Module-3

Introduction To Intellectual Property,

Patents & Process of Patenting
 Module-3(5 Hours)
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.

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 Introduction To Intellectual Property
Intellectual Property Overview
• Intellectual Property (IP) is a unique form of property created by human intellect in arts,
literature, science, and trade.
• It is intangible, contrasting with familiar tangible assets like land, houses, gold, and cars.
• Intellectual Property Rights (IPR) are legal privileges granted to creators/inventors, exchanged
for disclosing creation processes.
• Special rights include use, sale, distribution, and the ability to restrict others from using the
invention without permission.
• Excludes rights over physical objects embodying the creation, emphasizing intellectual
creativity.

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 IP Branches
• IP comprises two main branches: "Copyrights and Related Rights" and "Industrial
Property Rights."
• "Copyrights and Related Rights" cover creative expressions in literature and art, such as
books, publications, architecture, wood/stone carvings, pictures, portrays, sculptures,
music, films, and computer-based software/database.
• "Industrial Property Rights" encompass Patents, Trademarks, Trade Services, Industrial
Designs, and Geographical Indications.

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 3.1. Role of IP in the Economic and Cultural Development of the Society
1. Creativity as the Keystone:
1. Crucial for societal progress.
2. Encouragement is a basic requirement for civilized societies.

2. Economic and Social Development:

1. Dependent on creativity.
2. Creativity drives economic and social advancements.

3. IPR as Incentivization:
Example: Impact on Farming Community:
1. IPR protects creators/innovators.  Compliance with TRIPS Agreement affects
2. Acts as an incentive for continuous creation. farmers.
3. Motivates others to generate new and novel ideas.  Inability to store seeds for the next crop.
 Multinational companies regulate seed prices,
4. Potential Negative Impact of Rigid IPR:
impacting majority of farmers.
1. Rigid IPR practices can hinder societal progress.

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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.
• Farmers' Rights under PVP&FR Act, 2001:
• Rights on seeds: Farmers entitled to save, use, share, exchange, or sell seeds.
• Right to protection against accusations of infringement shields farmers from legal consequences due
to ignorance in using others' plant varieties.

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 Farmers' Rights under PVP&FR Act, 2001:
Objectives
• To establish an effective system for the protection of plant varieties, the rights of
farmers and plant breeders and to encourage the development of new varieties of plants.
• To recognize and protect the rights of farmers in respect of their contributions made at
any time in conserving, improving and making available plant genetic resources for the
development of new plant varieties.
• To accelerate agricultural development in the country, protect plant breeders’ rights;
stimulate investment for research and development both in public & private sector for
the development new of plant varieties.
• Facilitate the growth of seed industry in the country which will ensure the availability
of high quality seeds and planting material to the farmers

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 Farmers' Rights under PVP&FR Act, 2001:
Rights under the Act
• Breeders’ Rights : Breeders will have exclusive rights to produce, sell, market,
distribute, import or export the protected variety. Breeder can appoint agent/
licensee and may exercise for civil remedy in case of infringement of rights.
• Researchers’ Rights : Researcher can use any of the registered variety under the
Act for conducting experiment or research. This includes the use of a variety as an
initial source of variety for the purpose of developing another variety but repeated
use needs prior permission of the registered breeder.

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 Farmers' Rights under PVP&FR Act, 2001:
Rights under the Act

Farmers' Rights
• A farmer who has evolved or developed a new variety is entitled for registration and protection in like manner as
a breeder of a variety;
• Farmers variety can also be registered as an extant variety;
• A farmer can save, use, sow, re-sow, exchange, share or sell his farm produce including seed of a variety
protected under the PPV&FR Act, 2001 in the same manner as he was entitled before the coming into force of
this Act provided farmer shall not be entitled to sell branded seed of a variety protected under the PPV&FR Act,
2001;
• Farmers are eligible for recognition and rewards for the conservation of Plant Genetic Resources of land races
and wild relatives of economic plants;
• There is also a provision for compensation to the farmers for non-performance of variety under Section 39 (2) of
the Act, 2001 and
• Farmer shall not be liable to pay any fee in any proceeding before the Authority or Registrar or the Tribunal or
the High Court under the Act.

