22 RESEARCH METHODOLOGY & IPR

MODULE-3
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
software/databases. The Industrial Property Rights refer to the Patents, Trademarks, Trade Services, Industrial
Designs and Geographical Indications.
Role of IP in the Economic and Cultural Development of the Society
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 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 homegrown brands, and easy as well
as accessible approach to patents and trademarks registration, it is possible to reap the benefits of our resources.
IP Governance
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.

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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 (publicly
available online portal which ranks journals and countries based on the data taken from Scopus) 2020 report ranked
India at 4th position in the parameter of a number of ‘Research Publications’, and 50th position in the parameter of
Intellectual Property Rights. The global ranking can be improved by sensitizing the teaching and scientific
communities about the importance of IP and creating infrastructure for the same in the institutes of higher learning.
Origin of IP
Though there is no official record of the origin of IP, it is believed that a rudimentary form of IP was being
practised around 500 Before the Common Era (BCE) in Sybaris, a state of Greece. The natives of Sybaris were granted
a year ‘s protection for using their intellect to create ―any new improvement in luxury. A practical and pragmatic
approach for IP governance started taking shape in medieval Europe. In 1623, Britain passed an Intellectual Property
Legislation which entitled guilds (association of artisans or merchants) to create innovations and bring them to market
for trade purposes. However, this legislation brought a lot of resentment amongst the public, and thus was replaced
by the Statute of Monopolies, which gave the rights to the original creator/inventor for 14 years. Another legislation,
Statute of Anne, was passed by the British parliament in 1710. This legislation aimed at strengthening copyrights by
providing rights to the authors for recreation and distribution of their work. The work could also be renewed for
another 14 years. By the end of the 18th century and the beginning of the 19th century, almost every country started
laying down IP legislation to protect their novel inventions and creations.
History of IP in India
Patents:
The history of the Indian patent system dates back to the 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
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
• Enhancing the term of the patent from 14 years to 16 years.
• Filing of Provisional Application and submission 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, 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.

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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.
Rajagopala Ayyangar 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/),
IPO (Act/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 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 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.
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

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the Imperial Copyright Act (1911) of the UK. An Act for criminal sanction for an infringement was introduced. The
third phase of the copyright’s 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.
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).
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.
Geographical Indications
India, as a member of WTO, enacted the Geographical Indications of Goods (Registration and Protection)
Act, 1999. It came into force with effect from 15th September 2003. Geographical Indicators have been defined under
Article 22 (1) of the WTO Agreement on TRIPS.
Trade Secrets
Although India has no specific Trade Secrets Laws, Indian courts have upheld Trade Secrets protection
under various statutes, including contract law, Copyright law, the principles of equity and the common law action of
breach of confidence (which in effect amounts to a breach of contractual obligation).
Semiconductor Integrated Circuits and Layout Designs
In the 21st century, Information Technology (IT) has revolutionized the economic and societal growth of
the world economy. The rapid and tremendous scientific advancements in the field of IT resulted in the creation of a
new class of IP called the Layout-Design of the Semiconductor Integrated Circuits. Various organizations, including
WTO and TRIPS Agreement laid down rules and regulations regarding the protection of Semiconductor Integrated
Circuits and Layout Designs (SICLD) India being a member of the WTO also passed an Act called the SICLD Act,
2000. This Act is TRIPS compliant and fulfils the conditions of the TRIPS agreement (Articles. 35 to 38) concerning
the protection of SICLD.
Plant Varieties
Till 1970s, not much emphasis was laid on patentable matter originating from animals and plants. However,
microbes and microbial products/processes were patentable. To include all kinds of biological materials under the
ambit of patent laws, a decision to enact a new sui generis law under the International Convention for the Protection
of New Varieties of Plants (UPOV, 1978) and UPOV, 1991 was taken. These decisions were taken to address
environmental and public interest concerns. The Indian Patents Act, 1970 excludes ―plants and animals in whole or
any part thereof other than microorganisms‖ from patentability. To comply with the mandate of Article 27.3 (b) of
TRIPS, India adopted the PPV&FR Act, 2001 as a sui generis regime protecting not only new plant varieties but also
farmer’s rights.
Traditional Knowledge
It is the ancient and indigenous knowledge held by any community or a group of people. In olden times it was not
recorded anywhere and was available only in oral form. So, Traditional Knowledge (TK) was verbally passed on to
future generations. TK 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

