Chapter 11

Patents, utility models, design rights,

and plant breeder rights

Bronwyn H. Hall & Christian Helmers

Overview
• Patent system:
• Structure and purpose
• Process and legal requirements
• Economics of patents
• Patent quality and patent value
• More briefly:
• Utility models
• Design patents
• Plant patents

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Introduction
• Patent gives owner right to exclude everyone else from exploiting patented
invention.
• Patent owner can sue for patent infringement in court if third party makes,
uses, sells, or imports patented invention into jurisdiction where patent is
in force.
• Ability to exclude others often referred to as “monopoly” over patented
invention.
• Broad legal protection - protects against any use of patented invention.
• Economic motivation: encourage investment in invention and innovation.

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Background
• First (technological) “patent” granted in 1421 by city of Florence in
Italy to Filippo Brunelleschi for new means to transport marble from
quarries at Carrara up Arno River.
• First administrative patent system created in Republic of Venice in
1474:
• Venetian Patent Statute granted exclusivity over an invention and established
an enforcement mechanism.
• Mandated disclosure and availability of some limited form of compulsory
licensing of a patented invention.
• Required inventions to be novel and non-obvious and practical demonstration
of usefulness.
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Background

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Background

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Patent procedures - patentability
• Patents are government-granted, registered IP rights.
• Protection only available for patentable subject matter (e.g. laws of nature
and natural phenomena excluded).
• To obtain protection, applicant must apply for a patent with relevant
patent office.
• Patent office grants patent protection if patent application meets
patentability requirements:
• Novelty: invention has to be new, i.e. not already disclosed to public through prior
publication, product offered for sale, or public use.
• Non-obviousness (inventive step): invention has to be more than an obvious -- to a
“person having ordinary skill in the art” (PHOSITA) -- extension of something that
already existed before patent’s priority date.
• Utility (industrial application): invention has to have specific and substantial use.
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Patent procedures - dates
• Filing date is date when patent application is filed with a patent
office.
• Priority date is first filing date of a patent.
• Distinguish between first filing date (priority date) and other filing dates
because patents can be filed in different jurisdictions within 12 months of the
first filing date.
• All patent offices where patent filed afterwards will have later filing date but
same priority date (first filing date) for examination.
• Priority dates also important because in some jurisdictions, applicants can file
subsequent applications based on earlier filings (e.g. continuations in U.S.).
• Publication date is when patent disclosed to public, 18 months
counting from priority date.
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Patent procedures - expiration and renewal
• Valid for maximum of 20 years counting from date of filing.
• Depending on jurisdiction, limited extensions beyond 20 years
available.
• To keep patent in force during statutory lifetime, payment of
maintenance (renewal) fees required.
• Patent expires if:
• Reaches limit of statutory patent term.
• Lapses due to non-payment of renewal fees.
• Once expired, patent can no longer be infringed and patented
invention enters public domain.

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Patents Cont…
Patent protection means that the invention cannot be
commercially made, used, distributed or sold without the
patent owner's consent.
Rights of Patent Holder:
A patent owner has the right to decide who may - or may not - use
the patented invention.
The patent owner may give permission to, or license, other parties to
use the invention on mutually agreed terms.
The owner may also sell the right to the invention to someone.
Once a patent expires, the protection ends, and an
invention enters the public domain.
Protection is provided for 20 years.

10
Patent is a statutory right to the inventor or the applicant by the government for his invention
which is either a new process or product
Limited period
Need for sufficient disclosure to the patent offices
Territorial right
Negative right

PATENTS IN INDIA
11
 PATENTS IN INDIA

Inventions Not Patentable (Few Examples)

• Frivolous or anything obviously contrary to well established natural law
• Contrary public order or morality serious prejudice to human, animal or plant life or
health or to the environment
• Discovery of a scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substances occurring in nature
• A method of agriculture or horticulture
• The mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way
• Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic
or other treatment of animals to render them free of disease or to increase their
economic value or that of their products.
• A mathematical or business method or a computer programme per se or algorithms
12
Types of patents granted in India

