Intellectual Property Rights

(IPRS)

BY: Hetal Jani

The Patent Act,1970
BACKGROUND…………

The concept of in great Britain originated from the

exercise of the prerogative to grant monopolies . In India,
patent is granted for inventions under the legislation. The first
patent act was enacted in 1856 granting exclusive patent for a
period of 14 years to inventors of new manufacture. The Act
was amended in1859 . After further enactments in 1872,1873
and 1888, patent and designs Act ,1911 was passed this Act of
1911 was amended several times between from 1911 to 1970.
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Radical changes in patent Law were suggested by report

submitted in 1959 which came to be known as Ayyangar’s report.
Based on the report, the Patents Act 1970 was enacted and rules
thereon were published in 1971 . The Act came into force from
20.04.1972 except for a few provision which also came into force
from 01.04.1978.
The act therefore comprehensively amended by the patents
Act,1999 to give effect to India’s obligation under the said
Agreement on Trade of Intellectual Property Rights, Patents
Ordinance was passed on 26.12.2004 to become effective from
01.01.2005. Ordinance has now been approved as Patents
(Amendment) Act,2005
What is Invention:

“ Invention “ means a new product or process involving an

inventive step and capable of industrial application .
“inventive step” means a feature of an invention that involves
technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention not
obvious to a person skilled in the art
“ capable of industrial application “ in relation to an invention
means that the invention is capable of being made or used in an
industry. Invention may be of any machine , Apparatus or other article
or any plant or substance by manufacture.
 Discovery and Invention

The difference between discovery and invention is very

familiar. Discovery adds to the amount of human knowledge but it
does so only by lifting the veil and disclosing sometimes which
before had been unseen or dimly seen. Invention adds to the
knowledge, but not merely by disclosing something. Invention
necessarily involves also the suggestion f an act to be done and it
must act which result in a new product.
 Meaning of Patent

Patent means a patent for any invention granted under the

Act. It is in the interest of the inventor to get any improvement
patented. By grant of patent protection by way of a monopoly is
extended to the inventor for a limited period for:
• Inventing a new product ;or
• Inventing a new process; and
• New invented product or process is capable of industrial
application
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If the result of a new process is a new article or a better

article than that produced by old method the process is
patentable, provided of course that it required an exercise of
the inventive faculty to arrive at it.
When patent is granted and is in force in respect of either
of the article or the process it is called ‘ patented article’ and
‘patented process’.‘ patented article’ means made by a patented
process.
 Features of patent:

• The patent must be in respect of invention and not a

discovery
• In respect of one single invention there must be one single
patent
• Patent may be in respect of a substance or in respect of a
process
• It is not possible to bifurcate a patent and state that a new
relates to the substance and the other to the process
• In other to have a complete patent, the specification and the
claims must be clearly mention.
 Invention Not Patentable

• A method of agriculture or horticulture

• A presentation of information
• The mere arrangement or re arrangement or duplication of
know device each functioning independently of one another
• Mathematical or business method or a computer programme.
• Method of playing game performing mental act
• A literary , dramatic , musical or artistic work
• The mere discovery of a scientific principals or formulation of an
abstract theory or discovery of living or non living substance
occurring in nature
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• An invention relating to atomic energy falling within sub_

section (1) of section 20 of Atomic Energy Act 1962
• plants and animal in whole or any part there of other than
micro organisms but including seeds , varieties and species
• An invention the primary or intended use or commercial
exploitation of which could be contrary to public order or
morality or which cause serious damage to human. Animal. Or
plant
 Applications for Patents

Who can apply for patent [sec.6]:

• By any person claiming to be true and first inventor. True and
first inventor does not include either the first importer of in
invention in India
• The person to whom invention is first communicated.
• By legal representative of any of deceased person who
immediately before his death was entitled to make such
application.
 Who cannot apply for a Patent?[Sec.134]

• A financing partner who has not contributed any part of his

ingenuity or skill or technical knowledge towards the invention
made by some one of the partners of a partnership by their
skill and labor cannot be treated as invention.
• Where patents are granted in favor of firm it does not vest
patent right in the firm
• A corporation cannot be sole applicant claiming to be the
inventor.
 Where To Apply?
Application should be filed at appropriate office of the
patent office. Appropriate office of the patent office shall be the
Head Office of the Patent office, as the case may be, within whose
territorial limits :
• The applicants resides or has his principle place of business, or
the place where the invention actually originated
• If the application is made jointly in the same names of two or
more persons, the applicants whose name is first mentioned,
resides at the principal place of business
• If the applicant in a proceeding has no place of business or
domicile in India the address of service in India given by the
applicant is issued.
 How To Apply?[Sec.7]

