CHAPTER – 1

INTRODUCTION TO INTELLECTUAL
PROPERTY

Intellectual Property (IP) is a special category of property

created by human intellect (mind) in the fields of arts, literature,
science, trade, etc. Since IP is a novel creation of the mind, it is
intangible (i.e. invisible and indivisible) in nature and differs from
the tangible property, such as land, house, gold and car with which
we are quite familiar. Intellectual Property Rights (IPR) are the
privileges accorded to the creator/inventor (of IP) in conformance
with the laws. These rights are given to the creator/inventor in
exchange for revealing the process of creation/invention in the
public domain. The inventor is conferred with the special rights to
use, sell, distribute, offering for sale and restricting others from
using the invention without his prior permission.The
aforementioned rights do not apply to the physical object (e.g. book
or computer or mobile phone) in which the creation may be
embodied but attributed to the intellectual creativity.
Broadly, IP comprises of two branches i.e. ‗Copyrights and
Related Rights‘ and ‗Industrial Property Rights‘. ‗Copyrights and
Related Rights‘ refer to the creative expressions in the fields of
literature and art, such as books, publications, architecture, music,
wood/stone carvings, pictures, portrays, sculptures, films and
computer-based softwares/databases. The ‗Industrial Property
Rights‘ refer to the Patents, Trademarks, Trade Services, Industrial
Designs and Geographical Indications. The salient features of all the
above-mentioned categories are discussed in the ensuing chapters.
1.1. Role of IP in the Economic and Cultural Development
of the Society
Creativity being the keystone of progress, no civilized society
can afford to ignore the basic requirement of encouraging the same.
The economic and social development of a society is largely
dependent on creativity. The protection provided by the IPR to the
creators/innovators is in fact an act of incentivization for
encouraging them to create more and motivates others to create new
1
and novel things.
However, if IPR is practised rigidly, it may have a negative
impact on the progress of society. For example, compliance with the
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement has affected the farming community as they are unable
to store seeds for the next crop. Multinational companies regulate
the price of seeds, which is generally beyond the reach of a majority
of the farmers.
To circumvent the negative impact of IPR, certain laws,
exceptions and limitations associated with IPR have been enacted to
maintain a balance between the interests of the creators/inventors
and the community. For example, farmers‘ rights under the
Protection of Plant Varieties and Farmers‘ Rights (PVP&FR) Act,
2001 entitles them to many privileges, such as ‗Rights on seeds’
provides rights to the farmers to save seeds, use seeds and share,
exchange or sell seeds to other farmers and ‗Right to protection
against accusations of infringement’ protects the farmers from
infringement and other legal accusation levied upon them due to his
legal ignorance in using other‘s plant varieties. The use of
copyrighted material for education and religious ceremonies is
exempted from the operation of the rights granted in the Copyright
Act. Similarly, a patent can be revoked in favour of compulsory
licensing by the government during an emergency or a natural
calamity. In addition, if an invention/creation is not in the interest of
society, it is not registered by the government for grant of any rights
associated with IP. For example, cloning of human embryos is
banned for IP protection, and so is the creation of super microbial
pathogens, which can play havoc with human lives.
In addition, India is enriched with massive biodiversity and
genetic resources and their use is embodied in what is referred to as
Traditional Knowledge (TK). However, the use of such knowledge
and resources are not limited to local contexts as many innovations
relate to and draw on them. Therefore, the main issue of concern is
to protect TK and genetic resources, which are rapidly coming
under the governance of sometimes conflicting IPR policies. To
derive maximum benefit from them, the establishment of adequate
legal infrastructure and enforcement is required. With initiatives like
‗Make in India‘, ‗Atmanirbhar Bharat‘ and supporting local

2
homegrown brands, and easy as well as accessible approach to
patents and trademarks registration, it is possible to reap the benefits
of our resources.
1.2. IP Governance
Since IP is an integral component of human society, each and
every nation has dedicated agencies for laying out the guidelines,
implementation and enforcement of IP related matters. In India,
many organizations/agencies deal with various aspects of IP. The
governance of all categories of IP, except the Plant Variety and
Farmers‘ Rights Act, is carried out by the Department for Promotion
of Industry & Internal Trade (DPIIT) under the aegis of Ministry of
Commerce and Industry, GoI. There are a few other dedicated
organizations/departments established by the government to
promote patent-ecosystem (patent awareness, patent filing and
patent commercialization) in India e.g. Technology Information
Forecasting and Assessment Council (TIFAC), National Research
Development Corporation (NRDC) and Cell for IPR Promotion and
Management (CIPAM), etc.
In order to create a hassle-free exchange of IP related activities
amongst all the nations, it is imperative to have minimum standards
of rules and regulations pertaining to all aspects of IP including
rights, empowerment, exceptions, etc. To achieve this goal, the
United Nations (UN) has established an organization called the
World Intellectual Property Organization (WIPO). This agency is at
the forefront of imparting knowledge about IP and governs
international filing and registration of IP through various Conventions
and Treaties like Paris Conventions, Patent Cooperation Treaty
(PCT), Rome Convention, Berne Convention, etc.
1.3. IP as a Global Indicator of Innovation
IP, especially patents, is considered as one of the important cogs
in assessing the innovation index of a nation. The global ranking
organizations always have IP or a subset of IP as one of the
parameters for understanding and grading the Science, Technology
and Innovation (STI) ecosystem of a nation. For example, the
Scimago (publically available online portal which ranks journals
and countries based on the data taken from Scopus) 2020 report

3
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.
1.4. Origin of IP
Though there is no official record of the origin of IP, it is
believed that a rudimentary form of IP was being practised around
500 Before the Common Era (BCE) in Sybaris, a state of Greece.
The natives of Sybaris were granted a year‘s protection for using
their intellect to create ―any new improvement in luxury.‖
A practical and pragmatic approach for IP governance started
taking shape in medieval Europe. In 1623, Britain passed an
Intellectual Property Legislation which entitled guilds (association
of artisans or merchants) to create innovations and bring them to
market for trade purposes. However, this legislation brought a lot of
resentment amongst the public, and thus was replaced by the
‗Statute of Monopolies‘, which gave the rights to the original
creator/inventor for 14 years. Another legislation, ‗Statute of
Anne‘, was passed by the British parliament in 1710. This
legislation aimed at strengthening copyrights by providing rights to
the authors for recreation and distribution of their work. The work
could also be renewed for another 14 years. By the end of the 18 th
century and the beginning of the 19th century, almost every country
started laying down IP legislation to protect their novel inventions
and creations.
1.5. History of IP in India
1.5.1. Patents
The history of the Indian patent system dates back to the pre-
independence era of British rule. The first patent related legislation
in India was Act VI of 1856, adapted from the British Patent Law of
1852. The objective of this legislation was to encourage the
inventions of new and useful manufactures. The rights conferred to
the inventor were termed as ‗Exclusive Privileges‘. In 1859, certain
amendments were made to the Act, such as:

4
  Grant of exclusive privileges to useful inventions.
 Increase of priority time from 6 months to 12 months.
 Exclusion of importers from the definition of the inventor.
The world’s first patent was granted in 1790 to Samuel Hopkins
in USA for the "making of pot ash and pearl ash by a new
apparatus and process". In India, the first patent (known as
‘Exclusive Privileges’ at that time) was awarded in 1856 to a civil
engineer, George Alfred DePenning from Calcutta, for his
invention, ‘An Efficient Punkah Pulling Machine’.
A few years later, it was felt that ‗Designs‘ could also pass the
criteria of the invention and thus should be included in the Patent
Act. The new Act was rechristened as ―The Patterns and Designs
Protection Act‖ under Act XIII of 1872. This Act was further
amended in 1883 (XVI of 1883) to include the provision of
protection for ‗Novelty‘ in the invention.
At the beginning of the 20th century, all the earlier Acts related
to inventions and designs were done away with the introduction of
‗The Indian Patents and Designs Act, 1911‘ (Act II of 1911). As per
this Act, the governance of patents was placed under the
management of the Controller of Patents. In the next three decades,
many amendments were introduced for reciprocal arrangements
with other countries for securing priority dates. These amendments
dealt with;
 Use of invention by the
government.
 Patent of Addition.
Priority Date:
 Enhancing the term of the
The date on which the first
patent from 14 years to 16
application for the invention
years.
is filed, whether it is
 Filing of ‗Provisional provisional or with complete
Application‘ and submission specifications.
of ‗Complete Application‘
within 9 months from the date
of filing the application.
After India got independence in 1947, many patent experts felt
the need to review the Indian Patents and Designs Act, 1911,

5
keeping the national interest (economic and political) in mind. A
dedicated committee, chaired by a renowned Justice Bakshi Tek
Chand (retired Judge of Lahore High Court), was constituted in
1949 to review the advantages of the patent system. The committee
submitted a plethora of recommendations, including:
 Misuse of patents rights needs to be prevented.
 There must be a clear indication in the Act that food, medicine
and surgical and curative devices should be made available to the
masses at the cheapest rate by giving reasonable compensation to
the owner of the patent.
 Amendments in Sections 22, 23 and 23A of the Patent and
Design Act, 1911 on the lines of the UK Patent Act.
These recommendations were introduced in the Act XXXII of
1950. Two years later, another amendment (Act LXX of 1952) was
made to provide compulsory licencing of patents related to food,
drugs and chemicals killing insects and microbes. Based on these
amendments, a bill was presented in the parliament in 1953 but was
rejected.
In 1957, the central government constituted yet another
powerful committee under the chairmanship of Justice N.
RajagopalaAyyangar to seek inputs for further strengthening the
Indian Patent Law. The committee submitted its report to the
government in 1959. It comprised of two segments addressing a)
General aspects of the patent laws, and b) Bill rejected back in 1953.
The revised patent legislation was submitted to the Lok Sabha in
1965. After many hiccups, clarifications and modifications the
Patents Act, 1970 (http://www.ipindia.nic.in/writereaddata/Portal/
IPOAct/1_31_1_patent-act-1970-11march2015.pdf) was introduced,
superseding all the previous laws related to the patents. However,
the Indian Patents and Designs Act of 1911 remained applicable for
designs only till 1994.
In 1995, India signed the TRIPS Agreement and got a transition
period of 10 years (1995-2005) to make domestic laws compatible
with the international treaty. In 1999, The Patents (Amendment)
Act, 1999 was introduced providing for the filing of applications for
‗Product Patents‘ in the areas of drugs, pharmaceuticals and
agrochemicals (earlier, only ‗processes‘ were protected under the

6
Patent Act). The new Patent Act also included provisions for the
grant of Exclusive Market Rights (EMRs) for the distribution and
sale of pharma products on fulfilment of certain conditions.
The second amendment to the 1970 Act was made through the
Patents (Amendment) Act, 2002 (Act 38 of 2002). This Act
introduced new Patent Rules, 2003, thus replacing the earlier
Patents Rules, 1972. The major amendments were:
 The protection term of 20 years for all inventions from the date
of filing.
 Scope of non-patentable inventions including Traditional
Knowledge expanded.
 Disclosure of source and geographical origin of biological
material made compulsory.
 Provisions concerning convention countries simplified.
 Establishment of Appellate Board.
 Compulsory license provisions strengthened.
 Simplification of procedures.
 Harmonization with Patent Cooperation Treaty (PCT)
provisions.
With the rapidly changing scenario of IPR at a global level, a
need was felt to further amend the Patent Act, 1970. The highlight
of the Patents (Amendments) Act 2005 were:
 Product patent for inventions in all fields of technology.
 New forms of known substances excluded to prevent
evergreening of the patent.
 Rationalization of the opposition procedure.
 Introduction of pre-grant opposition by representation.
 Introduction of post-grant opposition.
 Compulsory license for export purposes.
 Compulsory license for manufacture.
 Extension of grace period from 6 months to 12 months for filing
a patent, if published in government exhibition.
India is a member of all prominent Conventions and Treaties
related to the facilitation of the inventors for international filing and
7
protecting the rights over the inventions globally. The important
international agreements to which India is a signatory party are
TRIPS Agreement (1995), Paris Convention (1883), PCT (1970)
and Budapest Treaty (1977) and many more.
1.5.2. Copyrights and Related Rights
The concept of copyrights started way back in the 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. The
term of copyrights was for the lifetime of the author plus seven
years after death. Unlike today, copyrights in work were not
automatic. The registration of copyright was mandatory for the
enforcement of rights under the Act. The government could grant a
compulsory license to publish a book if the owner of the copyright,
upon the death of the author, refused to allow its publication.
In the second phase Indian legislature, under the British Raj,
enacted the Copyright Act of 1914 based on the Imperial Copyright
Act (1911) of the UK. An Act for criminal sanction for an
infringement was introduced.
The third phase of the copyrights regime was witnessed post-
independence. The Copyright Act 1957 was enacted, superseding
the Indian Copyright Act, 1914, in order to suit the provisions of the
Berne Convention (1886). The 1957 Act has been amended six
times (1983, 1984, 1992, 1994 and 1999, 2012), to comply with
WIPO Copyright Treaty (WCT), 1996 and WIPO Performances and
Phonograms Treaty (WPPT), 1996.

