3MODULE 3: INTELLECTUAL PROPERTY RIGHTS, PATENTS AND

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, and 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

INTRODUCTION TO INTELLECTUAL PROPERTY

 Intellectual Property (IP) is the terminology attributed to intangible assets having

commercial value, and arising from human intelligence, creativity, and imagination, but
typically lacking physical form.
 Intellectual Property Rights (IPR) is the privileges accorded to the creator/inventor (of IP)
in conformance with the laws. These rights are given to the creator/inventor in exchange
for revealing the process of creation/invention in the public domain. The inventor is
conferred with the special rights to use, sell, distribute, offering for sale and restricting
others from using the invention without his prior permission

 Broadly, IP comprises of two branches i.e. Copyrights and Related Rights and Industrial
Property Rights.
Copyrights and Related Rights refer to the creative expressions in the fields of literature and art, such as
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 books, publications, architecture, music, wood/stone
o carvings, pictures, portrays sculptures, films and computer-based software
‘s/databases.
o The Industrial Property Rights refer to the Patents, Trademarks, Trade Services,
Industrial Designs and Geographical Indications
 Copyright: Copyright is the right bestowed on the owner or creator in relation to
publication, and distribution of a piece of writing, music, picture or related works.
Copyright also applies to technical contents such as software, datasheets and related
documents.
 Patents: A patent is a legal record that bestows the holder the exclusive right over an
invention as per the claims, in a limited geographical domain and for a limited duration
by thwarting possible interested parties from any form of manufacture, use or sale of the
product or outcome of the invention
 Trademarks: A trademark is a sign that suitably differentiates the owner‘s goods or
services from those of others
 Trade services: Any services in relation to trade or any trade related financing, lending
or other financial accommodation provided (or to be provided) by the bank, including but
not limited to issuance/amendment of letter of credit, document arrival under letter of
credit, application for negotiation and inquiries etc.,
 Industrial Designs: An industrial design protection is related to certain specific
ornamental shapes associated with products whose duplication the owner may wish to
prevent
 Geographical Indications: A geographical indication (GI) is a name or sign used on
products which corresponds to a specific geographical location or origin. Items that meet
geographical origin and quality standards may be endorsed with a government-issued
stamp which acts as official certification of the origins and standards of the product.

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 m motivates others to create new. However, if IPR is practiced
 rigidly, it may have a negative impact on the progress of society. For example,
compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement has affected the farming community as they are unable to store seeds for the
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 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.
 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 favor of compulsory licensing by the government
during an emergency or a natural calamity.
 In addition, if an invention/creation is not in the interest of society, it is not registered by
the government for grant of any rights associated with IP. For 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.

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, Govt. of India.
 There are a few other dedicated organizations/departments established by the government
to promote patent-ecosystem (patent awareness, patent filing and patent
ommercialization) 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
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  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.

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 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.

ORIGIN OF IP

 Though there is no official record of the origin of IP, it is believed that a rudimentary
form of IP was being practiced around 500 Before the Common Era (BCE) in Sybaris, a
state of Greece.
 The natives of Sybaris were granted a year’s protection for using their intellect to create
 any new improvement in luxury. A practical and pragmatic approach for IP governance
started taking shape in medieval Europe. In 1623, Britain passed an Intellectual Property
Legislation which entitled guilds (association of artisans or merchants) to create
innovations and bring them to market for trade purposes.
 However, this legislation brought a lot of resentment amongst the public, and thus was
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 replaced by the Statute of Monopolies‗, which gave the rights to the original
creator/inventor for 14 years. Another legislation, Statute of Anne‗, was passed by the
British parliament in 1710.
 This legislation aimed at strengthening copyrights by providing rights to the authors for
recreation and distribution of their work. The work could also be renewed for another 14
years.
 By the end of the 18th century and the beginning of the 19th century, almost every
country started laying down IP legislation to protect their novel inventions and creations.

