Module-3

Introduction to Intellectual Property

 CONTENTS

Introduction To Intellectual Property: Role of IP in the Economic and Cultural Development

of the Society, IP Governance, IP as a Global Indicator of Innovation, Origin of IP History of IP
in India. Major Amendments in IP Laws and Acts in India.

Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent an Invention.
Rights Associated with Patents. Enforcement of Patent Rights. Inventions Eligible for Patenting.
Non-Patentable Matters. Patent Infringements. Avoid Public Disclosure of an Invention before
Patenting. Process of Patenting. Prior Art Search. Choice of Application to be Filed. Patent
Application Forms. Jurisdiction of Filing Patent Application. Publication. Pre-grant Opposition.
Examination. Grant of a Patent. Validity of Patent Protection. Post-grant Opposition.
Commercialization of a Patent. Need for a Patent Attorney/Agent. Can a Worldwide Patent be
Obtained. Do I Need First to File a Patent in India. Patent Related Forms. Fee Structure. Types of
Patent Applications. Commonly Used Terms in Patenting. National Bodies Dealing with Patent
Affairs. Utility Models.

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

Intellectual Property (IP) is a special category of property created by human intellect (mind) in the
fields of arts, literature, science, trade, etc. Since IP is a novel creation of the mind, it is intangible
(i.e. invisible and indivisible) in nature and differs from the tangible property, such as land, house,
gold and car with which we are quite familiar. Intellectual Property Rights (IPR) are the privileges
accorded to the creator/inventor (of IP) in conformance with the laws. These rights are given to
the creator/inventor in exchange for revealing the process of creation/invention in the public
domain. The inventor is conferred with the special rights to use, sell, distribute, offering for sale
and restricting others from using the invention without his prior permission.

Broadly, IP comprises of two branches namely Copyrights and Related Rights and Industrial Property
Rights.
Copyrights and Related Rights refer to the creative expressions in the fields of literature and art, such as
books, publications, architecture, music, wood/stone carvings, pictures, portrays, sculptures, films and
computer-based softwares/databases.
The Industrial Property Rights refer to the Patents, Trademarks, Trade Services, Industrial Designs and
Geographical Indications.

ROLE OF IP IN THE ECONOMIC AND CULTURAL DEVELOPMENT OF THE

SOCIETY

The economic and social development of a society is largely dependent on creativity. The
protection provided by the IPR to the creators/innovators is in fact an act of incentivization for
encouraging them to create more and motivates others to create new and novel things. However, if
IPR is practised rigidly, it may have a negative impact on the progress of society. 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. The use of
copyrighted material for education and religious ceremonies is exempted from the operation of the
rights granted in the Copyright Act. Similarly, a patent can be revoked in favour of compulsory
licensing by the government during an emergency or a natural calamity. In addition, if an
invention/creation is not in the interest of society, it is not registered by the government for grant
of any rights associated with IP. For example, cloning of human embryos is banned for IP
protection, and so is the creation of super microbial. pathogens, which can play havoc with human
lives.
In addition, India is enriched with massive biodiversity and genetic resources and their use
is embodied in what is referred to as Traditional Knowledge (TK). However, the use of such
knowledge and resources are not limited to local contexts as many innovations relate to and draw
on them. Therefore, the main issue of concern is to protect TK and genetic resources, which are
rapidly coming under the governance of sometimes conflicting IPR policies. To derive maximum
benefit from them, the establishment of adequate legal infrastructure and enforcement is required. With
initiatives like “Make in India”, “Atmanirbhar Bharat” and supporting local homegrown brands, and easy
as well as accessible approach to patents and trademarks registration, it is possible to reap the benefits of
our resources.