8
 Most of the amendments in copyright laws were in the digital
environment, such as penalties for circumvention of technological
protection measures; rights of management information; liability of
internet service provider; introduction of statutory licenses for the
cover versions (the cover version is re-recording or re-composition
of the original song by other artists or composers and is also termed
as a remake, cover song, revival, etc.) and broadcasting
organizations; ensuring the right to receive royalties for authors and
music composers; exclusive economic and moral rights to
performers; equal membership rights in copyrights societies for
authors and other right owners and exception of copyrights for
physically disabled to access any works. India is an active member
of nearly all significant international Conventions/Treaties related to
Copyright Law e.g. the Berne Convention as modified in Paris in
1971, the Universal Copyright Convention (1951), the Rome
Convention (1961), WCT, WPPT and (TRIPS, 1995).
1.5.3. Trademarks
The first statutory law related to Trademarks (TM) in India was
the Trade Marks Act, 1940, which was carved out from the Trade
Marks Act, 1938 of the UK. It was followed by the incorporation of
provisions of TM stated in the Indian Penal Code, Criminal
Procedure Code and the Sea Customs Act. Later on, Trade Marks
Act, 1940 was rechristened as Trade and Merchandise Marks Act,
1958. Nearly four decades later, this Act was repealed by the Trade
Marks Act, 1999. The need for this occurred to comply with the
provisions of the TRIPS. It is the current governing law related to
registered TM.
1.5.4. Geographical Indications
India, as a member of WTO, enacted the Geographical
Indications of Goods (Registration and Protection) Act, 1999.
It came into force with effect from 15th September 2003.
Geographical Indicators have been defined under Article 22 (1) of
the WTO Agreement on TRIPS.
1.5.5. Trade Secrets
Although India has no specific Trade Secrets Laws, Indian
courts have upheld Trade Secrets protection under various statutes,

9
including contract law, Copyright law, the principles of equity and
the common law action of breach of confidence (which in effect
amounts to a breach of contractual obligation).
1.5.6. Semiconductor Integrated Circuits and Layout Designs
In the 21st century, Information Technology (IT) has
revolutionized the economic and societal growth of the world
economy. The rapid and tremendous scientific advancements in the
field of IT resulted in the creation of a new class of IP called the
Layout-Design of the Semiconductor Integrated Circuits. Various
organizations, including WTO and TRIPS Agreement laid down
rules and regulations regarding the protection of Semiconductor
Integrated Circuits and Layout Designs (SICLD) India being a
member of the WTO also passed an Act called the SICLD Act,
2000. This Act is TRIPS compliant and fulfils the conditions of the
TRIPS agreement (Articles. 35 to 38) concerning the protection of
SICLD.
1.5.7. Plant Varieties
Till 1970s, not much emphasis was laid on patentable matter
originating from animals and plants. However, microbes and
microbial products/processes were patentable. To include all kinds
of biological materials under the ambit of patent laws, a decision to
enact a new sui generis law under the International Convention for
the Protection of New Varieties of Plants (UPOV, 1978) and
UPOV, 1991 was taken. These decisions were taken to address
environmental and public interest concerns.
The Indian Patents Act, 1970 excludes ―plants and animals in
whole or any part thereof other than microorganisms‖ from
patentability. To comply with the mandate of Article 27.3 (b) of
TRIPS, India adopted the PPV&FR Act, 2001 as a sui generis
regime protecting not only new plant varieties but also farmers‘
rights.
1.5.8. Traditional Knowledge
It is the ancient and indigenous knowledge held by any
community or a group of people. In olden times it was not recorded
anywhere and was available only in oral form. So, Traditional
Knowledge (TK) was verbally passed on to future generations. TK

10
is not limited to a particular field. It covers a wide area, such as the
use of plants or their extracts for medical treatments, a traditional
form of dance, particular techniques used for hunting, craft
knowledge/skills and so on. Though there is no official record but
some forms of TK find appearance in the culture, stories, legends,
folklore, rituals, songs, etc. Previously, there was no mechanism
available to protect TK, but now, it has been recognized as IPR
under TRIPS Agreement. The Government of India has created a
digital library termed as Traditional Knowledge Digital
Library (TKDL) as a repository of 2,50,000 formulations of various
systems of Indian medicine.
1.5.9. Industrial Designs
A design is a creation of the human mind, which is appealing to
the eyes and attracts the attention of the viewers. The need to protect
Industrial Designs (ID) was recognized in the 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.
1.5.10. Biodiversity Conservation
Biodiversity is an inseparable part of human livelihood. The
mention of protecting biodiversity can be found in the times of
Chandragupta and Ashoka. In those eras, the trees and forest were
classified, such as reserved category. In 1927 the ‗Indian Forest Act‘
and later on the ‗Wildlife Protection Act, 1972‘ was enacted to
provide legal protection to biodiversity. In 1988, the ‗National
Forest Policy‘ was passed, which brought revolutionary changes in
the conservation and management of biodiversity. The Acts and
policies in force to protect the environment and biodiversity in India
include Mining and Mineral Development Regulation Act, 1957;
Water (prevention and control of pollution) Act, 1974; Forest
Conservation Act, 1980; Biological Diversity Act, 2002; Scheduled

11
Tribes and other Traditional Forest Dwellers (recognition of rights)
Act, 2006; National Biodiversity Action Plan, 2009; National
Environment Policy, 2006 and a few more.
1.6. Major Amendments in IP Laws and Acts in India
In order to fill the gaps existing in the IP Laws and Acts and
also to introduce new guidelines/directions based on the current
scenario (socially and politically), each nation keeps on updating the
concerned IP Laws and Acts. Some of the salient amendments made
in Indian Laws and Acts on IPR are mentioned below:
Table 1.1: History of Laws and Acts pertaining to intellectual
property in India.
S.No. Year Historical Proceedings

Patents

1. 1856 The Act VI of 1856 on the protection of

inventions based on the British Patent Law of
1852.
2. 1859  Rights renamed as ‗Exclusive Privileges‘.
 Time for the priority increased from
6 months to 12 months.
3. 1883  The Patterns and Designs Protection Act
 Introduction of novelty in the invention.
 A grace period of 6 months for the disclosure
of the invention.
4. 1911  Renamed as ‗The Indian Patent and Design
Act‘ and brought under the management of
‗Controller of Patents‘.
5. 1930  Introduction of Patent of Addition.
 Government can use the invention if required.
 The term of patent protection increased from
14 to 16 years.
6. 1945  Filing of the provisional specification to
secure the priority date.
 Provision of submitting complete
specifications within 9 months.

