Introduction To Intellectual Property:

Module -3 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 .
 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.
Introduction To Intellectual Property
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's/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 novel things.
However, if IPR is practiced rigidly, it may have a
negative impact on the progress of society. Ex: for
farmer’s community
 Role of IP in the Economic and
Cultural Development of the
Society
To circumvent the negative impact of IPR, certain laws,
exceptions and limitations associated with IPR have been
enacted to maintain a balance between the interests of the
creators/inventors and the community.
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’.
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
 Role of IP in the Economic and
Cultural Development of the
Society
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 market.
 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.
 Technology Information Forecasting and Assessment
Council (TIFAC), National Research
 Development Corporation (NRDC) and Cell for IPR
Promotion and Management (CIPAM), etc.
 IP Governance
 In order to create a hassle-free exchange of IP related
activities amongst all the nations, it is imperative to
have minimum standards of rules and regulations
pertaining to all aspects of IP including rights,
empowerment, exceptions, etc. To achieve this goal,
the United Nations (UN) has established an
organization called the World Intellectual Property
Organization (WIPO). This agency is at the forefront
of imparting knowledge about IP and governs
international filing and registration of IP through
various Conventions and Treaties like Paris
Conventions, Patent Cooperation Treaty (PCT), Rome
Convention, Berne Convention, etc.
 IP as a Global Indicator of
Innovation
IP, especially patents, is considered as one of the important cogs
in assessing the innovation index of a nation. The global ranking
organizations always have IP or a subset of IP as one of the
parameters for understanding and grading the Science,
Technology and Innovation (STI) ecosystem of a nation. For
example, the Scimago (publically available online portal which
ranks journals and countries based on the data taken from
Scopus) 2020 report ranked India at 4th position in the
parameter of a number of Research Publications‘, and 50th
position in the parameter of Intellectual Property Rights‘. The
global ranking can be improved by sensitizing the teaching and
scientific communities about the importance of IP and creating
infrastructure for the same in the institutes of higher learning.
 Origin of IP
Though there is no official record of the origin of IP, it is believed
that a rudimentary form of IP was being practiced 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
The history of the Indian patent system dates back to
the preindependence 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.
 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". In
India, the first patent (known as Exclusive
Privileges’ at that time) was awarded in 1856 to a
civil engineer, George Alfred De Penning from
Calcutta, for his invention, ‘An Efficient Punkah
Pulling Machine’.
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.
 History of IP in India
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 the independence of 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. 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.

 Major Laws w.r.t Patents
laws
In 1957, the central government constituted yet
another powerful committee under the chairmanship
of Justice N. Rajagopala b Ayyangar to seek inputs for
further strengthening the Indian Patent Law. 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.
 Major Laws w.r.t Patents
laws
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 fulfillment of certain conditions.
 Major Laws w.r.t Patents
laws
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.
 Changing scenario of IPR
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
Ever greening 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 as a Signatory
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.
 History of 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. 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.
 Phases of Copyrights in
India
The evolution of copyrights law in India occurred in three
phases. First, two phases were enacted during the British
Raj. In the first phase, the concept of copyrights was
introduced in 1847 through an enactment during the East
India Company‘s regime. The term of copyrights was for the
lifetime of the author plus seven years after death. Unlike
today, copyrights in work were not automatic. The
registration of copyright was mandatory for the
enforcement of rights under the Act. The government could
grant a compulsory license to publish a book if the owner of
the copyright, upon the death of the author, refused to
allow its publication.
In the second phase Indian legislature, under the British Raj,
enacted the Copyright Act of 1914 based on the Imperial
Copyright Act (1911) of the UK. An Act for criminal sanction
for an infringement was introduced.
 III rd phase
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 etc.,
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,
 Trade marks
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
 Semiconductor Integrated Circuits and Layout Designs

In the 21st century, Information Technology (IT) has

revolutionized the economic and societal growth
of the world economy. The rapid and tremendous
scientific advancements in the field of IT resulted
in the creation of a new class of IP called the
Layout-Design of the Semiconductor Integrated
Circuits. Various organizations, including WTO
and TRIPS Agreement laid down rules and
regulations regarding the protection of
Semiconductor Integrated Circuits and Layout
Designs (SICLD) India being a member of the
WTO also passed an Act called the SICLD Act,
2000. This Act is TRIPS compliant and fulfils the
conditions of the TRIPS agreement (Articles. 35 to
38) concerning the protection of SICLD.
 Plant Varieties