IP GOVERNANCE
IP is an integral component of human society, each and every nation has dedicated agencies for
laying out the guidelines, implementation and enforcement of IP related matters. In India, many
organizations/agencies deal with various aspects of IP. The governance of all categories of IP,
except the Plant Variety and Farmers‘ Rights Act, is carried out by the Department for Promotion
of Industry & Internal Trade (DPIIT) under the aegis of Ministry of Commerce and Industry, GoI.
There are a few other dedicated organizations/departments established by the government to
promote patent-ecosystem (patent awareness, patent filing and patent commercialization) in India
e.g. Technology Information Forecasting and Assessment Council (TIFAC), National Research
Development Corporation (NRDC) and Cell for IPR Promotion and
Management (CIPAM), etc.
In order to create a hassle-free exchange of IP related activities amongst all the nations, it
is imperative to have minimum standards of rules and regulations 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 practised around 500 Before the Common Era (BCE) in Sybaris, a state of Greece. The
natives of Sybaris were granted a year‘s protection for using their intellect to create ―any new
improvement in luxury.‖ A practical and pragmatic approach for IP governance started taking
shape in medieval Europe. In 1623, Britain passed an Intellectual Property Legislation which
entitled guilds (association of artisans or merchants) to create innovations and bring them to market
for trade purposes. However, this legislation brought a lot of resentment amongst the public, and
thus was replaced by the ‘Statute of Monopolies‘, which gave the rights to the original
creator/inventor for 14 years. Another legislation, Statute of Anne‘, was passed by the British
parliament in 1710. This legislation aimed at strengthening copyrights by providing rights to the
authors for recreation and distribution of their work. The work could also be renewed for another
14 years. By the end of the 18th century and the beginning of the 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 preindependence era of British rule. The
first patent related legislationin 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. The rights conferred to the inventor were termed as ‗Exclusive Privileges‘. In 1859,
certain amendments were made to the Act, such as:
• Grant of exclusive privileges to useful inventions.
• Increase of priority time from 6 months to 12 months.
• Exclusion of importers from the definition of the inventor.
The world’s first patent was granted in 1790 to Samuel Hopkins in USA for the "making of pot
ash and pearl ash by a new apparatus and process". In India, the first patent (known as ‘Exclusive
Privileges’ at that time) was awarded in 1856 to a civil engineer, George Alfred DePenning from
Calcutta, for his invention, ‘An Efficient Punkah Pulling Machine’.
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.
• With the rapidly changing scenario of IPR at a global level, a need was felt to further
amend the Patent Act, 1970. The highlight of the Patents (Amendments) Act 2005 were:
• Product patent for inventions in all fields of technology.
• New forms of known substances excluded to prevent
• evergreening of the patent.
• Rationalization of the opposition procedure.
• Introduction of pre-grant opposition by representation.
• Introduction of post-grant opposition.
• Compulsory license for export purposes.
• Compulsory license for manufacture.
• Extension ofgrace period from 6 months to 12 months for filinga 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. Before the invention of
printers, writing could be created only once. It was highly laborious and the risk of errors was
involved in the manual process of copying by a scribe. During the 15th and 16th centuries, printing
was invented and widely established in Europe. Copies of ‘Bibles‘were the first to be printed. The
government had allowed the printing of the documents without any restrictions, but this led to the
spreading of a lot of governmental information. Subsequently, the government started issuing
licenses for printing.
The evolution of copyrights law in India occurred in three phases. First, two phases were
enacted during the British Raj. In the first phase, the concept of copyrights was introduced in 1847
through an enactment during the East India Company‘s regime. In the second phase Indian
legislature, under the British Raj, enacted the Copyright Act of 1914 based on the Imperial
Copyright Act (1911) of the UK. An Act for criminal sanction for an infringement was introduced.
The third phase of the copyrights regime was witnessed post independence. The 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.

Trademarks

The first statutory law related to Trademarks (TM) in India was the Trade Marks Act, 1940, which was
carved out from the Trade Marks Act, 1938 of the UK. It was followed by the incorporation of provisions
of TM stated in the Indian Penal Code, Criminal Procedure Code and the Sea Customs Act. Later on, Trade
Marks Act, 1940 was rechristened as Trade and Merchandise Marks Act, 1958. Nearly four decades later,
this Act was repealed by the Trade Marks Act, 1999.