12
7. 1949 Dedicated Committee formed under the
leadership of Justice Bakshi Tek Chand for
reviewing patent system as per the national
environment.
8. 1950  A working statement needs to be submitted at
the Patent Office.
 Endorsement of the Patents with the words
‗License of Right‘ on the application made by
the government so that the Controller could
grant the license.
9. 1952  Provision of ‗Compulsory License‘ in the
areas of food, medicine and insecticide
germicide.
 Process for producing substance or any
invention relating to surgical or curative
devices.
10. 1965 After incorporation of the recommendation
submitted by the committee formed in 1949, a
new bill was introduced in Lok Sabha but was
not cleared.
11. 1967  Again submitted to Parliamentary Committee.
 1911 Act remained applicable for Designs.
12. 1970  The Patent Act, 1970 passed by the
Parliament Committee.
13. 1972 The Patent Act, 1970 came into force with the
introduction of patent rules.
14. 1995 TRIPS Agreement was signed by India and got
transition period 1995-2005 to make domestic
laws compatible with TRIPS.
15. 1999  Introducing the provisions for receiving the
applications for the product patent in the field
of pharmaceuticals and agro-chemicals (mail
box)*.
 Provisions for the grant of EMRs for
distribution and sale of pharma products on
fulfilment of certain conditions.
 Grant of EMR subject to certain conditions.
* after the amendments (1999) the product

13
 patents related to the pharmaceuticals and agro-
chemicals were kept on hold for examination till
2005. It is called a mailbox or black box.
16. 2002  The uniform 20-year term of the patent for all
inventions.
 Disclosure of source and geographical origin
of biological material made compulsory.
 Establishment of Appellate Board.
 Compulsory License provisions strengthened.
17. 2003  The Patents Rules, 2003 were introduced.
18. 2005  Product patent for inventions in all fields of
technology including food, drug, chemicals
and microorganisms.
 New forms of known substances excluded in
order to prevent the ever-greening of the
patent.
 Introduction of the pre-grant opposition.
 Introduction of post-grant opposition.
 Extension of grace period to 12 months.
Copyrights and Related Rights
19. 1847  The concept of Copyrights in India was
introduced.
 Validity - Lifetime+7 years but not more than
42 years in total.
20. 1914 Copyright Act, 1914 was introduced based on the
Imperial Copyright Act, 1911 of UK.
21. 1957 Copyright Act, 1914 was replaced with
Copyright Act, 1957 with minor modifications.
22. 1984 Penalty on second and subsequent conviction.
23. 1994 Registration of Copyright Society made
mandatory.
24. 2012  To comply with international Treaties for
copyrights protection in the digital
environment.
 Right to receive royalties for authors and
music composers.
 Exception of copyrights for physically

14
 disabled persons to access any work.

25. 2013 Copyrights Rules, 2013 introduced.

Trademarks
26. 1940 Trademarks Registry established in India.
27. 1958 The Trade and Merchandise Marks Act, 1958
enacted as per TRIPS Agreement.
28. 1999 Amended to avoid duplicity and ensure securing
proprietors‘ trade and goodwill.
29. 2002 Trademarks Rules introduced.
30. 2010  Amended to comply with Madrid Protocol for
international filing.
 Provision for filing opposition of the
registration within 4 months.
31. 2013 Trademarks Rules introduced.
Geographical Indications
32. 1999 Being a member of the World Trade
Organization (TRIPS), GI of goods (Registration
and Protection) Act was introduced.
33. 2002 The Geographical Indications of Goods
(Registration and Protection) Rules, 2002 was
introduced.
34. 2003 The Geographical Indications of Goods
(Registration & Protection) Act came into force.
Designs
35. 1872 Patterns and Designs Protection Act introduced
for the protection of new patterns and designs.
36. 1888 Amended as Invention and Design Act, 1988 for
the protection of new inventions and designs.
37. 1911 Renamed as The Indian Patent and Design Act.
38. 2000 Design Act, 2000 was introduced; separated from
the Indian Patent and Design Act.
39. 2001 Design Rules, 2001 introduced.

15
 Semiconductor Integrated Circuits Layout Design (SICLD)
40. 2000 Semiconductor Integrated Circuits Layout Design
(SICLD) Act 2000 introduced as a signatory of
WTO.
41. 2001 SICLD Rules introduced.
Protection of Plant Varieties and Farmers' Rights (PPV&FR)
42. 1970 The Patent Act, 1970 excluded plants and
animals in whole or in any part from patentability
(in 1999 amendments).
43. 1991 Enactment of protection of new varieties of
plants on sui generis basis on the lines of UPOV.
44. 2001 In line with TRIPS Agreement enactment of
PPV&FR Act was introduced.
Biological Diversity
45. 2002 The Biological Diversity Act, 2002 introduced on
the lines of the Convention on Biological
Diversity (CBD, 1992).
46. 2003  Establishment of National Biodiversity
Authority.
 Designation of repositories under the
Biological Diversity Act.
47. 2004 Biological Diversity Rules introduced.
Source: http://www.ipindia.nic.in/history-of-indian-patent-system.htm

16
 CHAPTER-2
CATEGORIES OF INTELLECTUAL
PROPERTY

Intellectual Property (IP) is a vast field comprising of

technology-led inventions, work of artisans, novel Industrial
Designs, unique brands of commercial items, and Traditional
Knowledge being practised continuously over centuries for the
production of goods (carpets, textiles, food products, etc.). In order
to understand the extensive field of IP, it has been divided into
various categories. In India, these categories include Patents,
Copyright and Related Rights, Trademark, Trade Secrets, Industrial
Designs, Geographical Indications and Semiconductor Integrated
Circuits Layout Designs. Each of these categories is described in the
following sections.

