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Section 1. Copyright and Related Rights

Section 2. Trade Marks
Section 3. Geographical Indications
Section 4. Industry Designs
Section 5. Patents
Sectiopn 6. Layout designs of Integrated Circuits
Section 7. Protection of Undisclosed Information
Section 8. Control of Anti-Competitive Practices in Contractual Licences
Part III: Enforcement of Intellectual Rights
Part IV: Acquisition and maintenance of Intellectual property rights Inter-parts procedures
Part V: Dispute Prevention and settlement
Part VI: Transitional arrangements
Part VII. Institutional arrangements and Final provisions
Patents
Origin:
Patent has i ( open letter )
To save the interests of inventors, the then British rulers enacted the Indian Patents and
Design Act, 1911

To grant some of privilege, property or authority made by the Government of country

to one or more individuals.
Controller has power to grant patent to inventors for a period of 20 years as per The
Patents Rules, 2006.
The person to whom a patent is granted is called patentee.
After the expiry of term invention is available to all

Patent agent:
A person for the time being registered under the patents act, 1970.
Patent A form of property
The patentees exclusive proprietary right over the invention is an intellectual property
right
The owner of the patent, i.e., patentee is entitled to deal with his such property in the
same manner as owner of any other movable property deals with his property

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It means, the patentee can sell the whole or part of his property (patent)
He can grant license to others to use the patented property
He can also assign such property to any others
Objective behind Patent law:
To gain commercial advantages
Encourage the inventors to invest for R&D
Encourage scientific research, new technology and industrial progress
To protect fair competition in the field of science and technology
Legislative PROVISIONS REGULATING Patents:
The Indian Patent Act, 1970
The Patent Rules, 2003
The Indian Patent Act was amended in 2005
The Patent Rules were amended in 2005 and 2006
Principles underlying the patent law in India:
Newness
Usefulness
Non-obviousness
Exceptions
Patentable Inventions:
Patent is given to an invention
Criteria of Patentability defined by existing law
Section 2(1)(j) of patents Act, 1970
The Patent Rules, 2003, rule 2(c)
Section 2(1), Patents (Amendment) Act, 2005

Intangibles are not patentable

New product/process/technical advance

or/and
Invention / Technology of something
More useful product/process or/and
should result in
More economical product/process or/and
Capable of industrial applications

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Patentable combination is the one in which the component elements are so combined
to produce new result or arrive old result in new form

New result or
Combination of component elements
Old result in better, more expeditious, or
resulting in
economical manner

A patentable invention has to be new product or process involving an inventive step

capable of industrial application.
Patents which are not patentable under the Act:
Section 3 and 4 of Indian patents act 1970 gives details
Anything against natural laws
Which causes serious prejudice to human, plant, animal life or health or to environment
Method of agriculture, horticulture
Method of medicinal treatment
Business method, etc.
-Inventions relating to atomic energy not patentable
Patent of Addition:
If a patentee or a person who applied for patent makes an application to the controller
with respect to improvement or modification of his invention, Controller may grant
patent for improvement/modification
If an invention is modification or improvement of another invention, then, controller
may on request revoke the patent for improvement or modification and grant a patent
of addition from the date of patent was revoked.
The patents (Amendment) act, 2005 a patent of addition shall not be granted before
grant of the patent for the main invention.
Process Patent:
A patent can be granted to a new and useful:
Product or process ( food/drugs)

UNIT 2
Procedure for obtaining Patent
It has following steps:

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Submission of applications
Publication and examination of applications
Opposition to grant of patent to the applicant
Grant and sealing of patent
Submission of applications:
1. Conditions of Section 6 11 has to be satisfied
Section 6 Who is eligible?
Section 7 Application type or form of application Internal
Section 8 Information and undertaking of foreign applications
Section 9 contents of provisional specification
Section 10 contents of complete specification
Section 6 Who is eligible?
True and first inventor
One who convert idea to work
Assignee of the person claiming true and first inventor
Legal representatives of deceased person
- First to apply system
Invention made by an employee:
Invention is belong to employee or employer is based on their contract
If employee is specifically employed for research and development then, invention
belongs to employer
Section 7 form of application
One application for one invention
Form 2 as per patents rules 2003
7(1A) Internal patents
7(1B) Date filing
7(2) Assignment right to apply for patent
7(3) Declaration from the applicant as true and first inventor
7(4) Application accompanied by provisional or complete specification