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knowledge/skills and so on. Though there is no official record but some forms of TK find appearance in the culture,
stories, legends, folklore, rituals, songs, etc. Previously, there was no mechanism available to protect TK, but now, it
has been recognized as IPR under TRIPS Agreement. The Government of India has created a digital library termed
as Traditional Knowledge Digital Library (TKDL) as a repository of 2,50,000 formulations of various systems of
Indian medicine.
Industrial Designs
A design is a creation of the human mind, which is appealing to the eyes and attracts the attention of the
viewers. The need to protect Industrial Designs (ID) was recognized in the 18th century and the Indian legislation
enacted the Patterns and Designs Act in 1872 for the first time. The Act was enacted to protect the rights over the
creation of the designs and novel patterns by the inventors. The Act was replaced by the British Patents and Designs
Act in 1907, which later became the basis for the Indian Patents and Designs Act, 1911. In 1970, a separate Act was
enacted for the patent, i.e. the Patent Act, 1970. The Indian Patents and Designs Act, 1911, remained in force for
designs only. Finally, in the year 2000, a dedicated Act for the ID was passed, which came into force in 2001.
Biodiversity Conservation
Biodiversity is an inseparable part of human livelihood. The mention of protecting biodiversity can be found
in the times of Chandragupta and Ashoka. In those eras, the trees and forest were classified, such as reserved category.
In 1927 the Indian Forest Act and later on the Wildlife Protection Act, 1972 was enacted to provide legal protection
to biodiversity. In 1988, the National Forest Policy was passed, which brought revolutionary changes in the
conservation and management of biodiversity. The Acts and policies in force to protect the environment and
biodiversity in India include Mining and Mineral Development Regulation Act, 1957; Water (prevention and control
of pollution) Act, 1974; Forest Conservation Act, 1980; Biological Diversity Act, 2002; Scheduled Tribes and other
Traditional Forest Dwellers (recognition of rights) Act, 2006; National Biodiversity Action Plan, 2009; National
Environment Policy, 2006 and a few more.
Major Amendments in IP Laws and Acts in India
In order to fill the gaps existing in the IP Laws and Acts and also to introduce new guidelines/directions
based on the current scenario (socially and politically), each nation keeps on updating the concerned IP Laws and
Acts. Some of the salient amendments made in Indian Laws and Acts on IPR are mentioned below:
Table: History of Laws and Acts pertaining to intellectual property in India

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Source: http://www.ipindia.nic.in/history-of-indian-patent-system.htm
Patents
A patent is an exclusive right granted for an innovation that generally provides a new way of doing something
or offers a new technical solution to a problem. The exclusive right legally protects the invention from being copied
or reproduced by others. In return, the invention must be disclosed in an application in a manner sufficiently clear
and complete to enable it to be replicated by a person with an ordinary level of skill in the relevant field.
Conditions for Obtaining a Patent Protection
There is a set criterion, as provided in this section of the Patents Act, 1970, which must be fulfilled for a
product or a process to qualify for the grant of a patent. The criterion encompasses:
Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application is new and not known to
anybody in the world. In other words, the innovation is
a. not in the knowledge of the public,
b. not published anywhere through any means of publication and
c. not be claimed in any other specification by any other applicant.
Inventive step - Not obvious to the person (s) skilled in the art. The innovation is
a. a technical advancement over the existing knowledge,
b. possesses economic significance and,
c. not obvious to a person skilled in the concerned subject.
Capable of industrial application - For the benefit of society. The invention is capable of being made or used in
any industry.
To Patent or Not to Patent an Invention
Once an invention has been developed, the inventor has to decide whether to exploit the invention for
personal benefits as provided by the statutory laws of the country or put it in the public domain. By and large, the
inventor prefers the former option. Only a miniscule of inventions are placed in the public domain without claiming
any benefits.
In the latter case, anybody can exploit the innovation for commercial or societal benefit without paying any
money to the inventor. If the owner of an invention wishes to seek monetary gains, he can choose from either of the
two options, i.e. patenting or Trade Secret. If the inventor is absolutely sure of maintaining the secrecy of invention
for a very long period (maybe 100 years or more) and the probability of reverse engineering of the technology is nil
or very low, then the Trade Secret category is preferred. If the invention has a short life span or can be kept secret
only for a small period of time (a couple of years or so) or the probability of reverse engineering is high once the
invention is in the public domain, then the patent category is preferred.