2.1. Patents

A patent is an exclusive right granted

Invention is the
for an innovation that generally provides a
creation of a new
new way of doing something or offers a
idea or concept.
new technical solution to a problem. The
Innovation is the
exclusive right legally protects the
process of translating
invention from being copied or reproduced
an invention into
by others. In return, the invention must be
commercial entity or
disclosed in an application in a manner
widespread use.
sufficiently clear and complete to enable it
to be replicated by a person with an
ordinary level of skill in the relevant field.
2.1.1. Conditions for Obtaining a Patent Protection
There is a set criterion, as provided in Section 2(1)(j) of the
Patents Act, 1970, which must be fulfilled for a product or a process
to qualify for the grant of a patent. The criterion encompasses:
 Novelty - Not part of ‘State of the Art’. The innovation claimed
in the patent application is new and not known to anybody in

17
 the world. In other words, the innovation is a) not in the
knowledge of the public, b) not published anywhere through
any means of publication and c) not be claimed in any other
specification by any other applicant.
 Inventive step - Not obvious to the person (s) skilled in the art.
The innovation is a) a technical advancement over the existing
knowledge, b) possesses economic significance and, c) not
obvious to a person skilled in the concerned subject.
 Capable of industrial application - For the benefit of society.
The invention is capable of being made or used in any industry.

2.1.2. To Patent or Not to Patent an Invention

Once an invention has been developed, the inventor has to
decide whether to exploit the invention for personal benefits as
provided by the statutory laws of the country or put it in the public
domain. By and large, the inventor prefers the former option. Only a
miniscule of inventions are placed in the public domain without
claiming any benefits. In the latter case, anybody can exploit the
innovation for commercial or societal benefit without paying any
money to the inventor.
If the owner of an invention wishes to seek monetary gains, he
can choose from either of the two options, i.e. patenting or Trade
Secret. If the inventor is absolutely sure of maintaining the secrecy
of invention for a very long period (maybe 100 years or more) and
the probability of reverse engineering of the technology is nil or
very low, then the ‗Trade Secret‘ category is preferred. If the
invention has a short life span or can be kept secret only for a small
period of time (a couple of years or so) or the probability of reverse
engineering is high once the invention is in the public domain, then
the ‗patent‘ category is preferred.
2.1.3. Rights Associated with Patents
As per the Court of Law, a patent owner has the right to decide
who may or may not use the patented invention. In other words, the
patent protection provided by the law states that the invention
cannot be commercially made, used, distributed, imported, or sold
by others without the patent owner's consent. 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
18
is restricting others from using the patent in any manner without his
prior permission. The patent holder may choose to sue the infringing
party to stop illegal use of the patent and also ask for compensation
for the unauthorized use.
2.1.4. Enforcement of Patent Rights
Enforcement is the process of ensuring compliance with laws,
regulations, rules, standards and social norms. Patent rights are
usually enforced by the judicial courts. The Court of Law has the
authority to stop patent infringement. However, the main
responsibility for monitoring, identifying and taking action against
infringers of a patent lies with the patent owner.
2.1.5. Inventions Eligible for Patenting
Patents may be granted for inventions/technologies in any field,
ranging from a paper clip or ballpoint pen to a nanotechnology chip
or a Harvard mouse (mouse with cancer genes).
It is a general belief that patents are awarded only to major
scientific breakthroughs. But, it is not true. In fact, the majority of
patents are granted to inventions displaying an improvement over
the existing invention. For example, many patents can be awarded
to a single molecule e.g. penicillins (an antibiotic that kills
microbes) and its derivatives. The derivatives are made by making
subtle changes in the structure of the penicillin resulting in
new/improved properties, such as acid stability or temperature
stability or killing a wide range of microbes (germs). The new
antibiotic molecules, known as second, third or fourth generation
penicillins can also be patented.
In our daily life, we use many patented items, such as
toothbrush, toothpaste, shoes, pen, eyeglasses, textiles, mobile
phones, wrist watch, bicycle, scooter, car, television, cold drinks,
beverages and many more. It is not uncommon that many products
contain several inventions (patents) e.g. the laptop computer
involves hundreds of inventions working together. Similarly, cars,
mobile phones and televisions have many patented components.
2.1.6. Non-Patentable Matters
In the ‗Patent Act, 1970, there are some exclusions (product and
processes) that cannot be patented, such as:
19
 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.
2.1.7. Patent Infringements
Once the patent is granted to the applicant, he owns the right to
use or exploit the invention in any capacity. If anyone uses the
invention without the prior permission of the owner, that act will be
considered an infringement of the invention. Infringements can be
classified into two categories:

20
 Direct Infringement - when a product is substantially close to
any patented product or in a case where the marketing or
commercial use of the invention is carried out without the
permission of the owner of the invention.
Indirect Infringement - When some amount of deceit or
accidental infringement happens without any intention of infringement.
If such an unlawful act has been committed, the patentee holds
the right to sue the infringer through judicial intervention. Every
country has certain laws to deal with such unlawful acts. Following
reliefs are made available to the patentee:
 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.
It is pertinent to mention that the Central government always
holds the rights (Section 100 of the Patent Act, 1970, Rule 32 of the
Patent Rules, 2003) to use the invention in the case of national
emergency or other circumstances of extreme urgency after
notifying the owner.
2.1.8. Avoid Public Disclosure of an Invention before Patenting
Generally, an invention that has been either published or
publicly displayed cannot be patented, as the claimed invention will
lose the ‗Novelty‘ criterion. However, under certain circumstances,
the Patents Act provides a grace period of 12 months for filing a
patent application from the date of its publication in a journal or
presentation in a reputed scientific society or exhibition.
Sometimes, disclosure of an invention before filing a patent
application is unavoidable, e.g. selling your invention to a potential
investor or a business partner who would like to know complete details
of the invention in order to judge its commercial value. In such a case,
it is advisable to sign a Non-Disclosure Agreement (NDA) or any other
confidential agreement to safeguards your interest.
2.1.9. Process of Patenting
In India, the process of grant of a patent is a lengthy procedure
that may take anywhere 3-4 years or more. The major steps involved
in this process are listed in figure 2.1.

21
 Figure 2.1: Flow chart of major steps involved
in the grant of a patent.

Filing of Application with IPO

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

Publishing

Examination

Grant of the Patent

2.1.9.1. Prior Art Search - Before an inventor embarks upon the

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

22
Patents’ Databases
 Indian Patent Advanced Search System
(InPASS- http://ipindiaservices.gov.in/publicsearch/).
 Patentscope(WIPO- https://www.wipo.int/patentscope/en/).

