high similarity count on an about to be
submitted manuscript.
 Sometimes, certain published content is perfect for one’s research paper, perhaps in
making a connection or fortifying the argument presented.
 The published material is available for the purpose of being used fairly. One is not
expected to churn out research outcomes in thin air.
 However, whatever is relevant can be reported by paraphrasing in one’s own words,
that is, without verbatim copy.
 One can also summarize the relevant content and naturally, the summary invariably
would use one’s own words.
 In all these cases, citing the original source is important.
 However, merely because one has cited a source, it does not mean that one can copy
sentences (or para- graphs) of the original content verbatim.
 A researcher should practise writing in such a way that the reader can recognize the
difference between the ideas or results of the authors and those that are from other
sources.
 Such a practice enables one to judge whether one is disproportionately using or
relying on content from existing literature.
(iv) Other Aspects of Research Misconduct:
 Serious deviations from accepted con- duct could be construed as research
misconduct.
 When there is both deception and damage, a fraud is deemed to have taken
place. Sooner or later ethical violations get exposed.
 Simultaneous submission of the same article to two different journals also

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violates publication policies.

 Another issue is that when mistakes are found in an article or any published
content, they are generally not reported for public access unless a researcher is
driven enough to build on that mistake and provide a correct version of the
same which is not always the primary objective of the researcher.

2.3 Ethical Issues Related to Authorship

 Academic authorship involves communicating scholarly work, establishing priority
for their discoveries, and building peer-reputation, and comes with intrinsic burden
of acceptance of the responsibility for the contents of the work.
 It is the primary basis of evaluation for employment, promotion, and other honors.
 There are several important research conduct and ethics related issues connected to
authorship of research papers as described by Newman and Jones, and are
summarized herewith in the context of engineering research.
 Credit for research contributions is attributed in three major ways in research
publications: by authorship (of the intended publication), citation (of previously
published or formally presented work), and through a written acknowledgment (of
some inputs to the present research).
 Authorship establishes both accountability and gives due credit.
 A person is expected to be listed as an author only when associated as a significant
contributor in research design, data interpretation, or writing of the paper.
 Including “guest” or “gift” (co-authorship bestowed on someone with little or no
contribution to the work) authors dilutes the contribution of those who actually did
the work, inappropriately inflates credentials of the listed authors and is ethically a
red flag highlighting research misconduct.
 Sometimes, the primary author dubiously bestows co-authorship on a junior faculty
or a student to boost their chances of employment or promotion, which can be
termed as Career-boost authorship.
 There is also an unfortunate malpractice of co-authorship that can be described as
“Career-preservation authorship” wherein a head of the department, a dean, a
provost, or other administrators are added as Coauthors because of quid pro quo
arrangement wherein the principal author benefits from a “good relation” with the
superiors and the administrator benefits from authorship without doing the required
work for it.

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 Sometimes, an actual contributor abstains from the list of authors due to non-
disclosed conflict of interest within the organization.
 Such co-authorships can be termed as ghost co-authorship.
 Full disclosure of all those involved in the research is important so that evaluation
can happen both on the basis of findings, and also whether there was influence
from the conflicts.
 In another type of questionable authorship, some researchers list one another as
coauthors as a reciprocal gesture with no real collaboration except minimal reading
and editing, without truly reviewing the work threadbare.
 Some authors, in trying to acquire a sole-authored work, despite relying on
significant contribution to the research work from others, recognize that effort only
by an acknowledgment, thereby misrepresenting the contributions of the listed
authors.
 The unrecognized “author” is as a consequence, unavailable to readers for
elaboration.
 All listed authors have the full obligation of all contents of a research article, and so
naturally, they should also be made aware of a journal submission by the
corresponding author.
 It is imperative that their consent is sought with respect to the content and that they
be agreeable to the submission.
 In case of misconduct like inappropriate authorship, while the perpetrator is easier
to find, the degree of appropriate accountability of the coauthors is not always
obvious.
 Being able to quantify the contributions so as to appropriately recognize and
ascertain the degree of associated accountability of each coauthor, is appealing.
 Double submission is an important ethical issue related to authorship, which
involves submission of a paper to two forums simultaneously.
 The motivation is to increase publication possibility and possibly decrease time to
publication.
 Reputed journals want to publish original papers, i.e., papers which have not
appeared else- where, and strongly discourage double submission.

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Module 2: Literature Review and Technical Reading,

Attributions and Citations

Syllabus:
Literature Review and Technical Reading: New and Existing Knowledge, Analysis and
Synthesis of Prior Art Bibliographic Databases, Web of Science, Google and Google Scholar,
Effective Search: The Way Forward Introduction to Technical Reading Conceptualizing
Research, Critical and Creative Reading, Taking Notes While Reading, Reading Mathematics
and Algorithms, Reading a Datasheet.
Attributions and Citations: Giving Credit Wherever Due, Citations: Functions and
Attributes, Impact of Title and Keywords on Citations, Knowledge Flow through Citation,
Citing Datasets, Styles for Citations, Acknowledgments and Attributions, What Should Be
Acknowledged, Acknowledgments in, Books Dissertations, Dedication or Acknowledgments.

Textbook:
1. Dr. Santosh M Nejakar, Dr. Harish Bendigeri “Research Methodology and Intellectual
Property Rights”, ISBN 978-93-5987-928-4, Edition: 2023-24.
Reference Book:
1. David V. Thiel “Research Methods for Engineers” Cambridge University Press, 978-1-
107-03488- 4
2. Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978-93-
81849-30-9

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Module 2: Chapter 2

2. Literature Review and Technical Reading

 The primary goal of literature review is to know the use of content/ideas/approaches in
the literature to correctly identify the problem that is vaguely known beforehand, to
advocate a specific approach adopted to understanding the problem, and to access the
choice of methods used.
 It also helps the researcher understand clearly that the research to be undertaken would
contribute something new and innovative.
 The quality of such review can be determined by evaluating if it includes appropriate
breadth and depth of the area under study, clarity, rigor, consistency, effective analysis.

2.1 New and Existing Knowledge

 New knowledge in research can only be interpreted within the context of what is already
known, and cannot exist without the foundation of existing knowledge.
 In this chapter, we are going to look at how that foundation of knowledge needs to be
constructed so that our new knowledge is supported by it.
 The new knowledge can have vastly different interpretations depending on what the
researcher’s back- ground, and one’s perception of that new knowledge can change from
indifference to excitement (or vice versa), depending on what else one knows.
 The significance can normally be argued from the point of view that there is indeed an
existing problem and that it is known by looking at what already exists in the field.
 The existing knowledge is needed to make the case that there is a problem and that it is
important.
 One can infer that the knowledge that is sought to be produced does not yet exist by
describing what other knowledge already exists and by pointing out that this part is
missing so that what we have is original.
 To do this, one again needs the existing knowledge: the context, the significance, the
originality, and the tools.
 Where does this existing knowledge come from? Normally, one finds this knowledge by
reading and surveying the literature in the field that was established long ago and also
about the more recent knowledge which is in fact always changing.

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 With this foundation in place, the new knowledge that one will make will be much more
difficult to challenge than without that strong foundation in place which is ensured with
lots of references to the literature.
 Often, but not always, the textbooks contain the older established knowledge and the
research papers the newer work.
 Reading the textbooks on one’s topic provide the established knowledge and the
background to be able to read the newer work usually recorded in the research papers.
 Very often, reading a textbook is not too difficult for it is written as a teaching
instrument, and the author of the textbook normally starts from the basics and take the
reader, through everything that one needs to be able to understand that topic.
 This is not at all the case with a research paper where the goal is normally to present a
small piece of new knowledge, and that new knowledge will not have stood the test of
time in the same way as the knowledge in a textbook would have.
 The research paper is written for other researchers out on the edge of knowledge and it
assumes that the reader already knows a lot in that field.
 A researcher may find oneself continually going back to other sources to try and
interpret what is going on in a particular research paper.
 It can be difficult to find the right work to read, but the objective with all this reading
and learning is to be able to get the knowledge that one needs to build the foundation.
 The review process must explain how a research item builds on another one.
 This is because useful research should elucidate how and why certain technical
development took place, so that it is easy for the reader to comprehend why the present
talk is being undertaken, and a good literature survey would provide a convincing under
to that question.
 An effective review of literature ensures a firm foundation for advancing knowledge,
facilitates theoretical growth, eliminates as areas that might be of interest, and opens
new avenues of possible work.
 An efficient literature review is centered around concepts and not authors.
 Generally, a good literature survey is the first expectation of a supervisor from the
research student, and when done well can create a good impression that the state of art
in the chosen field is well understood.
 Simple rules for writing an effective literature review are important for a research
scholar, are provided.

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 A good literature review would not draw hasty conclusions and look into the individual
references to determine the underlying causes/assumptions/mechanisms in each of them
so as to synthesize the available information in a much more meaningful way.
 A literature review should be able to summarize as to what is already known from the
state of the art, detail the key concepts and the main factors or parameters and the
underlying relationships between those, describe any complementary existing
approaches, enumerate the inconsistencies or shortcomings in the published work,
identify the reported results that are inconclusive or contradictory, and provide a
compulsive reason to do further work in the field.
 A good literature survey is typically a two-step process as enumerated below:
(i) Identify the major topics or subtopics or concepts relevant to the subject under
consideration.
(ii) Place the citation of the relevant source (article/patent/website/data, etc.) in the correct
category of the concept/topic/subtopic (with the help of a C, for example).
 It could be that as one is reading and comes across something that one considers to be
very important for one’s work, a core principle or a description of something that just
sounds really good, and one is excited to have found it.
 Naturally, one highlights that section or underlines it, or put an asterisk in the margin, so
that one could come back to it later.
 Effectively, one is saying that it is important and hence the marking so as not to forget
it.
 After having marked or highlighted the section, it is suggested that the paper be put
away or the book be closed. Then one should write about the highlighted part without
copying it.
 As one writes about why one thinks that part is important and what it contains, one is
automatically changing it and making it fit into one’s foundation in the way that makes
sense.
 There are shaping and crafting of that piece of knowledge to fit where one needs it to be.
 To build the knowledge foundation, one needs to be reading and learning continually.
But that is not enough, one also needs to be writing about what one has read.
 A comprehensive literature survey should methodically analyze and synthesize quality
archived work, provide a firm foundation to a topic of interest and the choice of suitable
research methodologies, and demonstrate that the proposed work would make a novel

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contribution to the overall field of research.

2.2 Analysis and Synthesis of Prior Art

 After collecting the sources, usually articles, intended to be used in the literature review,
the researcher is ready to break down each article and identify the useful content in it,
and then synthesize the collection of articles (integrate them and identify the conclusions
that can be made from the articles as a group).
 A literature survey grid of N topics and M sources is shown below to help crystallize
the information in different categories.
 A researcher should analyze the relevant information ascertained in Table 2.1 by
undertaking the following steps:
(i) Understanding the hypothesis,
(ii) Understanding the models and the experimental conditions used,
(iii) Making connections,
(iv) Comparing and contrasting the various information, and
(v) Finding out the strong points and the loopholes.
 It is always good to be suspicious of the claims made in the sources that have been
thoroughly reviewed, especially in the case of tall claims.
 If one is amenable to easily accept whatever is available in the literature, one may find
it difficult to go beyond it in one’s own work and may also fail to carefully analyze with
a suspicious bent of mind one’s own results subsequently.

Source 1 Source 2 … Source M

Topic 1 C
Topic 2 C C

Topic N C C

Table 2.1 The literature survey grid

 The goal of literature survey is to bring out something new to work on through the
identification of unsolved issues, determine the problems in the existing models or
experimental designs, and present a novel idea and recommendations.
 No matter where one gets the available information, one needs to critically evaluate

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each resource that the researcher wishes to cite.

 This methodology analyzes available materials to determine suitability for the intended
research. Relying on refereed articles published in scholarly journals or granted patents
can save the researcher a lot of time.
 Here are a few criteria that could help the researcher in the evaluation of the information
under study:
• Authority: What are the author’s credentials and affiliation? Who publishes the
information?
• Accuracy: Based on what one already knows about the topic or from reading other
sources, does the information seem credible? Does the author cite other sources in a
reference list or bibliography, to support the information presented?
• Scope: Is the source at an appropriate comprehension or research level?

 There are other criteria to consider as well, such as currency, objectivity, and purpose.

 It is important to ensure that the search question is neither too narrow nor too broad.

2.3 Bibliographic Databases

 “Bibliographic databases” refer to “abstracting and indexing services” useful for
collecting citation-related information and possibly abstracts of research articles from
scholarly literature and making them available through search.
 Performing simultaneous searches through such large databases may allow researchers
to overtly rely on any one database and be limited by the intrinsic shortcoming of any
one of them for quality research.
 A researcher should be able to quickly identify the databases that are of use in the idea
or problem that one wishes to explore.

2.3.1 Web of Science

 Web of Science (formerly known as ISI or Thomson Reuters) includes multiple
databases, as well as specialized tools.
 It is a good search tool for scholarly materials requiring institutional license and allows
the researcher to search in a particular topic of interest, which can be made by selection
in fields that are available in drop down menu such as title, topic, author, address, etc.
 The tool also allows sorting by number of citations (highest to lowest), publication date.
 Put quotes around phrases, add more keywords, or use the “Refine Results” panel on the

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left to narrow down the search by keyword, phrases in quotation marks, type of material
such as peer-reviewed journal articles, date, language, and more.
 Expanding the search results is possible by looking for alternate word endings, breaking
the search concepts down, thinking of alternate search terms (including scientific names
if applicable) and connecting them with OR, and using the database’s features for finding
additional references.
 “Cited reference search” option enables a researcher to trace articles which have cited a
formerly published paper.
 Using this element, it is possible to find how a familiar idea has been applied, improved,
or extended subsequently.
 A structured search like this that enables narrowing and refining what one is looking for
is effective to ensure that the results throw up relevant sources and time spent in studying
those is likely to be well utilized.
 Based on the researcher’s need the search result can be broadened or narrowed down
using the built-in fields provided in this website.
 When clicked on any of the search results, this website provides the title of the paper,
authors, the type of journal, volume, issue number and year of publication, abstract,
keywords, etc., so that the researcher has enough information to decide if it is worthwhile
to acquire the full version of the paper.

2.3.2 Google and Google Scholar

 Google is a great place to start one’s search when one is starting out on a topic.
 It can be helpful in finding freely available information, such as reports from
governments, organizations, companies, and so on.
 However, there are limitations:
(i) It’s a “black box” of information. It searches everything on the Internet, with no quality
control—one does not know where results are coming from.
(ii) There are limited search functionality and refinement options.
 What about Google Scholar? Google Scholar limits one’s search to scholarly literature.
However, there are limitations:
1. Some of the results are not actually scholarly. An article may look scholarly at first
glance, but is not a good source upon further inspection.
2. It is not comprehensive. Some publishers do not make their content available to
Google Scholar.

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3. There is limited search functionality and refinement options.

 There are search operators that can be used to help narrow down the results. These help
one find more relevant and useful sources of information.
 Operators can be combined within searches. Here are some basic ones that one can use:

(i) OR—Broadens search by capturing synonyms or variant spellings of a concept.

Example: Synchronous OR asynchronous will find results that have either term present.
(ii) Brackets/Parentheses ( )—Gather OR’d synonyms of a concept together, while
combining them with another concept. Example: RAM (synchronous OR asyn-
chronous).
(iii) Quotation marks “ ”—Narrow the search by finding words together as a phrase, instead
of separately. Example: RAM (synchronous OR asynchronous) “Texas Instruments”.
(iv) Site—limits the search to results from a specific domain or website. This operator is
helpful when searching specific websites such as the BC government, which is
Example: RAM (synchronous OR asynchronous) “Texas Instruments” site:
http://ieeexplore.ieee.org.
(v) Filetype—limits the search to results with a specific file extension one could look for
pdf’s, PowerPoint presentations, Excel spreadsheets, and so on. Exam- ple: RAM
(synchronous OR asynchronous) “Texas Instruments” site: http:// ieeexplore.ieee.org,
filetype: pdf.
 The Search Tools button at the top of the Google results gives you a variety of other
options, such as limiting the results by date.
 There are other operators and tools that one can use in Google and Google Scholar.
Google is but one search tool a researcher can use—it is not the only one!
 It can be hard to sift through all the results in Google or Google Scholar, especially if the
intent is to find scholarly resources from a specific subject area.
 To find the best resources on a topic, one should search in academic databases, in
addition to Google.
 Databases provide access to journal articles and conference proceedings, as well as other
scholarly resources.
 One gets more relevant and focused results, because they have better quality control and
search functionality.
 One should choose a database based on subject area, date coverage, and publication type.
Interfaces vary between databases, but the search techniques remain essentially the same.

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2.4 Effective Search: The Way Forward

 A scholarly publication is one wherein the published outcome is authored by
researchers in a specific field of skill.
 Such work cites all source contents used and is generally peer reviewed for
accuracy and validity before publication.
 Essentially, the audience for such works is fellow experts and students in the field.
The content is typically more complex and advanced than those found in general
magazines.
 While most of the engineering researchers need to refer articles that appear in
scholarly journals, books or other peer-reviewed sources, there is also a
substantially useful content in more popular publications.
 These are informal in approach and aim to reach a large number of readers
including both the experts in the filed and also amateurs, but the content focuses on
news and trends in the field.
 Research outcomes are not typically first disseminated here but are usually meant
for general reading.
 A researcher should use all search tools for comprehensive search.
 No one place or one source exists that will provide all the information one needs;
one will likely need to look in all the places that would be described in this chapter
and in others not mentioned.
 A researcher must consider what type of information is needed, and where it could
be found.
 Not all information is available online. Some information is only available in print.
It can take time for scholarly and peer-reviewed information to be published.
 One might not be able to find scholarly information about something currently
being reported in the news.
 The information may not be available, or studies on a topic of interest to the
researcher have not occurred. In such a case, the researcher should look for similar
studies that would be applicable to the specific topic; look for broad information
(general process, technology, etc.), as well as information that addresses the
specific context of the researcher’s report.
 Searching is an iterative process:
 Experiment with different keywords and operators;

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 Evaluate and assess results, use filters;

 Modify the search as needed; and
 When relevant articles are found, look at their citations and references.
 After the search is complete, the researcher needs to engage in critical and thorough
reading, making observation of the salient points in those sources, and summarize
the findings.
 A detailed comparison and contrast of the findings is also required to be done. This
entire process may be needed to be done multiple times.
 The conclusion of the entire process of literature survey includes a summary of the
relevant and important work done, and also the identification of the missing links
and the challenges in the open problems in the area under study.
 One must note that the literature survey is a continuous and cyclical process that
may involve the researcher going back and forth till the end of the research project.
 Not many people begin research work in their graduate program with an already
acquired skill to efficiently parse math-heavy articles quickly, but those who
eventu- ally succeed in an engineering research career quickly develop that skill
from reading a lot of papers, seeking help in understanding confusing parts, and
getting through relevant coursework to build up the required skills and intuition.
 It is very important to not lose sight of the purpose of an extensive search or
literature survey, for it is possible to spend a very significant amount of one’s time
doing so and actually falsely think that one is working hard.
 Nothing will come of it unless one is an active reader and spends sufficient time to
develop one’s own ideas build on what one has read.
 It is not as if literature survey ends and then research begins, for new literature
keeps appearing, and as one’s understanding of the problem grows, one finds new
connections and related/evolving problems which may need more search.
 It is mandatory for a Ph.D. scholar to write a synopsis of the topic and submit it to
the doctoral committee for approval.
 During this stage, the scholar needs to undertake an extensive literature survey
connected with the problem.
 For this purpose, the archived journals and published or unpublished bibliographies
are the first place to check out. One source leads to another.

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2.5 Introduction to Technical Reading

 It is now imperative for any active researcher to keep oneself abreast with research
outcomes in their field of interest.
 Finding the right work to read can be difficult.
 The literature where knowledge is archived is very fragmented and there are bits and
pieces all over the place.
 Very rarely will one find everything that one wants close together in one place.
 However, it is obvious that the number of papers relevant to a particular researcher is
very few, compared to the actual number of research papers available from peer-
reviewed technical sources.
 It is also important to know where to read from; relying on refereed journals and books
published by reputed publishers is always better than relying on easily available
random articles off the web.
 While reading an engineering research paper, the goal is to understand the technical
contributions that the authors are making.
 Given the abundance of journal articles, it is useful to adopt a quick, purposeful, and
useful way of reading these manuscripts.
 It is not the same as reading a newspaper. It may require rereading the paper multiple
times and one might expect to spend many hours reading the paper.
 A simple, efficient, and logical approach is described in this section for identifying
articles and reading them suitably for effective research.
 Amount of time to be spent will get ascertained after an initial skimming through the
paper to decide whether it is worth careful reading.
 There will also be papers where it is not worth reading all the details in the first
instance. It is quite possible that the details are of limited value, or simply one does not
feel competent to understand the information yet.
 Start out the skimming process by reading the title and keywords (these are any- ways,
probably what caught the initial attention in the first place).
 If on reading these, it does not sufficiently seem to be interesting; it is better to stop
reading and look for something else to read.
 One should then read the abstract to get an overview of the paper in minimum time.
 Again, if it does not seem sufficiently important to the field of study, one should stop
reading further.
 If the abstract is of interest, one should skip most of the paper and go straight to the

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conclusions to find if the paper is relevant to the intended purpose, and if so, then one
should read the figures, tables, and the captions therein, because these would not take
much time but would provide a broad enough idea as to what was done in the paper.
 If the paper has continued to be of interest so far, then one is now ready to delve into
the Introduction section to know the background information about the work and also
to ascertain why the authors did that particular study and in what ways the paper
furthers the state of the art.
 The next sections to read are the Results and Discussion sections which is really the
heart of the paper.
 One should really read further sections like the Experimental Setup/Modeling, etc.,
only if one is really interested and wishes to understand exactly what was done to
better understand the meaning of the data and its interpretation.
 As one works through the literature in this way, one should consider not only the
knowledge that is written down but also the reputation of the people who made that
knowledge.
 A researcher will always need to be searching for the relevant literature and keeping up
to date with it. If one is busy with a small project, the advisor might just give a single
important paper to read.
 But with a larger one, you will be searching for one’s own literature to read. For this
one will need a strategy as there is just too much work out there to read everything.