Procedure for Registration of Patent:

File application in the patent office

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Provisional / complete specification should be filed

Acceptance of specification

Publication of application

Request for examination of application

Report of examiner

Approval Objections Division of applications

Amendment of objections

Patent is granted
Special provision for foreign applicants: section (8)
A statement setting out detailed particulars of such application
An undertaking, time to time written communication with controller
Patents rules 2003
The application to file provisional and complete specification:
section 9 :
application along with provisional specification
Complete specification has to be submit within 12 months from the date of filing
application

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Section 10:
Lists the contents of complete specification
What is specification?
A technical document describing the invention
Provisional initial description of an invention
Complete full and sufficient detail of an invention
Publication and examination of the applications - section 11:
Patents act 2005
Section 11A no application for patents shall be open to the public for a period of 18
months from the date of filing.
Applications are not published after expiry date due to
o Secrecy
o Abandoned
o Withdrawn
The publication of every application includes:
o Particulars of the date of applicant
o Number of application
o Name and address of the applicant
o An abstract
Section 11B the applicant must request for examination of the application for patent
within 36 months from the date of filing otherwise the application will be treated as
withdrawn
When request for examination:
o Whether applications are in accordance with the rules and regulations
o Any lawful ground of objection
o Result of investigation
o Any other matter
Examiners has to submit the report within one month or 3 months from the date of
reference of the application -----------------------
Communication to the Applicant:
If any objections raised by the examiners
Patent office communicated to the applicant

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Applicant has to submit explanation/amendments within 15 months it can be extended

up to 18 months by request
If the rectification for objections are not satisfied, then Controller giving an opportunity
of hearing
Powers of the Controller of Patents:
Under section 14 , Controller has the right to communicate list of objections raised by
the examiners to the applicant
Controller has the right to refuse the application if it is not in order
Under section 16 , Controller has the power to verify the claims in two application are
different if the applicant had submitted two applications
Under section 17, Controller has the right to post - dated the application for a maximum
period of 6 months by request etc.
Opposition Proceedings to Grant of Patent:
Where an application for a patent has been published but patent has been granted, any
person may, in writing, represent by way of opposition to the controller against the
grant of patent on the grounds:
1. The applicant had wrongfully obtained the complete invention or a part thereof from
a person under or through whom he claims. two or many were involved in
invention one may applied then other or his/her assignee/legal representative in case
of dead, can oppose the application
2. Prior publication in any Indian specification/other documents or elsewhere
3. The invention has been the subject-matter of a prior claim in an application which
is prior in time than the applicants claim
4. The invention as claimed by the applicant in his complete specification was publicly
known or publicly used in India before the applicants claim
5. The invention is obvious and does not involve any inventive step
6. The invention is not patentable or its patenting is prohibiting under patent act
7. The complete specification does not sufficiently and clearly describe the invention
8. In case of foreign applicant, the failure to disclose information
9. In case of convention application, the application was not made within 12 months
from the date of first application
10. In case the complete specification does not disclose or wrongly mentions the source
or geographical origin or biological material used for the invention

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11. In case the invention so far as claimed in any claim of the complete specification is
anticipated having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere.
Grant of Patents:
If an application does not have any objections/ contraventions/ approved then patent is
granted
A patent can be granted for one invention only

Date of Patent:
The patent is effective from the date of filing of complete specification
Extent and Effect of Patent:
Throughout India
Term of the Patent:
20 years from the date of filing of the application( Complete specification)
Joint Inventors:
Joint inventions
Where the application for patent is made by two or more joint applicants
Substitution of one of the joint applicants will not be allowed, except with the consent
of the other joint applicants
A co-owner of a patent cannot assign his rights without the consent of the other co-
owners
On the death of a joint applicant before the patent is granted, the controller may on a
request made by the survivors and with the consent of the legal representative of the
deceased, direct the application to proceed in the name of the survivors alone.