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

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

Non-Patent Literature (NPL)

 Scholarly publications: Handbooks, Textbooks, Withdrawn
Patents, Encyclopedias, Journals (IEEE, Research Gate,
Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s
PubMed, Conference Proceedings, Technical Reports, Public
Conferences, etc.
 Industry/trade publications: Industry reviews and public
disclosures (Social media, YouTube, Books, Magazines,
Datasheets, Blueprints, etc.).
 Others: Newspapers, Websites, Technology blogs,
Researchers‘ websites, etc.
Although, majority of NPL data is available freely on the public
forum, some of the journals are paid and can be accessed after
paying the subscription. Major Patent Offices such as the United
States Patent and Trademark Office's (USPTO), European Patent
Office (EPO), Japan Patent Office (JPO), etc. are maintaining in-
house NPL databases to make patents examination more effective.
2.1.9.2. Choice of Application to be Filed - Once a decision has
been made to patent the invention, the next step is, what kind of
application needs to be filed i.e. provisional patent application or
complete (Final) patent application - generally, the provisional
patent application is preferred for the following reasons:

23
 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.
2.1.9.3. Patent Application Forms - As per the Patent Act, 1970
(Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and sub-
rule (1) of rule 20, the application for the grant of patent is filed
using Form-1 (Fig. 2.2) and Form-2 (Fig. 2.3). The information
sought in Form-1 is general in nature i.e. Title of Application,
Names of Applicant(s) and Inventor(s), Type of Application
(Ordinary, Convention, PCT-NP (PCT- National Phase), Divisional,
Patent of Addition, etc.). Whereas Form-2 seeks technical
information and whether to file the provisional application or
complete the application. For ‗Provisional Application‘, only
‗Description of the Invention‘ and the ‗Abstract‘ is to be furnished.
Whereas, ‗Complete Application‘ requires ‗Description of the
Invention‘, ‗Abstract‘, ‗Claims‘ and the manner in which invention
has to be performed.
The ‗Claims‘ of the patent are a very crucial part of the
specifications because they define the actual boundary of the invention.
‗Claims‘ specify what is actually claimed by the invention and what is
being sought to be protected. It clearly describes what the patent does
and does not cover. The Claims are usually expressed as a declaration
of technical particulars articulated in legal terms. Claims can be
classified into two types a) Independent Claims (stand alone claim) and
b) Dependent Claims (dependent on independent claim). The Claims
must be drafted precisely and carefully in order to seek patent
protection and also to protect the invention against potential infringers.
Below mentioned are two important forms Form-1 and Form-2 for
filing the patent application (http://www.ip india.nic.in/writeread
data/Portal/IPORule/1_10_1_patents-amend ments-rules-2005.pdf).
24
 Figure 2.2: Form-1 (application for the grant of a patent).
"FORM 1 (FOR OFFICE USE ONLY)
THE PATENTS ACT 1970 (39 of 1970) and
THE PATENTS RULES, 2003
APPLICATION FOR GRANT OF PATENT
(See section 7, 54 and 135 and sub-rule (1) of rule 20)
Application No.
Filing date:
Amountof Feepaid:
CBR No:
Signature:
1. APPLICANT'S REFERENCE /
IDENTIFICATION NO. (AS ALLOTTED BY
OFFICE)
2. TYPE OF APPLICATION [Please tick (1 ) at the appropriate category]

Ordinary ( ) Convention ( ) PCT-NP ( )

Divisional ( ) Patent of Divisional ( ) Patent of Divisional ( ) Patent of
Addition ( ) Addition ( ) Addition ( )

25
3A APPLICANT(S)
Name in Full Nationality Countryof Address of the Applicant
Residence

House No.
Street
City
State
Country
Pin code
3B CATEGORY OF APPLICANT [Please tick ( ) at the appropriate category]

Natural Person ( ) Other than Natural Person

Small Entity ( ) Start-up ( ) Others ( )
4. INVENTOR(S) [Please tick (1 ) at the appropriate category]

Are all the inventor(s)

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

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

26
 Country of
Name in Full Nationality Address of the Inventor
Residence
House No.
Street
City
State
Country
Pin code
5. TITLE OF THE INVENTION
IN/PA No.
6. AUTHORISED REGISTERED Name
PATENT AGENT(S)
Mobile No.
Name
Postal Address
7. ADDRESS FOR SERVICE OF APPLICANT Telephone No.
IN INDIA Mobile No.
Fax No.
E-mail ID

27
 8. IN CASE OF APPLICATION CLAIMLNG PRIORITY OF APPLICATION FILED IN
CONVENTION COUNTRY, PARTICULARS OF CONVENTION APPLICATION

Application Name of the Title of the IPC (as classified in the

Country Filing date
number applicant invention convention country)

9. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF INTERNATIONAL

APPLICATION FILED UNDER PATENT CO-OPERATION TREATY (PCT)

International application number International filing date

10. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16, PARTICULARS OF

ORIGINAL (FIRST) APPLICATION
Original (first) application No. Date of filing of original (first) application
11. IN CASE OF PATENT OF ADDITION FILED UNDER SECTION 54, PARTICULARS OF MAIN
APPLICATION OR PATENT

Main application/patent No. Date of filing of main application

28
 12. DECLARATIONS
(i) Declaration by the inventor(s)
(In case the applicant is an assignee: the inventors) may sign herein below or the applicant may upload the
assignment or enclose the assignment with this application for patent or send the assignment by post/electronic
transmission duly authenticated within the prescribed period).
I/We,the above named inventor(s) is/are the true & first inventor(s) for this Invention and declare that the
applicant(s) herein is/are my/our assignee or legal representative.
(a) Date
(b) Signature(s)
(c) Name(s)
(ii) Declaration by the applicant(s) in the convention country
(In case the applicant in India is different than the applicant in the convention country: the applicant in
the convention country may sign herein below or applicant in India may upload the assignment from the
applicant in the convention country or enclose the said assignment with this application for patent or send the
assignment by post/electronic transmission duly authenticated within the prescribed period)
I/we, the applicant(s) in the convention country declare that the applicant(s) herein is/are my/our assignee or
legal representative.
(a) Date
(b) Signature(s)
(c) Name(s) of the signatory
Source: http://www.ipindia.nic.in