2.6 Conceptualizing Research

 The characteristics of a research objective are that it must have new knowledge at the
center, and that it must be accepted by the community of other researchers and
recognized as significant.
 But how do we actually conceptualize the research? Besides being original and
significant, a good research problem should also be solvable or achievable.
 This requirement already asks us to think about the method and the tools that could be
used to obtain that new knowledge.
 Now, the significance and the originality and all the theory that we read and tools and
methods that we need to take on a problem, all of these normally come from the
existing recorded literature and knowledge in the field.
 Coming up with a good research objective, conceptualizing the research that meets all
of these requirements is a tough thing to do. It means that one must already be aware

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of what is in the literature.

 That is, by the time one actually has a good research objective, one is probably already
an expert at the edge of knowledge else it is difficult to say with confidence that one
has a good research objective.
 If one is doing research at the Ph.D. level or higher, then conceptualizing the research
is probably something that one needs to do oneself.
 This is a very tough step because one needs to know all that literature in the field.
 So, when working at the Ph.D. level, one needs to be prepared to become that expert,
one needs to be continually reading the literature so as to bring together the three parts:
(i) significant problem, (ii) the knowledge that will address it, and (iii) a possible way
to make that new knowledge.
 How these three aspects would come together will be different for every person doing
research and it will be different in every field, but the only way to be that expert is by
immersing oneself in the literature and knowing about what already exists in the field.
 However, if one is working on a research project that is of a smaller scope than a
Ph.D., let us say a master’s thesis, then conceptualizing the research is possibly too
tough to do, and one does not have the time that it takes to become that expert at the
edge of knowledge.
 In this case, the researcher needs the help of someone else, typically the supervisor
who may already be an expert and an active researcher in that field, and may advise on
what a good research objective might be.
 An established researcher in any field should be able to immediately point to the
landmark literature that one should read first.
 Otherwise one would need to spend a lot of time reading the literature to discover.
 As engineers, we like to build things, and that’s good, but the objective of research is
to make knowledge.
 If one’s research is about building something, one ought to take a step back and ask if
new knowledge is being formulated.
 Even if what one is building is new and has never been built before, if it is something
that any experienced and competent engineer could have come up with, one runs the
risk of one’s work being labeled obvious and rejected as research.

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2.7 Critical and Creative Reading

 Reading a research paper is a critical process.
 The reader should not be under the assumption that reported results or arguments are
correct.
 Rather, being suspicious and asking appropriate questions is in fact a good thing.
 Have the authors attempted to solve the right problem?
 Are there simpler solutions that have not been considered?
 What are the limitations (both stated and ignored) of the solution and are there any
missing links?
 Are the assumptions that were made reasonable?
 Is there a logical flow to the paper or is there a flaw in the reasoning?
 These need to be ascertained apart from the relevance and the importance of the work,
by careful reading.
 Use of judgemental approach and boldness to make judgments is needed while
reading.
 Flexibility to discard previous erroneous judgments is also critical.
 Additionally, it is important to ascertain whether the data presented in the paper is
right data to substantiate the argument that was made in the paper and whether the data
was gathered and interpreted in a correct manner.
 It is also important to decipher whether some other dataset would have been more
compelling.
 Critical reading is relatively easy. It is relatively easier to critically read to find the
mistakes than to read it so as to find the good ideas in the paper.
 Anyone who has been a regular reviewer of journal articles would agree to such a
statement.
 Reading creatively is harder, and requires a positive approach in search.
 In creative reading, the idea is to actively look for other applications, interesting
generalizations, or extended work which the authors might have missed?
 Are there plausible modifications that may throw up important practical challenges?
 One might be able to decipher properly if one would like to start researching an
extended part of this work, and what should be the immediate next aspect to focus
upon.

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2.8 Taking Notes While Reading

 A researcher reads to write and writes well only if the reading skills are good.
 The bridge between reading and actually writing a paper is the act of taking notes
during and shortly after the process of reading.
 There is a well-known saying that the faintest writing is better than the best memory,
and it applies to researchers who need to read and build on that knowledge to write
building on the notes taken.
 Many researchers take notes on the margins of their copies of papers or even digitally
on an article aggregator tool.
 In each research paper, there are a lot of things that one might like to highlight for later
use such as definitions, explanations, and concepts.
 If there are questions of criticisms, these need to be written down so as to avoid being
forgotten later on.
 Such efforts pay significantly when one has to go back and reread the same content
after a long time.
 On completing a thorough reading, a good technical reading should end with a
summary of the paper in a few sentences describing the contributions.
 But to elucidate the technical merit, the paper needs to be looked at from comparative
perspective with respect to existing works in that specific area.
 A thorough reading should bring out whether there are new ideas in the paper, or if
existing ideas were implemented through experiments or in a new application, or if
different existing ideas were brought together under a novel framework.
 Obviously, the type of contribution a paper is actually making can be determined better
by having read other papers in the area.

2.9 Reading Mathematics and Algorithms

 Mathematics is often the foundation of new advances, for evolution and development
of engineering research and practice.
 An engineering researcher generally cannot avoid mathematical derivations or proofs
as part of research work. In fact, these are the heart of any technical paper.
 Therefore, one should avoid skimming them.
 By meticulous reading of the proofs or algorithms, after having identified the
relevance of the paper, one can develop sound understanding about the problem that

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the authors have attempted to solve.

 Nonetheless, one might skim a technical section if it seems like an explanation of
something already known, or if it is too advanced for the research at the present
moment and needs additional reading to be understandable, or if it seems to specialized
and unlikely to be needed in the course of the research program in which case one can
get back to it later on.
 Implementation of an intricate algorithm in programming languages such as C, C++ or
Java is prone to errors.
 And even if the researcher is confident about the paper in hand, and thinks that the
algorithm will work, there is a fair chance that it will not work at all.
 So one may wish to code it quickly to check if it actually works.

2.10 Reading a Datasheet

 Researchers in different fields of engineering will need to read certain types of
documents.
 For example, mechanical and civil engineers would need to read drawings related to
mechanical parts and buildings.
 Researchers in the field of electronics need to read datasheets.
 On occasions, researchers in other fields may also need to incorporate a certain
electronic part in which case careful reading of the datasheet is imperative.
 The same principles like initial skimming of the datasheet are required to ascertain
whether further careful reading is needed.
 Datasheets are instruction manuals for electronic components, which (hopefully)
details what a component does and how one may use it.
 Datasheets enable a researcher (or a working professional) to design a circuit or debug
any given circuit with that component.
 The first page of the datasheet usually summarizes a part’s function and features, basic
specifications, and usually provides a functional block diagram with the internal
functions of the part.
 A pinout provides the physical location of a part’s pins, with special mark for pin 1 so
that the part can be correctly plugged into the circuit.
 Some parts also provide graphs showing performance versus various criteria (supply
voltage, temperature, etc.), and safe region for reliable operation which should be
carefully read and noted by the researcher.

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 One should be also in the lookout for truth tables which describe what sort of inputs
provide what types of outputs, and also timing diagrams which lay out how and at
what speed data is sent and received from the part.
 Datasheets usually end with accurate dimensions of the packages a part is available in.
This is useful for printed circuit board (PCB) layout.
 When working with a new part, or when deciding which part to use in the research
work, it is recommended to carefully read that part’s datasheet to come up with a bit of
shortcut that may potentially save many hours later on.
 As already stated, an engineering researcher will have documents to read which are
specific to the branch of engineering in which one is researching in.
 However, the objective of the authors herein has been to use datasheets as an example
to state the need to pay attention to the art of reading such documents.
 Technical published papers or books are not the only contents that a researcher has to
master reading!

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Module 2: Chapter 3
3. Attributions and Citations: Giving Credit Wherever
Due
 In this chapter, we highlight the importance of expanding attributions and
acknowledgments to roles and responsibilities beyond primary authors of journal
articles or principal investigators of grant proposal documents.
 This would be applicable especially to scientific research projects that involved diverse
skill sets and expertise.
 Academic writing, by definition, must follow certain rules and conventions.
 Among the most important of these are the rules and conventions about citing,
referencing, attributing, and acknowledging the works of others.
 That means giving proper credit wherever due.
 Citing is the practice of quoting from, referring to other authors’ works and ideas in the
text of our work in such a way that the context is clear to the reader.
 Referencing is the listing of the full publication details of a published work that is cited
so as to give background information to the readers.
 Acknowledgment in research publications indicates contributions to scientific work.
However, acknowledgment, attributions, and citations differ in the manner of their
application.
 Acknowledgment is arguably more personal, singular, and simply an expression of
appreciations and contribution.
 In this chapter, we address these issues in detail apart from the legal challenges when
attributions and citations are not adequately done.

3.1 Citations: Functions and Attributes

 Citations (references) credit others for their work, while allowing the readers to trace
the source publication if needed.
 Any portion of someone else’s work or ideas in papers, patents, or presentations must
be used in any new document only by clearly citing the source.
 This applies to all forms of written sources in the form of texts, images, sounds, etc.
and failure to do may be considered plagiarism which will be described in detail in
subsequent chapters of this book.

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 One should avoid distress and embarrassment by learning exactly what to cite.
Depending on the exact type of material, the researcher may need to give due credit to
the creator of the original source.
 The growth of knowledge in any field of study, especially in technological fields, is
primarily incremental and a researcher invariably and naturally builds upon prior
information.
 There are well-established means of preventing and spreading knowledge through
publication of patents, papers (conference paper and the peer-reviewed journal paper),
or articles, and also through textbooks and classrooms.
 While it is true that a research needs to leverage the prior art in the area of research
interest so as to make further development, at the same time it is important to ensure
that credit for that existing knowledge is suitably acknowledged.
 When a bibliography of previously published patents or papers is placed in the new
works of a researcher, a connection is established between the new and previous work.
 As per relevance to context, the researcher provides due credit through the use of a
citation.
 Citations help the readers to verify the quality and importance of the new work and
justification of the findings.
 It is a way to tell readers that certain material in the researcher’s present work has
come from another source and as an ethical responsibility, appropriate credit has been
given to the original author or writer.
 Materials that can be cited include journal papers, conference proceeding, books,
theses, newspaper articles, websites, or other online resources and personal
communication.
 Preferably, citations should be given at the end of a sentence or the end of a paragraph
as can be seen even in this particular paragraph. Citation must contain enough details
so that readers can easily find the referenced material.
 A researcher needs to cite each source twice: (i) in-text citation, in the text of the
article exactly where the source is quoted or paraphrased, and (ii) a second time in the
references, typically at the end of the chapter or a book or at the end of a research
article.
 Most citation styles have the same or similar elements, but differ on the order of
elements and layout.

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 Unless otherwise specifically required by a particular journal or a book, one may

choose any style of one’s choice as long as one is consistent.
 The citation elements differ and so what is to be recorded can differ from one source to
another.
 It is also important to mention the date the source was published and sometimes also
the particular date it was accessed by the researcher if it is related to web content.
 LaTeX, a document preparation system often used by engineering researchers to
automatically format documents that comply with standard formatting needs, is very
effective to track and update citations.
 LaTeX has a steep learning curve and will be repeatedly used in this book to address
different issues pertaining to technical writing which is intimately linked with research
for engineers.
 There are three main functions of citation:
(i) Verification function: Authors have a scope for finding intentional or
unintentional distortion of research or misleading statements. Citation offers the
readers a chance to ascertain if the original source is justified or not, and if that
assertion is properly described in the present work.
(ii) Acknowledgment function: Researchers primarily receive credit for their work
through citations. Citations play crucial role in promotion of individual researchers
and their continued employment. Many reputed organizations and institutes
provide research funding based on the reputations of the researchers. Citations help
all researchers to enhance their reputation and provide detailed background of the
research work.
(iii) Documentation function: Citations are also used to document scientific concepts
and historical progress of any particular technology over the years.
 Citations are the currency that authors would wish to accumulate and the technical
community gives them credit for these contributions.
 When other authors make citations, they honor those who initiated the ideas.
 Authors demonstrate their comprehension skills by identifying, estimating, and
incorporating other’s research work and then create and express their own ideas
precisely while acknowledging ownership of ideas through citation.
 Authors should cite sources to indicate significance of the work to the reader.
 Relevant citations help authors develop an easily understandable argument and prevent

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the need to navigate through work irrelevant to the reader’s interest areas.
 Failure to cite appropriately infringes on the rights of the researcher who did the original
work.
 There are certain cases when references do not fulfill the actual goal of citations and
acknowledgments, and thus do not benefit the reader.
1. Spurious citations: In certain cases, when citation is not required or an appropriate one
is not found, if the author nevertheless goes ahead with including one anyways, it
would be considered as a spurious citation. These sorts of citations do not add any
value to the reader in terms of properly understanding the paper. Such actions result in
loss of time of the reader or reviewer in looking for the cited paper that is otherwise not
relevant. Just as due credit should be given to a paper through citation, inappropriate
credit must be avoided so that the credibility of a research work or of the journal or
conference proceedings where that paper is published is not lost through this sort of
carelessness.
2. Biased citations: When authors cite the work of their friends or colleagues despite
there being no significant connection between the two works, or when they do not cite
work of genuine significance because they do not wish to give credit in the form of
citation to certain individuals, then such actions can be classified as biased citations.
Neglect of citations to prior work whose conclusions or data contradict the current
work is also biased.
3. Self-citations: There is nothing wrong in citing one’s prior work if the citation is really
relevant. Self-citation of prior papers is natural because the latest paper is often a part
of a larger research project which is ongoing. Sometimes, it is also advantageous for
the reader because citations of all the related works of the same author are given in one
paper and this may reduce the effort of the reader in trying to find the full versions of
those papers. However, it is helpful and ethical only if all the papers are really relevant
to the present work .
However, there can also be negative impact on the journal as well as individual
researchers due to inappropriate and irrelevant self-citations. Self-citations in such
cases may be either spurious or biased or even both. Editors of journals who ignore
such types of citations and allow by negligence or otherwise, to be included in
published materials end up directly or indirectly altering the impact factor of those
publications .

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4. Coercive citations: Despite shortcomings, impact factors remain a primary method of

quantification of research, as described later in detail. One side effect is that it creates
an incentive for editors to indulge in coercion to add citations to the editor’s journal.
Even if not explicitly stated, the implied message is that the author could either add
citations or risk rejection. Such demands consequently diminish the reputation of the
journal.

 From the above discussions, it is clear that the author(s) must maintain a balance
between too few and too many citations.
 At the same time, author(s) must give credit whenever due even if it is their own work.

3.2 Impact of Title and Keywords on Citations

 The citation rate of any research paper depends on various factors including significance
and availability of the journal, publication types, research area, and importance of the
published research work.
 Other factors like length of the title, type of the title, and selected keywords also impact
the citation count.
 Title is the most important attribute of any research paper.
 It is the main indication of the research area or subject and is used by researcher as a
source of information during literature survey.
 Title plays important role in marketing and makes research papers traceable.
 A good title is informative, represents a paper effectively to readers, and gains their
attention.
 Some titles are informative but do not capture attention of readers, some titles are
attractive but not informative or related to the readers’ research area .
 The download count and citation of a research paper might be influenced by title.
 There are three different aspects which provide a particular behavior to the title: (i)
types of the title, (ii) length of the title, and (iii) presence of specific markers.
 Stremersch et al. analyzed title characteristics of the papers published during 1990–2002
in the area of research and studied relationship between title characteristics and citation,
which concluded that title length positively affects the number of citations.
 In another study, Sagi and Yechiam found that highly amusing titles have fewer
citations and pleasant titles have no significant relation with citations.
 In yet another study, Jacques and Sebire analyzed different papers’ titles and their

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citations hit for 25 most-cited and 25 least-cited research and review papers of a
particular genre of journals, and found a strong association between title lengths and
citation rates, with highly cited articles having more than twice as many words in the
title compared with lower cited papers.
 Jamali and Nikzad analyzed several open access papers and found that articles with
question-type titles are downloaded more but poorly cited compared to the descriptive
or declarative titles.
 Declarative titles are downloaded and cited less than descriptive titles but difference is
not much.
 As per analysis of Habibzadeh and Yadollahie, longer titles are strongly associated with
higher citation rates.
 Longer titles mainly include the study methodology and/or results in more detail, and so
attracts more attention and citations.
 In general, titles containing a question mark, colon, and reference to a specific
geographical region are associated with lower citation rates, also result-describing titles
usually get citations than method-describing titles.
 Additionally, review articles and original articles usually receive more citations than
short communication articles.
 At least two keywords in the title can increase the chance of finding and reading the
article as well as get more citations.
 Keywords represent essential information as well as main content of the article, which
are relevant to the area of research.
 Search engines, journal, digital libraries, and indexing services use keywords for
categorization of the research topic and to direct the work to the relevant audience.
 Keywords are important to ensure that readers are aware about research articles and
their content.
 If maximum number of allowable keywords are used, then the chance of the article
being found increases and so does the probability of citation count of the article.
 Usage of new keywords should be minimal as such keywords may not be well known to
the research community and so may lead to low visibility of the article.

3.3 Knowledge Flow Through Citation

 Knowledge flows through verbal communications, books, documents, video, audio, and

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images, which plays a powerful role in research community in promoting the

formulation of new knowledge.
 In engineering research, knowledge flow is primarily in the form of books, thesis,
articles, patents, and reports.
 Citing a source is important for transmission of knowledge from previous work to an
innovation.
 Production of knowledge can be related to the citation network. Knowledge flow
happens between co-authors during research collaboration, among other researchers
through their paper citation network, and also between institutions, departments,
research fields or topics, and elements of research.
 Figure 3.1 shows the relationship between citations, knowledge flow, and elements
such as researchers, papers, journal publications or conferences, and institutions.
 If paper A is cited by paper B, then knowledge flows through citation networks across
institutions.
 The complex interdisciplinary nature of research encourages scholars to cooperate with
each other to grab more advantages through collaboration, thereby improving quality of
the research.
 Sooryamoorthy examined the citation impact of the South African publications among
different collaboration types, discipline and sectors, and observed that co-authored
publications had more citations than single author paper and there was a positive co-
relation between number of authors and the number of citations.
 Figure 3.2 shows a relationship between co-authorship and different types of citations.
 Three articles (X, Y, and Z) and five references (X1, X2, X3, Y1, and Y2) of article X
and Y, respectively, are considered. A, B, and C are authors of article X, and D, E, F, G,
and also A are authors of article Y. Article Z has two authors H and E.

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Fig. 3.1 Citation-based knowledge flow

 References X1, X2, X3, Y1, and Y2 have authors (A, P), (H, R), (D), (Q, B, F), and (R),
respectively.
 Based on co-authorship citation network, references X1 and Y1 are considered self-
citation, reference X3 is a level-1 co-author citation because author of article Y is direct
collaborator of author A, reference X2 is a level-1 co-author network because author A
is collaborator of E who collaborated with H.
 We conclude that papers which frequently cite collaborators will also often cite
collaborators of collaborators. Collaborations certainly impact citation counts.

Fig. 3.2 Co-authorship network

3.3.1 Citing Datasets

 The nature of engineering research has evolved rapidly and now relies heavily on data to
justify claims and provide experimental evidences and so data citations must fetch
proper credit to the creator of the dataset as citations of other objects like research
articles.
 Data citations should have provisions to give credit and legal attribution to all
contributors, enable identification and access, while recognizing that a specific style
may not apply to all data.
 Ascertaining the ownership of data can be a complicated issue especially with large
datasets, and issues of funding can also make it a difficult matter.
 A researcher should obtain necessary permission for using data from a particular source.
 Citations related to datasets should include enough information so that a reader could

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find the same dataset again in the future, even if the link provided no longer works.
 It is proper to include a mixture of general and specific information to enable a reader to
be certain that the search result is the same dataset that was sought.

Examples:
1. Historical Data, Sotavento (Wind Farm), Corunna, Spain (July 2016): [Accessed:
4 Oct, 2016] Retrieved from http://www.sotaventogalicia.com/en/real-time-data/
historical

2. Deb, D (2016). [Personnel survey]. Unpublished raw data.

3.3.2 Styles for Citations

 Citation styles differ primarily in the order, and syntax of information about references,
depending on difference in priorities attributed to concision, readability, dates, authors,
and publications.
 Some of the most common styles for citation (as well as other aspects of technical
writing) used by engineers are as follows:

1. ASCE style (American Society of Civil Engineers)

(a) Reference list: This part is to be placed in the bibliography or references at the end
of the article or report. A template with example for the same is given below:
Template for books:
Author Surname, Author Initial. (Year Published). Title. Publisher, City,
Pages Used.

Example:
Wearstler, K., and Bogart, J. (2004). Modern glamour. Regan Books, NY.

Template for websites:

Author Credentials / Company Name (Year Published). ‘Title’.
http://Website URL (Oct. 10, 2013).

Example:
Blade cleaning services (2015):
http://www.bladecleaning.com/problematica (29 Oct, 2016).

Template for journal publications:

Author Surname, Author Initial. (Year Published). ‘Title’. Publication Title,
Volume number(Issue number), Pages Used.

Example:
Johnston, L. (2014). “How an Inconvenient Truth Expanded The Climate
Change Dialogue abd Reignited An Ethical Purpose in The United States”.
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(b) In-text citation for journals or books: The following part is to be placed right
after the reference to the source of the citation assignment:
Template
(Author Surname/Website URL Year Published)

Examples:

i. Citation is a very important part of technical writing. (Deb 2016)

ii. Engineers create devices to monitor mountains so that nearby inhab-
itants can be warned of impending eruptions. (Teachengineering.org
2014)

2. IEEE style (Institute of Electrical and Electronics Engineers) 3 IEEE style is

standard for all IEEE journals and magazines, and is frequently used for papers and
articles in the fields of electrical engineering and computer science. The IEEE style
requires endnotes and that references be cited numerically in the text.Those submitting
to an IEEE publication should see guidelines for the specific journal or magazine and
may also refer to the complete IEEE editorial style manual. Some examples of IEEE
styles of citations for different types of sources are enumerated below:

Chapter in an edited book

[1] A. Rezi and M. Allam, “Techniques in array processing by means of
transformations,” in Control and Dynamic Systems, Vol. 69, Multidimensional
Systems, C. T. Leondes, Ed. San Diego: Academic Press, 1995, pp. 133–180.