HISTORY OF IP IN INDIA
Patents

 The history of the Indian patent system dates back to the pre independence era of British
rule. The first patent related legislation in India was Act VI of 1856, adapted from the
British Patent Law of 1852. The objective of this legislation was to encourage the
inventions of new and useful manufactures.
 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;
o Use of invention by the government
o Patent of Addition
o Enhancing the term of the patent from 14 years to 16 years.
o Filing of Provisional Application and submission of Complete Application
within 9 months from the date of filing the application.
 Keeping the national interest in mind, recommendations were made in 1949 as a
 modification to existing ―The Indian Patents and Designs Act‖. And those
recommendations are as follows
o Misuse of patents rights needs to be prevented.
o 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.
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 o Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on
the lines of the UK Patent Act.
 These recommendations were introduced in the Act XXXII of 1950.
 Two years later, another amendment (Act LXX of 1952) was made to provide
compulsory licensing of patents related to food, drugs and chemicals killing insects and
microbes. Based on these amendments, a bill was presented in the parliament in 1953 but was
rejected.
 In 1957 a committee was constituted and the committee submitted its report to the
government in 1959. It comprised of two segments addressing
o General aspects of the patent laws, and
o 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
 In 1999, The Patents (Amendment) Act, 1999 was introduced providing for the filing of
applications for ‗Product Patents‗ in the areas of drugs, pharmaceuticals and
agrochemicals
 The new Patent Act also included provisions for the grant of Exclusive Market Rights
(EMRs) for the distribution and sale of pharma products on fulfillment 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.
 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:
o Product patent for inventions in all fields of technology.
o New forms of known substances excluded to prevent ever greening of the patent.
o Rationalization of the opposition procedure.
o Introduction of pre-grant opposition by representation. Introduction of post-grant opposition.
Compulsory license for export purposes.
o Compulsory license for manufacture.
o Extension of grace period from 6 months to 12 months for filing a patent, if
published in government exhibition.
Copyrights and related rights

 The concept of copyrights started way back in the 15th century. However, the actual need
for copyrights law was felt only after the invention of printers and copiers.
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  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.
 The evolution of copyrights law in India occurred in three phases. First, two phases were
enacted during the British Raj.
o 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. 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.
o 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.
o 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.
 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).

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
corporation 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
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 for this occurred to comply with the provisions of the TRIPS. It is the current governing
law related to register TM.

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.

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

Semiconductor Integrated Circuits and Layout designs

 In the 21st century, Information Technology (IT) has revolutionized the economic and
societal growth of the world economy.
 The rapid and tremendous scientific advancements in the field of IT resulted in the
creation of a new class of IP called the Layout-Design of the Semiconductor Integrated
Circuits. Various organizations, including WTO and TRIPS Agreement laid down rules

and regulations regarding the protection of Semiconductor Integrated Circuits and Layout
Designs (SICLD)
 India being a member of the WTO also passed an Act called the SICLD Act, 2000. This
Act is TRIPS compliant and fulfils the conditions of the TRIPS agreement (Articles. 35
to 38) concerning the protection of SICLD.

Plant varieties

 Till 1970s, not much emphasis was laid on patentable matter originating from animals

8
 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 Protection of
Plant Varieties and Farmers Rights (PPV&FR) Act, 2001 as a sui generis regime
protecting not only new plant varieties but also farmer‘s rights.

Biodiversity conservation

 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 Policy, 2006 and a
few more.

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:
Sl. 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.
 Rights renamed as "Exclusive Privileges"
2 1859
 Time for the priority increased from 6 months to 12 months.
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  The Patterns and Designs Protection Act
3 1883  Introduction of novelty in the invention.
 A grace period of 6 months for the disclosure of the invention.
 Renamed as "The Indian Patent and Design Act" and brought under
4 1911
the management of "Controller of Patents"
 Introduction of Patent of Addition.
5 1930  Government can use the invention if required.
 The term of patent protection increased from 14 to 16 years.
 Filing of the provisional specification to secure the priority date.
6 1945
 Provision of submitting complete specifications within 9 months.
 Dedicated Committee formed under the leadership of Justice Bakshi
7 1949 Tek Chand for reviewing patent system as per the national
Environment.
 A working statement needs to be submitted at the Patent Office
 Endorsement of the Patents with the words "License of Right‖ on the
8 1950
application made by the government so that the Controller could grant
The license.
 Provision of "Compulsory License" in the areas of food, medicine and
9 1952 insecticide germicide.
 Process for producing substance or any invention relating to surgical

or curative devices.
 After incorporation of the recommendation submitted by the
10 1965 committee formed in 1949, a new bill was introduced in Lok Sabha
but was not cleared.
 Again submitted to Parliamentary Committee.
11 1967
 1911 Act remained applicable for Designs.
12 1970  The Patent Act, 1970 passed by the Parliament Committee.
 The Patent Act, 1970 came into force with the introduction of patent
13 1972
rules.
 TRIPS Agreement was signed by India and got transition period 1995-
14 1995
2005 to make domestic laws compatible with TRIPS.