Compulsory Licence:
Patent can be cut or short by the grant of compulsory licence or licence of right to any
person to work the invention when the patentee fails to work the invention in public
interest.
Compulsory license will protect the interest of the society:
Refusal to deal
Non-working and inadequate supply
Public interest

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Anti-competitive practices
Governmental use
Facilitate the use of dependent patents
Compulsory licenses for medicines
Licenses of right
Across the globe the compulsory license on Intellectual Property Rights (IPRs) is granted on
almost similar grounds like
Charging unreasonably exorbitant prices of an essential facility or commodity, or
Market demand not sufficiently met, or
Where substantial public interest is affected by the way IPR holder is exercising its
right.
Abuse of IPR leading to exclusion of competitors in an industry.
Provisional and Complete specification
Specification:
The Description of the patent
Contents and form of specification:
1. The specification begins with Title
2. The full description along with implementation method
3. Specification must end with claim or claims and relate one invention only
4. Specification must be accompanied by abstract
5. In case of international application designating in India, the title, description,
drawings, abstract and claims are present
6. Declaration from the applicant
7. A complete specification may include claims in respect of developments of, or
additions to, the invention which was described in a provisional specification, being
developments or additions in which the applicant would be entitled to make a
separate application for a patent
Nature of the patent specification:
Specification is a technical and legal document
Kinds of Specification:
1. Provisional specification
2. Complete specification
Provisional specification:

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While an inventor is in the process of finalising his invention, he may file a specification
Contains general description of the invention
May/may not contains claim
Need to file a Provisional specification:
To fix the priority date of the patent
Provisional Specification to be followed by Complete Specification:
A complete specification shall be filed within 12 months from the date of filing of the
provisional specification
When a complete specification does not follow a provisional specification within the
maximum period of 15 months, the patent application is deemed to have been
abandoned
Complete specification:
Full description of the invention containing all the claims over which the applicant
seeks monopoly right
The contents of a complete specification are:
1. The specification begins with Title
2. The full description along with implementation method
3. Specification must end with claim or claims and relate one invention only
4. Specification must be accompanied by abstract
5. In case of international application designating in India, the title, description,
drawings, abstract and claims are present
6. Declaration from the applicant
7. A complete specification may include claims in respect of developments of, or
additions to, the invention which was described in a provisional specification, being
developments or additions in which the applicant would be entitled to make a
separate application for a patent
Priority Date of a Claim:
The date of filing of the provisional specification provided the claims contained therein
are fairly based on the description of the invention as given in the provisional
specification
The interpretation of specification and its importance:
It builds the boundaries around the monopoly right

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The claims must include all possible equivalent variations of the invention to guard
against infringement
Claims:
1. Main claim- invention is in the broadest possible terms
2. Subordinate claim additional feature of the invention
3. Omnibus claim which relates to any arrangement substantially as described and
as shown in the drawings
Omnibus claim protects the applicant from infringement of his invention by creation of
equivalent alternatives
The principles of the construction of specification:
1. The complete specification must be read as a whole document of invention
2. The claim itself marks the legal limits of the monopoly right. If an applicant fails to
claim something, he cannot claim that later
3. The language of the claim must be clear and un-ambiguous
4. The meaning of a specification is addressed to a person skilled in the art
5. The subjective opinion of the patentee regarding the invention are immaterial
6. The court of competent jurisdiction is the authority to interpret the specification
7. If the other party relies on documents other than the complete specification to plead
invalidity of the patent, such a document would be inadmissible.
8. The meaning of the claim is to be the same whether for the purpose of infringement or
challenge to its validity.
Whether a specification can be amended once it has been filed:
1. Amendment before acceptance
2. Amendment after acceptance
3. Amendment after the sealing of patent
Amendment before acceptance:
If the application is not in order as per the law, then controller may ask for the
amendment:
1. If the amendment is based on the matter submitted earlier then the priority date is
date of filing
2. If the amendment is new on the matter submitted earlier then the priority date is
considered as date of amendment
Amendment after acceptance:

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A party may oppose any of the claims of the applicant, then controller may direct the
applicant to amend the specification
Amendment after the sealing of patent:
Before the grant of patent, a person other than patentee, can apply for revocation of the
patent before High court. The court may order for the amendment of specification
instead of revocation
Conditions for Amendment:
1. Disclaimer statement by the applicant denying a claim
2. Correction correcting an obvious mistake in the specification
3. Explanation better explains not change its meaning
Who is to allow the Amendment?
Controller before grant patent
High Court Revocation of patent
High Court After granting a patent
Rights conferred on a Patentee
Rights conferred on a patentee under the act are:-
1. To exploit the patent
2. To licence the patent to another
3. To assign the patent to another
4. To surrender the patent
5. To sue for the infringement of the patent
Exceptions and limitations
The act provides certain limitations on the exercise of rights are
1. Government use of patents
2. Compulsory licences and licences of rights
3. Use of inventions for defence purposes
4. Revocation for non-working of patents
5. Limitation on restored patents
Transfer of Patents
Patent is a transferable property. It can be transferred from the original patentee to any other
person by assignment or by operation of law. Transfer of patent can also occur by grant of
licence by the patentee to another person to work the patented invention

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If there are two or more co-owners of a patent, one single co-owner cannot assign or license
the patent, except with the consent of the other co-owner

Forms of Transfer of Patent Rights:

1. Assignment
2. Licence
3. Transmission of patent by operation of law
Assignment:
Means the transfer by a party all of its rights or interest in the property
In case of intangible property like patent, the transfer is made through an agreement to
this effect
The difference between assignment and licence:
The licence merely confers a personal privilege to do some particular act(s) which the
licence can perform.
There is no transfer of interest in licence
Assignment means transfer of interest in the patent: whole or in part of the patent rights
Assignee:
The person in whose favour a right has been assigned is the Assignee and the person
who assigns the right is the Assignor
In case an assignment has been made in favour of a person who has since died, the term
assignee would denote the legal representative that is the person who in law represents
the estate of the deceased (recently dead) person. Where assignment is made in favour
of two or more persons, they become owners of such interest in the patent
Kinds of Assignment:
1. Legal Assignment
2. Equitable Assignment
3. Mortgage
Legal Assignment
Assignment through an agreement and duly registered as legal assignment
Legal assignee has the right to have his name entered in the Register of patents in
Controllers office as proprietor of the patent and he can excise all the rights
Equitable Assignment

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Any document such as letter but not being an agreement, which is duly registered with
the controller in which patentee agrees to give another person certain defined right in
the patent with immediate effect
Assignee cannot have his name entered in the Register of patents in Controllers office
as proprietor
He can have a notice of his interest entered in the register
He can convert the Equitable Assignment to Legal Assignment by getting a written
agreement to this effect and duly registered
Mortgage
Document transferring the patent rights either fully or partially to the mortgagee with a
view to secure the payment of a specified sum of money.
It can re-transferred to the patentee on refund of money to the mortgagee
Mortgagee can get his name entered in the register as a mortgagee
Conditions to create a valid assignment
1. Valid document containing all the terms and conditions governing the rights and
obligations between the parties
2. It is duly registered under the provisions of Indian Patents Act.
Licence
A patentee can transfer a right by a licence agreement permitting a licensee to make, use or
exercise the invention.
Kinds of Licence:
1. Voluntary Licence
- Written authority granted by the owner to another person(s) empowering
the latter to make, use, sell the patented article in the manner and on
terms and conditions provided in the licence
- Terms and conditions are settle between both parties
- Controller/Govt., has no role
2. Statutory Licence
-
- Controller and central Govt., play an important role
- Circumstances of grant of such licences, their terms and conditions do
not depends upon the will of the parties
3. Exclusive / Limited Licence