3. ASME style (The Association of Mechanical Engineers)

3.4 Acknowledgments and Attributions

 Acknowledgment section is a place to provide a brief appreciation of the contribution of
someone or an organization or funding body to the present work.
 If no particular guideline is available for the intended publication, then it can be
introduced at the end of the text or as a footnote. Acknowledgment is a common
practice to recognize persons or agencies for being responsible in some form or other for
completion of a publishable research outcome.
 Acknowledgment displays a relationship among people, agencies, institutions, and
research. In some case, certain individuals may help in the research work but may not
deserve to be included as authors.
 As a sign of gratitude, such contributions should be acknowledged. Classification of

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acknowledgment into six different categories like moral, financial, editorial, institutional
or technical, and conceptual support.
 Acknowledgments and attributions are also very important in the publications of journal
or conference papers.
 Giving proper credit wherever it is due is very important and even if the contribution is
minor, it should not be neglected.
 A researcher should always recognize the proprietary interest of others.
 Whenever possible, author shall give name of persons who may be responsible, even if
nominally, for designs, inventions, writings, or other accomplishments.
 Given the importance of work published, authorship is also important.
 The reward triangle theory shows a relationship between citations, acknowledgment,
and authorship.
 In engineering research, acknowledgments are meant for participating technicians,
students, funding agency, grant number, institution, or anyone who provide scientific
inputs, shared unpublished results, provided equipment, or participated in discussions.

3.4.1 What Should Be Acknowledged?

 Every author should know that what should/should not be acknowledged.
 Author should acknowledge quotation, ideas, facts, paraphrasing, funding organization,
oral discussion or support, laboratory, and computer work.
(i) Quotation: In technical writing such as in the field of engineering, quotes are used
very rarely. Quotations are of two types:
(a) Direct quotations are used when author use actual words or sentences in the same
order as the original one. Author should use quotation marks for the words or
sentences with proper acknowledgment.
(b) Indirect quotation summarizes or paraphrases the actual quote. In such cases, it is
important to acknowledge with proper name and date.
(ii) Authors should acknowledge people who give appropriate contribution in their
research work. Non-research work contributions are not generally acknowledged in a
scientific paper but it may be in a thesis. Persons must be acknowledged by authors,
who gave a scientific or technical guidance, take part in some discussions, or shared
information to author. Authors should acknowledge assistants, students, or
technicians, who helped experimentally and theoretically during the research work.
(iii) If the researcher received grant from a funding agency and if those funds were used in

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the work reported in the publication, then such support should always be
acknowledged by providing full details of the funding program and grant number in
the acknowledgment section.
The authors should also gratefully acknowledge use of the services and facilities of any
center or organization with which they are not formally affiliated to.An example of
acknowledgment of grant received is as follows:

Acknowledgments:

This research work was funded in part by the Extra Mural Research
Fund- ing 2014–17 (Individual Centric) of the Department of Science
and Tech- nology (DST), Govt. of India.

 If there are any concerns that the provision of the information provided in
acknowledgment may compromise the anonymity dependent on the peer review policy
of a particular journal or conference proceedings, the author(s) may withhold the
acknowledgment information until the submission of the final accepted manuscript.
 Many technical journals explicitly discourage authors to thank the reviewers in their
article submissions.
 This could be construed as favoritism or an attempt to encourage reviewers to accept
their manuscript for reasons other than scientific merit.
 Acknowledging that results have been presented elsewhere: If the results were presented
as an abstract in a journal, then there should be a suitable citation.
 If the results were presented as part of scientific meeting, symposium, or other
gathering, then some relevant information should be provided.
 At the very least, the name of the gathering and year should be cited. Other helpful
items include the location of the gathering (city and state or country) and the full date of
the occasion.
 By acknowledging all help received in one’s research work, the author(s) demonstrate
integrity as a researcher, which in turn encourages continued collaboration from those
who helped out in different ways.
 One may also appropriately bolster one’s colleagues’ careers, as being credited in an
acknowledgment section is emerging as one of many ways a researcher’s professional
impact is evaluated.
 Acknowledgment is no longer simply a means of expressing gratitude.

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 Funding agencies these days often require that their grant be acknowledged and
explicitly state the exact information to be provided if the research work leads to a
publication.
 The grantee is responsible for assuring that an acknowledgment of support is made in
any publication (including websites) of any direct or indirect outcomes from the funded
project.
 The format of required information is often explicitly stated in the terms and conditions
of grants provided.
 Acknowledgments are also appropriate in technical presentations.
 Failure to acknowledge funding may result in the discontinuation of current funding
and/or ineligibility to receive future funding for a certain number of years or
indefinitely.
 Unless the information can be considered “common knowledge,”5 proper attribution of
an idea, algorithm, computational methodology, or experimental design is required even
if a journal operates with double-blind review.

3.4.2 Acknowledgments in Books/Dissertations

 A page of acknowledgments is usually included at the beginning of a thesis/ dissertation
immediately following the table of contents.
 These acknowledgments are longer than the one or two sentence statements in journal
papers or articles in conference proceedings.
 These detailed acknowledgments enable the researcher to thank all those who have
contributed in completion of the research work.
 Careful thought needs to be given concerning those whose inputs are to be
acknowledged and in what order.

Sample Acknowledgement in Thesis:

I wish to express my sincere appreciation to my supervisor Prof. Gang

Tao for the useful comments, remarks and encouragement throughout
this the- sis work. Furthermore, I wish to express my thanks to Prof.
Jacob Hammer for introducing me to the topic and for the support
along the way. Also, I like to thank my peers in the Adaptive Control Lab
such as Yu Liu and Shan- shan Li, who have shared their precious time
during many lively technical discussions. I would like to thank my family
members who have supported me throughout this journey in many
different ways.

 Generally, one should express appreciation in a concise manner and avoid emotive

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language. The following are often acknowledged in these types of acknowledgments:

main supervisor, second supervisor, peers in the lab, other academic staff in the
department, technical or support staff in the department, colleagues from other
departments, other institutions, or organizations, former students, family, and friends.

3.4.3 Dedication or Acknowledgments?

 Dedication is almost never used in a journal paper, an article in a conference
proceedings, or a patent, and it is used exclusively in larger documents like books,
thesis, or dissertations.
 While acknowledgments are reserved for those who helped out with the book in some
way or another (editing, moral support, etc), a dedication is to whomever the author
would like it to be dedicated to, whether it is the author’s mother, the best friend, the
pet dog, or Almighty God.
 And yes, it is possible to dedicate something to someone while also mentioning them
in the acknowledgments.
 For example, one may dedicate a book to one’s spouse, but acknowledge them for
being the moral support and putting up with when one got very stressed.
 The acknowledgments in technical books can be sometimes as brief as the ones in
journal articles.
 The acknowledgment section of a technical report may be a paragraph that is longer
than a journal paper but shorter than dissertations.
 Generally, the length of the acknowledgment may have some correlation with the
length of the document.

Summary:
 Citation is a specific form of attribution, but attribution itself can be done in many
different ways.
 For engineers, citation is very useful to their careers due to the prevailing publish or
perish environment. Proper citation and reference:
 Gives credit and respect to the original author(s).
 Allows readers to find the original source(s).
 Strengthens the credibility of your report. If a researcher does not cite the sources, it
is plagiarism.
 Plagiarism is using another person’s ideas without giving credit or citation and is an
intellectual theft.
 Plagiarism comes in varying degrees, and there are serious consequences for a
researcher if caught plagiarizing.

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 All academic and industrial research organizations have integrity and misconduct
policies.
 Even past one’s time at a research organization, evidence of plagiarism can affect the
integrity and credibility and can also retrospectively make an earned degree null and
void.

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Module 3: Introduction to Intellectual Property,

Patents, Process of Patenting
Syllabus:
Introduction To Intellectual Property: Role of IP in the Economic and Cultural
Development of the Society, IP Governance, IP as a Global Indicator of Innovation, Origin of
IP History of IP in India. Major Amendments in IP Laws and Acts in India.

Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent an

Invention. Rights Associated with Patents. Enforcement of Patent Rights. Inventions Eligible
for Patenting. Non-Patentable Matters. Patent Infringements. Avoid Public Disclosure of an
Invention before Patenting. Process of Patenting. Prior Art Search. Choice of Application to
be Filed. Patent Application Forms. Jurisdiction of Filing Patent Application. Publication.
Pre-grant Opposition. Examination. Grant of a Patent. Validity of Patent Protection. Post-
grant Opposition. Commercialization of a Patent. Need for a Patent Attorney/Agent. Can a
Worldwide Patent be Obtained. Do I Need First to File a Patent in India. Patent Related
Forms. Fee Structure. Types of Patent Applications. Commonly Used Terms in Patenting.
National Bodies Dealing with Patent Affairs. Utility Models.

Textbook:
1. Dr. Santosh M Nejakar, Dr. Harish Bendigeri “Research Methodology and Intellectual
Property Rights”, ISBN 978-93-5987-928-4, Edition: 2023-24.
Reference Book:
1. David V. Thiel “Research Methods for Engineers” Cambridge University Press, 978-1-
107-03488- 4
2. Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978-93-
81849-30-9

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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 the tangible property, such as land, house, 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 restricting 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
softwares/databases.
 The ‘Industrial Property Rights’ refer to the Patents, Trademarks, Trade Services,
Industrial Designs and Geographical Indications.

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.

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 However, if IPR is practised 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 his
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 favour 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 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

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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 (publically available online portal which ranks journals and
countries based on the data taken from Scopus) 2020 report ranked India at 4th

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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 learning.

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 practised 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 18th century and the beginning of the 19 th 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

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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 Hopkins in
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 civil engineer, 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;

 Use of invention by the

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

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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:
 Misuse of patents rights needs to be prevented.
 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.
 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 licencing 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

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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:

The protection term of 20 years for all inventions from the date of filing.
Scope of non-patentable inventions including Traditional Knowledge expanded.
Disclosure of source and geographical origin of biological material made
compulsory.
Provisions concerning convention countries simplified.
Establishment of Appellate Board.
Compulsory license provisions strengthened.
Simplification of procedures.
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:
Product patent for inventions in all fields of technology.
New forms of known substances excluded to prevent evergreening of the
patent.
 Rationalization of the opposition procedure.
 Introduction of pre-grant opposition by representation.
 Introduction of post-grant opposition.
 Compulsory license for export purposes.
 Compulsory license for manufacture.
 Extension of grace period from 6 months to 12 months for filing a patent, if
published in government exhibition.
 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

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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 15 th 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 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

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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

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 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 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 farmer’s 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.

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 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 18 th 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 Tribes and other Traditional Forest Dwellers (recognition of
rights) Act, 2006; National Biodiversity Action Plan, 2009; National Environment

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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.
1949 Dedicated Committee formed under the
7. 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.
10. 1965 After incorporation of the recommendation
submitted by the committee formed in 1949, a

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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.
22. 1984 Penalty on second and subsequent conviction.
23. 1994 Registration of Copyright Society made
mandatory.

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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.

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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

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Module 3: Chapter-2
CATEGORIES OF INTELLECTUAL PROPERTY

 Intellectual Property (IP) is a vast field comprising of technology-led inventions, work

of artisans, novel Industrial Designs, unique brands of commercial items, and
Traditional Knowledge being practised 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,
Trademark, 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 Invention is the
creation of a new idea or
generally provides a new way of doing something or offers a concept.
new technical solution to a problem. Innovation is the process
of translating an invention
 The exclusive right legally protects the invention from being into commercial entity or
copied or reproduced by others. In return, the invention must be widespread use.

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:

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 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.
 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.
 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.

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 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, 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,

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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:

 Invention contrary to public morality - a method for human cloning, a method for
gambling.
 Mere discovery - finding a new micro-organism occurring freely in nature, laws of
gravity.
 Mere discovery of a new form of a known substance - use of aspirin for heart
treatment. Aspirin was patented for reducing fever and mild pains.
 Frivolous invention - dough supplemented with herbs, merely changing the taste of
the dough, 100 years calendar, bus timetable.
 Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to
a bucket.
 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 -
inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium,
Radium, Graphite, Lithium and more as notified by the Central Government from
time to time.
 Literary, dramatic, musical, artistic work - books, sculptures, drawings,
paintings, computer programmes, mathematical calculations, online chatting
method, method of teaching, method of learning a language as they are the subject
matter of Copyright Act. 1957.
 Topography of integrated circuits - protection of layout designs of integrated
circuits is provided separately under the Semiconductor Integrated Circuit Layout
Designs Act, 2000.
 Plants and animals - plants and animals in whole or any part including seeds,
varieties and species and essentially biological processes for the production or
propagation of plants and animals are excluded from the scope of protection under

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patents.
 Traditional knowledge - an invention which in effect is traditional knowledge or
which is an aggregation or duplication of known properties of traditionally known
components are also excluded.

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 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

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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

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

Publishing

Examination

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
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.

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Patents’ Databases
 Indian Patent Advanced Search System
(InPASS- http://ipindiaservices.gov.in/publicsearch/).
 Patentscope(WIPO- https://www.wipo.int/patentscope/en/).

Unpaid
 Espacenet(EU- https://worldwide.espacenet.com/patent/).
 USPTO(USA- https://www.uspto.gov/).
 Google Patents Advanced Search
(https://patents.google.com/advanced).
 Orbit Intelligence
(https://www.questel.com/business-intelligence-software/
orbit-intelligence/).

Paid
 Derwent Innovation
(https://clarivate.com/derwent/solutions/derwent-innovation/).
 PROQUEST (https://about.proquest.com/search/?
searchKeyword=patent+).

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. 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:

 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

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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.

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/writeread data/Portal/IPORule/1_10_1_patents-
amend ments-rules-2005.pdf).

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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 ( )

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)

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

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

Country of
Name in Full Nationality
Residence
Address of the Inventor

House No.

Street

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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
7. ADDRESS FOR SERVICE OF
APPLICANT IN INDIA Telephone No.

Mobile No.

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

Country Filing date
number applicant invention classified in
the
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

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(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
(b) Signature(s)
(c) Name(s) of the signatory

Source: http://www.ipindia.nic.in
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)

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

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Intellectual Property Office

Building,
CP-2 Sector V, Salt Lake
City
Rest of Kolkata-700091
Remaining States Phone: 033-23679101,
India
033-23671987
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 Patentee: A person/
Organization who
can be reduced when the patentee/applicant plans to owns the patent
sell or license the patent or seek an investor). For (granted)
this, the applicant has to fill a Form-9 and submit it
to the
Controller General.

2.1.9.7 Examination –

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 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 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.

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Source: https://www.invntree.com/ (slightly modified)

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:

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 The applicant for the patent wrongfully obtained the invention or any part of the
invention.
 The invention claimed has been published before the priority date.
 The invention claimed was publicly known/used before the priority date.
 The invention claimed is obvious and does not involve an inventive step.
 The subject of the claim is not patentable as per Chapter II of the Patent Act,
1970.
 The details/specifications of the invention do not sufficiently and clearly
describe the invention.

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:

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

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

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

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

 Once the patent is granted, the patentee (person holding the rights to the patent)
enjoys the exclusive rights to use the patented invention.

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

 The licensing of a patent can be exclusive or non-exclusive.

 In an Exclusive Licence, the patent is sold to only one individual/organization for a

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fixed time period.

 During this time period, no other person or entity can exploit the relevant IP except
the named licensee.

 In Non-Exclusive Licence, a patentee can sell his patent rights to as many

individuals/parties as he likes.

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

 Reasonable requirements of the public concerning the patented invention have not
been satisfied.
 The patented invention is not available to the public at a reasonable price.
 The patented invention is not worked in the territory of India.

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

 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 a 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.

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 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.

2.1.13 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.

2.1.14. 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

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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
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

2.1.15 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 Others alone
alone or or with
Natural
with a natural
Item person/
natural person/
startup
person startup/
( )
/startup small entity
( ) ( )
Provisional/Complete
1,600 4,000 8,000
Specifications
Request for Early
2,500 6,250 12,500
Publication
Request for Examination 4,000 10,000 20,000
Express Request For
5,600 14,000 28,000
Examination

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Renewal Fees (Annually)

3rd to 6th Year 800 2,000 4,000
6th to 10th Year 2,400 6,000 12,000
11th to 15th Year 4,800 12,000 24,000
16th to 20th year 8,000 20,000 40,000
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/ 1_11_1/ Fees.pdf

2.1.16 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, 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).
 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.
 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.

2.1.17 Commonly Used Terms in Patenting

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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
2. Applicant
a patent application or applies for a patent
A person/organization who owns the
3. Patentee
patent (granted)
Organization/individual/industry which
4. Licensee obtains a license of the patent from the
Patentee for commercialization purpose
A person in whose name patent has been
Assignee
assigned legally
5.
The applicant is paying the annuity
6. In force (renewal fee) for the patent to keep it alive
(Active Patent)
The selling of a patent to an
Working of individual/party for commercial
7.
a Patent exploitation is called as working of a
patent

Patent Patent specification is a written

Specification description of the invention and the way
8.
of representation and process of making
and using the same
A ‗Priority Right‘ or ‗Right of Priority‘ is
Priority
9. a time-limited right, activated by the first
Right
filing of an application for a patent
The claimed date on which the first
10. Priority Date
application for the invention is filed
Claims can be defined as the scope of the
protection conferred by a patent, or the
Patent protection sought in a patent application.
11.
Claims The purpose of the claims is to define
which subject matter is protected by the
patent
National An application filed to obtain patents in
12. Phase different countries simultaneously based
Application on a single International/PCT application
The revocation means cancellation of the
Patent patent due to certain reasons, such as lack
13.
Revocation of patentability or wrongfully obtaining a
patent
Once a patent has been ceased (e.g. due to
Restoration non-payment of the fee) it can be restored
14.
of Patent within a permitted period by paying the
requisite fee

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2.1.18 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).

2.1.19 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 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.

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Module 4: Copyrights and Related Rights,

Trademarks
Syllabus:
Copyrights and Related Rights: Classes of Copyrights. Criteria for Copyright. Ownership
of Copyright. Copyrights of the Author. Copyright Infringements. Copyright Infringement is
a Criminal Offence. Copyright Infringement is a Cognizable Offence. Fair Use Doctrine.
Copyrights and Internet. Non-Copyright Work. Copyright Registration. Judicial Powers of
the Registrar of Copyrights. Fee Structure. Copyright Symbol. Validity of Copyright.
Copyright Profile of India. Copyright and the word ‘Publish’. Transfer of Copyrights to a
Publisher. Copyrights and the Word ‘Adaptation’. Copyrights and the Word ‘Indian Work’.
Joint Authorship. Copyright Society. Copyright Board. Copyright Enforcement Advisory
Council (CEAC). International Copyright Agreements, Conventions and Treaties. Interesting
Copyrights Cases.
Trademarks: Eligibility Criteria. Who Can Apply for a Trademark. Acts and Laws.
Designation of Trademark Symbols. Classification of Trademarks. Registration of a
Trademark is Not Compulsory. Validity of Trademark. Types of Trademark Registered in
India. Trademark Registry. Process for Trademarks Registration. Prior Art Search. Famous
Case Law: Coca-Cola Company vs. Bisleri International Pvt. Ltd.

Textbook:
1. Dr. Santosh M Nejakar, Dr. Harish Bendigeri “Research Methodology and Intellectual
Property Rights”, ISBN 978-93-5987-928-4, Edition: 2023-24.

Reference Book:
1. David V. Thiel “Research Methods for Engineers” Cambridge University Press, 978-1-
107-03488- 4
2. Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978-93-
81849-30-9.

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Module 4

2.2 Copyrights and Related

Rights
 Copyrights refer to the legal rights provided by law to the original creator of the work
in the fields of literature and computer software.
 The Related Rights encompass the author‘s work in the fields of dramatics, sound
recording, film/video recordings, paintings, architecture, etc.
 Copyrights and Related Rights are one of the categories of IP and governed by the
Copyright Act, 1957 of India.
 This Act provides rights of reproduction, communication to the masses, adaptation and
translation of the work.
 The words author and work need to be understood from the perspective of Copyrights.
The term ‘author’ refers to an individual who develops the content (of work).
 The author can be a writer (literary work), computer programmer (software), composer
(musical work), producer (cinema films, sound recording), photographer (photos).
 The term ‘work’ is a task undertaken in the fields of literature, dramas, music, artistic,
cinematograph film and sound recording.

2.2.1 Classes of Copyrights

In India, following classes of Copyrights exist:

 Literature: Books, Essays, Research articles, Oral speeches, Lectures,

Compilations, Computer programme, Software, Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the medium on which such
recording is made e.g. a Phonogram and a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs, Work of
Architecture, Engravings, and Craftsmanship.
 Musical: Musical notations, excluding any words or any action intended to be
sung, spoken or performed with the music. A musical work need not be written
down to enjoy Copyright protection.
 Cinematograph Films: Cinematograph Film‘ is a visual recording performed by

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any medium, formed through a process and includes a sound recording. For
example, Motion Pictures, TV Programmes, Visual Recording, Sound Recording,
etc.

2.2.2 Criteria for Copyright

 To qualify for Copyright protection, a work must exist in some physical (or
tangible) form.
 The duration of the existence of the physical form may vary from a very short period
to many years.
 Virtually any form of expression which can be viewed or listened to is eligible to
qualify as Copyright.
 Even hurriedly scribbled notes for an impromptu speech are considered
copyrightable material.
 The Copyright work has to be expressed by the creator in his frame of thought.
 In other words, the work has to be original i.e. the author created it from independent
thinking void of duplication.
 This type of work is termed as an Original Work of Authorship (OWA).
 It may appear similar to already existing works but should not be the same.
 The original work may lack quality or quantity or aesthetic merit or all these
parameters; still, it will pass the test of copyrightable work.
 In addition to originality for the work, Copyright protection also requires at least
some creative effort on the part of the author.
 There is no minimum limit for the extent of creativeness.
 It is a subjective matter. The minimal level of creativity needed for Copyright
protection depends on the judgment of the evaluator (adjudicated by the Office of
Registrar of Copyright).
 As an example, mere changing the dimensions of a book will not be granted
Copyright protection.
 Similarly, an address book of alphabetically arranged telephone numbers does not
qualify for Copyright protection as it involves a straightforward alphabetical listing
of phone numbers rather than a creative selection of listings.

2.2.3 Ownership of Copyright

The Copyright laws clearly state the ownership of Copyright.