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.

Trade Secrets
Although India has no specific Trade Secrets Laws, Indian courts have upheld Trade Secrets protection
under various statutes, including contract law, Copyright law, the principles of equity and the common law
action of breach of confidence (which in effect amounts to a breach of contractual obligation).
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 and plants. However,
microbes and microbial products/processes were patentable. To include all kinds of biological materials
under the ambit of patent laws, a decision to enact a new sui generis law under the International Convention
for the Protection of New Varieties of Plants (UPOV, 1978) and UPOV, 1991 was taken. These decisions
were taken to address environmental and public interest concerns. The Indian Patents Act, 1970 excludes
―plants and animals in whole or any part thereof other than microorganisms‖ from patentability. To comply
with the mandate of Article 27.3 (b) of TRIPS, India adopted the PPV&FR Act, 2001 as a sui generis
regime protecting not only new plant varieties but also farmers‘rights.

Traditional Knowledge
It is the ancient and indigenous knowledge held by any community or a group of people. In olden times it
was not recorded anywhere and was available only in oral form. So, Traditional Knowledge (TK) was
verbally passed on to future generations. TKis not limited to a particular field. It covers a wide area, such
as the use of plants or their extracts for medical treatments, a traditional form of dance, particular techniques
used for hunting, craft knowledge/skills and so on. Though there is no official record but some forms of
TK find appearance in the culture, stories, legends, folklore, rituals, songs, etc. Previously, there was no
mechanism available to protect TK, but now, it has been recognized as IPR under TRIPS Agreement. The
Government of India has created a digital library termed as Traditional Knowledge Digital Library (TKDL)
as a repository of 2,50,000 formulations of various systems of Indian medicine.

Industrial Designs
A design is a creation of the human mind, which is appealing to the eyes and attracts the attention
of the viewers. The need to protect Industrial Designs (ID) was recognized in the 18th century and
the Indian legislation enacted the ‗Patterns and Designs Act‘in 1872 for the first time. The Act
was enacted to protect the rights over the creation of the designs and novel patterns by the
inventors. The Act was replaced by the British Patents and Designs Act in 1907, which later
became the basis for the Indian Patents and Designs Act, 1911. 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.

Biodiversity Conservation

Biodiversity is an inseparable part of human livelihood. The mention of protecting biodiversity can be found
in the times of Chandragupta and Ashoka. In those eras, the trees and forest were classified, such as reserved
category. In 1927 the ‗Indian Forest Act‘ and later on the ‘Wildlife Protection Act, 1972‘ was enacted to
provide legal protection to biodiversity. In 1988, the ‘National Forest Policy‘ was passed, which brought
revolutionary changes in the conservation and management of biodiversity. The Acts and
policies in force to protect the environment and biodiversity in India include Mining and Mineral
Development Regulation Act, 1957; Water (prevention and control of pollution) Act, 1974; Forest
Conservation Act, 1980; Biological Diversity Act, 2002; Scheduled Tribes and other Traditional Forest
Dwellers (recognition of rights)Act, 2006; National Biodiversity Action Plan, 2009; National Environment
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.
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 a) not in the
knowledge of the public, b) not published anywhere through any means of publication and c)
not be claimed in any other specification by any other applicant.

• Inventive step - Not obvious to the person (s) skilled in the art. The innovation is a) a technical
advancement over the existing knowledge, b) possesses economic significance and, c) not
obvious to a person skilled in the concerned subject.

• Capable of industrial application - For the benefit of society. The invention is capable of
being made or used in any industry.