Every application for a patent shall be for one invention only

and shall be made in the form prescribed in second schedule to the
Patent Rules, 1972 as amended by patents Rules 2005 and field in
the patent office with the fees prescribed in first schedule to the
rules. Where application is made by the virtue of an assignment to
the right to apply for a patent for the invention, there shall be
furnished with the application proof of the right to make an
application. Where the proof of the right to make application is not
furnished with the application the applicant shall within a period of
six month after filling of such application furnish such proof.
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Every application shall state that the applicant is in

possession of the invention and shall name the person claiming
to be the true and first inventor. Every such application shall be
accompanied by a provisional specification.
PROCEDURE FOR GRANT OF PATENTS
 Publication of application:

Application for patent shall not be open

to the public for a period of 18 months from
the date of filling of application or the date of
priority of the application, whichever is earlier.
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• The publication shall include the particulars of the date of
application, number of application, name and address of
applicant identifying the application. Upon publication of an
application for a patent-
a) The depository institution shall make the biological material
mentioned in the specification available to the public.
b) The patent office may, on payment of prescribed fee, make
the specification and the drawings, if any, of such application
available to the public.
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 EXAMINATION OF APPLICATION:
• Request for examination:
When request for the examination has been made in respect of an
application for a patent, the application and specification and other
documents relating shall be referred by the controller in respect of the
following matters:
1) Whether the application and other documents relating there to are in
accordance with the requirement of the act.
2) Whether there is any lawful ground of objection to the grant of the
patent.
3) The result of investigation made to ascertain the prior claim of the
invention.
 SEARCH FOR ANTICIPATION:
• Before a patent is granted, the examiner, to
whom an application for a patent is referred
for a report shall make an investigation to
ascertain:

i. Prior publication
ii. Prior claim of any other specification
 OPPOSITION TO THE PATENT
 Before grant of a patent:

Where an application for a patent has been published but patent

has not been granted, any person may in writing, within a period not
exceeding three months from the date of publication of the application
or before the grant of patent, whichever is later, represent by way of
opposition to the controller against the grant of patent on the ground
of:

a) Patentability including novelty, inventive step and industrial

applicability.

b) Non-disclosure or wrongful mentioning in complete specification

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 After grant of a patent:

1) Wrongfully obtained the invention

2) Prior publication

3) Prior claim

4) Prior public knowledge or use

5) Invention is obvious & no inventive step

 GRANT OF PATENT
• Where any application for a patent has been found to
be in order for grant of the patent and either the
application has not been refused by the controller or
the application has not been found to be in
contravention of any provision of act, the patent
should be granted to the applicant with the seal of
patent office and the date on which the patent is
granted shall be entered in the registered.
 CONDITION FOR GRANT OF PATENT:

• Any process in respect of which the patent is

granted may be used by the government for its own
use.
• Any machine or other article made by using a
process, in respect of which the patent is granted,
may be imported or on the behalf of the
government for its own use.
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• Any medicine or drug may be imported by the

government for its own use or for distribution
in any dispensary, hospital or other medical
institution which the central government may,
having regard to the public service, specify in
this behalf by notification in the official gazette.
 ASSIGNMENT OF A PATENT
• An assignment of a patent or of a share in a patent, a
mortgaged. license or creation of any other interest
in a patent shall not be valid unless the same were in
writing and the agreement between the parties
concerned is reduce to a form of document.
• The controller shall, upon proof of title to his
satisfaction-
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a) Where that person is entitled to a patent or a
share in a patent, register him as proprietor or co-
proprietor of a patent and enter in the register
particulars of the instrument by which he derives
title.
b) Where such person is entitled or any other
interest in the patent, enter in the register, notice
of his interest, with particulars of the instrument.
 PATENT OF ADDITION

• When patent of addition is granted?