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Rights Associated with Patents

As per the Court of Law, a patent owner has the right to decide who may or may not use the patented
invention. In other words, the patent protection provided by the law states that the invention cannot be commercially
made, used, distributed, imported, or sold by others without the patent owner's consent. The patent owner may permit
other parties to use the invention on mutually agreed terms. As a matter of fact, the patent rights are negative rights
as the owner is restricting others from using the patent in any manner without his prior permission. The patent holder
may choose to sue the infringing party to stop illegal use of the patent and also ask for compensation for the
unauthorized use.
Enforcement of Patent Rights
Enforcement is the process of ensuring compliance with laws, regulations, rules, standards and social norms.
Patent rights are usually enforced by the judicial courts. The Court of Law has the authority to stop patent
infringement. However, the main responsibility for monitoring, identifying and taking action against infringers of a
patent lies with the patent owner.
Inventions Eligible for Patenting
Patents may be granted for inventions/technologies in any field, ranging from a paper clip or ballpoint pen
to a nanotechnology chip or a Harvard mouse (mouse with cancer genes). It is a general belief that patents are awarded
only to major scientific breakthroughs. But it is not true. In fact, the majority of patents are granted to inventions
displaying an improvement over the existing invention. For example, many patents can be awarded to a single molecule
e.g. penicillin (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
penicillin can also be patented. In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes,
pen, eyeglasses, textiles, mobile phones, wrist watch, bicycle, scooter, car, television, cold drinks, beverages and many
more. It is not uncommon that many products contain several inventions (patents) e.g. the laptop computer involves
hundreds of inventions working together. Similarly, cars, mobile phones and televisions have many patented
components.
Non-Patentable Matters
In the Patent Act, 1970, there are some exclusions (product and processes) that cannot be patented, such as:

• Invention contrary to public morality - a method for human cloning, a method for gambling.
• Mere discovery - finding a new micro-organism occurring freely in nature, laws of gravity.
• Mere discovery of a new form of a known substance - use of aspirin for heart treatment. Aspirin was
patented for reducing fever and mild pains.
• Frivolous invention - dough supplemented with herbs, merely changing the taste of the dough, 100 years
calendar, bus timetable.
• Arrangement or rearrangement - an umbrella fitted with a fan; a torch attached to a bucket.
• Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 - inventions relating to
compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified
by the Central Government from time to time.
• Literary, dramatic, musical, artistic work - books, sculptures, drawings, paintings, computer programmes,
mathematical calculations, online chatting method, method of teaching, method of learning a language as
they are the subject matter of Copyright Act. 1957.
• Topography of integrated circuits - protection of layout designs of integrated circuits is provided
separately under the Semiconductor Integrated Circuit Layout Designs Act, 2000.
• Plants and animals - plants and animals in whole or any part including seeds, varieties and species and
essentially biological processes for the production or propagation of plants and animals are excluded from
the scope of protection under patents.
• Traditional knowledge - an invention which in effect is traditional knowledge or which is an aggregation
or duplication of known properties of traditionally known components are also excluded.
Patent Infringements
Once the patent is granted to the applicant, he owns the right to use or exploit the invention in any capacity.
If anyone uses the invention without the prior permission of the owner, that act will be considered an infringement
of the invention. Infringements can be classified into two categories:

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a. 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.
b. 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.
Avoid Public Disclosure of an Invention before Patenting
Generally, an invention that has been either published or publicly displayed cannot be patented, as the
claimed invention will lose the Novelty criterion. However, under certain circumstances, the Patents Act provides a
grace period of 12 months for filing a patent application from the date of its publication in a journal or presentation
in a reputed scientific society or exhibition. Sometimes, disclosure of an invention before filing a patent application is
unavoidable, e.g. selling your invention to a potential investor or a business partner who would like to know complete
details of the invention in order to judge its commercial value. In such a case, it is advisable to sign a Non-Disclosure
Agreement (NDA) or any other confidential agreement to safeguards your interest.
Process of Patenting
In India, the process of grant of a patent is a lengthy procedure that may take anywhere 3-4 years or more.
The major steps involved in this process are listed in figure below.

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

Process of Patenting
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.

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Non-Patent Literature (NPL)

• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents, Encyclopaedias, 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 inhouse NPL
databases to make patents examination more effective.
Choice of Application to be Filed
Once a decision has been made to patent the invention, the next step is, what kind of application needs to
be filed i.e. provisional patent application or complete (Final) patent application - generally, the provisional patent
application is preferred for the following reasons:

• It is cheaper, takes less time, and involves fewer formalities.