Till 1970s, not much emphasis was laid on patentable matter

originating from animals and plants. However, microbes and
microbial products/processes were patentable. To include all
kinds of biological materials under the ambit of patent laws,
a decision to enact a new sui generis law under the
International Convention for the Protection of New Varieties
of Plants (UPOV, 1978) and UPOV, 1991 was taken. These
decisions were taken to address environmental and public
interest concerns.
The Indian Patents Act, 1970 excludes ―plants and animals in
whole or any part thereof other than microorganisms‖ from
patentability. To comply with the mandate of Article 27.3 (b)
of
TRIPS, India adopted the PPV&FR Act, 2001 as a sui generis
regime protecting not only new plant varieties but also
farmers‘
rights.
 Traditional Knowledge
It is the ancient and indigenous knowledge held by any
community or a group of people. In olden times it was
not recorded anywhere and was available only in oral
form. So, Traditional Knowledge (TK) was verbally
passed on to future generations. 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 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
 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.
Patents
:
 Meaning & Definition
A patent is an exclusive right granted for
an innovation that generally provides a
new way of doing something or offers a
new technical solution to a problem. The
exclusive right legally protects the invention
from being copied or reproduced by others. In
return, the invention must be disclosed in an
application in a manner sufficiently clear and
complete to enable it to be replicated by a
person with an
ordinary level of skill in the relevant field.
 Conditions for Obtaining a
Patent Protection
There is a set criterion, as provided in Section
2(1)(j) of the Patents Act, 1970, which must
be fulfilled for a product or a process to
qualify for the grant of a patent. The
criterion encompasses:
Novelty - Not part of ‘State of the Art’.
Inventive step - Not obvious to the
person (s) skilled in the art.
Capable of industrial application - For
the benefit of society.
 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.
 To Patent or Not to Patent an
Invention
If the owner of an invention wishes to seek monetary
gains, he can choose from either of the two options,
i.e. patenting or Trade Secret. If the inventor is
absolutely sure of maintaining the secrecy of
invention for a very long period (maybe 100 years
or more) and the probability of reverse engineering
of the technology is nil or very low, then the Trade
Secret‘ category is preferred. If the invention has a
short life span or can be kept secret only for a small
period of time (a couple of years or so) or the
probability of reverse engineering is high once the
invention is in the public domain, then the patent‘
category is preferred.
 Rights Associated with Patents.
As per the Court of Law, a patent owner has the right to
decide who may or may not use the patented
invention. In other words, the patent protection
provided by the law states that the invention cannot
be commercially made, used, distributed, imported, or
sold by others without the patent owner's consent. The
patent owner may permit other parties to use the
invention on mutually agreed terms.
As a matter of fact, the patent rights are negative rights
as the owner is restricting others from using the patent
in any manner without his prior permission. The patent
holder may choose to sue the infringing party to stop
illegal use of the patent and also ask for compensation
for the unauthorized use.
 Enforcement of Patent
Rights
Enforcement is the process of ensuring
compliance with laws, regulations, rules,
standards and social norms. Patent rights are
usually enforced by the judicial courts. The
Court of Law has the authority to stop patent
infringement. However, the main
responsibility for monitoring, identifying and
taking action against infringers of a patent
lies with the patent owner.
Inventions Eligible for
Patenting
Patents may be granted for inventions/technologies in any field,
ranging from a paper clip or ballpoint pen to a nanotechnology chip
or a Harvard mouse (mouse with cancer genes).
It is a general belief that patents are awarded only to major scientific
breakthroughs. But, it is not true. In fact, the majority of patents
are granted to inventions displaying an improvement over the
existing invention. For example, many patents can be awarded to
a single molecule e.g. penicillin's (an antibiotic that kills
microbes) and its derivatives. The derivatives are made by making
subtle changes in the structure of the penicillin resulting in
new/improved properties, such as acid stability or temperature
stability or killing a wide range of microbes (germs). The new
antibiotic molecules, known as second, third or fourth generation
penicillins can also be patented.
 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,
Plants and animals
Topography of integrated circuits –
 Patent Infringements
Once the patent is granted to the applicant, he owns the right to use or
exploit the invention in any capacity. If anyone uses the invention
without the prior permission of the owner, that act will be considered
an infringement of the invention. Infringements can be classified into
two categories:
Direct Infringement - when a product is substantially close to any
patented product or in a case where the marketing or commercial use
of the invention is carried out without the permission of the owner of
the invention.
Indirect Infringement - When some amount of deceit or accidental
infringement happens without any intention of infringement. If such an
unlawful act has been committed, the patentee holds
the right to sue the infringer through judicial intervention. Every country
has certain laws to deal with such unlawful acts.
Following reliefs are made available to the patentee:
 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.
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 2.1.
Flow chart of major steps involved in the grant of a
patent.
Filing of Application with IPO
https://ipindiaonline.gov.in/ePatentfiling/goForLogin/
doLogin
Publishing
Examination
Grant of the patent
 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 journal/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.
 Prior Art Search
The commonly used databases for prior art search fall in two
categories i.e. Patents Databases and NPL.
Patents’ Databases
 Indian Patent Advanced Search System
(InPASS- http://ipindiaservices.gov.in/publicsearch/).
 Patentscope(WIPO- https://www.wipo.int/patentscope/en/).
 Espacenet(EU- https://worldwide.espacenet.com/patent/).
 USPTO(USA- https://www.uspto.gov/).
 Google Patents Advanced Search
(https://patents.google.com/advanced).
 Orbit Intelligence
(https://www.questel.com/business-intelligence-software/
orbit-intelligence/).
 Derwent Innovation
(https://clarivate.com/derwent/solutions/derwent-innovation/).
 PROQUEST
(https://about.proquest.com/search/?searchKeyword=patent+).
 (Prior Art Search)Non-Patent Literature (NPL)