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- Depending upon the degree and extent of rights conferred on the

licensee, a licence may be exclusive or limited
- An exclusive licence confers all exclusive rights (to make distribute or
sell) on the licensee excluding all other persons
Eg - a patentee A in India grants a licence to B to exploit the licence in
India. A does not confer any other person such right. B gets exclusive
licence in the patent
- A limited licence imposes certain limitations on the right of the licensee.
The limitations may relate to persons, time, place of manufacture, use or
sale.
Eg A grants licence to B to manufacture the patented article and gives
C the licence to sell it in the territory of Karnataka only. Both B and C
get limited licence
4. Express / Implied licence
- An express licence is the one in which the permission to use the patent
is given in express terms
Eg
would constitute a clause in an express licence.
- It is not valid unless it is written in a document embodying the terms and
conditions of the licence and the document is registered with the Patent
Office.

- In an implied licence, the permission is not given in express terms in

writing but it is implied from the circumstances
Eg - where a person buys a patented article either directly or indirectly
from the patentee or his licensee, there is an implied licence to the buyer
to use the article in any way or to resell it
Rights conferred on a licensee
Make, use or exercise the patented inventions
Based on the valid conditions or limitations licensee will have the right to initiate
proceedings against infringement of rights
Transmission of patent by operation of law
When a patentee dies, his interest in the patent passes to his legal representative

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A patent can also be acquired by the Govt., under the Act when reasonable requirements
of public have not been met
Registration of assignment/Licence is essential
Validity
Sue for the infringement
Certain restrictive conditions to be avoided
Patentees have the rights to impose certain restrictions on licensees
The Patentees cannot impose restrictions on licensees which are against public interest
as per section 140 of act.
When a restrictive condition can be imposed
A patentee who has licenced a wholesale or retailer to sell the patented article may
prohibit them from selling his competitors goods.
He can also insist that the spare parts required for repairing the patented article leased
or licensed should be purchased from him only.

Infringement of patents:
A patent confers the exclusive right violation of these rights is nothing but Infringement.
In case of product patent, the rights of the patentee are infringed by anyone who makes
or supplies that substance commercially
In case of a process patent, the use of such a method or process in India by anyone other
than the patentee.

What can be amount to be Infringement?

The colourable imitation of an invention
Immaterial variations in the invention
Mechanical equivalents
Taking essential features of the invention
All the above acts overlap each other when an infringement of patent or process occurs.
A colourable variation or Immaterial variation amounting to infringement is where an infringer
makes slight modification in the process or product but in fact takes substance the essential
features of the patentees invention.
Infringement by mechanical equivalents would occur when he uses mere substitutes for those
features so as to get the same result for the same purpose as obtained by the patentee.

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Who is entitled to sue?

The patentee
The exclusive licensee if the license is registered
A compulsory licensee when the patentee refuses or neglects to institute proceedings
A licensee other than the above two licensees can bring an action for infringement
depending upon the terms of the contract between the licensor and licensee
Assignee
Co-owners of a patent
Action for Infringement
Whenever the monopoly rights of the patentee are violated, his rights are protected again by
the court of law. The patentee has to institute a suit for infringement. The relief may be awarded
in such suit are:
1. Interlocutory/interim injunction
2. Damages or account of profits
3. Permanent injunction
Where a suit is to be instituted
A suit for infringement shall not be instituted in any court inferior to a District Court having
jurisdiction to try the suit.
Procedure followed in the suit
The procedure followed in conducting a suit for infringement is governed by the provisions of
Code of Civil Procedure.
When can a suit be instituted
A suit for infringement can be instituted only after the patent has been sealed. When a
specification has been accepted and published, i.e., during the period when opposition
has been called and is being decided, the applicant cannot institute a suit for
infringement, but damages sustained due to the infringement committed during the
period, i.e., between the date of publication of acceptance of complete specification and
date of grant may be claimed in another suit. A separate suit for damages but not a suit
for infringement.
When the term of patent has expired and infringement occurred during the term of the
patent, a suit can be instituted during the term or even after the expiry of the term