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 The person who created the work is considered as the first (original) holder
(owner) of the Copyright.
 In case the author is an employee and has been contracted to do the work by a
proprietor (of the company/firm/society/organization, etc.), the owner of the
Copyright shall be the proprietor

 The government will be the primary owner of the government work in the absence
of any kind of arrangement.

 The person delivering a speech is the first owner of the Copyright.

To obtain permission to use copyrighted material, a request for the same should be
made to the legal owner (of the copyrighted material), which could be the original author,
the legal heir (in case of the death of the author), publisher, etc. The request must mention
the following:

 Title, author and/or editor, and edition.

 Precise material to be used.

 The number of copies.

 The purpose of the material e.g. educational, research, etc.

 Form of distribution e.g. hard copy to classroom, posted on the internet.

 Whether the material is to be sold e.g. as part of a course pack.

2.2.4 Copyrights of the Author

 The Copyrights of the creator/author are legally protected under Section 14 of the
Copyright Act, 1957.
 The content (i.e. work) created by the author cannot be used or published by
anyone without the author‘s consent. Copyrights provide exclusive rights to the
author in the areas of publication, distribution, and usage.
 A Copyright owner enjoys two types of rights i.e. Economic Rights (or Proprietary
Rights) and Moral Rights (or Personal Rights).

Economic Rights are associated with financial benefits accruing from the sale of
copyrights. As per the Act, Copyright owners can authorize or prohibit:

 Reproduction of the work in any form, including printed publications or sound

recordings.

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 Distribution of copies of the work.

 Public performance of the work.
 Broadcasting/communicating the work to the public.
 Translating the work into other languages.
 Adaptation of the work, such as converting a novel into a screenplay.
 Moral Rights include Right of Paternity and Right of Integrity.
 The Right of Paternity - even if the Copyright has been licensed to another party, the
original author of the work retains the right to claim authorship i.e. the name of the
author/s will remain even though Copyrights have been transferred to another party
e.g. a book publisher.
 The Right of Integrity the original author has the right to prevent misuse of the work
e.g. alterations/additions/ deletions in work resulting in misrepresentation of the said
work or harming the honor and reputation of the author.
 It is pertinent to mention that for a work, there can be more than one rights holders,
for instance, a musical sound recording has many rights holders, such as the lyricist,
music composer, singer, musicians and sound recorders.

2.2.5 Copyright Infringements

As per the Copyrights Acts, 1957, the following acts are regarded as an infringement of
Copyrights:

 Making copies for sale or hire or selling or letting them for hire without permission.
 Permitting any place for the performance of owned work (in public) where such
performance constitutes an infringement of Copyright.
 Distributing infringing copies for trade or to such an extent to affect the interest of
the owner of the Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner.

2.2.6 Liability of Owner of an Auditorium/Hall

 The owner of an auditorium/hall is liable for punishment if he knowingly allows

his premises to be used for communication of illegal copyright material (songs,

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music, dramas, etc.) to the public.

 If a person permits for profit any place to be used for communicating the work to
the public, where such communication establishes an infringement of the
Copyright unless he was not aware of and had no reasonable ground for believing
that such communication to the public would be an infringement of Copyright, he
will be deemed to have committed an offence under the Copyright Act.

2.2.7Copyright Infringement is a Criminal Offence

 According to Section 63 of the Copyright Act, 1957, if any person knowingly
infringes the Copyright, he qualifies for the criminal offence.
 The punishment awarded for the infringement (of Copyright) is imprisonment for
six months with the minimum fine of ₹ 50,000/-.
 In case of a second and subsequent conviction, the minimum punishment is
imprisonment for one year and a fine of ₹ 1,00,000.
 There is a dedicated IP division to deal with Copyright cases. Also, there is a
Copyright Board constituted by the Central Government in 1958 to adjudicate
certain claims about Copyright.

2.2.8 Copyright Infringement is a Cognizable Offence

A police officer (rank of a sub-inspector or higher) can confiscate the infringed Copyright
material without issuing a warrant and produce the same in the court of law.

2.2.9 Fair Use Doctrine

 Any person not possessing a valid license from the owner of the Copyright is not
entitled to exploit the said work.

 However, Section 52 of the Copyright Act, 1957, provides for certain exceptions to
the infringement of Copyright.

 As per the rule of law, Copyrighted materials cannot be used by anybody without
the proper consent of the legal owners (of the Copyright).

 However, limited use of Copyrighted materials for teaching and research purposes

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is legally permitted, under The Fair Use Doctrine‘, which comprises of the four-
part test:
 The character of the use - use of the work is purely educational, non-profit and
personal.
 Nature of the work - The use of work is factual in nature and not imaginative.

 Amount of the portion to be used - permission is not needed if only a small

portion of Copyright protected material is to be used. However, this parameter is
debatable now.
 Impact of use on the value of the Copyrighted material - If a small portion of
the work is copied and is not affecting the author‘s economic and moral rights, it
will be excused from the infringement.

Detailed information on the examples of the Fair Use Doctrine can be accessed from the
official website (http://copyright.gov.in/ exceptions.aspx). A few examples are listed
below:

 If the Copyrighted work is used for personal use i.e. studies or research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers, magazines or
radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the performance of their
duties e.g. reproduction of any work for a judicial proceeding or a report of a
judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in accordance with any law
for the time being in force.
 Making three or less than three copies of a book (including a pamphlet, sheet of
music, map, chart or plan).
 Bonafide religious ceremony, including a marriage function.

2.2.10 Copyrights and Internet

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 The twenty-first century is an era of digitization. The Copyrighted data is quickly

transmitted via the internet.
 This method of data transmission has brought amendments to the existing
Copyright laws.
 One should be careful of Copyright/fair use principles when downloading material
from the internet.
 There is growing concern about the ability to pull Copyrighted material from the
internet without permission.
 Note that material may have been placed on the internet without the author‘s
permission.
 In general, posting material on the internet by the Copyright owner gives an internet
user the right to use that material for his personal use, but he cannot use the work
for commercial purposes.
 Electronic distribution of a Copyrighted work should mention the statement that
―This work is protected by Copyright laws and is provided for educational
instruction only. Any infringing use may be subject to disciplinary action and/or
civil or criminal liability as provided by law”.

 As per Section 2(o) of the Copyright Act, 1957, Literary Work includes computer
programmes, tables and compilations, including computer databases.

 It is mandatory to supply Source Code and Object Code along with the
application for registration of Copyright.

2.2.11 Non-Copyright Work

The works not under the jurisdiction of Copyrights are as follows:
 The ideas, concepts, and principles themselves cannot be protected under
Copyright, only the form in which they are expressed can be copyrighted.
 Facts, such as scientific or historical discoveries, are not copyright protected. Any
fact a person discovers in the course of research cannot be Copyright protected. For
example, an author of a book on Buddhism takes ten-fifteen years to gather all the
necessary materials and information for his work. At a great expense, the author
travels to various museums, libraries and excavations sites. However, after the book
is published, anyone is free to use the underlying facts, provided they express the

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information on their own.

 Copyright does not protect titles, names, slogans, short phrases, short word
combinations, methods, or factual information.
 Certificates are not considered as Copyrightable subject matter as there is not much
scope for creativity.
 Digitally created works and Copyrighted works transformed into a digital format
and placed on the internet are Copyright protected.
 The Copyright registration for a website, as a whole, is not possible. However,
different components/rudiments of a website can be granted Copyright registration
e.g. computer programmes/software, compilations including computer databases
(literary works‘); photographs, paintings, diagram, map, chart or plan (artistic
works‘); and works consisting of music including graphical notation of such work
(musical works‘). However, a separate application for each component of work has
to be filed for seeking Copyright registration.
 A computer or mobile App qualifies for Copyright registration. An Application is a
complete, self-contained computer program that is designed to perform a specific
task. An App usually has dynamic content and is designed for user interaction. It
may be used directly or indirectly in a computer or handheld electronic device.
 If someone swipes your picture/song/video from the internet and uses it for their
purposes, it is a Copyright infringement. By the way - the same is true if you nick
some else‘s material for your purposes.

2.2.12 Copyright Registration

 It is not necessary to register a work to claim Copyright. Once a work is created via any
medium, the work receives automatic Copyright safety.
 In other words, there is no formal request to be submitted to the office of the Copyright,
for acquiring Copyright.
 Copyright registration does not confer any rights. It is merely a prima facie proof of an
entry in respect of the work in the Copyright register maintained by the Registrar of
Copyrights.
 The certificate of registration serves as prima facie evidence in a court in cases of
disputes relating to ownership or creation of Copyright, financial matters, transfer of
rights, etc.

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 It is advisable that the author of the work registers for Copyright for better legal
protection.
 In India, Copyrights matters, including Copyright registration, are administered under
the Copyright Act, 1957 and Copyrights Rule, 2013. Below mentioned are prominent
forms for copyright registration (https://copyright.gov.in/).

STATEMENT OF PARTICULARS
S.No Attributes Details
.
1. Registration number (To be filled in the
Copyright Office)
2. Name, phone, email, address and
nationality of the applicant
3. Nature of the applicant‘s interest in the
Copyright of the work

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4. Class and description of the work

5. Title of the work
6. Language of the work
7. Name, address and nationality of the
author and, if the author is deceased, the
date of his decease
8. Whether work is published or unpublished
9. Year and country of first publication
and name, address and nationality of the
publishers
10. Years and countries of subsequent
publications, if any, and names, addresses
and nationalities of the publisher
11. Names, address and nationalities of the
owners of the various rights comprising
the Copyright in the work and the extent
of rights held by each, together with
particulars of assignment and licenses, if
any
12. Names, addresses and nationalities of
other persons, if any, authorized to assign
or license the rights comprising the
Copyright
13. If the work is an ―artistic work‖, the
location of the original work, including
name, address and nationality of the
person in possession of the work. (In the
case of an architectural work, the year of
completion of the work should also be
shown)
14. If the work is an ‗artistic work‘ which is
used or is capable of being used in relation
to any goods or services, the application
shall include a certificate from the
Registrar of Trade Marks in terms of the
proviso to sub-section (1) of section 45 of
the Copyright Act, 1957.]
If the work is an ―artistic work‖
15. whether it is registered under the Designs
Act 2000. If yes give details.
16. If the work is an ―artistic work‖
capable of being registered as a design
under the Designs Act 2000, whether it has
been applied to an article though an
industrial process and , if yes, the number
of times it is reproduced.
17. Remarks, if any

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Place:(Signature of the Applicant) Date:

Source: https://copyright.gov.in/frmDownloadPage.aspx

STATEMENT OF FURTHER PARTICULARS

(For Literary, including Software, Dramatic, Musical and Artistic Works only)

S.No. Attributes Details

1. Is the work to be registered
a) An original work?
b) Translation of a work in the public domain?
c) A translation of a work in which Copyright
subsists?
d) An adaptation of a work in the public domain?
e) An adaptation of a work in which
Copyright subsists?
2. If the work is a translation or adaptation of a
work in which Copyright subsists:
a) Title of the original work.
b) Language of the original work.
c) Name, address and nationality of the author
of the original work and, if the author is
deceased, the date of his decease.
d) Name, address and nationality of the
publisher, if any, of the original work.
e) Particulars of the authorization for a
translation or adaptation including the
name, address and nationality of the party
authorizing.
3. Remarks, if any.
Place: (Signature of the Applicant)

Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx

2.2.13 Judicial Powers of the Registrar of Copyrights

The Registrar of Copyrights has the powers of a civil court when trying a suit under
the Code of Civil Procedure in respect of the following matters:

 Summoning and enforcing the attendance of any person and examining him on

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oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or documents.
 Requisitioning any public record or copy thereof from any court or office.
 Any other matters which may be prescribed.
 A duly filled application (Form XIV) is submitted to the Copyright Office at the
following address: The Registrar of Copyright, Plot no. 32, Boudhik Sampada
Bhawan, Sector 14, Dwarka, New Delhi - 110075.
 The application can be submitted by post or online registration through the E-filing
facility(www.copyright.gov.in). Any person who is either an author of the work or
assignee of the concerned work can file an application for Copyright.
 Usually, it takes around 2-3 months to get the work registered by the Copyright
Office.
 After applying, there is a mandatory waiting period of 30 days. If any person has any
objection to the claim/s made in the application, he can contact the office of the
Registrar of Copyrights.
 After giving an opportunity of hearing to both the parties, the Registrar may decide
the case in favour or against the author of the work.
 Once the objections (if any) are cleared, the application is evaluated by the
examiners. If any doubts/queries are raised, the applicant is given ample time
(around 45 days) to clear these objections.
 The elements included in Copyright filing to grant are depicted below in the flow
chart:

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Figure 2.6: Flow chart for the process of Copyright registration.

Source: https://copyright.gov.in/frmWorkFlow.aspx (slightly modified)

Table 2.5: Important forms pertaining to Copyrights.

S. No. Name of Form Form No.
Application form for registration of
1. Form-XIV
Copyright
Application form for registration of
2. Form-XV
changes in particulars of Copyright
3. Registration of a Copyright Society Form-VIII
Application form for the relinquishment of
4. Form-I
Copyright
Source: http://Copyright.gov.in/frmformsDownload.aspx

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2.2.14 Fee Structure

For each work, a separate application form needs to be submitted, along with the requisite
fee. The fee is not reimbursable in case the application for registration is rejected.
Table 2.6: Fee structure for Copyrights.
Attribute Fee (₹
)
For an application for registration or 500/- per
Copyright Literary, Dramatic, Musical or work
Artistic work
For an application for registration of Copyright in
5,000/-
a Cinematograph Film
For an application for registration of Copyright in
2,000/-
a Sound Recording
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 2,000/-
relation to any goods or services
Making any change in Literary, Dramatic,
200/-
Musical or Artistic work
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 1,000/-
relation to any goods or services
For an application for registration of change in
particulars of Copyright entered in the Register 2,000/-
of Copyrights in respect of Cinematograph Film
For an application for registration of changes in
particulars of Copyright entered in the Register 1,000/-
of Copyrights in respect of Sound Recording
For an application for prevention of importation 1,200/-
of infringing copies per place of entry

Source: http://Copyright.gov.in/frmFeeDetailsShow.aspx

2.2.15 Copyright Symbol

It is not necessary to place the Copyright symbol © with your name and year created near
your published or printed materials -but if you do, it‘s easier to nail someone for
infringement on your Copyright if you go to court. The important things which may be
mentioned as a Copyright mark on Copyright creation are:
 The Copyright symbol © (the letter C in a circle), or the word. Copyright, or the
abbreviation Copr.
 In the case of compilations or derivative works incorporating previously published
material, the year with the date of the first publication of the compilation or

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derivative work should be mentioned. The year date may be omitted for pictorial,
graphic, sculptural work, greeting cards, postcards, stationery, jewellery, dolls and
toys.
 The name or the abbreviation by which the name can be recognized of the owner of
the Copyright, or a generally known alternative designation of the owner can be
mentioned.
 The elements for sound recordings generally require the same three elements,
except the symbol is ℗ (the letter P in a circle) instead.

2.2.16 Validity of Copyright

 In general, the validity of Copyright is for 60 years.
 This period starts either from the year after the death of the author (in case of
literature, dramatic, musical and artistic works) or from the date of publication of
the work (in case of cinematograph films, sound recordings, photographs,
posthumous publications, works of government and works of international
organisations).

2.2.17 Copyright Profile of India

 A comparative five years (2015-20) study revealed a gradual increase in the
number Copyright applications in the first four years of the study, with a maximum
number of applications (21,905) recorded in the 2019-20 period (Fig. 2.7).

 The number of applications examined was maximum (34,388) in 2017-18.

However, it tapered down to 22,658 in 2018-19 and 19,460 in 2019-20.

 A similar trend was observed in the number of Copyright registrations, with a peak
(19,997) observed in 2017-18.
Figure 2.7: Copyrights profile (India) for the period 2015-20.

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Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.2.18 Copyright and the word ‘Publish’

 A work is considered published when it is in the public domain on an unrestricted
basis.
 For example, a person writes an article called Life in Himalayas and distributes it
to a few individuals and/or societies/organizations with a restriction not to disclose
the contents of the article.
 Life in Himalayas has not been ―published in the Copyright sense.
 If the author removes the condition of non- disclosure or posts of this article on the
internet (i.e. public domain), it would be considered as published. It is to be noted
that both published and unpublished works can be registered under Copyright.

2.2.19 Transfer of Copyrights to a Publisher

 The original authors of the Copyrighted work may not have the wherewithal to
widely publicise their work.
 Usually, they transfer their rights to publishers for financial benefits, which could be
a one-time lump sum amount or royalties or a combination of the two.
 However, transferring Copyrights unconditionally to the publishers (or anybody else)
may have some repercussions for the owner of the Copyright.
 A publisher may prevent author/s from displaying their articles on the institute‘s
websites.
 The new owner of Copyright may not even allow the author to revise his work.
 In other instances, a publisher might print an insufficient number of hard copies and
also does not show interest in uploading the soft copy of the work on the internet.
 Hence, one must be careful in signing an agreement with the publishers.
 The author may not transfer all the legal rights bestowed upon him as an author.
 An agreement may be signed permitting only the print and sale of hard copies by the
publishers while retaining digital rights for the said work.
 An author may also put a time limit for the printing and sale of the books/articles, etc.
 Before the digital era, authors used to rely completely on publishers for the
dissemination of their work.
 However, in the internet era, the dependency on publishers has almost diminished.

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 The author is in a position to bypass the publishers and bring his work in to the public
domain.
 But this freedom cannot be enjoyed by those who are already under the publishing
contract.
 Even though the author has completely and exclusively licensed out his work, the
Copyright Act has a provision under ‘termination of transfer’ to reclaim his
Copyright.
 Under this provision, certain Copyright agreements can be terminated after 35 years
of the agreement.
 This statutory termination right applies even though it is not incorporated in the
agreement. It is strongly advised that authors must apply their mind while signing the
Copyright agreement.

2.2.20 Copyrights and the Word ‘Adaptation’

In the world of Copyright, the word Adaptation signifies the creation of a similar work
based upon contemporary work. The Copyright Act defines the following actions as
adaptations:

a) Transformation of a dramatic work into a non-dramatic work.

b) Changing a literary or artistic work into a drama.

c) Re-arrangement of a literary or dramatic work.

d) Depiction through pictures of a literary or dramatic work.

e) The making of a cinematograph film of a literary or dramatic or musical work.

2.2.21 Copyrights and the Word ‘Indian Work’

Indian work means a literary, dramatic or musical work provided

 The author of the work is an Indian citizen.

 The work is first published in India.
 In the case of an unpublished work, at the time of the making of the work, the
author of the work was a citizen of India.

2.2.22 Joint Authorship

‘Work of Joint Authorship means a work produced by the collaboration of two or more

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authors in which the contribution of one author is not distinct from the contribution of the
other author or authors.

2.2.23 Copyright Society

 Many a time, authors and other owners of Copyrights are either unable or lose track
of all the uses of their work, including the collection of royalties, infringement
issues, etc. To overcome these hurdles, Copyright Societies have cropped up.
 As per Section 33 of the Copyright Act, 1957, a Copyright Society is a registered
collective administration society formed by authors and other owners of the
Copyright. Society can perform the following functions:
 Keep track of all the rights and infringements related to their clients.

 Issue licences in respect of the rights administered by the society.

 Collect fees in pursuance of such licences.
 Distribute such fees among owners of Copyright after making deductions for the
administrative expenses.

A Copyright Society can be formed by a group of seven or more copyright holders. The
term of registration of a Copyright Society is for five years. The registered Copyright
Societies in India are:

 Society for Copyright Regulation of Indian Producers for Film and Television
(SCRIPT) 135 Continental Building, Dr. A.B. Road, Worli, Mumbai 400 018, (for
cinematograph and television films).
 The Indian Performing Right Society Limited (IPRSL), 208, Golden Chambers, 2nd
Floor, New Andheri Link Road, Andheri (W), Mumbai- 400 058 (for musical
works).
 Phonographic Performance Limited (PPL) Flame Proof Equipment Building, B.39,
Off New Link Road, Andheri (West), Mumbai 400 053 (for sound recordings).

2.2.24 Copyright Board

The Copyright Board is a regulatory body constituted by the government, to perform
judicial functions as per the Copyright Act of India. The Board comprises of a Chairman
and members (2-14) to arbitrate on Copyright cases. The Chairman of the Board is of the
level of a judge of a High Court. As per the Act, the Board has the power to:
 Hear appeals against the orders of the Registrar of Copyrights.
 Hear applications for rectification of entries in the Register of Copyrights.

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 Adjudicate upon disputes on the assignment of Copyrights.

 Grant compulsory licences to publish or republish works (in certain circumstances).
 Grant compulsory licence to produce and publish a translation of a literary or
dramatic work in any language after seven years from the first publication of the
work.

2.2.25 Copyright Enforcement Advisory Council (CEAC)

In 1991, the Government set up a CEAC to review the progress of enforcement of the
Copyright Act periodically and advise the Government regarding measures for improving
the enforcement of the Act. The term of the CEAC is three years. The CEAC is
reconstituted periodically after the expiry of the term.

2.2.26 International Copyright Agreements, Conventions and Treaties

 Any creative work is not protected and enforced automatically worldwide because
Copyright laws are territorial by nature i.e. Laws are valid only in the country in
which they have been created.
 To secure protection to Indian works in foreign countries, the author needs to apply
separately to each country or through dedicated international ‗Conventions on
Copyright and Neighbouring (related) Rights, provided a country is a member of such
Conventions. India is a member of the following Conventions:
 Berne Convention for the Protection of Literary and Artistic Works, 1886.
(https://www.wipo.int/treaties/en/ip/berne/).
 Universal Copyright Convention, 1952.
(http://www.unesco.org/new/en/culture/themes/creativity/creati
ve-industries/copyright/universal-copyright-convention/).
 Rome Convention for the Protection of Performers, Producers of Phonograms
and Broadcasting Organizations, 1961.
(https://www.wipo.int/treaties/en/ip/rome/).

Multilateral Convention for the Avoidance of Double Taxation of Copyright

Royalties, 1979. (https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-
00%20AM/Ch_XXVIII_01_ap.pdf).

 Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, 1995.

(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).

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 In India, Copyrights of foreign authors, whose countries are members of the Berne
Convention for the Protection of Literary and Artistic Works (1888), Universal
Copyright Convention (1952) and the TRIPS Agreement (1995) are protected through
the International Copyright Order.