 Scholarly publications: Handbooks,

Textbooks, Withdrawn Patents, Encyclopedias,
Journals (IEEE, Research Gate, Springer, Wiley
Online Library, etc.), Dissertations, NCBI‘s, Pub
Med, 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
Choice of Application to be Filed
Once a decision has been made to patent the invention, the next
step is, what kind of application needs to be filed i.e.
provisional patent application or complete (Final) patent
application - generally, the provisional patent application is
preferred for the following reasons:
 It is cheaper, takes less time, and involves fewer formalities.

 Any improvements made in the invention after the filing of the

provisional application can be included in the final application.

In other words, the provisional application does not require
complete specifications of the inventions. The application can
be filed even though some data is yet to be collected from
pending experiments.
 A provisional application allows you to secure a priority date

for the patent applied.

However, it is mandatory to file the complete patent application
within one year of the filing of the provisional application;
otherwise, the application stands rejected.
 Patent Application Forms.
As per the Patent Act, 1970 (Section 39) and the Patents
Rules, 2003 (Rule 7, 54, 135 and subrule (1) of rule 20,
the application for the grant of patent is filed using
Form-1 (Fig. 2.2) Refer the proforma of text (Form 1.
Fig.2.2)
For the Claims‘ of the patent are a very crucial part of the
specifications because they define the actual boundary
of the invention. Claims‘ specify what is actually claimed
by the invention and what is being sought to be
protected. It clearly describes what the patent does and
does not cover. The Claims are usually expressed as a
declaration of technical particulars articulated in legal
terms. Claims can be classified into two types a)
Independent Claims (stand alone claim) and b)
Dependent Claims (dependent on independent claim).
The Claims must be drafted precisely and carefully in
order to seek patent protection and also to protect the
invention against potential infringers.
 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. Refer
Table 2.1 of text
Source: http://www.ipindia.nic.in/jurisdiction-
of-patent-offices.htm
For a foreign applicant, the address for service in
India or place of business of his patent agent
determines the appropriate Patent Office for filing a
patent application. In the case of joint applications,
all the applicants are bestowed with equal rights
and consideration.
 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.
Flow chart of filing patent
application
 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.
 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.
 Commercialization of a
The patent owner
Patent
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.
Although, the validity of the granted patent is for 20 years, 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‘.
 Exclusive, non exclusive rights and
compulsory licensing
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
License, a patentee can sell his patent rights to as many
individuals/parties as he likes. If the patentee is not able to
commercialize his patent within three years from the date
of the grant of a patent, any person may submit an
application to the Controller of Patents for grant of
Compulsory Licensing (of the patent), subject to the
fulfillment of following conditions:
 Reasonable requirements of the public concerning the
patented invention have not been satisfied.
 The patented invention is not available to the public at a
reasonable price.
 The patented invention is not worked in the territory of
India.
 Need for a Patent Attorney/Agent
In general, applicants can prepare their patent
applications and file them without assistance
from a patent attorney. However, given the
complexity of patent documents, it is advisable
to seek legal assistance from a patent
attorney/agent when drafting a patent
application. Furthermore, the legislation of
many countries requires that an applicant,
whose ordinary residence or principal place of
business is outside the country, be represented
by an attorney or agent qualified in the country
 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.
 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.
• In case of international collaboration, if one part of the