• Any improvements made in the invention after the filing of the provisional application can be included in
the final application. In other words, the provisional application does not require complete specifications of
the inventions. The application can be filed even though some data is yet to be collected from pending
experiments.
• A provisional application allows you to secure a priority date for the patent applied.
However, it is mandatory to file the complete patent application within one year of the filing of the provisional
application; otherwise, the application stands rejected.
Patent Application Forms - As per the Patent Act, 1970
(Section 39) and the Patents Rules, 2003 (Rule 7, 54, 135 and subrule (1) of rule 20, the application for the
grant of patent is filed using Form-1 (Fig attached and Form-2 (Fig attached). 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 (standalone 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)

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Figure: Form-1 (application for the grant of a patent)

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Figure: Form-2 (provisional/complete specifications)

Jurisdiction of Filing Patent Application
India has four offices for filing patent applications. 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: Jurisdiction to file a patent in India

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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.
Publication
Once the patent application has been filed at the Regional Patent Office, the patent application is kept secret
for 18 months in the Patent Office. After the expiry of 18 months (from the date of filing of the application or the
priority claimed date, whichever is earlier), the application is published in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journalpatents.htm). The purpose of publishing the application is to inform the public
about the invention. The publication of an application is a mandatory step.
Pre-grant Opposition
If anybody has an objection to the invention claimed in the patent application, he can challenge the
application by approaching the Controller of Patents within 6 months from the date of publication. It is termed as
Pre-grant Opposition. Depending on the outcome of the case, the patent application may be rejected or recommended
for the next step, i.e. patent examination. Although the patent application is kept secret for 18 months, but under
special circumstances, this period can be reduced when the patentee/applicant plans to sell or license the patent or
seek an investor). For this, the applicant has to fill a Form-9 and submit it to the Controller General.
Examination
Patent examination is a critical step in the process of grant of a patent. All the important criteria (novel,
inventive step, etc.) are scrutinized by the professionals depending on the content of the invention. Usually, the
examiner raises certain queries/doubts which need to be addressed by the inventors. Once the examiner is satisfied
with the answers received from the inventors, the application is recommended for the grant of a patent. It is pertinent
to mention that a patent application is not examined automatically after clearing the publication stage. The applicant
or his representative has to make a request for examination of the patent by filing Form-18A and submitting the same
within 48 months from the date of filing of the application.
Grant of a Patent
After fulfilling all the requirements for the grant of a patent, including all objections/queries raised by the
Patent Examiner and the public at large, the patent is granted to the applicant. The granted patent is published in the
Official Journal of the Patent Office. This journal is published every Friday and contains information related to patent
applications published under section (u/s) 11A, post-grant publication, restoration of patent, notifications, list of non-
working patents and public notices issued by the Patent Office.

Figure: Flowchart for the process of filing a patent application

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Validity of Patent Protection

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

• The applicant for the patent wrongfully obtained the invention or any part of the invention.
• The invention claimed has been published before the priority date.
• The invention claimed was publicly known/used before the priority date.
• The invention claimed is obvious and does not involve an inventive step.
• The subject of the claim is not patentable as per Chapter II of the Patent Act, 1970.
• The details/specifications of the invention do not sufficiently and clearly describe the invention
Commercialization of a Patent
The patent owner may grant permission to an individual/organization/industry to make, use, and sell his
patented invention. This takes place according to agreed terms and conditions between the involving parties. A patent
owner may grant a license to a third party for the reasons mentioned below:

• The patent owner has a decent job e.g. university professor and has no desire or aptitude to exploit the patent
on his own.
• The patent owner may not have the necessary manufacturing facilities.
• The manufacturing facility is not able to meet the market demand.
• The patent owner wishes to concentrate on one geographic market; for other geographical markets, he may
choose to license the patent rights.
Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the exclusive rights
to use the patented invention. Only the patentee has the right to licence or deal with the patent for any deliberations.
Although, the validity of the granted patent is for 20 years (from the date of filing a patent application), but the
patentee is required to furnish information (Form-27), on an annual basis relating to the commercialization/selling of
the patent. It is called as Working/Licensing of the Patent. The licensing of a patent can be exclusive or non-exclusive.
In an Exclusive Licence, the patent is sold to only one individual/organization for a fixed time period. During this
time period, no other person or entity can exploit the relevant IP except the named licensee. In Non-Exclusive
Licence, a patentee can sell his patent rights to as many individuals/parties as he likes. If the patentee is not able to
commercialize his patent within three years from the date of the grant of a patent, any person may submit an
application to the Controller of Patents for grant of Compulsory Licensing (of the patent), subject to the 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
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).