TO PATENT OR NOT TO PATENT AN INVENTION

Once an invention has been developed, the inventor has to decide whether to exploit the invention
for personal benefits as provided by the statutory laws of the country or put it in the public domain.
By and large, the inventor prefers the former option. Only a miniscule of inventions are placed in
the public domain without claiming any benefits. In the latter case, anybody can exploit the
innovation for commercial or societal benefit without paying any money to the inventor.
If the owner of an invention wishes to seek monetary gains, he can choose from either of the two
options, i.e. patenting or Trade Secret. If the inventor is absolutely sure of maintaining the secrecy
of invention for a very long period (maybe 100 years or more) and the probability of reverse
engineering of the technology is nil or very low, then the ‗Trade Secret‘ category is preferred. If
the invention has a short life span or can be kept secret only for a small period of time (a couple
of years or so) or the probability of reverse engineering is high once the invention is in the public
domain, then the ‘patent‘ category is preferred.

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, it is not
true. In fact, the majority of patents are granted to inventions displaying an improvement over the
existing invention. For example, many patents can be awarded to a single molecule e.g. penicillins
(an antibiotic that kills microbes) and its derivatives. The derivatives are made by making subtle
changes in the structure of the penicillin resulting in new/improved properties, such as acid
stability or temperature stability or killing a wide range of microbes (germs). The new antibiotic
molecules, known as second, third or fourth generation penicillins can also be patented. In our
daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen, eyeglasses,
textiles, mobile phones, wrist watch, bicycle, scooter, car, 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 exclusions (product and processes) that cannot be patented,
such as:

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

PROCESS OF PATENTING

In India, the process of grant of a patent is a lengthy procedure that may take anywhere 3-4 years
or more. The major steps involved in this process are listed in figure 2.1.

Figure 2.1: Flow chart of major steps involved in the grant of a patent.

PRIOR ART SEARCH

Before an inventor embarks upon the patent filing process, he has to ensure that his invention is
‘novel’ as per the criterion for the grant of a patent. For this, he has to check whether or not his
invention already exists in the public domain. For this, he needs to read patent documents and
Non-Patent Literature (NPL), scientific journals/reports/magazines, etc. The information lying in
the public domain in any form, either before the filing of the patent application or the priority date
of the patent application claiming the invention, is termed as Prior Art. Conducting a prior art
search before filing the patent has advantages as it averts infringement, tracks research and
development and provides access to detailed information on the invention. The prior art search is
carried out on the parameters such as novelty, patentability, state of the art, infringement, validity
and freedom to operate. The commonly used databases for prior art search fall in two categories
i.e. Patents Databases and NPL.

Non-Patent Literature (NPL)

• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents, Encyclopedias, Journals
(IEEE, Research Gate, Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s PubMed,
Conference Proceedings, Technical Reports, Public Conferences, etc.
• Industry/trade publications: Industry reviews and public disclosures (Social media,
YouTube, Books, Magazines, Datasheets, Blueprints, etc.).
• Others: Newspapers, Websites, Technology blogs,Researchers‘ websites, etc.
Although, majority of NPL data is available freely on the public forum, some of the journals are
paid and can be accessed after paying the subscription. Major Patent Offices such as the United
States Patent and Trademark Office's (USPTO), European Patent Office (EPO), Japan Patent
Office (JPO), etc. are maintaining in-house NPL databases to make patents examination more
effective.

CHOICE OF APPLICATION TO BE FILED

Once a decision has been made to patent the invention, the next step is, what kind of application
needs to be filed i.e. provisional patent application or complete (Final) patent application -
generally, the provisional patent application is preferred for the following reasons:
• It is cheaper, takes less time, and involves fewer formalities.
• Any improvements made in the invention after the filing of the provisional application can be
included in the final application. In other words, the provisional application does not require
complete specifications of the inventions. The application can be filed even though some data
is yet to be collected from pending experiments.
• A provisional application allows you to secure a priority date for the patent applied.
However, it is mandatory to file the complete patent application within one year of the filing of
the provisional application; otherwise, the application stands rejected.