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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.
• Farmers' Rights under PVP&FR Act, 2001:
• Rights on seeds: Farmers entitled to save, use, share, exchange, or sell seeds.
• Right to protection against accusations of infringement shields farmers from legal consequences due
to ignorance in using others' plant varieties.
• Copyright Act Exemptions:
• Use of copyrighted material for education and religious ceremonies exempted from standard
copyright rights.

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 Copyright Act, 1957:
• The Copyright Act, 1957 protects original literary, dramatic, musical and artistic
works and cinematograph films and sound recordings from unauthorized uses.
Unlike the case with patents, copyright protects the expressions and not the ideas.
There is no copyright in an idea.

• The Copyright Act, 1957 provides copyright protection in India. It confers copyright
protection in the following two forms: Economic rights of the author, and. Moral
Rights of the author.

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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.
• Farmers' Rights under PVP&FR Act, 2001:
• Rights on seeds: Farmers entitled to save, use, share, exchange, or sell seeds.
• Right to protection against accusations of infringement shields farmers from legal consequences due to
ignorance in using others' plant varieties.
• Copyright Act Exemptions:
• Use of copyrighted material for education and religious ceremonies exempted from standard copyright rights.

• Patent Revocation and Exceptions:

• Patents can be revoked for compulsory licensing by the government during emergencies or natural
calamities.
• Inventions/creations not in the societal interest are not registered for IP rights.

• Examples of IP Protections:
• Cloning of human embryos banned for IP protection.
• Creation of super microbial pathogens, with potential harm to human lives, is prohibited.

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• India, endowed with vast biodiversity and genetic resources, faces the challenge of safeguarding
its Traditional Knowledge (TK) amidst the influence of global innovations drawing upon these
resources.

• Conflicting Intellectual Property Rights (IPR) policies pose concerns, necessitating robust legal
infrastructure. To optimize benefits, initiatives like 'Make in India' and 'Atmanirbhar Bharat,'
coupled with a streamlined approach to patents and trademarks registration, hold the key to
harnessing the full potential of India's rich resources.

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 3.2. IP Governance
IP Governance in India
•Integral Component of Society:
• IP is integral component of human society, requiring dedicated agencies for guidelines,
implementation, and enforcement.
•Indian Agencies for IP:
• DPIIT governs all IP categories (excluding Plant Variety and Farmers' Rights Act) under
the Ministry of Commerce and Industry, GoI.
• Other organizations promoting the patent ecosystem in India include TIFAC, NRDC, and
CIPAM.

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 3.2. IP Governance
• International Framework – WIPO [World Intellectual Property Organization]

• Need for International Standards:

• Hassle-free global exchange of IP activities requires minimum international standards.

• Role of WIPO:
• United Nations-established organization for international IP standards.
• Governs international filing and registration through conventions and treaties like Paris Conventions,
PCT, Rome Convention, Berne Convention.

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 3.3. IP as a Global Indicator of Innovation
• Importance of Intellectual Property in Innovation Index
• IP, a Key Indicator:
• Intellectual Property, particularly patents, is a vital component in evaluating a nation's
innovation index. It serves as a key indicator reflecting the innovation landscape.
• Inclusion in Global Rankings:
• Global ranking organizations incorporate IP, or a subset of IP, as a parameter to assess the
Science, Technology, and Innovation (STI) ecosystem of a nation.
• Example - Scimago 2020 Report:
• The Scimago 2020 report, an online portal ranking journals and countries using Scopus
data, placed India 4th in 'Research Publications' but 50th in 'Intellectual Property Rights.'

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 3.4. Origin of IP
• Historical Evolution of Intellectual Property
• Early Instances of IP:
• Originating around 500 BCE in Sybaris, Greece, a rudimentary form of IP was practiced. Natives were granted a
year's protection for creating "any new improvement in luxury."

• Medieval Europe's IP Governance:

• Medieval Europe saw the emergence of a practical approach to IP governance.
• In 1623, Britain passed Intellectual Property Legislation, allowing guilds to innovate and trade. However, public
resentment led to the replacement with the 'Statute of Monopolies,' granting rights to the original creator/inventor
for 14 years.