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In case of patent had lapsed and was subsequently restored, no suit or other proceedings
can be brought for infringement committed between the date on which the patent ceased
to have effect and the date of publication of application for restoration
When a patent was obtained wrongfully by a person and later granted to the true and
first inventor, no suit for infringement can be instituted for any infringement occurring
before the period of such grant to the true and first inventor.
Period of limitation for instituting a suit
The period of limitation for instituting a suit for infringement is three (3) years from the date
of infringement.
Who can be sued?
Person who infringes the patent that violates the monopoly right of patentee can be sued
for infringement
When two or more persons have jointly infringed the patent, both of them have to be
sued as co-defendants
Agents and servants of a principal who is responsible for the infringement can also be
sued either individually or collectively along with their employer/principal
The consignees of an infringing article can be made a party to the proceedings in an
infringement suit
Reliefs available in an action for infringement
The reliefs which a court may grant in any suit for infringement includes
Injunction
Damages or Account of profits
Injunction:
An injunction is an order of a court prohibiting someone from doing some specified act or
commanding someone to undo some wrong or injury.
Types of injunctions:
Temporary/interlocutory injunctions
These are the court orders which are in force for a specified time or until
further order of the court
It may be granted at any time during the proceedings of the suit
The plaintiff may at the commencement of the suit or any time during the
suit move to the court for grant of an interim injunction to restrain the

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defendant from committing and continuing to commit the acts of alleged

infringement.
Principles followed by the courts to grant interlocutory injunctions
Plaintiff must establish prima facie case in his favour
He must also establish that the balance of convenience lies in his favour
The balance convenience will be in favour of the plaintiff when relief given to him will not
offend the interest of the party who is alleged to have caused infringement
The question of balance of convenience for grant of interlocutory injunction arises when it is
doubtful whether damages can adequately provide relief to the parties for the loss suffered.
The factors to be considered for deciding the balance of convenience are
Whether the patent is new/old one
Whether the term of the patent is to expire before the proceedings can be heard
Whether the validity of the patent has been challenged
Whether it is possible to compensate the plaintiff by award of damages when he
succeeds at the trail
Whether the defendant can be adequately
undertaking as to payment of damages
Depending on the above factors or any other relevant factors court may grant/refuse an
interlocutory injunction
Final injunction:
Final injunction is granted at the termination of the trial. The time or which the final injunction
is in force is the remaining term of the patent at the time of grant of the final injunction
Damages or account of profits:
A successful plaintiff in a suit for infringement is entitled to the relief of damages or account
of profits, but both reliefs cannot be granted together.
In certain cases damages or account of profits cannot be granted
When the infringement was innocent, that is, the defendant was not aware that the
patent existed
The infringement was committed after the failure to pay renewal fee with-in the
prescribed time and before any extension of the period
Where the specification has been amended and the infringement was committed before
the date of such amendment
Object of awarding damages:

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To compensate for the loss or injury suffered by the plaintiff due to the action of the defendant
Assessment of Damages:
the amount of damages awarded is proportional to the injury suffered by the party and shall be
such sun of money which will put the injured party in the same position as he would have been
in, if he not encountered wrong.
The quantum of damage is determined by the court appropriately
Account of Profits:
The court may either award damages or account of profits but both of them cannot be claimed
together. The plaintiff has to prefer either of the two
The account of profits is
the infringer during the period of commission of the act of infringement. Account of profits is
infringer.

UNIT - 3
Copyright
Meaning:
Copyright is a form of intellectual property.
The right which a person acquires in a work, which is the result of his intellectual labour
is called his copyright
Definition:
The statutory definition of copyright means the exclusive right to do or authorise other(s) to do
certain acts in relation to
Literary, dramatic or musical works
Artistic work
Cinematograph film
Sound recording

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