29
 Figure 2.3: Form-2 (provisional/complete specifications).
FORM 2
THE PATENT ACT 1970
(39 of 1970)
&
The Patents Rules, 2003
PROVISIONAL/COMPLETE SPECIFICATION
(See section 10 and rule 13)
1. TITLE OF THE INVENTION
2. APPLICANT(S)
(a) NAME:
(b) NATIONALITY:
(c) ADDRESS:
3. PREAMBLE TO THE DESCRIPTION
PROVISIONAL COMPLETE

The following specification The following specification

describes the invention. particularly describes the
invention and the manner in
which it is to be performed.
4. DESCRIPTION (Description shall start from next page)
5. CLAIMS (not applicable for provisional specification. Claims
should start with the preamble — ‗l/we claim‘ on separate page)
6. DATE AND SIGNATURE (to be given at the end of last page of
specification)
7. ABSTRACT OF THE INVENTION (to be given along with
complete specification on separate page)
Note: -
 Repeat boxes in case of more than one entry.
 To be signed by the applicant(s) or by authorized registered patent
agent.
 Name of the applicant should be given in full, family name in the
beginning.
 Complete address of the applicant should be given stating the postal
index no. /code, state and country.
 Strike out the column which is/are not applicable
Source: http://www.ipindia.nic.in

30
2.1.9.4 Jurisdiction of Filing Patent Application - India has four
offices for filing patent applications (Table 2.1). The applications
can be filed only in one of the offices based on the applicant‘s
residence or domicile or place of business or origin of the invention.
These are termed as jurisdictions to file patents.
Table 2.1: Jurisdiction to file a patent in India.

Region States Address

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

31
 Intellectual Property Office
Building,
CP-2 Sector V, Salt Lake
City
Rest of Kolkata-700091
Remaining States Phone: 033-23679101,
India
033-23671987
Fax: 033-23671988
Email: kolkata-
[email protected]
Source: http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm

For a foreign applicant, the address for service in India or place

of business of his patent agent determines the appropriate Patent
Office for filing a patent application. In the case of joint
applications, all the applicants are bestowed with equal rights and
consideration.
2.1.9.5. Publication - Once the patent application has been filed at
the Regional Patent Office, the patent application is kept secret for
18 months in the Patent Office. After the expiry of 18 months (from
the date of filing of the application or the priority claimed date,
whichever is earlier), the application is published in the Official
Journal of Patent Office (http://www.ipindia.nic.in/journal-
patents.htm). The purpose of publishing the application is to inform
the public about the invention. The publication of an application is a
mandatory step.
2.1.9.6 Pre-grant Opposition - If anybody has an objection to the
invention claimed in the patent application, he can challenge the
application by approaching the Controller of Patents within 6
months from the date of publication. It is termed as Pre-grant
Opposition. Depending on the outcome of the case, the patent
application may be rejected or recommended for the next step, i.e.
patent examination.

32
 Although the patent application is
kept secret for 18 months, but under Patentee: A person/
special circumstances, this period can Organization who
be reduced when the patentee/applicant owns the patent
(granted)
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.

2.1.9.7 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.
2.1.9.8. Grant of a Patent - After fulfilling all the requirements for
the grant of a patent, including all objections/queries raised by the
‗Patent Examiner‘ and the public at large, the patent is granted to
the applicant. The granted patent is published in the Official Journal
of the Patent Office. This journal is published every Friday and
contains information related to patent applications published under
section (u/s) 11A, post-grant publication, restoration of patent,
notifications, list of non-working patents and public notices issued
by the Patent Office.

33
 Figure 2.4: Flowchart for the process of filing a patent
application.

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

2.1.9.9. Validity of Patent Protection - The patent protection is

granted to an applicant for a limited period, generally 20 years,
starting from the date of filing of the application. Once a patent is
granted for an invention in India, the next vital step is to ensure that
it is renewed annually by paying Patent Renewal Fee as per Section
53, Rule 80 of the Indian Patents Act, till the expiry of the patent
grant period. Non-payment of Patent Renewal Fee might result in
the cancellation of the patent.
In some countries, patent protection may be extended beyond 20
years. The extension aims to compensate for the time expended on
the administrative approval procedure before products can be put on
the market. The time taken for this procedure means that the patent
owner may sometimes not be able to benefit from his right for a
considerable period after the grant of the patent.
2.1.9.10. Post-grant Opposition - Once the patent has been granted
by the Patent Office, it still can be challenged by anyone within one
year from the date of publication of the grant of the patent. The

34
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.
2.1.10. Commercialization of a Patent
The patent owner may grant permission to an
individual/organization/industry to make, use, and sell his patented
invention. This takes place according to agreed terms and conditions
between the involving parties. A patent owner may grant a license
to a third party for the reasons mentioned below:
 The patent owner has a decent job e.g. university professor and
has no desire or aptitude to exploit the patent on his own.
 The patent owner may not have the necessary manufacturing
facilities.
 The manufacturing facility is not able to meet the market
demand.
 The patent owner wishes to concentrate on one geographic
market; for other geographical markets, he may choose to
license the patent rights.
Once the patent is granted, the patentee (person holding the
rights to the patent) enjoys the exclusive rights to use the patented
invention. Only the patentee has the right to licence or deal with the
35
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 fulfilment of
following conditions:
 Reasonable requirements of the public concerning the patented
invention have not been satisfied.
 The patented invention is not available to the public at a
reasonable price.
 The patented invention is not worked in the territory of India.

2.1.11. Need for a Patent Attorney/Agent

In general, applicants can prepare their patent applications and
file them without assistance from a patent attorney. However, given
the complexity of patent documents, it is advisable to seek legal
assistance from a patent attorney/agent when drafting a patent
application. Furthermore, the legislation of many countries requires
that an applicant, whose ordinary residence or principal place of
business is outside the country, be represented by an attorney or
agent qualified in the country (which usually means an agent or
attorney who resides and practices in that country).
2.1.12. Can a Worldwide Patent be Obtained
There is no such term as ‗Universal Patent‘ or ‗World Patent‘ or
‗International Patent‘ as the patent rights are territorial. An
application for a patent must be filed with a Patent Office of the
36
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.
2.1.13. Do I Need First to File a Patent in India
Yes, in general, Indian residents are required to file the patent
application first in India. Subsequently, they may file for patent
protection in other countries. But for this, prior approval is needed
from the Patent Office. However, this approval can be waived off
under the following circumstances:
 The applicant is not an Indian resident.
 If 6 weeks have expired since the patent application was filed in
India by an Indian resident.
 If two or more inventors are working on an invention in a
foreign country and one of the inventors is an Indian resident.
The invention does not have a potential market in India and
hence does not wish to file the patent in India. In such a
scenario, the Indian resident has to seek Foreign Filing
Permission (FFP) from an Indian Patent Office.
 In case of international collaboration, if one part of the invention
originated in India and the inventor is an Indian resident, he has to
seek permission to file the patent outside India.
 If the invention is related to defense or atomic energy or utility
model, the inventor/s needs to seek permission from the Indian
Patent Office because inventions related to these domains are
not the subject matter of patentability in India.