where an applicant has applied for a
patent for an invention or is the patentee in
respect thereof, and he makes an application
for a patent in respect of any improvement in
or modification of a main invention same way
by controller as a patent of addition.
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• A modification is an alteration which does not
involve a radical transformation.
• No patent of addition shall be granted unless
the date of filling of the application was the
same as or later than the date of filling of the
application in respect of the main invention.
 TERM OF PATENT OF ADDITION
• A patent of addition shall be granted for a
term equal to that of the patent for the main
invention, or so much thereof as has not
expired.
• No renewal fees shall be payable in respect of
a patent of addition.However,if any such
patent becomes an independent patent, the
same fees shall be thereafter payable, upon
the same dates.
 VALIDITY OF PATENT OF ADDITION
• The grant of a patent of addition shall not be
refused and not be revoked or invalidated on the
ground that the invention claimed in the
complete specification does not involve any
inventive step having regard to any publication-
a) The main invention described in the complete
specification relating thereto
b) Any improvement in or modification of the main
invention described in the complete
specification of a patent of addition to the
patent for main invention.
Compulsory Licenses and
Working of Patents.
 Compulsory licenses
• Ground of Application for compulsory licenses.
a) The reasonable requirement of the public with
respect to the patented invention have not been
satisfied.
b) That the patented invention is not available to
the public at a reasonably affordable price.
c) The patented invention is not worked in the
territory of India.
• Person Interested.
 Procedure for The Grant of Compulsory
Licences
• In considering the application, the controller shall
take into account the following matters:
i. The measures taken by the patentee or licensee
to make full use of the invention.
ii. Ability of the applicant.
iii. Capacity of the applicant to undertake the risk
in providing capital and working on investment.
iv. Efforts made by the applicant to obtain the
license.
• Such points are not considered in the case of
national emergency or other circumstances of
extreme urgency or in case of public non-
commercial use.
• The patentee or other person desiring to
oppose the application may give the controller
notice of opposition within certain prescribed
time period.
 Reasonable requirements of the public
deemed to have not to be satisfied
A. By the reason of the refusal of the patentee to grant license
on terms like :
1. An existing trade or industry or the development or
establishment of new trade or industry in India.
2. Demand of the patented article has not met.
3. A market for the export is not developed.
4. Establishment or the development of commercial
activities in India is prejudice.
 Continued
A. B
B. If by the reason of the conditions imposed by the
patentee.
C. Condition imposed upon the grant of the licences.
D. If the patented invention is not worked in the territory
of India on commercial scale or in extent of the
reasonable practices.
E. working in the territory of India on commercial scale :
1. The patentee claming under him.
2. Persons directly or indirectly purchasing for him.
3. Other person against whom the patentee is not
taking or has not taken proceedings.
 Powers of Controller

• Order grant of compulsory licenses, cancellation

and amendment.
• Order grant of a license in the respect of the
other patents.
• Revision of the terms and conditions of a license.

• Allowing time for the inventions to be worked.

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• General powers of controller :

1. Controller shall have powers of a civil court

2. Can correct any clerical error in any patent.

3. Can take any oral evidence in lieu of or addition to

affidavit.
4. Have the discretionary powers which are to be
exercised only after hearing the party.
5. May extend the time for doing any act.
Terms and condition of granting licenses
• The royalty and other remuneration, if any,
reserved to the patentee beneficially entitled to
the patent.
• Patented invention is worked to the fullest and
provides profit to him.
• Should be made available to the public at
reasonably affordable prices.
• Licences granted should be non-exclusive.
• The right of licensee is non-assignable.
• The license is for the balance term of the patent.
• License is granted by the predominant purpose.
 Restoration of Lapsed Patents
• Application for renewal/restoration of lapsed
patents
• Rights of the patentees on restoration of
lapsed patents.
TRADE MARKS ACT-1999
 INTRODUCTION
• The present Trade Marks Act, 1999 has
replaced the Trade and Merchandise Marks
Act, 1958. And the Trade Marks Act, 1999 has
been brought into force only on 15th
September 2003. The Trade Mark Rules, 2002
are passed under the Trade Marks Act, 1999.
 MEANING
• TM : A visual symbol (word, letter, numeral,
name, signature, device, label, symbol)
identifying goods or services of one person
from those of others, and capable of graphic
representation
• Includes shape of goods, packaging,
combination of colors.
 Continued…

• ‘Used on’ goods, means appearance of sign is

not only on goods but containers & wrappers
too.
• ‘Used in connection with the marketing’
means appearance of sign in advertisements
and display windows.
 Continued…
• Trademark is a symbol that indicates who is
responsible for the goods placed in the market.
• Trademarks help to distinguish between the
goods of competing traders.
• Trademark helps a customer to buy goods of a
certain quality (e.g. color, size, weight, fragrance,
taste.)
• Trademarks must be clear and distinct from
each other.
• Trademarks may be in form of a letter,
numeral, whole sentence, picture,
combination of words and devices, label etc.
• Trademark may also be three-dimensional
(e.g. neck of bottle).
 OBJECTIVES
 Developments in trading and commercial practices.

 Increasing globalization of trade and industry.

 The need to encourage investment flows and transfer of technology.