• Strengthening Copyrights:
• The 'Statute of Anne' (1710) aimed at reinforcing copyrights. Authors gained rights for recreation and distribution
of their work, with the option for renewal for another 14 years.

• Global Adoption of IP Legislation:

• By the late 18th and early 19th centuries, nearly every country began enacting IP legislation to safeguard novel
inventions and creations.

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 3.5. History of IP in India
3.5.1. 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:
• 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.

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 3.5. History of IP in India
3.5.1. Patents

“ 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’ ’’

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 3.5. History of IP in India
“ 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".

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 3.5. History of IP in India
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’

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 3.5. History of IP in India
Punkah- is a type of fan.
In India, the punkhawallah or
pankha wallah was the servant
who operated the fan, often using a
pulley system

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 3.5. History of IP in India
• 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
taken away with the introduction of ‘The Indian Patents and Designs Act, 1911’ (Act II of 1911).

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 3.5. History of IP in India
• ‘The Indian Patents and Designs Act, 1911’ (Act II of 1911)- In the Indian Sub-continent, the
Patents and Designs Act was enacted in 1911 mainly on the basis of the principles laid down in the
Statute of Monopolies, Patents, Design and Trade Marks Act, 1883 and Patents and Designs Act,
1907. Since enactment of the law, the concepts of patents and designs have undergone enormous
development through decisions of courts around the world.

• The law covers subjects of copyright, enforcement of intellectual property rights, industrial designs,
intellectual property regulatory body and patents (inventions)
• The formal of the act is divided among the following parts.
• Part I: Patents (Sections 3 to 42),
• Part II: Designs (Sections 43 to 54),
• Part III: General (Sections 55 to 81).
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 3.5. History of IP in India
• After India got independence in 1947,
many patent experts felt the need to review
the Indian Patents and Designs Act, 1911,
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.

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 3.5. History of IP in India
• The committee submitted a plethora of recommendations, including:
1. Misuse of patents rights needs to be prevented.
2. 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.
3. Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on the lines of the
UK Patent Act.

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 3.5. History of IP in India
Further, In
• 1950: Recommendations introduced in Act XXXII.
• 1952: Amendment (Act LXX(70)) for compulsory licensing in specific areas.
• 1953: Bill based on amendments rejected.
• 1957: Committee formed under Justice N. Rajagopala Ayyangar to strengthen Indian Patent
Law.

Service Term - May 4, 1968-December 31, 1975

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 3.5. History of IP in India
• The Committee's Report released in 1959- 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.
Further,
 1965: Revised patent legislation submitted to Lok Sabha.
 1970: Introduction of Patents Act, superseding previous laws.
 After many hiccups, clarifications and modifications the Patents Act, 1970 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.
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 3.5. History of IP in India
• In 1995 India signed TRIPS(Trade-Related Aspects of Intellectual Property Rights)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 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.

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 3.5. History of IP in India
• 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.

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 3.5. History of IP in India
• 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.

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 3.5. History of IP in India
• India is a member of all prominent Conventions and Treaties related to the facilitation of the
inventors for international filing and protecting the rights over the inventions globally.
• International Agreements

 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

 Focus on facilitating international filing and protecting global invention rights.

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 3.5. History of IP in India
 TRIPS Agreement (1995)- is an international legal agreement between all the member nations of the
World Trade Organization (WTO).

 Paris Convention (1883)- signed in Paris, France, on 20 March 1883, was one of the first intellectual property
treaties. It established a Union for the protection of industrial property.

 PCT(Patent Cooperation Treaty) (1970)- is an international patent law treaty, concluded in 1970. It provides
a unified procedure for filing patent applications to protect inventions in each of its contracting states. A
patent application filed under the PCT is called an international application, or PCT application.

 Budapest Treaty (1977)- is an international treaty signed in Budapest, Hungary, on April 28, 1977. It entered
into force on August 19, 1980,[5] and was later amended on September 26, 1980. The treaty is administered by
the World Intellectual Property Organization (WIPO).