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2.1.14. Patent Related Forms
There are over 30 patent-related forms. Some of them are
mentioned below.
Table 2.2: List of important patent application forms.

Form No. Title of Form

1 Application for a grant of a patent

2 Provisional/Complete specifications

7 Notice of opposition on grant of a patent

7A For filing a representation opposing grant of a patent

17 Application for compulsory license

18 Request for examination of the application for patent

21 Request for termination of compulsory license

22 Application for registration of patent agent

27 Statement regarding the working of the patented

invention on a commercial scale in India

30 Miscellaneous form to be used when no other form is

prescribed
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-
Patents-Rules-2003-Updated-till-23-June-2017.pdf

2.1.15. Fee Structure

As per the patent Act, 1970 and The Patents Rules (1972), the
requisite fee has been specified based on the type of form/s to be
submitted to the Office (Table 2.3). Electronically filed applications
are 10% cheaper than physical filing.

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 Table 2.3: Fee for obtaining a patent via electronic filing.
Small entity Others alone
alone or or with
Natural
with a natural
Item person/
natural person/
startup
person startup/
( )
/startup small entity
( ) ( )
Provisional/Complete
1,600 4,000 8,000
Specifications
Request for Early
2,500 6,250 12,500
Publication
Request for Examination 4,000 10,000 20,000
Express Request For
5,600 14,000 28,000
Examination
Renewal Fees (Annually)
3rd to 6th Year 800 2,000 4,000
6th to 10th Year 2,400 6,000 12,000
11th to 15th Year 4,800 12,000 24,000
16th to 20th year 8,000 20,000 40,000
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/ 1_11_1/
Fees.pdf

2.1.16. Types of Patent Applications

 Provisional Application - A patent application filed when the
invention is not fully finalized and some part of the invention is
still under experimentation. Such type of application helps to
obtain the priority date for the invention.
 Ordinary Application - A patent application filed with complete
specifications and claims but without claiming any priority date.
 PCT Application - An international application filed in
accordance with PCT. A single application can be filed to seek
patent protection and claim priority in all the member countries
of PCT.

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 Divisional Application - When an application claims more than
one invention, the applicant on his own or to meet the official
objection on the ground of plurality may divide the application
and file two or more applications. This application divided out
of the parent one is known as a Divisional Application. The
priority date for all the divisional applications will be the same
as that of the main (the Parent) Application (Ante-dating).
 Patent of Addition Application - When an invention is a slight
modification of the earlier invention for which the patentee has
already applied for or has obtained a patent, the applicant can go
for ‗Patent of Addition‘, if the modification in the invention is
new. Benefit - There is no need to pay a separate renewal fee for
the ‗Patent of Addition‘, during the term of the main patent. It
expires along with the main patent.
 Convention Application - If a patent application has been filed
in the Indian Patent Office, and the applicant wishes to file the
same invention in the one or more Convention countries (e.g.
Paris Convention) by claiming the same priority date on which
application was filed in India, such an application is known as
Convention Application. The applicant has to file Convention
Application within 12 months from the date of filing in India to
claim the same priority date.
2.1.17. Commonly Used Terms in Patenting
There are certain terms that are commonly used in the field of
patenting, as listed in table 2.4.
Table 2.4: Commonly used terms in the domain of patenting.
S. No. Term Definition
1. Inventor Creator of an invention
Organization/individual/industry that files
2. Applicant
a patent application or applies for a patent
A person/organization who owns the
3. Patentee
patent (granted)
Organization/individual/industry which
4. Licensee obtains a license of the patent from the
Patentee for commercialization purpose

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 A person in whose name patent has been
5. Assignee
assigned legally
The applicant is paying the annuity
6. In force (renewal fee) for the patent to keep it alive
(Active Patent)
The selling of a patent to an
Working of individual/party for commercial
7.
a Patent exploitation is called as working of a
patent

Patent Patent specification is a written

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

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2.1.18. National Bodies Dealing with Patent Affairs
There are many departments/organizations/bodies dealing with
various aspects of patents, namely, the Indian Patent Office (IPO),
Department for Promotion for Industry and Internal Trade (DPIIT);
Technology Information, Forecasting and Assessment Council
(TIFAC) and National Research Development Corporation
(NRDC). Above mentioned organizations are discussed in detail in
chapter 5.
2.1.19. Utility Models
In many cases, a new invention involves an incremental
improvement over the existing products, but this technical
improvement is not sufficient enough to pass the stringent criterion
of ‗Novelty‘ and ‗Non-obviousness‘ set aside for the grant of a
patent. Such small innovations can still be legally protected in some
countries and termed as ‘Utility Models’ or ‘Petty Patents’ or
‘Innovation Patents’. In this case, the criterion of ‗Novelty‘ and
‗Non-obviousness‘ are diluted or relinquished. But the requirement
of industrial application or utility is the same as that for patents.
Utility Model is a helpful tool for Micro, Small and Medium
Enterprises (MSME) since the grant of a ‗Utility Model‘ is usually
less rigorous and involves minimal cost. MSMEs do not have deep
pockets to carry out intensive R&D leading to the grant of patents.
But their innovations are good enough for improving their
products/processes and bringing more financial rewards. Such
inventions pass the requirements set aside for Utility Models but not
for patents. The life of the Utility Model is less as compared to the
patents. It varies from 7-15 years in different countries.
Nearly 80 countries, including France, Germany, Japan, South
Korea, China, Finland, Russian Federation and Spain, provide
protection for Utility Models under their IPR laws. India till date
does not recognize utility patents. If these small patents are
recognised under IP protection in India, it will catapult the number
of patents (filed and granted) on annual basis.
2.1.20. Additional Information
 The patent system in India is governed by the Patents Act, 1970
(No.39 of 1970) as amended by the Patents (Amendment) Act,

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