Overview of IPR

Patent system & Practice

S.Chandrasekaran
Controller General
 Intellectual Property Rights

Patents
Industrial designs
Trade and service marks
Copy rights
GEOGRAPHICAL INDICATIONS OR
APPELLATIONS OF ORIGINS.
Layout designs (of integrated circuits).
Neighbouring rights.
Undisclosed INFORMATIONS (trade secrets).
Anticompetitive practices in contractual licenses.
Protection of inventions in biotechnology (plants).
 Intellectual property

INDUSTRIAL PROPERTY + COPY RIGHT

PATENTS DESIGNS TRADEMARKS Geographical Indications

Patents Patent Information

&
Designs

Trade Marks
Copy Right
Geographical Indications
 FOR MOST PRODUCTS EVERY FORM OF
INTELLECTUAL PROPERTY
RIGHTS CAN BE OBTAINED

CAMERA

“PATENT”  For every individual improved mechanism

“DESIGN”  For outer shape & Contour / Configuration

“TRADE MARK” Brand name or Logo for goods denoted as ®

“Copy right” For Instruction / manual booklet denoted as ©

 CD PLAYER
Music played on the
CD player is
protected by
Industrial design copyright
protection for 3D
shape

Various
technical parts
& mechanisms
are subject
Brand name- mater of
registered under protection
trademark under Patents
 FOR MOST PRODUCTS EVERY FORM OF
INTELLECTUAL PROPERTY
RIGHTS CAN BE OBTAINED

 Pressure Cooker

“PATENT”  For every individual improved mechanism

“DESIGN”  For outer shape & Contour / Configuration
“TRADE MARK” Brand name or Logo for goods denoted as ®

“Copy right” For Instruction / manual booklet denoted as ©

 wish to have?

Strong IPR Regime ?

Choice or Necessity??
 INDIAN IPR REGIME

• Meet international obligations while

safeguarding national interests
• Modernize; and
• Move ahead
 STRATEGY FOR IPR

• Meet International obligations through

Legislative changes
• Modernize IPR Regime
• Create Awareness
 Legislative Measures

• The Patents Act, 1970

• Product Patent
• Patent Term of 20 years
• Public Health Safeguards
• Protection to TK
• The Trade Marks Act, 1999
• Service Marks and Collective Marks
• Term increased from 7 years to 10
years
 Legislative Measures

• The Designs Act, 2000

• The GI Act, 1999
• The Copyrights Act, 1957
• The Bio-Diversity Act, 2001
• The Layouts and Integrated
Circuits Act
• Patents (Amendment) ordinance was issued in 1994 and became
Patent (Amendment) Act,1999.
• Patents (Second Amendment) Bill ,1999, has now become patent
(Amendment) Act,2002.
• Patent (Amendment) Act 2005, Product regime launched
• Some of the important features of the Patent
(Amendment)Act,2005 are:
a) Areas of Patentability (and exclusion)- sec3, clause g omitted,
in clause ‘b’ and ‘c’ certain words omitted, additional clauses
‘j’, ‘k’, ‘l’, ‘m’ ‘n’ ‘o’ and ‘p’ added, ‘k’ further amended
b) Product / Process Patent – sec 5 provided – only process
patent in certain category, Article 27.1 of TRIPS – product
patent in all fields of technology, sec 5 – chemical process –
includes biochemical, biotechnological and microbiological
process, Now omitted
c) Patent Term- 20 years for all process and product patents,
sec 53(1) – term of every patent – not expired, not cease to
have effect -20 years
 Contd …

d) Contents of specification- sec 10, sub clause 4(d)- an abstract,

requirement of making a deposit of the material, sub-clause 10.5 – a
single inventive concept
e) Examination and Publication- new sec 11A and 11B, sec 11A – all
applications – not be opened till 18 months, sec 11-b : examination on
request, within 48 months, Now 36 months
f) Prohibition to apply for Patent outside India.- sec 39 – not to make an
application outside India – Defense, atomic energy, apply in India, seek
clearance
g) Rights over importation.- right to make, use, exercise, sell or distribute –
include importation
h) Compulsory Licensing- sec83,84,85 and 89-95, sec 92 – grant of licence
in national emergency, extreme urgency –public health crisis- includes
procedures relating to AIDS and HIV, removal of three year restriction -
CL.
i) Use by Government and Government Agency – sec 47, sec 99-103 –
various situations, sub sec (2) of sec 99 -omitted
 Contd …