2.2.27 Interesting Copyrights Cases

David vs. Macaques, Indonesia, 2011 –
 In 2011, a UK-based photographer David Slater put his camera on a tripod in the
wildlife sanctuary to click the photograph of Macaques monkeys.
 The Macaques were very curious about the equipment and they found the flashlight
fascinating.
 One monkey clicked a selfie photograph which became very famous and legally
controversial on the matter of Copyright.
 Theoretically, the monkey is the holder of Copyright as he clicked the photo.
Practically, David Slater was the claimant of the Copyright.
 The dispute entered judicial quarters between People for the Ethical Treatment of
Animals (PETA) and David Slater.
 Now, the settlement has been concluded. The photographer i.e. David Slater
withholds the Copyright of the picture for having a substantial contribution, but he
would pay 25% of the royalty share to the wildlife sanctuary where the monkey lives
(https://www. wipo.int/ wipo_magazine/en/2018/01/article_0007.html).

‘Happy birthday to you’ case law –

 According to the Guinness World Records, 1998, it is the most recognized song in the
English language.
 The melody of Happy Birthday to You originates from the song Good Morning to All‘,
which has traditionally been attributed to American Sisters, namely Patty Smith Hill
and Mildred J. Hill, in 1893.
 The sisters composed the melody of ‗Good Morning to All to make it more interesting
for the children.
 In 1935, Summy Company registered the Copyright on the Piano Setting on the Song.
 In 1999 Warner/Chappell acquired the company and started taking royalty for the
happy birthday song and earned a huge amount. After mediation by the Federal

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court, Warner Music, through its publishing subsidiary Warner/Chappell, agreed to pay
the settlement to a class of thousands of people and entities who had paid licensing
fees to use the song since 1949 because only the melody was registered and not the
lyrics.
 Now the song is in the public domain.

Amitabh Bachchan to lose Copyrights over his father’s works in 2063

 Father of renowned actor Mr. Amitabh Bachchan, (late) Shree Harivansh Rai Bachchan
was a noted poet and Hindi writer.
 His most famous work was Madhushaala (1935).
 He was the recipient of the Sahitya Akademi award and the Padma Bhushan.
 He also did Hindi translations of Shakespeare‘s Macbeth and Othello.
 He passed away on 18th January 2003, at the age of 95. As per the Copyright Act, 1957,
the rights over his work will be completed in the year 2063 (rights remain with the author
for his lifetime plus 60 years).

2.3 Trademark
In simple language, a Trademark (or Trade Mark) is a unique symbol which is capable of
identifying as well as differentiating products or services of one organization from those of
others. The word Mark stands for a sign, design, phrase, slogan, symbol, name, numeral,
devise, or a combination of these. Essentially, the Trademark is anything that identifies a
brand to a common consumer.

2.3.1 Eligibility Criteria

For goods/services to be legally classified as Trademark, they need to pass the

following conditions:

 Distinctiveness - The goods and services for which the protection is sought should
possess enough uniqueness to identify it as a Trademark. It must be capable of
identifying the source of goods or services in the target market.

 Descriptiveness - The Trademark should not be describing the description of the

concerned goods or services. Descriptive marks are unlikely to be protected under
Trademark law. However, descriptive words may be registered if they acquire

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―secondary meaning, such as the brand name Apple is used by a USA based
multinational company that manufactures electronic gadgets.

 Similarity to the prior marks - The mark should be unique and should not be
having similarity to the existing marks.

2.3.2 Who Can Apply for a Trademark

 Any person who is a proprietor of the Trademark is eligible to apply for
registration of Trademark.
 The mark can be filed collectively by two or more applicants and for that purpose,
support documents need to be submitted.
 An organization or association can file for the collective mark and the same can be
used by its members.
 The most appropriate example for this mark is the Reliance symbol, which
indicates all products falling under the organization.

2.3.3 Acts and Laws

 In India, Trademarks are governed under The Trademarks Act, 1999
(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf).
 The Trademark rules are governed by Trademarks Rules, 2002,
(http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_56_1_1_59_1_tmr_rules_
2002_1_.pdf).
 The Acts and Rules have been amended from time to time.
 The latest amendments were done in 2010 and 2017 for Trademarks Acts and
Trademarks, respectively.
 The administration of matters pertaining to Trademarks is carried out by the Office of
CGDPDTM, GoI.

2.3.4 Designation of Trademark Symbols

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2.3.5. Classification of Trademarks

 Goods and Services under Trademarks are classified as per the Nice Agreement(1957)
administered by WIPO. A total of 149 countries (84 state parties who are signatory to
the Agreement and 65 additional states who are following this classification for the
Trademarks) and others (African Intellectual Property Organization, African Regional
IP Organization and Trademark Office of European Union) are using the same
Trademark classification.
 Trademark classification comprises of 45 classes, out of which 34 are for goods and 11
are for services. (http://euipo.europa.eu/ec2/static/html/nice-general-remarksen.
html;jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.ec2t1).

Two examples of the classes are:

Class 1
 is for Chemicals for use in industry, science and photography, agriculture, horticulture
and forestry;
 Unprocessed artificial resins, unprocessed plastics;
 Fire extinguishing and fire prevention compositions;
 Tempering and soldering preparations;
 Substances for tanning animal skins and hides;
 Adhesives for use in industry;
 Putties and other paste fillers;
 Compost, manures, fertilizers;
 Biological preparations for use in industry and science.

Class 45
 is for legal services; Security services for the physical protection of tangible property
and individuals; Personal and social services rendered by others to meet the individuals
needs.
 The Vienna codification established under the Vienna Agreement (1973) is an
international classification of the figurative elements of marks.
 The relevant Vienna code class can be searched on the link:
https://www.wipo.int/classifications/nivilo/vienna/index.htm?lang=EN#.

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 The classification is used to divide all figurative elements into categories (from 1 to 29),
divisions (from 1 to 19) and sections (from 1 to 30).
 For example, the representation of "a little girl eating" belongs to Category 2 (Human
beings), Division 5 (Children), Main Section 3 (Girls).
 If auxiliary sections are used, the figurative element can be identified additionally with
the Auxiliary Section 18 (Children drinking or eating, Code A 2.5.18).
 The codification of this example will be then indicated as 2.5.3, 18 (main and auxiliary
sections).

2.3.6 Registration of a Trademark is Not Compulsory

Although, registration of a Trademark is not compulsory, registration provides certain
advantages to the proprietor of the Trademark, such as:

 Legal Protection – prevents the exploitation of the Registering Trademark by other

companies/organizations/individuals, without proper authorization by the legal owner/s
of the Trademark. In case of legal suits, a registered Trademark can serve as a potent
evidence of the lawful proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use it in any lawful manner
to promote his business.
 Brand Recognition - products/ services are identified by their logo, which helps create
brand value over time. A strong brand is a huge pull for new customers and an anchor for
existing customers. Registering a Trademark early and using it will create goodwill and
generate more business for the brand owner.
 Asset Creation - registered Trademark is an intangible property of the organization. It
can be used for enhancing the business of the company as well as drawing new clients
and retaining old one by the account of brand identification.
o To find out more about Registered Trademarks in India, one may look at
http://www.ipindia.nic.in/writereaddata/Portal/ Images/pdf/well-known-trademarks-
updated-newone.pdf.
o It is pertinent to mention that no legal course of action can be taken against the unlawful
use of an unregistered Trademark.
o For unregistered marks (sometimes known as Common Law Trademarks‘, which are
defined as the law rights which generally do not require formal registration for

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enforcement) action can be brought against any person for the passing off goods or
services as the goods or services provided by another person.
o In such cases, the unregistered Trademarks have to prove the establishment of goodwill
or reputation connected with the goods or service.

2.3.7 Validity of Trademark

In India, a registered Trademark is valid for 10 years. The period can be extended every 10
years, perpetually. As per the Indian Trademarks Act, the renewal request is to be filed in the
form ‘TM-R’ within one year before the expiry of the last registration of the mark.

2.3.8 Types of Trademark Registered in India

Trademark can be a word that must be able to speak, spell and remember. It is highly
recommended that one should choose the Trademark like invented word, created words,
and unique geographical name. One should refrain from Trademarks like common
geographical name, common personal name and the praising words which describe the
quality of goods, such as best, perfect, super, etc. To ensure all these characteristics in a
Trademark, it is suggested to conduct a market survey to ensure if a similar mark is used in
the market. Following are some examples of the registerable Trademarks:

 Any name including personal or surname of the applicant or predecessor in

business or the signature of the person e.g. the Trademark BAJAJ is named after
industrialist Mr. Jamnalal Bajaj.

 A word having no relevance to the product/services e.g. Trademark ‗INDIA GATE

is being used for food grains and allied products.
 Letters or numerals or any combination thereof e.g. YAHOO is the abbreviation of
the phrase Yet Another Hierarchical Officious Oracle. It has now become a
worldwide famous Trademark.

Table 2.7: Some of the famous examples of Trademarks.

S. No. Type of the Mark Mark Company/Firm
1. Distinctive General ‘Apple’ IT Company
Word
2. Fanciful Designation ‘Kodak’ Photograph Film
3. Distinctive ‘Ford’ Automotive
Personal Names
4. Device ‘Udhaar’ Financial

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Technology
5. Number ‘4711’ Perfume
6. Picture Allegator Knitwear
Manufacturing
7. Slogan Drink it Soft Drinks
to believe
it
Note: Trademark Registry will object to yet to be registered Trademark if it is similar in looks
or sound to the ones already registered e.g. a keyword like Ford can have the following
terms that are similar sounding: Foard, Phord, Fordd, Forrd. In case one wishes to carry
out a search (identical as well as similarity), one may use the free government portal
http://ipindiaservices. gov.in/tmrpublicsearch/frmmain.aspx.

2.3.9 Trademark Registry

In India, the operations of Trademarks are carried out from five cities i.e. Delhi, Mumbai,
Ahmadabad, Kolkata, and Chennai. Each city has been assigned a bunch of states (Table
2.8). The businesses located in a particular state can only use the services of the assigned
Trademark Registration Office. In the case of foreign applicants, jurisdiction is based on
the location of the office of the applicant‘s agent or attorney.

Table 2.8: Territorial jurisdiction of Trademark registration

offices.
S. No. Office Location States
Maharashtra, Madhya Pradesh, Chhattisgarh
1. Mumbai
and Goa.
Gujarat and Rajasthan and Union
2. Ahmedabad
Territories of Daman, Diu, Dadra and Nagar
Haveli.
Arunachal Pradesh, Assam, Bihar, Orissa,
West Bengal, Manipur, Mizoram,
3. Kolkata Meghalaya, Sikkim, Tripura, Jharkhand and
Union Territories of Nagaland, Andaman &
Nicobar Islands.
Jammu & Kashmir, Punjab, Haryana, Uttar
4. New Delhi Pradesh, Himachal Pradesh, Uttarakhand,
Delhi and Union Territory of Chandigarh.
Andhra Pradesh, Telangana, Kerala,
5. Chennai Tamilnadu, Karnataka and Union Territories
of Pondicherry and Lakshadweep Island.
2.3.10 Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark has to fill an application.
The proprietor may choose to hire an agent to fill and submit the application on his behalf.

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Before applying, the applicant needs to conduct a prior art search to ensure the registration
criteria.

2.3.10.1 Prior Art Search - Prior to applying for Trademark registration, it is always
prudent to check whether the intended Trademark is already registered or not. Also, it is
ascertained whether the intended Trademark is not similar to the ones already registered.
The requisite search can be carried out using various web portals, such as:

 Public search for Trademarks by CGPDTM

(https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx).

 WIPO‘s Global Brand Database (https://www3.wipo.int/branddb/en/).

 Trademark Electronic Search System (TESS).

(http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4805:za84 7u.1.1)
 MARKARIA Trademark Search Engine (https://trademarksearch.
marcaria.com/en/asia/india-trademark-search).
 VAKIL Search (https://vakilsearch.com/trademarksearch/ trademarks?search=bajaj).
Once the ‗prior art search‘ is over and the applicant is convinced about the distinctiveness of
the Trademark, he can proceed to fill the application form for registration (TM-A). The
application is filed at the Trademarks Office subject to the jurisdiction of the applicant.
The steps involved in the registration process are as follows:
 After the prior art search has been conducted, the applicant can apply for the
registration on his own or with the help of a certified agent.
 The application is assigned an application number within a few days. The same can be
tracked online at https://ipindiaonline. gov.in/tmrpublicsearch/frmmain.aspx.
 The application is scrutinized by a professional examiner. If everything is in order, the
particulars of the application are published in the official Trademark journal
(http://www.ipindia. nic.in/journal-tm.htm). Otherwise, he will send the objections to
the applicant for rectification. Based on the satisfactory response, the examiner would
recommend the revised application to be published in the journal. If the application is
rejected, the applicant may approach the Intellectual Property Division to challenge
the rejection of an application by the examiner.
 Once the Trademark is published in the official journal, the public has an opportunity
to file an objection, if any, within 90 days. After hearing both the parties, the officer
decides whether to proceed further for the grant of Trademark or disallow the grant of

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Trademark. In case of unfavourable outcome, the applicant has the right to contest the
decision in front of the IPAB.
 Once the application has successfully completed all formalities, a Trademark
registration certificate is issued in the name of the applicant
Figure 2.8: Flow chart for the process of Trademark registration.

Source: http://www.ipindia.nic.in/workflow-chart.htm (slightly modified)

One should keep in mind that while filing an application for the registration of a Trademark,
an English translation of the non- English words has to be provided. If the applicant wishes to
claim the priority from an earlier-filed application, he has to provide details like application
number, filing date, country and goods/services of that application.

Table 2.9: Fee and forms related to Trademarks.

Form
Amount (₹ )
Entry No.
Contents
No. Physical
E-filing
Filing
Where the applicant is an
Individual / Start-up/Small 5,000 4,500 TM-A
1.
Enterprise.
In all other cases. 10,000 9,000
Opposition/Application for
Rectification of the
2. Register/Counter statement / 3,000 2,700 TM-O
Refusal or invalidation of a
Trademark.
For renewal of registration of a
3. 10,000 9,000 TM-R
Trademark.

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On application to register a
subsequent proprietor in case of
4. 10,000 9,000 TM-P
assignment or transfer for each
Trademark.
Application for registration of
Registered User/Variation of
Registered User/Cancellation of
5. Registered Users and Notice of 5,000 4,500 TM-U
intention to intervene in
proceeding in
cancellation/variation.
Request for search and issue of
6. 10,000 9,000 TM-C
the certificate.
Application/Request for any
miscellaneous function in
7. respect of a Trademark 1000 9,000 TM-M
Application/
Opposition/Rectification.
On application for registration of
8. 5,000 4,500 TM-G
a person as a Trademark agent.
Source: http://www.ipindia.nic.in/form-and-fees-tm.htm

2.3.11 Important Queries/Facts About Trademarks

2.3.11.1 Can any correction be made in the application or register Yes, The rectifications are
possible, but the applicant has to ensure that the corrections made in the Trademark do not alter
its identity significantly.

2.3.11.2 Can a registered Trademark be removed from the register

Yes, it can be removed if:

 Trademark was registered without any bona fide intention of using it.

 If the Trademark is not being used for a continuous period of 5 years from the
registration date or 3 months prior to filing the application for registration.

 Registered Trademark was disallowed but inadvertently existed in the official

register.

 Trademark Registrar has the power to terminate a registered Trademark on a suo

moto basis.

2.3.11.3 Is the sound or smell registrable as a Trademark - Yes, sound or smell is

registrable as a mark, as long as it is distinct and can be reproduced graphically. The
Trademark, 4711 cologne has been registered as a chemical formula. The sound can be
registered as a Trademark, provided it can be recorded in MP3 format and depicted
graphically.

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2.3.11.4 Can a registered user restrain the third party from using an identical or similar
mark which is not registered -
 There is no clear cut answer for such situations. It depends on the circumstances of
the matter.
 But ordinarily, a registered user cannot restrain the third party from using identical
or similar marks if the third party has been continuously using the mark concerning
the same goods or services from a date prior to the date of use of the registered
mark or date of registration.
 According to the Trademarks Act, 1999, the rights and protection in the form of
remedies are not only to the registered mark but also to the unregistered
Trademarks.
 Although, a registered Trademark has been given a statutory remedy under section
28 of the Act, but 27(2) of the Act provides a remedy for an unauthorized use of
unregistered Trademark.
 Passing off is a common law tort which is most commonly used to protect goodwill
that is attached to the unregistered Trademarks.
 The action of passing off is available to both registered and unregistered
Trademarks, but a suit for infringement is available for only registered Trademarks.

2.3.11.5. Seeking Trademark protection in a foreign country –

 To file the Trademark in a foreign country, there are two options available for the
applicant.
 He can either file the Trademark application with the Trademark Office of the country
in which he wishes to seek protection, or he can use WIPO‘s Madrid System through
which the registration can be filed in multiple countries by claiming priority of one of
the signatory countries.
 This priority has to be claimed within six months of the first filing.
 The applicant can file a single application for seeking protection in any number of
countries that are members of WIPO by paying a single set of fee.

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 List of jurisdictions that can be accessed through Madrid Protocol for filing Trademark
is available at http://www. wipo.i nt/ treaties/en/ShowResults.jsp?treaty_id=8.

2.3.12. Trademarks Statistics

 Figure 2.9 represents the statistics for Trademarks (filed, examined and registered)
for the period 2010-20.
 During this period, an increase of 95%, 65% and 154% was observed in the
parameters of trademarks filed, examined and registered, respectively.
 Overall, a gradual increase was seen in the number of TM filed, but a zig-zag curve
was observed for the TM examined for the period 2010-16.
 The highest number of TM applications (5,32,230) were examined in 2016-17
followed by dip (nearly two folds) in the following year (2017-18).
 The following two years (2018-20) showed some recovery, with 3,38,551 applications
examined in 2019-20. In case of TM registration, first, five years (2010-15) showed a
downward trend.
 But, a significant leap of nearly four-folds was observed in the next year i.e. 2016-17.
 The maximum number of TM (3,16,798) were registered in the year 2018-19.
Figure 2.9: Trademarks profile (India) for the period 2010-20.

TM FILED TM EXAMINED TM REGISTERED

550000
532230
500000

450000 348918
338576
272974
400000 283060 338551
337541
278170 306259 294172
250000 200005 210501
179317 183588 194216 267861 300913
250070
20000 202385 203086
0 205065
168026

115472 116263
15000
0 67873 65045
51765 44361 41583
2 0 1 0 - 11 2 0 1 1 - 12 2 0 1 2 - 13 2 0 1 3 - 14 2 0 1 4 - 15 2 0 1 5 - 16 2 0 1 6 - 17 2 0 1 7 - 18 2 0 1 8 - 19 2 0 1 9 -
20

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.3.13. International Treaties and Conventions

There is a provision to file an international application for the Trademarks to seek protection
in other Convention countries. The rules and regulations to file international applications in

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Convention countries are concluded under the following treaties and agreements administered
by WIPO.
o The Madrid Agreement for International Registration of Marks (1891)
(wipo.int/treaties/en/registration/madrid/).
o The Nice Agreement for International Classification of Goods and Services (1957).
(https://www.wipo.int/classifications/nice/en/index.html).
o The Trademark Law Treaty (TLT) (1994) (https://www.wipo. int/
treaties/en/ip/tlt/summary_tlt.html).
o Vienna Agreement (1973) for the Classification of Figurative Marks
(https://www.wipo.int/classifications/vienna/en/preface.html).

2.3.14. Famous Case Law:

Coca-Cola Company vs. Bisleri International Pvt. Ltd.
 MAAZA, a popular mango fruit drink in India, is a registered Trademark of an Indian
company, Bisleri International Pvt. Ltd.
 The company transferred the rights (formulation, IPR and goodwill,etc.) to a
beverage company, Coca-Cola, for the Indian Territory.However, in 2008, the Bisleri
Company applied for registration of Trademark Maaza in Turkey and started
exporting the product with the mark MAAZA.
 This was unacceptable to the Coca-Cola Company and thus filed a petition for
permanent injunction and damages for passing-off and infringement of the
Trademark.
 It was argued on behalf of Plaintiff (Coca-Cola Company) that as the mark Maaza
concerning the Indian market was assigned to Coca-Cola, and manufacture of the
product with such mark, whether for sale in India or for export, would be considered
as an infringement.
 After hearing both the parties, the court finally granted an interim injunction against
the defendant (Bisleri) from using the Trademark MAAZA in India as well as for the
export market, which was held to be an infringement of Trademark.

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Module 5: Industrial Designs, Geographical

Indications, Case Studies on Patents
Syllabus:
Industrial Designs: Eligibility Criteria. Acts and Laws to Govern Industrial Designs. Design
Rights. Enforcement of Design Rights. Non-Protectable Industrial Designs India. Protection
Term. Procedure for Registration of Industrial Designs. Prior Art Search. Application for
Registration. Duration of the Registration of a Design. Importance of Design Registration.
Cancellation of the Registered Design. Application Forms. Classification of Industrial
Designs. Designs Registration Trend in India. International Treaties. Famous Case Law:
Apple Inc. vs. Samsung Electronics Co.
Geographical Indications: Acts, Laws and Rules Pertaining to GI. Ownership of GI. Rights
Granted to the Holders. Registered GI in India. Identification of Registered GI. Classes of GI.
Non-Registerable GI. Protection of GI. Collective or Certification Marks. Enforcement of GI
Rights. Procedure for GI Registration Documents Required for GI Registration. GI
Ecosystem in India.
Case Studies on Patents. Case study of Curcuma (Turmeric) Patent, Case study of Neem
Patent, Case study of Basmati patent. IP Organizations In India. Schemes and
Programmes.

Textbook:
1. Dr. Santosh M Nejakar, Dr. Harish Bendigeri “Research Methodology and Intellectual
Property Rights”, ISBN 978-93-5987-928-4, Edition: 2023-24.