 Need for simplification & harmonization of trade mark management

systems.

 To give effect to important judicial decisions.

 To provide for registration of trade mark for services, in addition to goods;

 Registration of trade marks, which are imitation of well known trade

marks, not to be permitted, besides enlarging the grounds for refusal of

registration;
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 Amplification of factors to be considered for defining a well known mark;
 To provide only a single register with simplified procedure for registration
and with equal rights; Providing for registration of “collective marks”
owned by associations;
 Providing an Appellate Board for speedy disposal of appeals ad
rectification applications;
 Providing enhanced punishment for the offences relating to trade marks;
 Prohibiting someone else’s trademark as part of corporate names, or
name of business concern;
 Provision for filing a single application for registration in more than one
class;
 Increasing the period of registration and renewal from 7 to 10 years;
 TYPES

• Service Mark

A service mark is any word, name, symbol,

device, or any combination, used, or intended
to be used, in commerce, to identify and
distinguish the services of one provider from
services provided by others, and to indicate
the source of the services.
 Continued…
• Certification Mark

A certification mark is any word, name, symbol, device, or

any combination, used, or intended to be used, in
commerce with the owner’s permission by someone other
than its owner, to certify regional or other geographic
origin, material, mode of manufacture, quality, accuracy, or
other characteristics of someone's goods or services, or that
the work or labor on the goods or services was performed
by members of a union or other organization.
 Continued…

• Collective Mark

A collective mark is a trademark or service mark

used, or intended to be used, in commerce, by
the members of a cooperative, an association, or
other collective group or organization, including
a mark which indicates membership in a union,
an association, or other organization.
 REGISTRATION OF TRADEMARK
• Controller General of Patents, Designs and Trademarks is

also Registrar of Trademarks

• Registry H.O. Bombay

• Branch offices (4) Kolkata, Chennai, New Delhi,

Ahmedabad
• Register of TM contains all record of registered TMs,

with names, addresses and description of proprietors,

users, assignments, transmissions, conditions and
limitations.
 REGISTRATION REQUIREMENTS OF
TREADMARK
• A TM should satisfy at least one of the following
characteristics for registration.
 Be a name of a company/individual represented in a special
manner;
 Be the signature of the applicant;

 Be one or more invented words;

 Be one or more words having no direct reference to the

characters or quality of the goods, barring certain exceptions.
 Continued…
• A part of TM can be registered separately.
• After acceptance, the application is advertised
in the Trademarks Journal.
• Any person may give notice of opposition to
Registrar within 3 months of publication – the
period extendable by 1 month.
 Continued…
• Registrar serves a copy of the notice to the
applicant, who files a counter-statement
within 2 months, which is then sent to the
opponent.
• Registrar considers evidence, hears the parties
and decides suitably. Any conditions or
limitations could be prescribed on registration.
 Continued…
• TM is then registered and Registrar issues a
certificate of registration to the application with the
seal of the Registry.
• Registration valid for 10 years, may be renewed
indefinitely, for 10 years each time.
• Failure to renew registration leads to removal of TM
from the Register; it could be restored by an
application filed within one year.
 PROHIBITOIN FROM REGISTRATION

• No word which is
 the commonly used and accepted name of any
single chemical element or compound, or
 declared by the WHO and notified by the Registrar
as an international non-proprietory name, (or word
deceptively similar to it),
shall be registered as TM.
 REMEDIES IN CASE OF INFRINGEMENT

A registered TM is infringed by a person who,

without the permission of the proprietor,
• Uses in the course of trade an identical or a
deceptively similar TM in relation to goods or
services for which the TM is registered; or
 Continued…
• Uses a mark which because of
 its identity with the regd. TM and the identity or
similarity of the goods/services covered by it; or
 its similarity to the regd. TM and the identity or similarity of the
goods/services;

Is likely to cause confusion on the part of the public.

 Continued…
• Use of a mark in accordance with honest practices, and
not such as to take unfair advantage of, or harm the
distinctive character/repute of the TM, is not
infringement.
• The followings are not infringement:
 use in relation to goods/services to indicate kind, quality,
quantity etc. of the goods/services;
 Continued…
 use in a manner outside the scope of registration;
 use in relation to goods/services where the owner had once
applied the mark and had not subsequently removed it or
impliedly consented to its use;
 use in relation to parts/accessories of other goods, where such
use is reasonably necessary and not likely to deceive as to the
origin.
.
• The proprietor of a registered TM can not
interfere with the use of any identical/similar
TM, if a person has been using this mark from
an earlier date.