PATENT APPLICATION FORMS

As per the Patent Act, 1970 (Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and subrule
(1) of rule 20, the application for the grant of patent is filed using Form-1 (Fig. 2.2) and Form-2
(Fig. 2.3). The information sought in Form-1 is general in nature i.e. Title of Application, Names
of Applicant(s) and Inventor(s), Type of Application (Ordinary, Convention, PCT-NP (PCT-
National Phase), Divisional, Patent of Addition, etc.). Whereas Form-2 seeks technical information
and whether to file the provisional application or complete the application. For ‘Provisional
Application‘, only ‘Description of the Invention‘and the ‘Abstract‘is to be furnished. Whereas,
‘Complete Application‘requires ‘Description of the Invention‘, ‘Abstract‘, ‘Claims‘and the
manner in which invention has to be performed.
PUBLICATION

Once the patent application has been filed at the Regional Patent Office, the patent application is
kept secret for 18 months in the Patent Office. After the expiry of 18 months (from the date of
filing of the application or the priority claimed date, whichever is earlier), the application is
published in the Official Journal of Patent Office (http://www.ipindia.nic.in/journalpatents. htm).
The purpose of publishing the application is to inform the public about the invention. The
publication of an application is a mandatory step.

PRE-GRANT OPPOSITION

If anybody has an objection to the invention claimed in the patent application, he can challenge
the application by approaching the Controller of Patents within 6 months from the date of
publication. It is termed as Pre-grant Opposition. Depending on the outcome of the case, the patent
application may be rejected or recommended for the next step, i.e. patent examination.Although
the patent application is kept secret for 18 months, but under special circumstances, this period can
be reduced when the patentee/applicant plans to sell or license the patent or seek an investor). For
this, the applicant has to fill a Form-9 and submit it to the Controller General.
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 A PATENT
After fulfilling all the requirements for the grant of a patent, including all objections/queries raised
by the ‘Patent Examiner’ and the public at large, the patent is granted to the applicant. The granted
patent is published in the Official Journal of the Patent Office. This journal is published every
Friday and contains information related to patent applications published under section (u/s) 11A,
post-grant publication, restoration of patent, notifications, list of non-working patents and public
notices issued by the Patent Office.

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

COMMERCIALIZATION OF A PATENT

The patent owner may grant permission to an individual/organization/industry to make, use, and
sell his patented invention. This takes place according to agreed terms and conditions between the
involving parties. A patent owner may grant a license to a third party for the reasons mentioned
below:
• The patent owner has a decent job e.g. university professor and has no desire or aptitude to
exploit the patent on his own.
• The patent owner may not have the necessary manufacturing facilities.
• The manufacturing facility is not able to meet the market demand.
• The patent owner wishes to concentrate on one geographic market; for other geographical
markets, he may choose to license the patent rights.
Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the
exclusive rights to use the patented invention. Only the patentee has the right to 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 Licence, the patent
is sold to only one individual/organization for a fixed time period. During this time period, no
other person or entity can exploit the relevant IP except the named licensee. In Non-Exclusive
Licence, a patentee can sell his patent rights to as many individuals/parties as he likes. If the
patentee is not able to commercialize his patent within three years from the date of the grant of a
patent, any person may submit an application to the Controller of Patents for grant of Compulsory
Licensing (of the patent), subject to the fulfillment of following conditions:

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

NEED FOR A PATENT ATTORNEY/AGENT

In general, applicants can prepare their patent applications and file them without assistance from a patent
attorney. However, given the complexity of patent documents, it is advisable to seek legal assistance from
a patent attorney/agent when drafting a patent application. Furthermore, the legislation of many countries
requires that an applicant, whose ordinary residence or principal place of business is outside the country,
be represented by an attorney or agent qualified in the country (which usually means an agent or attorney
who resides and practices in that country).