Reference Book:
1. David V. Thiel “Research Methods for Engineers” Cambridge University Press, 978-1-
107-03488- 4
2. Intellectual Property Rights by N.K.Acharya Asia Law House 6th Edition. ISBN: 978-93-
81849-30-9

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Module 5
2.4 Industrial Designs
 The word Design is defined as the features of shape, configuration, pattern, ornament
or composition of lines or colours applied to any article.
 The Design may be of any dimension i.e. one or two or three dimensional or a
combination of these. In addition, it may be created by any industrial process or means,
whether manual, mechanical or chemical, separate or combined, which in the finished
article appeal to and is judged solely by the eye.
 But the word Design does not include any mode or principle of construction or
anything which is in substance a merely mechanical device.
 The main object of registration of industrial Designs is to protect and incentivize the
original creativity of the originator and encourage others to work towards the art of
creativity.

2.4.1 Eligibility Criteria

 The Design for which the protection is being sought must be novel or original i.e.,
should not be disclosed to the public by prior publication or by prior use or in any
other way.

 The Design should be significantly distinguishable from the already registered

Designs existing in the public domain.

2.4.2 Acts and Laws to Govern Industrial Designs

In India, Industrial Designs are governed under The Designs Act‘, 2000
(http://www.ipindia.nic.in/acts-designs.htm) and Design Rules‘, 2001
(http://www.ipindia.nic.in/rules-designs.htm), which have been amended from time to
time in 2008, 2013, 2014 and 2019. The Design should include the following
characteristics:

 It should be novel and original.

 It should be applicable to a functional article.
 It should be visible on a finished article.
 There should be no prior publication or disclosure of the Design.

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A list of Industrial Designs can be accessed from

https://www.creativebloq.com/product-design/examples-industrial-design-12121488.
Some of the famous Industrial Designs are mentioned below:

Coca-Cola Bottle - The contoured-shaped glass bottle of the Coca- Cola Company is
marvelled as a master showpiece in the field of industrial design. It was designed in 1915
and is still a cynosure for all eyes.

Piaggio Vespa - Piaggio is an Italian company famous for manufacturing Vespa scooters.
These scooters are sold worldwide since 1940s. The structural design of the scooter is
pleasing to the eyes. This two-wheeler has a painted steel body concealing the engine,
driver‘s feet rest comfortably on a flat floorboard, the front vertical portion comprising of
a handle, breaks and speedometer has ample space for hands‘ grip and also provides
protection from incoming wind air.

iPhone - It is a highly popular mobile phone manufactured by American company Apple

Inc‘. The sleek, handy and rectangular body is pleasing to the eyes. The corners are round
and smooth. The features, such as on/off and speech volume, are easy to operate.

Mini Cooper - Mini Cooper is an automobile car manufactured by the British Motor
Corporation in the later part of the 20 th century. It is a small size car. Its shape has been
designed in a unique manner so as to provide plenty of space (nearly 80%) for passenger
seating and luggage storage.

Rocking Wheel Chair - It is a sleek, circular-shaped chair which provides smooth rocking
motion. There is a provision for a headlight in the upper part of the chair.

Juicy Salif - It is a citrus juice squeezer and considered an iconic structural design. The
alumina-based body has been moulded in the shape of a fish called as a squid.

2.4.3 Design Rights

 The Design registration also confers a monopolistic right to the Proprietor by which he
can legally exclude others from reproducing, manufacturing, selling, or dealing in the
said registered Design without his prior consent.
 The Design registration is particularly useful for entities where the shape of the
product has aesthetic value and the entity wishes to have exclusivity over the said
novel and original Design applied to its product(s) or article(s).

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2.4.4 Enforcement of Design Rights

 Once the applicant has been conferred with the rights over a specific Design, he has
the right to sue the person (natural/entity) if the pirated products of his registered
design are being used.
 He can file the infringement case in the court (not lower than District Court) in order to
stop such exploitation and for claiming any damage to which the registered proprietor
is legally entitled.
 The court will ensure first that the Design of the said product is registered under the
Designs Act, 2000.
 If the Design is found not registered under the Act, there will not be legal action
against the infringer.
 If the infringer is found guilty of piracy or infringement, the court can ask him to pay
the damage (₹ 50,000/-) in respect of infringement of one registered Design.

2.4.5 Non-Protectable Industrial Designs in India

 Any Industrial Design which is against public moral values.
 Industrial Designs including flags, emblems or signs of any country.

 Industrial Designs of integrated circuits.

 Any Design describing the ‗process of making of an article‘.
 Industrial Designs of – books, calendars, certificates, forms and other documents,
dressmaking patterns, greeting cards, leaflets, maps and plan cards, postcards,
stamps, medals.
 The artistic work defined under Section 2(c) of the Copyright Act, 1957 is not a
subject matter for registration for Industrial Designs, such as:
o Paintings, sculptures, drawings including a diagram, map, chart or plan.

o Photographs and work of architecture.

o Any other work related to artistic craftsmanship.
 Industrial Designs does not include any Trademark (The Designs Act, 2000).

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2.4.6 Protection Term

 The outer ‗Shape or Design of a product makes it more appealing and acts as the
value-adding factor to the product.
 Therefore, there is a need to protect one‘s creation from being used by third parties
without consent from the original creator.
 The registered Designs are protected for 10 years in India and can be extended by
5 years after making a renewal application.

2.4.7 Procedure for Registration of Industrial Designs

2.4.7.1. Prior Art Search - Before filing an application for registration of Industrial
Designs, it is prudent to ensure that the same or similar Design has not been registered
earlier. This search can be carried out using various search engines, such as:

 Design Search Utility (CGPDTM)

 Global Design Database (WIPO)

(https://www3.wipo.int/designdb/en/index.jsp).

 Hague Express Database (WIPO) (https://www3.wipo.int/designdb/hague/en/#).

 DesignView(EUIPO)(https://www.tmdn.org/tmdsview-web/welcome#/dsview).

2.4.7.2 Application for Registration –

 Once the applicant is satisfied that his Design is novel and significantly
distinguishable from other Designs, he can proceed with filing an application for
Design registration.
 The application for registration of Design can be filed by an individual, small
entity, institution, organization and industry.
 The application may be filed through a professional patent agent or legal
practitioner. If the applicant is not a resident of India, an agent residing in India has
to be employed for this purpose.
 The applicant submits the registration application at the Design Office Deputy
Controller of Patents & Designs, Patent Office, Intellectual Property Office
Building, CP-2 Sector V, Salt Lake City, Kolkata- 700091.

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 After the application has been filed, an officer (examiner) analyses the application
for qualifying the minimum standards laid down for eligibility criteria for
registration.
 In case of any query, the same is sent to the applicant and he is supposed to
respond within 6 months from the objection raised.
 Once the objections are removed, the application is accepted for registration.
 The particulars of the application, along with the representation of the article, are
published in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journal-patents.htm).
 If no objection is received from the public, the Design is registered. After the
registration of the Design, the applicant becomes the proprietor of the Design and
is conferred with the exclusive right to apply that Design to the article belonging to
the class in which it is registered.
 The applicant puts up a request for issuance of a certificate of registration (for an
Industrial Design). A flow chart of the registration process is mentioned below:

Figure 2.10: Flowchart for the process of Design registration.

Source: https://allthingspatent.wordpress.com (slightly modified)

2.4.8 Duration of the Registration of a Design

 Initially, the Design registration is valid for ten years from the date of registration.

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In the case wherein the priority date has been claimed, the duration of the
registration is counted from the priority date.

 The period of registration may be extended further for five years. An application
has to be made in Form-3 accompanied by prescribed fees to the Controller
General before the expiry of the said initial period of ten years.

2.4.9 Importance of Design Registration

 Registration of Design ensures the exclusive rights of the applicant on the Design.

 The owner can prevent the registered Design products from piracy and imitation.
This helps the owner to boost the sale of the products and establish goodwill in the
market.

2.4.10 Cancellation of the Registered Design

The registration of a Design may be cancelled at any time. The petition has to be filed in
Form-8 with prescribed fee to the Controller of Designs. The application can be made on
the following grounds:
 Design has already been registered.
 Design has been published in India or elsewhere before the date of registration.
 Design is not novel and original.
 It is not a Design under Clause (d) of Section 2.

2.4.11 Application Forms

There are a total of 24 forms pertaining to Industrial Designs. A list of important forms is
mentioned below.
Table 2.10: List of important form related to Industrial Designs.
Fee (₹ )
Form
S. No Name of the Form Natural Small Large
No.
Person Entity Entity
Application for
1. Form-1 1,000 2,000 4,000
registration of Design.
Application for the
2. Form-4 1,000 2,000 4,000
Restoration of Design.
Application for
3. Form-3 2,000 4,000 8,000
renewal of Design.
Petition for
cancellation for
4. Form-8 1,500 3,000 6,000
registration of a
Design.

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Notice of intended
exhibition or
5. Form-9 500 1,000 2,000
publication of
unregistered Design.
Application for entry
of name of proprietor
6. Form-11 500 1,000 2,000
or part proprietor in
the Register.
Request for
7. correction of clerical Form-14 500 1,000 2,000
error.
Request for certified
8. Form-15 500 1,000 2,000
copy.
Application for
9. rectification of Form-17 500 1,000 2,000
Register.
10. Notice of opposition. Form-19 100 200 400
Source: http://www.ipindia.nic.in/designs.htm

2.4.12 Classification of Industrial Designs

 Designs are registered in different classes as per the Locarno Agreement, 1968;
https://www.wipo.int/classifications/locarno/loc pub/en/fr/).
 It is used to classify goods for the registration of Industrial Designs as well as for
Design searches.
 The signatory parties have to indicate these classes in the official documents too.
 The classification comprises a list of classes and subclasses with a list of goods that
constitute Industrial Designs.
 There are 32 classes and 237 subclasses that can be searched in two languages i.e.
English and French.
 For example, Class 1 includes foodstuff for human beings, foodstuffs for animals and
dietetic foods excluding packages because they are classified under Class 9 (Bottles,
Flasks, Pots, Carboys, Demijohns, and Pressurized Containers).
 Class 32 classifies the Design of graphic symbols and logos, surface patterns,
ornamentation.

2.4.13 Designs Registration Trend in India

 Figure 2.11 represents the statistics for Industrial Designs (filed, examined and
registered) for the period 2010-20.

 During this period, an increase of 88%, 117% and 33% was observed in the

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parameters of Designs filed, examined and registered, respectively.

 In all three parameters, the graph depicts a similar pattern (more or less) with the
highest numbers observed in 2019-20 for Designs filed (12,268), examined
(13,644) and registered (14,272).
Figure 2.11: Industrial Designs profile (India) for the period 2010-20).

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20) (https://dipp.gov.in/sites/default/files/annualReport-

English2020-21.pdf)

2.4.14 International Treaties

The WIPO has put in place two important treaties (international) dealing with the smooth
functioning of various aspects of Industrial Designs:

 Hague Agreement for international registration (1925)

(https://www.wipo.int/treaties/en/registration/hague/)

 Locarno Agreement (1968) for international classification

(https://www.wipo.int/treaties/en/classification/locarno/)

2.4.15 Famous Case Law:

Apple Inc. vs. Samsung Electronics Co.

 In 2011, Apple Inc. filed a case against Samsung Electronics Co. in the United
States District Court for the Northern District of California for infringing their Designs
and Utility Patents of the user interface like screen app grid and tap to zoom.
 As evidence, Apple Inc. submitted the side-by-side image comparison of the
iPhone 3GS and the i9000 Galaxy S to demonstrate the alleged similarities in both
models.
 However, later it was found that the images were tempered by the Apple Company
to match the dimensions and features of the controversial Designs.
 So the counsel for Samsung Electronics blamed Apple of submitting false and

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misleading evidence to the court and the company countersued the Apple Company in
Seoul, South Korea; Tokyo, Japan; and Mannheim, Germany, United States District
Court for the District of Delaware, and with the United States International Trade
Commission (ITC) in Washington D.C.
 The proceedings continued for the 7 years in various courts. In June 2018 both
companies reached for a settlement and Samsung was ordered to pay $539 million to
Apple Inc. for infringing on its patents.

2.5 Geographical Indications

 In every country, there are certain regions famous for their traditional
knowledge/heritage in various sectors, such as agriculture, food products, textiles,
etc.
 People from far-off places used to travel to buy these products.
 For example, Christopher Columbus sailed from Spain to import world-famous
spices from India.
 British people travelled to Arabian countries to import Arabian horses for siring fast
running horses for commercial gains.
 Similarly, China silk and Dhaka Muslin have been in great demand from times
immemorial.
 The reputation of these products was built upon and painstakingly maintained by the
experts/masters of respective geographical locations.
 The know-how of these reputed products was passed onto future generations.
 With the passage of time, a specific link between the goods produced and
geographical location evolved, resulting in the growth of Geographical Indications
(GI).
 A GI is defined as a sign which can be used on products belonging to a particular
geographical location/region and possesses qualities or a reputation associated with
that region.
 In GI, there is a strong link between the product and its original place of production.

2.5.1 Acts, Laws and Rules Pertaining to GI

In India, GI was introduced in 2003 and is governed under the Geographical Indications of
Goods (Registration & Protection) Act, 1999‘ and the Geographical Indications of Goods

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(Registration & Protection) Rules, 2002.

2.5.2 Ownership of GI

The ownership/holders of GI (registered) can be of the producers, as a group/association/

cooperative society or association or in certain cases, government.

2.5.3 Rights Granted to the Holders

 Right to grant the license to others - The holder has the right to gift, sell,
transfer/grant a license, mortgage or enter into any other arrangement for
consideration regarding their product. A license or assignment must be given in
written and registered with the Registrar of GI, for it to be valid and legitimate.
 Right to sue - The holder of GI has the right to use and take legal action against a
person who uses the product without his consent.
 Right to exploit - The holder of GI can authorize users with exclusive right to use
goods for which the GI is registered.
 Right to get reliefs - Registered proprietors and authorized users have the right to
obtain relief concerning the violation of such GI products.

2.5.4 Registered GI in India

 GI products registered in India belong to the domains of handicrafts, agricultural,
food stuffs, alcoholic beverages, etc.
 The first GI tag was granted in 2004 to Darjeeling Tea and the latest being Kashmir
Saffron and Manipur Black rice (Chakhao) in May 2020.
 A total of 370 GI have been registered in India till May 2020.
(http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Application_Register
_10-09-2019.pdf).
 Nearly 58% of these belong to handicrafts, followed by agriculture (30%). Other
categories belong to food stuff, manufacturing, and natural goods.
 In the Handicraft category, Tamilnadu holds the maximum number (21) of GI
followed by Uttar Pradesh (20) and Karnataka (19). A few standout GI are mentioned
in table 2.11:

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Table 2.11: List of popular GIs registered in India.

GI Type State
Darjeeling Tea Agriculture West Bengal
Mysore Silk Handicraft Karnataka
Kashmir Pashmina Handicraft Jammu & Kashmir
Banaras Brocades and
Handicraft Uttar Pradesh
Sarees
Naga Mircha Agriculture Nagaland
Tirupathi Laddu Foodstuff Andhra Pradesh
Punjab, Haryana,
Phulkari Handicraft
Rajasthan
Basmati Agriculture India
Source: http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Application _Register_10-09-2019.pdf

 International countries, such as Thailand, France, Portugal, Italy, Mexico, Peru and
the United Kingdom, have also filed GI in India e.g. Champagne (wine) of France
and Scotch Whisky of the United Kingdom.

2.5.5 Identification of Registered GI

 Registered GI products are granted a tag, which is printed on the registered products.
 The tag confirms the genuineness of the product in terms of its production (by set
standards) and location of production.
 Non-registered GI products cannot use/exploit this tag.
 By and large, GI tags represent the place of origin (of the product) along with cultural
and/or historical identity e.g. Darjeeling Tea, Mysore Silk, Tirupathi Laddu, etc.
 In India,GI tags are issued by the Geographical Indication Registry under the
Department for Promotion of Industry and Internal Trade, Ministry of Commerce and
Industry.
 The head of GI registry is at Geographical Indications Registry Intellectual Property
Office Building, Industrial Estate, G.S.T Road, Guindy, Chennai - 600032.
 GI registered products can be grown/produced in any part of the world using
standards laid down by the GI Registry.
 However, these products cannot be labelled as GI as they are not produced/
manufactured in a specific geographical location, as mentioned in the official records
maintained by the GI Office of GI.
 For example, plants of Darjeeling Tea can be grown in any part of India.
 But the tea leaves of these plants cannot be sold under the brand name of Darjeeling
Tea, as the concerned plants were not grown in the soil and climate of the Darjeeling
area.

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2.5.6 Classes of GI
 GI certified goods are classified under 34 different classes, such as Class 1 is for
chemicals used in industry, science, photography, agriculture, horticulture and
forestry; unprocessed artificial resins, unprocessed plastics; manures; fire
extinguishing compositions; tempering and soldering preparations; chemical
substances for preserving foodstuffs; tanning substances; adhesives used in industry.
 Class 33 is for alcoholic beverages (except beers) and Class 34 is related to
tobacco, smokers articles, matches. More details can be extracted from the official
website of CGPDTM Office
(http://www.ipindia.nic.in/writereaddata/images/pdf/classification- of-goods.pdf).

2.5.7 Non-Registerable GI
For GI registration, the indications must fall within the scope of section 2(1) (e) of GI Act,
1999. Being so, it has to also satisfy the provisions of Section 9, which prohibits
registration of a GI mentioned below:

 The use of which would be likely to deceive or cause confusion.

 The use of which would be contrary to any law.

 Which comprises or contains scandalous or obscene matter.

 Which comprises or contains any matter likely to hurt the sentiments of society.

 Religious susceptibilities of any class or section of the citizens of India.

 Which are determined to be generic names or indications of goods and are,

therefore, not or ceased to be protected in their country of origin or which have
fallen into disuse in that country.

2.5.8 Protection of GI
 The IP rights to GI are enforced by the court of law of the concerned country.
 The GI registration of a product has certain advantages.
 It enables to identify pirated/non-genuine stuff, provides more commercial value
to the product, and also strengthens the case if it reaches the judicial courts.
 The two common methods of protecting a GI are: Sui generis systems (i.e. special

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regimes of protection) and under certification or collective mark systems.

 Many countries, including India to protect GI by using the sui generis system.
 This decision was taken after the TRIPS agreement (1995) and an option was given
to the countries to choose either TRIPS standards or the sui generis system.
 This was decided by considering the fact that every country has different
legislation and geographical structures & resources.
 Therefore, this system is not uniform in all countries and varies according to the
jurisdiction and legislation of the particular country.

2.5.9 Collective or Certification Marks

 Certification marks aim to certify the products comply with specific quality
standards irrespective of their origin.
 These standards include permitted materials and manufacturing methods.
 Therefore, the purpose of certification marks is to distinguish certified goods from
non-certified ones.
 Collective marks are owned by associations ensuring compliance with the agreed
standards.
 Collective marks signify that a good or service originates from a member of a
particular association.
 The Collective mark is used by cooperating enterprises that have agreed to comply
with defined quality standards for goods or services that share common
characteristics.

2.5.10 Enforcement of GI Rights

The rights to GI protection are typically enforced by the court of law. The sanctions
provided could be civil (injunctions restraining or prohibiting unlawful acts, actions for
damages, etc.), criminal, or administrative.

2.5.11 Procedure for GI Registration

 Prior to filing an application for registering GI, it is prudent to search whether the
concerned GI is already protected or not.
 This can be done by using search engines created by WIPO

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(https://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp where Search of

Appellations of Origin and Geographical Indications both can be conducted.
 Additionally, WIPO has created a directory of all IP offices of its member
countries.
 The registered GI of any country can be searched by accessing the website of the
respective country (https://www.wipo.int/directory/en/urls.jsp).
 The list of registered GI in India can be accessed from the official website of
CGPDTM http://www.ipindia.nic.in/writereaddata/Portal/News/367_1_Registe
red_GI.pdf.
 Once the prior search for registered GI is done, the applicant has to file an
application. The application for GI can be forwarded by an individual or an
organization or authority of people established under Indian law.
 The application in a prescribed format is submitted to the Registrar, Geographical
Indications along with the prescribed fee
(http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi- rules.pdf).
 In the application, the applicant needs to mention the interest of the producers of the
concerned product.
 The application should be duly signed by the applicant or his agent with all the
details about the GI that how its standard will be maintained.
 The submission of three certified copies of the map of the region where the GI
belongs is mandatory.
 Once the application is filed at GI Registry, the Examiner will scrutinize the
application for any deficiencies or similarities.
 If the examiner finds any discrepancy, he will communicate the same to the
applicant, which is to be replied within one month of the communication of the
discrepancy.
 Once the examiner is satisfied with the response/s, he files an examination report
and hands over the same to the Registrar.
 Once again, the application is scrutinized. If need be, the applicant is asked to clear
any doubts/objections within two months of the communication otherwise, the
application will be rejected.
 After getting a green signal from the Registrar, the application is published in the
official Geographical Indication Journal (http://www.ipindia.nic.in/journal-gi.htm)

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for seeking any objections to the claims mentioned in the application.

 The objections have to be filed within four months of the publication. If no
opposition is received, the GI gets registered by allotting the filing date as the
registration date.
 Initially, GI is registered for ten years but is renewable on the payment of the fee.

Figure 2.12: Flow chart for the process of GI registration.

Source: https://www.researchgate.net (slightly modified)

2.5.12 Documents Required for GI Registration

 Details about the applicant‘s name, address and particulars.

 Application form GI-1A.
 Statement about the designated goods being protected under GI.
 Class of goods.
 Affidavit to establish the claim of genuinely representing the interest of the
producers.
 Characteristics of GI.

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 The special human skill required (if any).

The important forms to file GI in India under various classes are mentioned below:
Table 2.12: Important application forms related to GI.
Form Requisite Fee
Title
No. ( )
Application for the registration of a
Geographical Indication for goods included 5000
in one class.
Application for the registration of a
GI-1 Geographical Indication for goods included 5000
in one class from a Convention country.
A single application for the registration of a 5,000 for each
Geographical Indication for goods in class
different classes.
A single application for the registration of a 5,000 for each
Geographical Indication for goods in class
different classes from a Convention country.
Notice of opposition to the registration of a 1,000 for each
Geographical Indication or an opposition or class
GI-2 an authorised user.
Form of counter-statement. 1,000

Application for extension of time for filing 300

notice of opposition.

Application for the registration of an

authorised user of a registered Geographical
GI-3 Indication. 500
Request for issuance of a registration 100
certificate as an authorised user.