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  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
15 1999 products on fulfillment of certain conditions.
 Grant of EMR subject to certain conditions. After the amendments
(1999) the product patents related to the pharmaceuticals and
agrochemicals were kept on hold for examination till 2005. It is called
a mailbox or black box.
 The uniform 20-year term of the patent for all inventions.
 Disclosure of source and geographical origin of biological material
16 2002 made compulsory.
 Establishment of Appellate Board.
 Compulsory License provisions strengthened.
17 2003  The Patents Rules, 2003 were introduced.
 Product patent for inventions in all fields of technology including
food, drug, chemicals and microorganisms.
18 2005  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
 The concept of Copyrights in India was introduced.
1 1847
 Validity - Lifetime+7 years but not more than 42 years in total.
 Copyright Act, 1914 was introduced based on the
2 1914
 Imperial Copyright Act, 1911 of UK.
 Copyright Act, 1914 was replaced with Copyright Act, 1957 with
3 1957
minor modifications
4 1984  Penalty on second and subsequent conviction
5 1994  Registration of Copyright Society made mandatory

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  To comply with international Treaties for copyrights protection in the
digital environment.
6 2012  Right to receive royalties for authors and music composers.
 Exception of copyrights for physically disabled persons to access any
work.
7 2013  Copyrights Rules, 2013 introduced.
TRADEMARKS
1 1940  Trademarks Registry established in India.
 The Trade and Merchandise Marks Act, 1958 enacted as per TRIPS
2 1958
Agreement.
 Amended to avoid duplicity and ensure securing proprietors trade and
3 1999
goodwill
4 2002  Trademarks Rules introduced.
 Amended to comply with Madrid Protocol for international filing.
5 2010
 Provision for filing opposition of the registration within 4 months.\
6 2013  Trademarks Rules introduced.
GEOGRAPHICAL INDICATIONS
 Being a member of the World Trade Organization (TRIPS), GI of
1 1999
goods (Registration and Protection) Act was introduced.

 The Geographical Indications of Goods (Registration and Protection)

2 2002
Rules, 2002 was introduced.
 The Geographical Indications of Goods (Registration & Protection)
3 2003
Act came into force
INDUSTRIAL DESIGNS/ DESIGNS
 Patterns and Designs Protection Act introduced for the protection of
1 1872
new patterns and designs.
 Amended as Invention and Design Act, 1988 for the protection of new
2 1888
inventions and designs.
3 1911  Renamed as The Indian Patent and Design Act.
 Design Act, 2000 was introduced; separated from the Indian Patent
4 2000
and Design Act.
5 2001  Design Rules, 2001 introduced.

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 SEMICONDUCTOR INTEGRATED CIRCUITS: LAYOUT DESIGNS (SICLD)
 Semiconductor Integrated Circuits Layout Design (SICLD) Act 2000
1 2000
introduced as a signatory of WTO.
2 2001  SICLD Rules introduced.
PROTECTION OF PLANT VARITIES AND FARMERS RIGHTS
 The Patent Act, 1970 excluded plants and animals in whole or in any
1 1970
part from patentability (in 1999 amendments).
 Enactment of protection of new varieties of plants on sui generis basis
2 1991
on the lines of UPOV.
 In line with TRIPS Agreement enactment of PPV&FR Act was
3 2001
introduced.
BIOLOGICAL DIVERSITY
 The Biological Diversity Act, 2002 introduced on the lines of the
1 2002
Convention on Biological Diversity (CBD, 1992).
 Establishment of National Biodiversity Authority.
2 2003
 Designation of repositories under the Biological Diversity Act
3 2004  Biological Diversity Rules introduced.