j) Burden of proof concerning infringement –sec 104(A) –

inserted, infringement of process patent – defendant – establish
non-infringement.
k) License of Right- sec 86-89 of patent Act 1970, provisions of
Licence of Rights - dropped.
l) Appellate Board – sec 116 the appellate Board established u/s
83 of Trade Mark Act 1999 – the appellate Board – patent act
appeal to appellate Board – decision, order or direction of
controller, otherwise earlier was – High Court.
m) Unauthorised claims of Patent Rights – sec 120 – wrong
representation about patented in India or patent application,
fine increased from 500/- to 10,000/-., Now Rs. 1,00,000/-
n) Other Amendments- sec 48 –prevent third party wit no consent,
sec 107(A)(a) – protection of biodiversity and traditional
knowledge.
 Industrial Designs
• The protection you receive is only for
• Electrical JUG the appearance of the article and not
how it works.
• Design registration is intended to
protect designs which have an
industrial or commercial use.
• Duration of protection is initially for
10 years and extendable for another
term of 5 years.
• Designs of stamps, labels, tokens, cards,
cartoons, or parts of an article not sold
separately, cannot be registered.
Design Examples
 SONY OLYMPUS

TRADEMARKS
• A trade mark is any sign which can distinguish the goods
of one trader from those of another. Sign includes, words,
logos, pictures, or a combination of these.
•A trade mark is used as a marketing tool so that customers
can recognize the product of a particular trader.
•To register a trade mark , the mark must be:-
•distinctive, and, not deceptive, or contrary to law or
morality, and, not identical or similar to any earlier marks for
the same or similar goods.
 TRADEMARKS
How to select a Trade Mark ?
1. A word, letter or any combination thereof and simple in design.
2. If it is a word it should be easy to speak, spell and remember.
3. The ideal word for a trade mark is an invented or coined word
4. Words which are laudatory or which directly describes the
character or quality of the goods should not be adopted.
5. Geographical names connected with the reputation or quality of
the goods for which registration is sought should not be adopted.
Are all Trade Marks registrable ?
Not possible to register a mark which is confusing with a trade
mark of another trader or a trade mark which describes the
character or quality of the goods. The mark should not conflict with
a trade mark already registered or pending registration in respect of
similar goods.
 What is GIR
•An indication used to identify agricultural, natural or manufactured goods
originating from a definite territory in India.
•It should have a special quality or characteristics or reputation based upon
the climatic or production characteristics unique to the geographical location.
•Examples of Geographical Indications in India are Darjeeling Tea,
Kanchipuram Silk Saree, Alphonso Mango, Nagpur Orange, Kolhapuri
Chappal, Bikaneri Bhujia, etc.
•Any association of persons, producers, organization established by or under
the law can apply representing & protecting the interests of the producers.
•The registration of a Geographical Indication is for a period of ten years.
•Renewal is possible for further periods of 10 years each.
•A trade mark is a sign which is used in the course of trade and it
distinguishes goods or services of one enterprise from those of other
enterprises. Whereas a Geographical Indication is used to identify goods
having special characteristics originating from a definite geographical
territory.
• TRIPS provisions- For reciprocal protection ;protection in the
country of origin is must.
• India did not have such protection with regard to Geographical
indication.
• Result – cases like Turmeric, Neem and Basmati.
• To cover up such situation – Geographical Indication of Goods
(Registration and Protection) Act 1999 , passed.
• The salient features are:-
a) Maintenance of register of G.I in two parts – Part A & Part B through
computer.
b) Prohibition of registration of certain geographical indications.
c) Taking infringement action – by registered proprietor / registered user.
d) Prohibition of assignment etc. – being public property.
e) Prohibition of registration of G.I as Trade Mark.
f) Appeal against Registrar’s decision to IP Board established under the Trade
Mark legislation.
 Law of Patents

•Protection part

•Enforcement part
 Protection Part
•Criteria for Patentability
–New & useful
–Non-obvious
–Capable of Industrial Applications
•Patents Act specifies
–What are not inventions?
–What are not patentable inventions?

•How to get that monopoly right?

 Enforcement part

• Opposition proceedings

• Licensing provisions

• Infringements suit provisions

 What Does Patent System Do ?

It encourages RESEARCH.
Induces an inventor to disclose his inventions
instead of keeping them as secret.
Provides inducement for capital investment
encouraging technological development.
It encourages establishment of new industries.
 Advantages Of A Patent To
The Public
•KNOWLEDGE OF INVENTION ADDS TO
SCIENTIFIC BACKGROUND FORMING
BASE FOR FURTHER RESEACH

•REASONABLE ASSURANCE FOR

COMMERCIALIZATION

•PATENT- OPEN TO PUBLIC FOR USE

–AFTER ITS TERM EXPIRES
OR
–WHEN IT CEASES TO BE IN FORCE
 INVENTION

Invention is a successful technical

solution to a technical problem.