An ordinary patent

oAn application for patent filed in the Patent Office without
any reference to any other application under process in the
office is called an ordinary application.
A patent of addition
oImprovement or modification of the invention
A patent of convention
oConvention application refers to a patent application filed in
accordance with the terms of an international patent treaty
like the Patent Cooperation Treaty.
 A patent has lived its full term

Cessation or
expiry of the The patentee has failed to pay the renewal fee

patent
The validity of the patent has been
successfully challenged by an opponent by
filling an opposition either with the patent
office or with the courts

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  File an application for patent
⁻ With one of the patent offices based on territorial
jurisdiction place of office of the applicant

Steps of ⁻ Pay the required fees ([Link])

 Examiner check the formal requirements before accepting

filling and
the application and the fee Application is kept
secret for a period of 18 month from the date of filling

grant of
 In 19th month, the application is published in the official
journal – this journal is made available on website weekly

patent
 Examiner undertakes examination
• Whether the claimed invention is not prohibited for grant of
patent
• Whether the invention meets the criterion of patentability
 First examination report containing
list of objections is issued with in 6
months from the date of filing of
request
Applicants gets 12 months time to
Cont… meet the objections
If objection are met, patent is
issued by the controller- within a
period of one month and published
in official journal
 In 19th month, the
File an application for Examiner check the Application is kept application is published
patent: With one of the formal requirements secret for a period of 18 in the official journal –
patent offices based on before accepting the month from the date of this journal is made
territorial jurisdiction, application and the fee filling available on website
place of office of the weekly
applicant
• Pay the required fees)

Whether the claimed

Whether the invention
Examiner undertakes invention is not
meets the criterion of
examination prohibited for grant of
patentability
patent

Steps of filling and grant of patent

([Link])
17
Fee

 Renewal Fee
 To be paid with in 3+6 month from date of recording in
the register [sec 142 (4)]
 No fee in the first and 2nd year
 Patent lapses if renewal fee is not paid within the
prescribed period
Searching for patent data
Search engine
Intellectual Property India
Link for efiling patent
• Intellectual Property India
• Rules
• Manual_for_Patent_Office_Practice_and_Procedure_.pdf
• Fee
• Schedule_1.pdf
 Three major amendments in the Patent Act 1970 to conform
to TRIPs agreement in 1999, 2002 and 2005
Act VI of 1856 based on the British Patent Law of 1852 The term of protection extended to 20 years
Act XV of 1859 provided exclusive privileges Publication of applications after 18 months
Act XIII of 1872 for The Patterns and Designs Protection Act Pre and post grant opposition
The Indian Patents and Designs Act of 1911 Product patents in all fields of technology

The Restrictive Phase (1947-95) The Permissive Phase (2005 onwards)

The Colonial Phase (1856-1947) The Transition (1995-2005)

Justice N. Rajagopala Ayyangar Committee Report No amendments in the Patent Act

The Patents Act, 1970 came into force 20th April 1972 Provision for e-filing at reduced cost
Prohibited granting of product patents on goods that may be used Expediated examination for start-ups, small entities, and
as food and medicine government department
Decreased the duration of patents on chemical processes Overall emphasis on ease of patenting by introducing
Increased the scope of the use of compulsory licensing administrative reforms
 Patent Applications (1900-2021)

35000
30000
25000
20000
15000
10000
5000
0

1947
1949
1951
1953
1955
1957
1959
1961
1963
1965
1967
1969
1971
1973
1975
1977
1979
1981
1983
1985
1987
1989
1991
1993
1995
1997
1999
2001
2003
2005
2007
2009
2011
2013
2015
2017
2019
2021
Patent Applications (1947-1994)
5000
4000
3000
2000
1000
0

Patent Applications (1995-2021)

35000
30000
25000
20000
15000
10000
5000
0
-5000

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document
Patent
Hall & Helmers Ch. 11
 Specific of Patenting Trend in India
• Historically non-resident patents have been high.
• Non-residents applications are still a large portion of the applications filed as
evident from figure.
• As the domestic patent filing has surpassed the number of patents filed by
non-Indians at the Indian Patent office in last quarter (Q4) of 2021-2022,
during last 11 years. (Sanyal and Arora 2022, p. 5).
• Within the patents applied for by the residents, the top patentees include
companies like Microsoft, Qualcomm, Huawei, Samsung, Ericsson, and GE.
Patent document
• A patent consists different elements:
• Summary
• Description
• Claims
• Drawings
• Patent claims most important element from legal perspective.
• Disclose and define legal boundaries of invention.
• These boundaries often referred to as patent scope or breadth.
• Claim types:
• Product claims: device, embodiment, or chemical compound or substance.
• Process claims: specific method of making or using a product.