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Can a Worldwide Patent be Obtained

There is no such term as Universal Patent or World Patent or International Patent as the patent rights are
territorial. An application for a patent must be filed with a Patent Office of the country in which one wishes to seek
patent protection. Unfortunately, this option becomes laborious, cumbersome, time consuming and expensive if one
wishes to file a patent application in many countries. To ease out this issue, many Regional Offices have been
established which receive patent applications on behalf of a group of nations e.g. European Patent Office and African
Regional Intellectual Property Organization. A single application is sufficient to cover many nations that are members
of a particular regional office/organization. However, if one wishes to seek patent protection in several countries
worldwide, it is preferred to file an international patent under the Patent Cooperation Treaty (PCT). The only
condition is that the applicant’s country should be a member of PCT. India, along with over 190 nations, is a member
of PCT.
Do I Need First to File a Patent in India
Yes, in general, Indian residents are required to file the patent application first in India. Subsequently, they
may file for patent protection in other countries. But for this, prior approval is needed from the Patent Office.
However, this approval can be waived off under the following circumstances:

• The applicant is not an Indian resident.

• If 6 weeks have expired since the patent application was filed in India by an Indian resident.
• If two or more inventors are working on an invention in a foreign country and one of the inventors is an
Indian resident. The invention does not have a potential market in India and hence does not wish to file the
patent in India. In such a scenario, the Indian resident has to seek Foreign Filing Permission (FFP) from an
Indian Patent Office.
• In case of international collaboration, if one part of the invention originated in India and the inventor is an
Indian resident, he has to seek permission to file the patent outside India.
• If the invention is related to defence or atomic energy or utility model, the inventor/s needs to seek
permission from the Indian Patent Office because inventions related to these domains are not the subject
matter of patentability in India.
Patent Related Forms
There are over 30 patent-related forms. Some of them are mentioned below
Table: List of important patent application forms

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. Electronically filed applications are 10% cheaper than physical filing.

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Table: Fee for obtaining a patent via electronic filing

Types of Patent Applications

• Provisional Application - A patent application filed when the invention is not fully finalized and some part
of the invention is still under experimentation. Such type of application helps to obtain the priority date for
the invention.
• Ordinary Application - A patent application filed with complete specifications and claims but without
claiming any priority date.
• PCT Application - An international application filed in accordance with PCT. A single application can be
filed to seek patent protection and claim priority in all the member countries of PCT.
• Divisional Application - When an application claims more than one invention, the applicant on his own or
to meet the official objection on the ground of plurality may divide the application and file two or more
applications. This application divided out of the parent one is known as a Divisional Application. The priority
date for all the divisional applications will be the same as that of the main (the Parent) Application (Ante-
dating).
• Patent of Addition Application - When an invention is a slight modification of the earlier invention for
which the patentee has already applied for or has obtained a patent, the applicant can go for Patent of
Addition, if the modification in the invention is new. Benefit - There is no need to pay a separate renewal
fee for the Patent of Addition, during the term of the main patent. It expires along with the main patent.
• Convention Application - If a patent application has been filed in the Indian Patent Office, and the
applicant wishes to file the same invention in the one or more Convention countries (e.g. Paris Convention)
by claiming the same priority date on which application was filed in India, such an application is known as
Convention Application. The applicant has to file Convention Application within 12 months from the date
of filing in India to claim the same priority date.
Commonly Used Terms in Patenting
There are certain terms that are commonly used in the field of patenting, as listed in table.
Table: Commonly used terms in the domain of patenting

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National Bodies Dealing with Patent Affairs

There are many departments/organizations/bodies dealing with various aspects of patents, namely, the
Indian Patent Office (IPO), Department for Promotion for Industry and Internal Trade (DPIIT); Technology
Information, Forecasting and Assessment Council (TIFAC) and National Research Development Corporation
(NRDC).
Utility Models
In many cases, a new invention involves an incremental improvement over the existing products, but this
technical improvement is not sufficient enough to pass the stringent criterion of Novelty and Non-obviousness set
aside for the grant of a patent. Such small innovations can still be legally protected in some countries and termed as
‘Utility Models’ or ‘Petty Patents’ or ‘Innovation Patents’. In this case, the criterion of Novelty and Non-
obviousness are diluted or relinquished. But the requirement of industrial application or utility is the same as that for
patents.
Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since the grant of a Utility
Model is usually less rigorous and involves minimal cost. MSMEs do not have deep pockets to carry out intensive
R&D leading to the grant of patents. But their innovations are good enough for improving their products/processes
and bringing more financial rewards. Such inventions pass the requirements set aside for Utility Models but not for
patents. The life of the Utility Model is less as compared to the patents. It varies from 7-15 years in different countries.
Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland, Russian Federation and Spain,
provide protection for Utility Models under their IPR laws. India till date does not recognize utility patents. If these
small patents are recognised under IP protection in India, it will catapult the number of patents (filed and granted) on
annual basis.

Dr K R N Aswini