To be granted a Patent,
An invention must be
new,

non-obvious and
capable of industrial application
 Different Ways Of Dealing With
An Invention
•Make it public for free use by public(like publishing in the
journal) Or
•Work the invention in SECRECY without
PATENTING it (like coco-cola composition)
Or
•Work the invention OPENLY without PATENTING
it (directly put it in the market)
Or
•EXPLOIT the invention on the basis of a PATENT (like
Rank Xerox )
A patent is a Monopoly Right granted

•For an invention
•By the government
•To the inventor or his assignee
•For a limited period
•It is valid within the country of grant
 Why do You need
“Patent Information”
•SIZE OF THE RESOURSE –ENORMOUS AND WIDE Every
area of technology is covered.
•80% NOT PUBLISHED ELSEWHERE
•FIRST PUBLICATION:Inventions disclosed in patents well
before being published in any other type of document
Invention Patent published First publication in any form
Punched card 1889 1914
Television 1923 1928
Jet engine 1936 1946
•EXPIRED PATENTS : FREE USE ;
•TO AVOID REDUNDANT RESEACH Use the technology
given in patent specification as a stepping stone.
 Patents Not Only For
Major Technological
Such As
Breakthrough

•LAZLO biro’s - ball point pen

•Ring – pull for cans of beverages
But even for any small ‘ incremental ’ inventions
•INDIVIDUALS OR Companies-normally do not
clearly recognize the TRUE MARKET VALUE for a
particular INVENTION
e.g. Anti theft device for motor cars-wheel clamp
Tetra pack style of cartons for milk & fruit juice
 Protection Of Intellectual Property In India
(Patents, Designs, Trade Marks & Copyrights)

MINISTRY OF COMMERCE
MINISTRY OF HUMAN RESOURSE
AND INDUSTRY
DEVELOPMENT

DEPT. OF INDUSTRIAL DEPT. OF EDUCATION

POLICY & PROMOTION

COPYRIGHT OFFICE
CONTROLLER GENERAL OF
PATENTS, DESIGNS & TRADE MARKS

PATENT TRADE MARKS REGISTAR OF

OFFICE REGISTRY COPYRIGHT

Sr.JOINT GIR
CONTROLLER JOINT
OF PATENTS REGISTAR OF
AND DESIGNS TRADEMARKS
 CGPDTM
(Bombay)
PATENT
OFFICE PIS (NAGPUR)
HEADOFFICE
CALCUTTA

GIR
PATENT PATENT PATENT
OFFICE OFFICE OFFICE
(MUMBAI) (CHENNAI ) (NEW TMR
DELHI ) (BOMBAY)

JURISDICTION JURISDICTION
WEST ZONE NORTH ZONE

JURISDICTION TMR TMR AHMEDABAD TMR TMR

SOUTH ZONE CALCUTTA CHENNAI DELHI
Jurisdiction of offices
 Patent Grant Procedure (In Brief)
Filing of PATENT APPLICATION

EXAMINATION & NOVELTY SEARCH

ACCEPTANCE OR REFUSAL

NOTIFICATION OF “ACCEPTANCE”
IN THE GAZETTE OF INDIA (part III section 2)

OPPOSITION (if any)

GRANT OF A PATENT
 Patent Grant Procedure
Filing of patent application

Early Publication Publication after 18 months

Pre Grant Opposition /

Representation by any person.

Request for examination

Examination: Grant or Refusal

Publication of Grant of patent

Post Grant Opposition to grant of patent

(Constitution of Opposition Board)

Decision By Controller
 Patent Applications Examined

16000 14813

14000

12000 10709
9538
10000

8000

6000

4000 2824

2000

0
1999-2000 2002-03 2003-04 2004-05
 INID Codes For The Identification
Of The Bibliographic Data

Document identification (10) { 11,12,13,19 }

Domestic filing data (20) { 21,22,23,24,25,26 }
Priority data (30) { 31,32,33,34 }
Date of making available to the public (40){41 to 47 }
Technical information (50) { 51 to 58 }
References to related patent documents (60){61 to 66 }
Identification of parties concerned with the documents
(70) [71-76]
Identification of date related to international convention
(80)[81-91]
 Patents –Economic Development

Patent system works

--to facilitate Technology transfer and FDI ( sony Corpn. By
patent license from “WE” patent holder on Transistor)
--as stimulants of R&D at Universities & Research Centres (the
Bayh-Dole act --1980 created link between universities & industry)
Optical mirror technology of MIT;stem cell licensing
Wisconsin university
--as catalysts of new technologies & new business (Azithromycin)
--Help SME’s accumulate IP assets and engage in business
transactions based on such assets; SME without patent assets
have to depend on market advantage, superior service etc.,
 Licensing activity

Licensing is very helpful to small company

while dealing with bigger company having
leverage in negotiations.
Licensing IP can be tremendously
profitable
IBM 1.7 billion US $
Texas Instruments 500 million US$
Stanford university 36.9 million US$
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