invention originated in India and the inventor is an Indian

resident, he has to seek permission to file the patent outside
India.
• If the invention is related to defense or atomic energy or utility

model, the inventor/s needs to seek permission from the

Indian Patent Office because inventions related to these
domains are not the subject matter of patentability in India.
 Patent Related Form
Table 2.2: List of important patent application forms.
Form No. Title of Form
1 Application for a grant of a patent
2 Provisional/Complete specifications
7 Notice of opposition on grant of a patent
7A For filing a representation opposing grant of a patent
17 Application for compulsory license
18 Request for examination of the application for patent
21 Request for termination of compulsory license
22 Application for registration of patent agent
27 Statement regarding the working of the patented invention on a
commercial scale in India
30 Miscellaneous form to be used when no other form is prescribed
Source:
http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_7
0_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf
 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. Refer the Table 2.3
 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.
 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.
 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.
Commonly Used Terms in Patenting
There are certain terms that are commonly used in the
field of patenting, as listed—
1. Inventor- Creator of an invention.
2. Applicant-Organization/individual/industry that files a patent
application or applies for a patent.
3. Patentee- A person/organization who owns the patent (granted).
4. Licensee-Organization/individual/industry which obtains a
license of the patent from the Patentee for commercialization
purpose.
5. Assignee-A person in whose name patent has been assigned
legally
6. In force-The applicant is paying the annuity (renewal fee) for the
patent to keep it alive (Active Patent)
7.Working of a Patent- The selling of a patent to an
individual/party for commercial exploitation is called as working
of a patent
8. Patent Specification- Patent specification is a written description
of the invention and the way of representation and process of
making and using the same.
 Commonly Used Terms in Patenting
9. Priority Right-A Priority Right‘ or Right of Priority‘ is a time-
limited right, activated by the first filing of an application for
a patent.
10. Priority Date-The claimed date on which the first application
for the invention is filed.
11. Patent Claims-Claims can be defined as the scope of the
protection conferred by a patent, or the protection sought in
a patent application. The purpose of the claims is to define
which subject matter is protected by the patent.
12. National Phase Application An application filed to obtain
patents in different countries simultaneously based on a
single International/PCT application.
13. Patent Revocation -The revocation means cancellation of
the patent due to certain reasons, such as lack of
patentability or wrongfully obtaining a Patent.
14. Restoration of Patent Once a patent has been ceased (e.g.
due to non-payment of the fee) it can be restored
within a permitted period by paying the requisite fee.
 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 Models
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.
 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. If these
small patents are recognized under IP
protection in India, it will catapult the
number of patents (filed and granted) on
annual basis.
 Questions for Module-3 IPR &
Patents
1. Explain the concept of novelty and inventive step as criteria for patentability. Discuss
the assessment procedures.
2. What is meant by prior art? Explain different forms of disclosure that constitute prior
art from the patentability perspective.
3. Describe the patent specification and its components - provisional, complete
specification and abstract.
4. Explain the patent application procedure in India starting from form filling to grant.
5. What constitutes patent infringement? Discuss various types of patent infringement.
6. Describe the remedies available for patent owners in case infringement occurs.
7. Discuss the key flexibilities allowed under TRIPS agreement that impact access to
medicines.
8. What is the rationale behind providing exclusivity rights through patents? Discuss
with reference to various patent law theories.
9. Explain the unique challenges in evaluating biotechnology and software inventions
for patent eligibility.
10. What are the key criteria for software inventions to be deemed as patentable
subject matter in India?
11. Discuss the research or experimental use exception allowed under patent law with
examples.
12. Explain the concept of allied patents and improvement patents giving suitable
examples.
13. What are the different types of patent claims? How do they impact claim scope?
14. What is patent misuse? When can it be applied as an affirmative defense against
patent infringement?
15. Discuss the historical evolution of modern patent law tracing key statutes and
developments globally and in India.