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 Chapter 2:
PATENTS
 A patent is an exclusive right granted for an innovation that generally provides a new
way of doing something or offers a new technical solution to a problem.
 The exclusive right legally protects the invention from being copied or reproduced by
others.
 In return, the invention must be disclosed in an application in a manner sufficiently clear
and complete to enable it to be replicated by a person with an ordinary level of skill in the
relevant field.

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:
 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
o not in the knowledge of the public,
o not published anywhere through any means of publication and
o 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
o a technical advancement over the existing knowledge,
o possesses economic significance and,
o 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.

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 is
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
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 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.

RIGHTS ASSOCIATED WITH PATENTS

 As per the Court of Law, a patent owner has the right to decide who may or may not use
the patented invention.
 In other words, the patent protection provided by the law states that the invention cannot
be commercially made, used, distributed, imported, or sold by others without the patent
owner's consent.
 The patent owner may permit other parties to use the invention on mutually agreed terms.
 As a matter of fact, the patent rights are negative rights as the owner is restricting others
from using the patent in any manner without his prior permission.
 The patent holder may choose to sue the infringing party to stop illegal use of the patent
and also ask for compensation for the unauthorized use.

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.

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,
is not true.
 In fact, the majority of patents are granted to inventions displaying an improvement over
the existing invention.
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  For example, many patents can be awarded to a single molecule e.g. penicillin‘s (an
antibiotic that kills microbes) and its derivatives. The derivatives are made by making
subtle changes in the structure of the penicillin resulting in new/improved properties,
such as acid stability or temperature stability or killing a wide range of microbes (germs).
The new antibiotic molecules, known as second, third or fourth generation penicillin‘s
can also be patented.
 In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen,
eyeglasses, textiles, mobile phones, wrist watch, bicycle, scooter, car, television, cold
drinks, beverages and many more.
 It is not uncommon that many products contain several inventions (patents) e.g. the
laptop computer involves hundreds of inventions working together. Similarly, cars,
mobile phones and televisions have many patented components.

NON-PATENTABLE MATTERS
In the Patent Act, 1970, there are some exclusion (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, and 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 programmer, 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,
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 2000.
 Plants and animals - plants and animals in whole or any part including seeds, varieties
and species and essentially biological processes for the production or propagation of
plants and animals are excluded from the scope of protection under patents.
 Traditional knowledge - an invention which in effect is traditional knowledge or which
is an aggregation or duplication of known properties of traditionally known components
are also excluded.

PATENT INFRINGEMENTS

 Once 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:
o Interlocutory/interim injunction.
o Damages or accounts of profits.
o Permanent injunction
AVOID PUBLIC DISCLOSURE OF AN INVENTION BEFORE PATENTING
 Generally, an invention that has been either published or publicly displayed cannot be
patented, as the claimed invention will lose the Novelty ‗criterion.
 However, under certain circumstances, the Patents Act provides a grace period of 12
months for filing a patent application from the date of its publication in a journal or
presentation in a reputed scientific society or exhibition.
 Sometimes, disclosure of an invention before filing a patent application is unavoidable,
e.g. selling your invention to a potential investor or a business partner who would like to
know complete details of the invention in order to judge its commercial value. In such a

17
 case, it is advisable to sign a Non-Disclosure Agreement (NDA) or any other confidential
agreement to safeguards your interest

Chapter 3: 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

 While the process of patenting includes – 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

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/she has to
check whether or not his invention already exists in the public domain.
 For this, he/she 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
18
 Databases and NPL. The patent databases are
o Indian Patent Advanced Search System (InPASS-
http://ipindiaservices.gov.in/publicsearch/).
o Patentscope (WIPO- https://www.wipo.int/patentscope/en/).
o Espacenet (EU- https://worldwide.espacenet.com/patent/).
o USPTO (USA- https://www.uspto.gov/).
o Google Patents Advanced Search (https://patents.google.com/advanced).
o Orbit Intelligence (https://www.questel.com/business-intelligence-software/orbit-
intelligence/).
o Derwent Innovation (https://clarivate.com/derwent/solutions/derwent-
innovation/).PROQUEST (https://about.proquest.com/search/?
searchKeyword=patent+).
 Non-Patent Literature (NPL)
o 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.
o Industry/trade publications: Industry reviews and public disclosures (Social
media, YouTube, Books, Magazines, Datasheets, Blueprints, etc.).
o Others: Newspapers, Websites, Technology blogs, Researchers websites, etc.
o 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.
o Major Patent Office‘s 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

CHOICE OF APPLICATION TO BE FILED

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

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

 Any improvements made in the invention after the filing of the provisional application
can be included in the final application. In other words, the provisional application does

19
 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.