For renewal of an authorised user. 1000

Renewal of the registration of a Geographical

Indication at the expiration of the last
registration. 3,000
GI-4 Application for restoration of a Geographical 1000 plus
Indication or an authorised user removed
from the Register. applicable
renewal
fee
Application for renewal within six months
from the expiration of last registration of
Geographical Indication. 3,500
GI-8 Application for registration of a Geographical 1000
Indications agent.

GI-10 Application for cancellation of an entry in the 300

Register or to strike out goods.

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Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-rules.pdf

2.5.13 GI Ecosystem in India

 India is among the geographically and traditionally rich countries.
 The scope of generating GI products in India is enormous.
 These products can contribute to the economic development of a particular region or
society.
 However, till June 2021, a total of 370 GI have been registered in India, which is
much belowitspotential(https://ipindia.gov.in/writereaddata/Portal/Images/pdf/
GI_Applicati on_Register_10-09-2019.pdf).
 Figure 2.13 represents the statistics for GI (filed, and registered) for the period 2010-
20. Maximum number (148) of GI were filed in 2011-12 whereas, minimum number
(17) was observed in 2015-16.
 Not much change in the number of GI registrations was observed during the period
2010-20. Each year the number hovered around in the twenties, with maximum
registrations (34) seen in 2016-17.

Figure 2.13: GI profile (India) for the period 2010-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

Case Studies on Patents

Protection of Traditional Knowledge (TK)
 The WIPO‘s Intergovernmental Committee on IP and Genetic Resources, TK and
Folklore, was established in 2000, is a forum where WIPO member states discuss the IP

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issues that arise in the context of access to genetic resources and benefit-sharing as well
as protection of TK and Traditional Cultural Expressions (TCEs).
 The Intergovernmental Committee (IGC) holds formal negotiations to reach an agreement
on one or more international legal instruments that would ensure the effective protection
of genetic resources, TK and TCEs. Such an instrument/s could range from a
recommendation to WIPO members to a formal Treaty that would bind countries
choosing to ratify it.
 After fighting successfully for the revocation of Turmeric and
 Basmati Patents granted by USPTO and Neem Patent granted by EPO, India initiated its
project for the creation of a Traditional Knowledge Digital Library (TKDL) in 2001.
 This model is well accepted by the international community and an effective mechanism
for saving TK from Patents by foreign individuals.
 It stimulated the IGC process and increased recognition of TK within the Patent system.
 In 2002, certain TK journals were included in the minimum documentation for
applications under WIPO‘s Patent Cooperation Treaty, and TK classification tools were
integrated within the International Patent Classification in 2004.

India: Traditional Knowledge And Patent Issues: An Overview Of

Turmeric, Basmati, Neem Cases.
Introduction
 Traditional Knowledge (TK) is a living body of knowledge that is developed, sustained
and passed on from generation to generation within a community, often forming part of
its cultural or spiritual identity.

 Traditional Knowledge per se that is the knowledge that has ancient roots and is often
informal and oral, is not protected by conventional intellectual property protection
systems.

 This scenario has prompted many developing countries to develop their own specific and
special systems for protecting traditional knowledge.

 India has played a very significant role in the documentation of traditional knowledge
thereby bringing the protection of traditional knowledge at the centre stage of the
International Intellectual Property System.

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 Provision of Traditional Knowledge Digital Library (TKDL) Access (Non-Disclosure)

Agreements with several international patent office's including USPTO, EPO, JPO etc. by
Indian Government has led to many patent applications concerning India's traditional
knowledge have either been cancelled or withdrawn or claims have been amended in
several international patent offices.

Traditional Knowledge Digital Library

 TKDL is a pioneer initiative of the Indian Government, and came to the fore due to the
India's efforts on revocation of patent on wound healing properties of turmeric at the
USPTO and the patent granted by the European Patent Office(EPO) on the antifungal
properties of neem.
 India's traditional medicinal knowledge exists in local languages such as Sanskrit, Hindi,
Arabic, Urdu, Tamil etc. is neither accessible nor comprehensible for patent examiners at
the international patent offices.
 It was identified by the TKDL expert group in 2005 that annually around 2000 patents
were granted around the world erroneously concerning Indian system of medicine by
patent offices around the world.
 TKDL provides contents of the ancient texts on Indian Systems of Medicines i.e.
Ayurveda, Siddha, Unani and Yoga, into five international languages, namely, English,
Japanese, French, German and Spanish, with the help of information technology tools and
an innovative classification system - Traditional Knowledge Resource Classification
(TKRC) Bio-piracy and Misappropriation of TK.
 The use of intellectual property systems to legitimize the exclusive ownership and control
over biological resources and biological products and processes that have been used over
centuries in non-industrialized culture can be defined as "bio-piracy".
 In other words bio-piracy means misappropriation of traditional knowledge with an
intention to gain patent protection over that knowledge.
 Devolution, encroachment, the bio prospecting rush, lack of appropriate legal systems and
a clash of systems all make traditional knowledge highly vulnerable to bio-piracy.
 Traditional knowledge is associated with biological resources which in turn is a
component of biodiversity.
 The clues/ leads provided by TK can be utilized to develop best practices/processes/
system for mankind without the investment of huge amount of money for research and
results validation through clinical trials in labs, above all such knowledge saves time.

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 In the recent past, several cases of bio-piracy of TK from India have been reported.
 The following are the most prominent cases with regards to misappropriation of TK from
India.

Turmeric Patent
 Turmeric is a tropical herb grown in east India.

 Turmeric powder is widely used in India as a medicine, a food ingredient and a dye to
name a few of its uses.

 For instance, it is used as a blood purifier, in treating the common cold, and as an anti-
parasitic for many skin infections.

 It is also used as an essential ingredient in cooking many Indian dishes.

 In 1995, the United States awarded patent on turmeric to University of Mississippi

medical center for wound healing property.

 The claimed subject matter was the use of "turmeric powder and its administration", both
oral as well as topical, for wound healing.

 An exclusive right has been granted to sell and distribute.

 The Indian Council for Scientific and Industrial Research (CSIR) had objected to the
patent granted and provided documented evidences of the prior art to USPTO.

 Though it was a well known fact that the use of turmeric was known in every household
since ages in India, it was a herculean task to find published information on the use of
turmeric powder through oral as well as topical route for wound healing.

 Due to extensive researches, 32 references were located in different languages namely

Sanskrit, Urdu and Hindi.

 Therefore, the USPTO revoked the patent, stating that the claims made in the patent were
obvious and anticipated, and agreeing that the use of turmeric was an old art of healing
wounds.

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 Therefore, the TK that belonged to India was safeguarded in Turmeric case.

Neem Patent
 The patent for Neem was first filed by W.R. Grace and the Department of Agriculture,
USA in European Patent Office.

 The said patent is a method of controlling fungi on plants comprising of contacting the
fungi with a Neem oil formulation.

 A legal opposition has been filed by India against the grant of the patent.

 The legal opposition to this patent was lodged by the New Delhi-based Research
Foundation for Science, Technology and Ecology (RFSTE), in co-operation with the
International Federation of Organic Agriculture Movements (IFOAM) and Magda
Aelvoet, former green Member of the European Parliament (MEP).

 A tree legendary to India, from its roots to its spreading crown, the Neem tree contains a
number of potent compounds, notably a chemical found in its seeds named azadirachtin.

 It is used as an astringent in so many fields.

 The barks, leaves, flowers, seeds of neem tree are used to treat a variety of diseases
ranging from leprosy to diabetes, skin disorders and ulcers.

 Neem twigs are used as antiseptic tooth brushes since time immemorial.

 The opponents' submitted evidence of ancient Indian ayurvedic texts that have described
the hydrophobic extracts of neem seeds were known and used for centuries in India, both
in curing dermatological diseases in humans and in protecting agricultural plants form
fungal infections.

 The EPO identified the lack of novelty, inventive step and possibly form a relevant prior
art and revoked the patent. Apart from this, several US patents were recently taken out
Neem-based emulsions and solutions.

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Basmati patent
 The US patent office granted a patent to 'RiceTec' for a strain of Basmati rice, an aromatic
rice grown in India and Pakistan for centuries .

 Rice is the staple food of people in most parts of Asia, especially India and Pakistan.

 For centuries, the farmers in this region developed, nurtured and conserved over a
hundred thousand distinct varieties of rice to suit different tastes and needs.

 In 1997, in its patent application Ricetec also acknowledged that "good quality Basmati
rice traditionally come from northern India and Pakistan...

 Indeed in some countries the term can be applied to only the Basmati rice grown in India
and Pakistan."

 However, the company then went on to claim that it had invented certain "novel" Basmati
lines and grains "which make possible the production of high quality, higher yielding
Basmati rice worldwide."

 The Indian Government had pursued to appeal only 3 claims out of 20 claims made in the
original patent application of RiceTec Inc.

 What were being challenged were only claims regarding certain characteristics of basmati
(specifically starch index, aroma, and grain dimensions).

 It is to be noted that WTO Agreement does not require countries to provide Patent
protection to plant varieties.

 It only requires countries to legislate so that plant varieties are protected in some manner
(not necessarily through patents).

 However, US being a strong proponent of Patent protection of plant varieties allowed the
patent application.

 Three strains development by RiceTec are allowed patent protection and they are eligible
to label its strain as "Superior Basmati Rice".

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 Therefore, in Basmati case, RiceTec altered the strain through crossing with the Western
strain of grain and successfully claimed it as their invention and the case is an example of
problems illustrated in TRIPS with regards to patenting biotechnological processes .

TKDL as Global IP watch systems

"Global IP watch monitoring systems have an important role to play in enabling the
identification of published TK-related applications on which third parties – in accordance
with the patent law of the country concerned – may file observations."

Advantages

1. TKDL has enabled the submission of third party observations (TPOs) which has
proven the only cost-effective way of misappropriation of TK at the pre-grant stage.
2. TKDL has enabled successful opposition of hundreds of patent applications filed
around the world.
3. Enables immediate corrective action to be taken with zero cost so as to prevent bio-
piracy.

Conclusion
 It is to be noted that the IP world has acknowledged the importance of successful
documentation of indigenous TK like India's TKDL- play a role in defensive protection
within the existing IP system.

 As suggested by World Intellectual Property Organization (WIPO) as a global measure

to curb bio-piracy and misappropriation of TK the following strategies are discussed.
Inventions based on or developed using genetic resources (associated with traditional
knowledge or not) may be patentable or protected by plant breeders' rights.

 The other couple of measures considered, discussed and developed by WIPO are firstly,
defensive protection of genetic resources which aims at preventing patents being granted
over genetic resources (and associated traditional knowledge) which do not fulfill the
existing requirements of novelty and inventiveness.

 The said measure further entails the possible disqualification of patent applications that
do not comply with Convention on Biological Diversity (CBD) obligations on prior

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informed consent, mutually agreed terms, fair and equitable benefit-sharing, and
disclosure of origin.

 Secondly, WIPO members want to make it mandatory for patent applications to show
the source or origin of genetic resources, as well as evidence of prior informed consent
and a benefit sharing agreement.

IP ECOSYSTEM IN INDIA

As the IP ecosystem is quite vast and varied, each country has established dedicated
bodies for the promotion, administration and implementation of IP activities. In India, the
key organizations engaged in IP affairs are mentioned below.

5.1 Department for Promotion of Industry and Internal Trade (DPIIT),

New Delhi (dipp.gov.in)
 DPIIT, earlier known as the Department of Industrial Policy and Promotion (DIPP),
under the Ministry of Commerce and Industry, Govt. of India, is the apex IP body.
 It came into existence in 1995 and is the main body for regulating and administering
the industrial sector. The major categories of IPs are being governed and
administered by the DPIIT (Table 5.1).
Table 5.1: Categories of IPR and their governing bodies in India.
S. No. Type of IP Governing Body
 Patents Department for Promotion
 Copyrights of Industry and Internal
 Industrial Designs Trade, New Delhi
1.  Trademarks
 Geographical Indications
 Semiconductor Integrated
Circuits Layout-Design

Traditional Knowledge CSIR & Ministry of

2.
Digital Library AYUSH*
Ministry of Agriculture
3. Plant Variety Protection and Farmers Welfare,
New Delhi
Ministry of Environment,
Biological Diversity
4. Forest and Climate
Protection
Change, New Delhi
No specific body governs
Trade Secrets. These are
protected under a various
statutes like
Trade Secrets

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5.  Indian Contract Act,

1872
 Copyright Act, 1957
 Information Technology
Act 2000, etc.
 *Government of India (through CSIR) and the Ministry of AYUSH, have created a
digital repository, namely Traditional Knowledge Digital Library (TKDL),
containing the information on traditional knowledge existing in India.
 This library has been translated into various languages, such as English, French,
German, Spanish and Japanese. Many Patent Offices, including the European Patent
Office, US Patent Office, Japanese Patent Office and Indian Patent Office, have
access to the depository. TKDL also serves as a reference of prior arts for Patent
examiners at these Patent Offices.
 DPIIT has a dedicated and robust Office of the Controller General of Patents,
Designs and Trade Marks (CGPDTM) for formulating as well as implementation of
the policies, rules and regulations pertaining to IPR. In addition, DPIIT also
undertakes the following IPR-related activities:

 Modernization and strengthening of Intellectual Property Office.

 Strengthening of physical infrastructure.
 Enhancement of human resources.
 Expansion of physical infrastructure at Delhi, Mumbai, Kolkata and Chennai.
 IT up-gradation.
 Development of software required for ISA/IPEA and Madrid Protocol.
 Subscription to non-patent literature required for PCT minimum documentation.
 Digitization of records.
 Sensitization and awareness programmes.
 Establishment of the electronic library.
 Furniture and office equipment for the modernized environment in IP offices.
 DPIIT also collaborates with WIPO and other apex industry organisations to promote and
strengthen the IP ecosystem. It also provides inputs on various issues related to the TRIPS
agreement.

5.1.1. Intellectual Property Appellate Board and its Amendment

 With an increase in the IPR regime all over the world, a higher number of disputes had

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also been observed. Because of the over occupancy of the judicial courts in India, there
was a significant delay in the judgments related to IPR cases.
 To overcome this issue, in 2003 Government of India established Intellectual Property
Appellate Board (IPAB), a statutory body under DPIIT, under the provisions of the
Trademarks Act, 1991.
 The Board used to hear appeals against the decisions of the Registrars of Trademarks
and Geographical Indications, and Controller of Patents.
 The Copyright Office of GoI had created a dedicated Board to determine the reasonable
rates or royalties, licensing and assessment of compensation.
 In the year 2017, the Copyright Board and Plant Varieties Protection Appellate
Tribunal were merged with IPAB and functions in accordance with their respective
Acts and Rules.
 As per the new amendments in the Tribunal Reforms (Rationalisation and Conditions
of Service) Ordinance, various Boards/Appellate Tribunals, which existed under these
statutes, have been abolished (https://spicyip.com/wp-content/uploads/ 2021/07/Press-
Release-IPD.pdf).
 Therefore, the IPAB dealing with appeals from the Intellectual Property (IP) offices and
matters such as revocation of Trademarks, Patents, etc. stands abolished.
 The orders for the same were passed by the Hon‘ble Shri D.N. Patel (Chief Justice of
High Court of Delhi) on 4th April, 2021 Chief Justice also directed High Courts to
create a dedicated Intellectual Property Division (IPD) to deal with all matters related
to Intellectual Property Rights (IPR).
 This has been done to avoid multiplicity of proceedings (of IPAB and High Courts) and
also to avoid the possibility of conflicting decisions with respect to matters relating to
the same trademarks, patents, design etc.
 All the pending cases (nearly 3000) of IPAB have been transferred to IPD.Delhi High
Court is in the process of framing comprehensive Rules for the IPD.
 A committee has already been constituted to frame the`Delhi High Court Patent Rules’,
which shall govern the procedures for adjudication of patent disputes before the Delhi
High Court. This is a landmark decision in the history of IPRs in India and such IPDs
already exist in countries like UK, Japan, Malaysia, Thailand, China, etc.

5.1.2 Draft Model Guidelines on Implementation of IPR Policy for

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Academic Institutions
 To implement the policy for enhancing the IP ecosystem, IP commercialization,
Entrepreneurship and start-up ecosystem in academic institutions, DPIIT has
prepared a draft of guidelines for the implementation of IPR policy for academic
institutions.
 The draft can be accessed from the official website (https://dipp.gov.in/ draft-model-
guidelines-implementation-ipr-policy-academic- institutions).
 The draft was open for feedback and suggestion for the public at large from
September 9th 2019 till October 25th 2019. The department is in the process of
finalizing the guidelines and will be released soon.

5.1.3 Scheme for Facilitating Start-ups Intellectual Property Protection

(SIPP)

 To protect and promote IP in India, DPIIT initiated this scheme in 2016

(http://www.ipindia.nic.in/writereaddata/Portal/News/323_1_Scheme_for_facilitati
ng_start-ups.pdf).

 This scheme is to facilitate the protection of Patents, Trademarks and Designs

generated by start-ups.

 The scheme is inclined to nurture and mentor innovative and emerging

technologies among the start-ups and assist them in protection and
commercialization by providing them access to high-quality IP services and
resources.

5.1.4 Office of the Controller General of Patents, Designs and

Trademarks (CGPDTM)
This office is the most important component of the IP regime in India. It supervises the
functioning of the following IP offices:
 The Patent Offices (including the Design Wing) at Chennai, Delhi, Kolkata & Mumbai.

 The Patent Information System (PIS) and Rajiv Gandhi National Institute of
Intellectual Property Management (RGNIIPM) at Nagpur.
 The Trademarks Registry at Ahmadabad, Chennai, Delhi, Kolkata & Mumbai.
 The Geographical Indications Registry (GIR) at Chennai.

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 The Copyright Office at Delhi.

 The Semiconductor Integrated Circuits Layout-Design Registry at Delhi.

Salient features of CGPDTM are:

 The office of CGPDTM administers all the Acts and laws related to Patents,
Trademarks, Industrial Designs, Geographical Indications, Copyrights and
Semiconductor Integrated Circuits Layout-Design Registry.
 Applicants can file their applications related to Patents, Designs, Trademarks,
GI through E gateway(http://www.ipindia.nic.in/e-gateways.htm#comprehensive-e-
filing).
 The office has designed a dedicated public search engine to search the details of the
registered IP and the status of the applications filed. These search engines are
available free of cost for the public at large.
 The office publishes official journals of Patents, Trademarks and GI every week,
which contain the details of applications published, abandoned, First Examination
Report (FER) and Patents granted by the controller general.
 The details and amendments in the Rules and Acts are administered by the office
and the same is notified by the Office on a regular basis.
 The Office publishes an annual report every year containing statistics about all IPs.
The report also contains information regarding the international applications filed
and granted in India through PCT and Conventions. The details of the revenue
incurred and generated in the respective financial year are also depicted in the
report.

 The Office notifies the vacancies for ‗Patent Examiners‘ and holds the exams of
Patent Agents‘ from time to time.

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Figure 5.1: Organizational structure of IPR regime in India.

Source: http://www.ipindia.nic.in/organization-structure-patent.htm

5.1.5 IPO Website

 A Patent Search web portal (www.ipindia.nic.in) and patents‘ e- filing webpage
(https://ipindiaonline.gov.in/epatentfiling/goFor Login/doLogin) have been
redesigned to make it more informative, interactive and user-friendly.
 This portal can be accessed free of charge and carries information, such as the
status of Patent applications, including publication, examination, grant and
renewal.

5.1.6 International Searching Authority (ISA) and International

Preliminary Examination Authority (IPEA)
(http://ipindiaservices.gov.in/isaweb/IA.html)
 The Patent Office, New Delhi, is a part of the Office of CGPDTM, which functions
under the ambit of DPIIT, GoI.
 In 2013, WIPO granted the authority of ISA/IPEA to Indian Patent Office to assess
the patentability of the applications filed through PCT or Conventions.
 The authority generates the written opinion in the form of a report, and based on this
report, the applicant can withdraw the application if he finds that the granting of
patents for this invention is unlikely.
 The examination of the application filed through PCT or conventions is done by the
IPEA.

5.1.7 Rajiv Gandhi National Institute of Intellectual Property

Management (RGNIIPM) (http://www.ipindia.nic.in/about-us-

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rg.htm)
 This institute has been established as a national "Centre of Excellence" for training,
management, research, education in the field of IPR, in Nagpur.
 Additionally, the institute addresses the need of increasing the general awareness and
understanding of the government officers and users of IP systems in universities and
other educational institutions.
 Salient activities of the institute are:
 The institute researches various aspects of IP and prepares study reports and policy
analysis papers on the subject of current relevance for policy and lawmakers. It
conducts research in the field of IP on several socio-economic parameters, strata of
the society, technological fields, R&D trends, etc. to find the gaps in the IP
ecosystem in India. These reports are available on the official website of the
institute for free of cost.
 Based on the research conducted, discussion with experts of IP laws and other
concerned stakeholders, the institute lays down policy recommendations for the
government, SMEs, industries and universities in India.
 The institute proposes three-month diploma course, six months and one-year Post
Graduate Diploma course in Intellectual Property Law.
 The institute conducts time to time training for the students and IP professionals for
awareness and sensitizes them about the significance of IPR.
 The training of IP examiners is conducted to make them proficient as per the
international standards. The institute also collaborates with WIPO for organising
training programmes in India.
 The institute also organizes IP Awareness/Campaign in the country in collaboration
with IP Offices, Government Organizations and R&D Institutions.

5.1.8 Cell for IPR Promotion and Management (CIPAM)

 CIPAM, a professional body under DPIIT, has been established for addressing the
objectives of IPR Policy especially creating awareness about IPR among all strata
of life i.e. educational institutions, industries (primarily small scale industries),
and general public and professional bodies like the police, lawyers, etc.
 Over one lakh students have benefitted from lectures/talks related to IPR. Besides,
over 80 IPR cells have been established in colleges/ universities. A chapter on IPR,

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Innovation & Creative Works is included in NCERT‘s course curriculum. CIPAM

plans to introduce animated videos on IPR for the students. An IPR Activity Book
titled ‘Let’s Have Fun with IP’ has also been published to benefit students.
Figure 5.2: India’s First IPR Mascot – IP Nani

The major activities of CIPAM include:

 A 20-minute tutorial video on the overview of IPR featuring IP Nani has been
created in collaboration with Qualcomm, an American multinational corporation
headquartered in San Diego, California.
 A Training of Trainers Module (beta version) to aid school teachers in teaching
basic concepts of IP using CIPAM‘s content has been created
(http://cipam.gov.in/wp-content/ uploads/2019/05/School-Teachers-Training-
Module.pdf).
 Till date, 700+ teachers have been trained on the subject of IPR.
 CIPAM utilizes community radios to reach out to the youth.
 An online IP Learning Platform - L2Pro has been launched in collaboration with
National Law University (NLU), Delhi and Qualcomm, which would provide students
and industry (especially SMEs) an easily accessible IP learning forum.