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, 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:
The applicant is not an Indian resident.
• If 6 weeks have expired since the patent application was filed in India by an Indian resident.
• If two or more inventors are working on an invention in a foreign country and one of the
inventors is an Indian resident. The invention does not have a potential market in India and
hence does not wish to file the patent in India. In such a scenario, the Indian resident has to
seek Foreign Filing Permission (FFP) from an Indian Patent Office.
• In case of international collaboration, if one part of the invention originated in India and the
inventor is an Indian resident, he has to seek permission to file the patent outside India.
• If the invention is related to defense or atomic energy or utility model, the inventor/s needs to
seek permission from the Indian Patent Office because inventions related to these domains are
not the subject matter of patentability in India.

PATENT RELATED FORMS

There are over 30 patent-related forms. Some of them are mentioned below.
FEE STRUCTURE

As per the patent Act, 1970 and The Patents Rules (1972), the requisite fee has been specified based on the
type of form/s to be submitted to the Office (Table 2.3). Electronically filed applications are 10% cheaper
than physical filing.
TYPES OF PATENT APPLICATIONS
• Provisional Application - A patent application filed when the invention is not fully finalized
and some part of the invention is still under experimentation. Such type of application helps to
obtain the priority date for the invention.

• Ordinary Application - A patent application filed with complete specifications and claims
but without claiming any priority date.

• PCT Application - An international application filed in accordance with PCT. A single

application can be filed to seek patent protection and claim priority in all the member countries
of PCT.
• Divisional Application - When an application claims more than one invention, the applicant
on his own or to meet the official objection on the ground of plurality may divide the
application and file two or more applications. This application divided out of the parent one is
known as a Divisional Application. The priority date for all the divisional applications will be
the same as that of the main (the Parent) Application (Ante-dating).
• Patent of Addition Application - When an invention is a slight modification of the earlier
invention for which the patentee has already applied for or has obtained a patent, the applicant
can go for ‘Patent of Addition‘, if the modification in the invention is new. Benefit - There is
no need to pay a separate renewal fee for the ‘Patent of Addition‘, during the term of the main
patent. It expires along with the main patent.
• Convention Application - If a patent application has been filed in the Indian Patent Office,
and the applicant wishes to file the same invention in the one or more Convention countries
(e.g. Paris Convention) by claiming the same priority date on which application was filed in
India, such an application is known as Convention Application. The applicant has to file
Convention Application within 12 months from the date of filing in India to claim the same
priority date.

COMMONLY USED TERMS IN PATENTING

There are certain terms that are commonly used in the field of patenting, as listed in table 2.4.
NATIONAL BODIES DEALING WITH PATENT AFFAIRS

There are many departments/organizations/bodies dealing with various aspects of patents, namely,
the Indian Patent Office (IPO), Department for Promotion for Industry and Internal Trade (DPIIT);
Technology Information, Forecasting and Assessment Council (TIFAC) and National Research
Development Corporation (NRDC).
UTILITY MODELS

In many cases, a new invention involves an incremental improvement over the existing products,
but this technical improvement is not sufficient enough to pass the stringent criterion of ‘Novelty‘
and ‘Non-obviousness‘ set aside for the grant of a patent. Such small innovations can still be
legally protected in some countries and termed as ‘Utility Models’ or ‘Petty Patents’ or
‘Innovation Patents’. In this case, the criterion of ‘Novelty ‘and ‘Non-obviousness‘are diluted or
relinquished. But the requirement of industrial application or utility is the same as that for patents.
Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since the grant
of a ‘Utility Model‘ is usually less rigorous and involves minimal cost. MSMEs do not have deep
pockets to carry out intensive R&D leading to the grant of patents. But their innovations are good
enough for improving their products/processes and bringing more financial rewards. Such
inventions pass the requirements set aside for Utility Models but not for patents. The life of the
Utility Model is less as compared to the patents. It varies from 7-15 years in different countries.

Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland, Russian
Federation and Spain, provide protection for Utility Models under their IPR laws. India till date
does not recognize utility patents. If these small patents are recognized under IP protection in India,
it will catapult the number of patents (filed and granted) on annual basis.