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 and
Form-2.

 The information sought in Form-1 is general in nature i.e. Title of Application, Names of
Applicant(s) and Inventor(s), Type of Application (Ordinary, Convention, PCT-NP
(PCT- National Phase), Divisional, Patent of Addition, etc.).
 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 have 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

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21
22
 JURISDICTION OF FILING PATENT APPLICATION

Region States Address

Intellectual Property Office Building,

Haryana, Himachal Pradesh, Punjab, Plot No. 32,

Rajasthan, Uttar Pradesh, Sector 14, Dwarka,

NORTH New Delhi-110078
Uttarakhand, Delhi and the Union
Territory of Chandigarh, Jammu and Phone: 011-28032491

Kashmir and Ladakh. Fax: 011-28034301

Email: [email protected]
Patent Office Intellectual Property Building
Andhra Pradesh, Karnataka, Kerala, G.S.T. Road, Guindy, Chennai-600032
Tamil Nadu, Telangana and the Phone: 044-22505242
SOUTH
Union Territories of Pondicherry Fax: 044-22502066
and Lakshadweep Email: [email protected]
Boudhik Sampada Bhawan, Antop Hill, S. M.
Maharashtra, Gujarat, Madhya Road, Mumbai - 400 037.
Pradesh, Goa and Chhattisgarh and Phone: 022- 24153651, 24148165
WEST
the Union Territories of Daman Fax: 022-24130387
and Diu & Dadra and Nagar Haveli Email: [email protected]
Intellectual Property Office Building, CP-2
Sector V, Salt Lake City, Kolkata-700091

REST OF Phone: 033-23679101,

Remaining States 033-23671987
INDIA
Fax: 033-23671988
Email: [email protected]

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,

23
 whichever is earlier), the application is published in the Official Journal of Patent
Office (http://www.ipindia.nic.in/journalpatents.html).
 The purpose of publishing the application is to inform the public about the invention.
The publication of an application is a mandatory step.

PRE-GRANT OPPOSITION

 If anybody has an objection to the invention claimed in the patent application, he/she can
challenge the application by approaching the Controller of Patents within 6 months from
the date of publication. It is termed as Pre-grant Opposition.
 Depending on the outcome of the case, the patent application may be rejected or
recommended for the next step, i.e. patent examination.
 Although the patent application is kept secret for 18 months, but under special
circumstances, this period can be reduced when the patentee/applicant plans to sell or
license the patent or seek an investor).
 For this, the applicant has to fill a Form-9 and submit it to the Controller General.

EXAMINATION

 Patent examination is a critical step in the process of grant of a patent. All the important
criteria (novel, inventive step, etc.) are scrutinized by the professionals depending on the
content of the invention.
 Usually, the examiner raises certain queries/doubts which need to be addressed by the
inventors. Once the examiner is satisfied with the answers received from the inventors,
the application is recommended for the grant of a patent.
 It is pertinent to mention that a patent application is not examined automatically after
clearing the publication stage. The applicant or his representative has to make a request
for examination of the patent by filing Form-18A and submitting the same within 48
months from the date of filing of the application

GRANT OF 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.

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  The granted patent is published in the Official Journal of the Patent Office.
 This journal is published every Friday and contains information related to patent
applications published under section (u/s) 11A, post-grant publication, restoration of
patent, notifications, list of non-working patents and public notices issued by the Patent
Office.

VALIDITY OF PATENT PROTECTION

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

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:

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

25
 1970.
o The details/specifications of the invention do not sufficiently and clearly describe
o the invention.