5.1.9 IPR Awareness in the Industry & MSME

CIPAM, along with the Ministry of Micro, Small and Medium Enterprises (MSMEs) has
convened many IPR training programmes for MSME Officers and MSME Clusters. A
Trade Secret Toolkit‘ has been prepared for small-scale industries and start-ups.

5.1.10 Training Program for Enforcement Agencies

Over 100 training programs on IP Enforcement have been conducted for personnel of

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Police, Judiciary and Customs and a dedicated toolkit has been designed for this purpose.

5.1.11 Statistical Data on IPR

 DPIIT also collects IPR related data and publishes them in their annual reports.
 It also compares the data with previous years to understand the trajectory of the
Patents, Copyrights, Trademarks, etc. and bring necessary intervention for further
improvement, if needed.
 A glimpse of the IPR statistical data is discussed for Patents.

Table 5.2: Patent profile (2018-19) of select countries.

Total Number of Patent Applications
Number of Filed
S.
Country Patent
No. % Non- %
Applications Residents
Filed age Residents age
1. China 14,00,661 12,43,568 90.2 1,57,093 9.8
2. USA 6,21,453 2,85,113 48.4 3,36,340 51.6
3. Japan 3,07,969 2,45,372 81.7 62,597 18.3
4. S. Korea 2,18,975 1,71,603 77.7 47,372 22.3
5. India 53,627 19,454 32.1 34,173 67.9
Source: World Intellectual Property Indicators,
(https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2020.pdf)

 Although, India ranks among the top 5 countries in the parameter of research
publications, but it has to do a lot of catching in the parameter of Patents (filed,
granted and licensed). Countries like China, USA, Japan, S. Korea and scores of other
countries are way ahead of India in terms of the number of Patent applications filed in
2018-19 (Table 5.2).
 This fact becomes grimmer on realizing that out of 53,627 Patents applications filed,
only one third (32%) were filed by Indian residents and the majority (68%, approx.)
were filed by non-resident Indians.
 As per the latest data available (2018-19), a maximum number of Patent applications
were filed in the field of Polymer S&T (12,414) followed by Chemical (6560) and
Electrical (6308). The trend of Patent granted a quite similar to that of Patent
applications filed (Fig. 5.3).

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 Figure 5.4 displays the trend of Patents filed, examined and granted during the
period 2010-11 to 2019-20. Since 2014-15, a rise in the graph of all the three
parameters is observed.
 However, a steep rise is seen in case of the number of patents examined.
 It is due to the increase in the number of Patent Examiners.
 Earlier, in India, it used to take around 5-7 years for a Patent to be granted, which is
not a healthy sign.
 The major reason for the delay was attributed to less number of Patent Examiners.
With an increase in the number of examiners, it is hoped that Patents would be
granted much earlier.

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5.2 National Research Development Corporation (NRDC), New Delhi

(http://www.nrdcindia.com)
 NRDC, an enterprise of Department of Scientific & Industrial Research (DSIR),
Govt. of India, was set up in 1953 with a mandate to develop, promote and
transfer/commercialize IP and technologies emanating from Higher Education
Institutes (HEIs), R&D research laboratories/institutions and Public Sector
Undertakings (PSUs).
 NRDC has a repository of 2500 Indian technologies, filed over 1700 Patents and
transferred about 5000 technologies in different sectors in India.
 It has also created a technology data bank (http://fccollc.com/nrdclive/) containing
information regarding technologies available in various fields, such as electrical &
electronics, mechanical, coil, mining, biotechnology, healthcare, leather, etc.
Researchers can post or search technologies at the portal. The major components of
NRDC are as follows.

5.2.1 Intellectual Property Facilitation Centre (IPFC)

 It is a joint project of NRDC and MoMSME with a mandate to create awareness
and adoption of IPR by the entrepreneurs and the MSMEs
(http://www.nrdcindia.com/Pages/IPFC).

 From time to time, IPFC organizes IP-related training programs across the country.
Participants are awarded certificates after successful completion of the course.

 The IP related services offered by IPFC include:

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 Prior Art Search and Preliminary Patentability Assessment.

 Patent Filing Support for filing with the provisional specification or/and
with complete specification.
 Advice for filing Patents in other countries.
 Advice on examination reports and queries for the Indian Patent Office.
 Post-Grant Support.
 Support for Infringement Proceedings, Opposition Proceedings, etc.
 Technology Transfer Agreements and Patent Valuation.
 Technology Marketing and Licensing.

IPFC also provides guidance and assistance in the preparation of documents required
for registration of Copyrights, Trademark, Industrial Designs, and Geographical
Indications.

5.2.2 Intellectual Property Management Division (IPMD)

NRDC provides financial and technical assistance to the innovations emanating from R&D
organizations, academic institutions and universities as well as individuals for IP protection.
The division assists in the services like Patent search facility, assistance in Patents
commercialization, organizing IPR workshops and many other Patent related services.

5.2.3 Start-ups IP Protection (SIPP)

 This is a scheme launched by DPIIT, Govt. of India to assist start-ups in filing
applications for Patents, Designs and Trademarks through registered facilitators by
paying only the statutory fees.
 NRDC plays a significant role in this scheme by providing services and guidance to
budding start-ups in their innovative plans and IP- related matters.
 NRDC signed an agreement with the Indian Oil Corporation for providing a variety of
assistance in Indian Oil‘s Start-up Scheme.
 NRDC has supported more than 14 start-ups under this scheme in the following ways:
 Providing general advisory on different IP on a pro bono basis.
 Providing information on protecting and promoting IPR to start- ups in other
countries on a pro bono basis.
 Assisting in filing and disposal of the IP applications related to Patents, Trademarks

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and Design under relevant Acts at the national IP offices under the CGPDTM.
 Drafting provisional and complete Patent specifications for inventions of start-ups.
 Preparing and filing responses to examination reports and other queries, notices, or
letters issued by the IP office.
 Appearing on behalf of start-up at hearings.
 Contesting opposition, if any, by other parties.
 Ensuring final disposal of the IPR application.

5.2.4 IPR Awareness

 To sensitize people about the importance of IPR and its protection & management,
NRDC organizes IPR awareness seminars/workshops on issues related to the
commercialisation of Technology/Patents, protection of IP, prior art searching techniques,
IP issues in technology licensing and so on.
 NRDC also delivers talks/seminars on the importance and need for IP protection to
students, young scholars, teaching and research communities.
 NRDC provides IPR Service (Patent search, Patent filing, consultancy, organising
workshops, capacity building, etc.) to many companies, such as National Thermal Power
Corporation (NTPC), Bharat Earth Movers Limited (BEML), Mishra Dhatu Nigam
Limited (MIDHANI) Bharat Dynamics Limited (BDL).

5.2.5 Innovation Facilitation Centres (IFCs)

 On behalf of DSIR, NRDC has set up 6 IFCs in the universities under Programme for
Inspiring Inventors and Innovators (PIII).
 The mandate of IFCs is to sensitize the students, research scholars and faculty
members (preferably science stream) about IP related issues by organizing seminars
and workshops on IP and technology transfer (http://www.nrdcindia.com/Pages/IFC).
 NRDC plans to set up additional IFCs in universities, NIT‘s and IIT‘s, autonomous
Institutions & academic institutions which are desirous of stimulating technology-led
innovations.

Main Objectives:
 To promote area-specific technologies for the industries by utilizing the R&D
capabilities of the host institutions in the region.
 To provide value-added services in terms of IP management & technology

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commercialisation for making commercial products from the R&D of institutions

of the region.
 To act as a potent resource of IP-protected technologies to help the manufacturing
sector of the country in developing new products and services based on the
innovative technologies available through the IFCs.
 To provide IP protection and management services and facilitate technology
transfer and commercialisation.

5.2.6 Outreach Activities

 To promote regional innovations, technologies, IP promotion and

commercialisation in the country because of growing industrialization and start-up
ecosystem, NRDC has created 4 outreach centres in various locations:

 Intellectual Property Facilitation Centre (IPFC) at Vishakhapatnam with support of

MoMSME, GoI.

 Technology and Innovation Support Centre (TISC) at Vishakhapatnam with

support of DPIIT-CIPAM, GoI.
 Incubation Centre at New Delhi.

 North Eastern Cell - NRDC at Guwahati.

 Since its inception, IPFC & TISC at Visakhapatnam have provided its IPR services
to various sectors (public and private), including PSU‘s, educational institutions
and industries.

 It has been at the forefront of organizing IP workshops in the domains of Patent

capacity building, Patent awareness, Patent filing, Patent management, etc.

 Within a short span of a little over two years, NRDC-IPFC has performed the
following activities (Table 5.3):
Table 5.3: Activities performed by NRDC-IPFC.
FY 2019-20
Number
Attributes (Till 31st March
FY 2018-19
2020)
Patent services facilitated with
due diligence
(Novelty Search Reports 45 55
generated + Patents Filed service
+ Advisory)
Technology transfer to MSME/

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Entrepreneurs/ Start-ups/ 7 10
Industries & PSU‘s
Technologies assigned 8 7
Trademark services facilitated &
14 29
filed
Copy right services facilitated &
1 3
filed
Industrial Design services
4 2
facilitated & filed
Geographical Indication of Goods
Initiated & services facilitated 1 2
undertaken
MoU/MoA signed 9 19

IP Workshops conducted 7 8
Source: http://www.nrdcindia.com/OutreachCenter/5

5.2.7 Schemes and Programmes

5.2.7.1 IP Consultancies - Academia/R&D institutes and industries are at the forefront

of knowledge creation and scientific activities. With innovation as a central theme,
NRDC provides consultative services in drafting/formulating innovation, technology
transfer and IP policy of their respective organizations.

5.2.7.2 Technology Landscaping - NRDC helps stakeholders in technology

landscaping analysis in which it helps to understand the market evaluation of a particular
technology as well as the latest developments involving such technology. This initiative
helps stakeholders to take important decisions and adopt strategies involving R&D of
product processes, investment in specific areas of technology and identifying Patent
trends. NRDC is financing programmes like Programme for Inspiring Inventors and
Innovators (PIII) and Programme for Development of Technology Inspiring for
Commercialization (PDTC). The main features of the programmes are mentioned below:

5.2.7.3 Programme for Inspiring Inventors and Innovators:

 Promotion & Propagation of Inventions and Innovations.
 Prize Award to Meritorious Inventions and open-source Technologies.
 Innovate India Conference.
 Intellectual Property & Innovation Facilitation.
 Intellectual Property and Technology Facilitation Centre (IPFC).
 NRDC-University Facilitation Innovation Centers.
 Patent Seminars, Patent Search.
On-Line IPR & Knowledge Management Courseware for Certificate Programme.
 Technology Knowledge Management Programme.

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 Techno-commercial Support to Scientists, Innovators and Student for process Trial and
Validation of Technologies.
 Knowledge Management Programme for the promotion of Innovations /
Technologies.

5.2.7.4 Programme for Development of Technology Inspiring for

Commercialization:

 Digital Knowledge Base (Innovation Portal) for Commercialization of

Innovations.
 Digital Portal and Membership & Subscription.
 Technology Value Addition.
 Basic Engineering Design Package.
 Market Survey on assigned technologies.
 Development Projects and value addition for priority projects.
 Promotion of Innovation in Rural & North East Region.
 Entrepreneurship Development Programme in backward and rural areas through
Innovative Appropriate Technology.
 Increase Shelf-life of Fruit & Vegetables through Innovative Appropriate Technology.
 Organic Fruits Cultivation & Processing Programme at Mizoram (MFCP Certified
Programme).
 Promotion of Technology Commercialisation in the country and abroad.
 Dissemination of Information through R&D-Industry Meet, Conferences, Seminars,
Workshops, Exhibitions, Foreign Exhibition, Publication, etc.

5.2.7.5 ASEAN-India
 Under the overall aegis of the ASEAN- India Science, Technology and Innovation
Cooperation Program, NRDC has developed a portal, namely the ASEAN-India Innovation
Platform (Research Innovation Component).
 NRDC shall create and develop a databank of technologies/ Innovations, etc. available in India
and the ASEAN Members States under a single platform and make it available for transfer and
commercialization for Indian as well as ASEAN entrepreneurs.
 The collaborating partners of NRDC are National Innovation Foundation and FICCI. In the
portal, the innovators can share their technology and the buyer can access the available
technology for its commercial exploitation.

The main objectives of the portal are:

 Creation of extensive database/research work and IPs.

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 Creation of a single platform to access the technologies developed in India and ASEAN
countries.
 Facilitation of technology seekers and technology owners through an interactive and
dynamic portal.
 Bridging the technological gap between inventor, industry, manufacturers & academia of
ASEAN countries.
 Helping the member countries in networking with people to share ideas, experiences,
problems faced and their solutions.
 To work as a single source of information for ASEAN countries about inclusive
innovation, sectors, such as health, education, food and agriculture, environment and
natural resources, science and technology, etc. are the thrust area.
 Helping at networking the industries of ASEAN and India with the IP knowledge bases
for employment and wealth creation.

5.3 Technology Information Forecasting and Assessment Council

(TIFAC), New Delhi (http://tifac.org.in)
 The importance of undertaking technology forecasting and assessment studies on a
systematic and continuing basis was highlighted in the Government of India‘s
Technology Policy Statement (TPS) of 1983.
 Therefore in 1985, TIFAC was established as an autonomous body, registered as a
Society in 1988, under the Department of Science and Technology.
 It is an important cog in filling a critical gap in the overall S&T system of India. Its
mission is to assess the state-of-art of technologies and set directions for future
technological developments in India in important socio-economic sectors.

5.3.1. Patent Facilitation Centre

TIFAC is also a nodal agency for carrying out IPR related activities in the country. In
1995 a Patent Facilitation Centre (PFC-
https://tifac.org.in/index.php/admin-finance/patent) was set up in TIFAC with four fold
objectives (https://tifac.org.in/index.php/ about-us/mandate):
 Introducing Patent information as a vital input in the process of promotion of
R&D programmes.
 Providing patenting facilities to scientists and technologists in the country for
Indian and foreign Patents on a sustained basis.
 Keeping a watch on development in the area of IPR and making important

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issues known to policymakers, scientists, industry, etc.

 Creating awareness and understanding related to Patents and the challenges
and opportunities in this area, including arranging workshops, seminars,
conferences, etc.
 In order to fulfill these objectives, PFC carries out dedicated activities, such as:

Facilitation of IP Protection –
 PFC acts as a facilitator to provide support (legal, technical and financial) for
obtaining Patents emanating from research funded by DST, GoI to educational
institutions and central/state government departments/agencies.
 These Patent and IP applications are drafted and filed through Patent attorneys
empanelled by PFC-TIFAC. PFC also attends to the requests from public and
private sectors for patent search, novelty and inventiveness free of cost/nominal
charge.
 As per the latest data available (Annual Report, 2017-18) PFC has facilitated the
filing of about 1500 Patents in India and abroad, out of which nearly 250 Patents
have been granted.

Table 5.4: IPR related statistics of Patent Facilitation Centre.

Activities Total
Patent & IPR awareness workshops 424
IPR bulletin 122 issues
Facilitation of filing of Patent
Filed: 1500; Granted:250
applications
Registration Geographical Indications 7
Patent search reports 1200
PICs 20
Training Programme ~20
Special reports 47
311 Women trained in 6
Women Scientists Scheme (WOS-C)
batches; 119 Patent agents
Source: https://tifac.org.in/index.php/admin-finance/patent

 Awareness Creation - PFC delivers many talks and organizes workshops to create
IPR awareness amongst students, researchers, scientists and professors belonging to
universities and other educational institutes, R&D institutions, industries, NGOs and
government departments. PFC also publishes an IPR Bulletin to spread awareness
across the country about Patents and other IPRs IP related matters. PFC has also
prepared FAQs on IPR in various Indian languages.

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 Patent Information Centres (PICs) - To provide IPR related services, PFC has
opened 24 PICs in various states of India. Now, this programme is being administered
by DST. The PICs are playing the role of a ‗Consultant and Guide‘ w.r.t. IPR,
especially Patents, at the State level, by providing guidance in the filing Patent
applications, extending the Patent search services and also assisting PFC in conducting
workshops in their respective states. In addition, PICs are working on registration of
potential aspects, such as Geographical Indications (GI), the inclusion of IPR in course
curriculum, supporting IPR Cells in the academic sector.

 Registering Geographical Indications - PFC has taken the initiative to protect many
items of traditional excellence originating from a particular geographical area as
defined by The Geographical Indication of Goods (Registration and Protection) Act.
Registration certificates were issued for including Kangra Tea, Kullu Shawls, Muga
Silk and Malda Mangoes. Now PICs are independently handling GI related work in
the States.

 IPR Cells in Universities - PFC has successfully set up IPR Cells in Universities
(IPCU) with the help of PICs. There are 84 IPCUs in different universities in the
states. IPCUs have been created to guide university academicians in matters related to
IPR like Patent searches, IP audit of universities and protecting such inventions
through PICs which in turn approach PFC for filing and processing Patent applications
and maintaining granted Patents. The ownership of a Patent would rest with the
universities. The aim is to have an IP cell in each university within a few years. Now it
is directly handled by DST and PICs at the state level.

 Training Programmes - PFC is also actively involved in imparting IPR related

training programmes on dedicated topics, such as Patent drafting, Patent searches, etc.
Usually, the training programmes are being conducted in association with other
organizations, such as DRDO, DAE, UNIDO, Indo-US S&T Forum (IUSSTF),
National Institute of Health, USA, etc.

 Women Scientist Scholarship Scheme (WOS-C)-KIRAN IPR) –

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 Many young Indian women are well qualified in the domain of

science/engineering/medicine or allied areas but are unable to pursue their
career due to domestic and social reasons.
 To bring back these young talented women into mainstream, DST, GoI started
an interesting scheme, the Women Scientists Scheme (WOS- C), popularly
known as KIRAN-IPR, which provides avenues in the area of IPR to
unemployed women scientists sitting at home.
 The one-year course work can be carried out from home for 11 months and
thus maintain a good balance between professional and domestic demands.
Only for a month, women scientists are required to spend time in TIFAC, New
Delhi.
 After the orientation programme, candidates have to join 11 months of job
training at various Patent agencies throughout the country.
 The scheme is being implemented by the PFC of TIFAC on behalf of DST.
The major objectives of the scheme are:
 Empower talented and skilled women who have studied science, engineering,
medicine and allied areas to contribute effectively to the advancement of
science and technology in the country.
 Develop a pool of women scientists geared up in creating, protecting and
managing IP in India.
 Train talented and meritorious women in laws related to the protection of IP,
management of IPR, determination of novelty and originality of IP,
ascertaining patentability of an invention, searches of databases related to
Patents and allied databases and other aspects of IPR, enabling them to seek
specialized employment or be self-employed.
 Develop a core of professionals for preparing reports on various aspects of
IPR.
 This scheme has been highly successful. Nearly 600 women scientists have
been trained, out of which 270 have cleared the Patent Agent Examination
conducted by the Patent Office of India.
 Sixty percent of these women are pursuing their career in the area of IPR and
some of them are self-employed and have become entrepreneurs.
 Looking at the success of this scheme, PFC set up three coordination centres at

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Centre for International Cooperation in Science (CICS), Chennai; IIT,

Kharagpur and CSIR-Unit for Research & Development of Information
Products (URDIP), Pune for facilitating the training of candidates.
 The candidates for the scheme are selected based on all India online
examinations followed by the interviews.

Database on Indian Patents - PFC has developed three CD-ROM databases on Indian
Patents:

Ekaswa-A - contains the database related to Patent applications filed in India as

published in the issues of the Gazette of India (Part III, Section 2) from 1st January 1995
to 1st December 2004.
Ekaswa-B - contains the database related to Patent applications accepted and notified for
the opposition in the Gazette of India (Part III, Section 2) published for the same period
i.e. from 1st January 1995 to 31st December 2004.
Ekaswa-C - for Patent applications published in Official Journal of Patent Office from
January 2005 till June 2008. These databases can be accessed online
(www.indianpatents.org.in) free of cost.

Counselling and Advisory Role - PFC has been played an important role in preparing
guidelines for the Ministry of Science and Technology for handling IP related matters of
research projects funded by DST. PFC has been widely accepted as the national nodal
point for higher education institutes, government bodies, NGOs, entrepreneurs, scientists,
foreign embassies, etc. for seeking information and guidance on IPR related matters. PFC
plays a crucial role in policy formulation and future planning in the area of IPR and related
matters.

TIFAC Internship Programme - This Programme provides an opportunity for students

to work in the technology foresight and technology road-mapping exercises under the
supervision of TIFAC Scientists. Under this programme, students are assigned specific
topics to get familiar with emerging trends in the domain of cutting- edge technologies.
About 80 students have benefited from this programme. In return, TIFAC too gets benefits
from the interaction with enthusiastic young minds with fresh thoughts and technical
insights.

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Foresight Training - TIFAC conducts programmes on technology foresight with hands-

on training in various areas for industry and institutions. Foresight Methodologies being
used are Scenarios, Delphi, Brainstorming, Horizon Scanning, Patent Analysis, etc.
These programmes are helpful in understanding future technologies.

National Innovation Project - In 2007-08, TIFAC prepared a Detailed Project Report

(DPR) for the National Innovation Project (NIP) for unleashing India‘s innovation
potential. This project was supported by the World Bank. The task was assigned to be
executed based on national and international best practices to improve, expand and scale-
up ongoing innovation-led initiatives and to introduce fresh initiatives for greater impact
on growth and poverty. The main components of the DPR were:
Component I- Fortify innovation management & capacity building for strengthening the
IPR system.
Component II- Providing support to SMEs for research leading to new technology
development through suitable adoption/adaptation.
Component III- Strengthening technology commercialization by taking innovations to
market, including grass- root/ rural innovators.

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