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 Summing Up the Key Points
Major Amendments in History of IP Laws

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 3.5. Major Amendments in History of IP Laws

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 3.5. Major Amendments in History of IP Laws

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 3.5. Major Amendments in History of IP Laws

Source: http://www.ipindia.nic.in/history-of-indian-patent-system.htm

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 3.2.3 To Patent or Not to Patent an Invention
Some of the Scientific Inventions Examples

Trade Secret:
1. Coca-Cola Formula: The formula for Coca-Cola is one of the most famous trade secrets in the world.
The specific recipe and ingredients are kept confidential to maintain a competitive advantage in the
beverage market.
2. Google's Search Algorithm: Google's search algorithm is a complex and valuable trade secret. The
exact details of how the algorithm works are not disclosed to the public, giving Google a competitive
edge in the search engine industry.
3. KFC's Original Recipe: The original recipe of Kentucky Fried Chicken (KFC) is a closely guarded
trade secret. The blend of herbs and spices used to season the chicken is known only to a select few
within the company.

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 3.2.3 To Patent or Not to Patent an Invention
Some of the Scientific Inventions Examples

2. Patent:
1. Penicillin(Alexander Fleming): Fleming's discovery of penicillin, the first widely used antibiotic, was
patented in 1945. The patent provided exclusive rights for the production of penicillin, allowing for
controlled manufacturing and distribution.
2. Tesla'sElectric Power System (Nikola Tesla): Tesla held numerous patents related to alternating
current (AC) electricity, electric power systems, and wireless communication. His inventions and
innovations laid the foundation for modern electrical power distribution.
3. CRISPR-Cas9 Gene Editing Technology: The revolutionary gene-editing technology CRISPR-Cas9,
developed by Jennifer Doudna and Emmanuelle Charpentier, is protected by numerous patents. This
technology allows precise modification of genes and has wide-ranging applications in medicine,
agriculture, and beyond.

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 3.2.7 Non-Patentable Matters

In the Patent Act, 1970, there are some exclusions (product and processes) that cannot be
patented, such as:
1. Invention contrary to public morality - a method for human cloning, a method for
gambling.
2. Mere discovery - finding a new micro-organism occurring freely in nature, laws of gravity.
3. 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.
4. Frivolous invention - dough supplemented with herbs, merely changing the taste of the
dough, 100 years calendar, bus timetable.
5. Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to a bucket.
6. 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.
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 3.2.7 Non-Patentable Matters [Contd..]

In the Patent Act, 1970, there are some exclusions (product and processes) that cannot be
patented, such as:
7. 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.
8. Topography of integrated circuits - protection of layout designs of integrated circuits is
provided separately under the Semiconductor Integrated Circuit Layout Designs Act, 2000.
9. 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.
10. 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.

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 3.2.8 Patent Infringements
 Once the patent is granted to the applicant, he owns the right to use the invention in
any capacity.
 If any other 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:
1. 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.
2. 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.

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 3.2.8 Patent Infringements [Contd..]

Following reliefs are made available to the patentee:

 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.

It is to note that “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.”

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 3.2.9 Avoid Public Disclosure of an Invention before Patenting

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 Process of Patenting involves

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 Process of Patenting involves

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.

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 Process of Patenting involves

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 Process of Patenting involves

10. Commercialization of a Patent – [Contd..]

 Only the patentee has the right to licence or deal with the patent for any deliberations
 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 (Deed)
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.

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 Process of Patenting involves

11. Need for a Patent Attorney/Agent

 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).

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 Process of Patenting involves
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 country in
which one wishes to seek patent protection.
 But, 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.
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 Process of Patenting involves

13. Do I Need First to File a Patent in India

 In general, Indian residents are required to file the patent application first in India. Subsequently, they may file
for patent protection in other countries.
 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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14. Patent Related Forms

 There are over 30 patent-related forms.
 Some of them are mentioned aside.

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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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16. Types of Patent Applications

1. 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.
2. Ordinary Application - A patent application filed with complete specifications and claims but
without claiming any priority date.
3. 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
4. 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).

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16. Types of Patent Applications [Contd..]

5. 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.
6. 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.

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17. Commonly Used Terms in Patenting

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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)
 National Research Development Corporation (NRDC).

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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 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 such 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 process and involves minimal cost.
 The life of the Utility Model is less as compared to the patents.
 It varies from 7-15 years in different countries.
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19. Utility Models

 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.

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 Thank You

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