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:
o The patent owner has a decent job e.g. university professor and has no desire or
aptitude to exploit the patent on his own.
o The patent owner may not have the necessary manufacturing facilities.
o The manufacturing facility is not able to meet the market demand.
o 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 license 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 License, the patent is sold to only one individual/organization for a fixed
time period. During this time period, no other person or entity can exploit the relevant IP
except the named licensee.
 In Non-Exclusive License, 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 fulfillment of following conditions:

26
 o 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.
o
o The patented invention is not worked in the territory of India.

NEED FOR 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

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.
 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,
27
 along with over 190 nations, is a member of PCT.

DO I NEED FIRST TO FILE A PATENT IN INDIA

 Yes, in general, Indian residents are required to file the patent application first in India.

Subsequently, they may file for patent protection in other countries.

 But for this, prior approval is needed from the Patent Office. However, this approval can
be waived off under the following circumstances:
o The applicant is not an Indian resident.
o If 6 weeks have expired since the patent application was filed in India by an
Indian resident.
o If two or more inventors are working on an invention in a foreign country and one
of the inventors is an Indian resident. The invention does not have a potential
market in India and hence does not wish to file the patent in India. In such a
scenario, the Indian resident has to seek Foreign Filing Permission (FFP) from an
Indian Patent Office.
o In case of international collaboration, if one part of the invention originated in
India and the inventor is an Indian resident, he has to seek permission to file the
patent outside India.
o If the invention is related to defense or atomic energy or utility model, the
inventor/s needs to seek permission from the Indian Patent Office because

28
 inventions related to these domains are not the subject matter of patentability in
India.

PATENT RELATED FORMS

 There are over 30 patent-related forms. Some of them are mentioned below.
FEES 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.
 Electronically filed applications are 10% cheaper than physical filing.

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
29
 the parent one is known as a Divisional Application.

 Patent of Addition Application - When an invention is a slight modification of the

earlier invention for which the patentee has already applied for or has obtained a patent,
the applicant can go for Patent of Addition, if the modification in the invention is new.
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.

 COMMONLY USED TERMS IN PATENTING

Sl. No Terms Definition

1 Inventor Creator of an invention
Organization/individual/industry that files a patent
2 Applicant
application or applies for a patent
3 Patentee A person/organization who owns the patent (granted)
Organization/individual/industry which obtains a license
4 Licensee of the patent from the Patentee for commercialization
purpose
5 Assignee A person in whose name patent has been assigned legally
The applicant is paying the annuity (renewal fee) for the
6 In force
patent to keep it alive (Active Patent)
The selling of a patent to an individual/party for
7 Working of a patent
commercial exploitation is called as working of a patent
Patent specification is a written description of the
8 Patent Specification invention and the way of representation and process of
making and using the same

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 It is a time-limited right, activated by the first filing of an
9 Priority right
application for a patent
The claimed date on which the first application for the
10 Priority date
invention is filed
Claims can be defined as the scope of the protection
conferred by a patent, or the protection sought in a patent
11 Patent claims
application. The purpose of the claims is to define which
subject matter is protected by the patent
An application filed to obtain patents in different
12 National phase application countries simultaneously based on a single
International/PCT application
The revocation means cancellation of the patent due to
13 Patent revocation certain reasons, such as lack of patentability or
wrongfully obtaining a patent
Once a patent has been ceased (e.g. due to non-payment
14 Restoration of patent of the fee) it can be restored within a permitted period by
paying the requisite fee
NATIONAL BODIES DEALING WITH PATENT AFFAIRS
There are many departments/organizations/bodies dealing with various aspects of patents,
namely,
 The Indian Patent Office (IPO) - The Office of the Controller General of Patents,
Designs and Trade Marks generally known as the Indian Patent Office, is an agency
under the Department for Promotion of Industry and Internal Trade which administers the
Indian law of Patents, Designs and Trade Marks.
 Department for Promotion for Industry and Internal Trade (DPIIT) - 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.
 Technology Information, Forecasting and Assessment Council (TIFAC) - The
importance of undertaking technology forecasting and assessment studies on a systematic

31
 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 Science and Technology
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
 National Research Development Corporation (NRDC) - 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.

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.

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  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 recognized under
IP protection in India, it will catapult the number of patents (filed and granted) on annual
basis.

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