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Patent classification
• For purposes of prior art search during examination, patents categorized into hierarchical
patent classifications according to technologies that they cover.
• Different patent classifications:
• International Patent Classification (IPC) system established in 1971 to provides harmonized
hierarchical system to classify technology contained in patents.
• U.S. Patent Classification (USPC) system
• Cooperative Patent Classification (CPC) system created by EPO and USPTO (similar to IPC)
• Example: Apple’s patent US 8,289,400 “Image capturing device having continuous image
capture”:
• Covers technology designed to improve quality of photos taken with iPhone.
• 13 IPCs, all with a main class H04N, one of which is IPC symbol H04N 5/144:
• H: section “Electricity”
• H04: class “Electric Communication Technique”
• H04N: subclass “Pictorial Communication”
• H04N 5: main group “Details of television systems”
• H04N 5/144: subgroup “Movement Estimation”

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Patent classification
• Main purpose of patent classifications to facilitate prior art search.
• Patent classes do not map directly into technology areas that correspond
to areas of economic activity.
• Correspondences that link technology classes to economic activity:
• Concordance by Schmoch (2008):
• Maps IPC classes into 35 broad areas of technology.
• For example, IPC H04N 5/144 maps into “Audio-visual technology” within broad technology
area “Electrical Engineering”.
• Mapping IPC classes more directly to economic activity challenging because
technologies often used in wide range of economic activities.
• Lybbert and Zolas (2014) use keyword matching to map IPC classes to different
classifications of economic activity, e.g. Standard International Trade Classification
(SITC) and International Standard Industrial Classification (ISIC).
• H04N corresponds to several industry classes including “Photographic apparatus and
equipment”.

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Inventor- and Ownership
• Patent system separates inventorship from ownership.
• Inventor: anyone who contributed to any of the essential elements of
the invention.
• In practice, often several inventors (co-inventors).
• Owner (assignee) - not necessarily the inventor: ownership can be
transferred at any point during lifetime of a patent. [Applicant and/or
Patentee]

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International dimension
• Patents are national rights.
• Only enforceable in countries where they have been granted.
• The need for international protection of intellectual property (IP) became evident when
foreign exhibitors refused to attend the International Exhibition of Inventions in Vienna,
Austria in 1873 because they were afraid their ideas would be stolen and exploited
commercially in other countries.
• 1883 Paris Convention established national treatment of foreigners.
• Facilitates filing of patent applications in multiple jurisdictions by establishing priority
right.
• Patents that protect same invention in different countries belong to same “patent
family.”
• WIPO’s Patent Cooperation Treaty (PCT) of 1970 simplifies application procedure of
obtaining patent protection in multiple countries.
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 Internationalization of IPRs
Changes in the 20th Century
 International Trade
Increase in the Trade of Knowledge Goods.
Share of knowledge-intensive or high technology products in total world goods
trade has doubled between 1980 and 1994 from 12 to 24 percent ( Braga et al.,
2000).
Increase in the Trade of Counterfeited Good.
Trade in counterfeit goods is now worth more than 5 per cent of world trade
(OECD,1998). This increase is due to:
• Advances in Technology
• Increased International Trade
• Emerging Markets
• Emerging Products that are attractive to copy such as branded clothing and
Software
 Strategic Development of NIC’s
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International dimension
• 1994 TRIPS agreement increased international harmonization of
patent system.
• TRIPS specified minimum standards of IP protection:
• Mandated granting of both product and process patents.
• Statutory patent term of 20 years.
• Developing countries accorded transition periods depending on level
of development to implement agreement.
• TRIPS lead to substantial strengthening of patent protection in most
developing countries.

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 National Treatment

Minimum Standard of Protection

TRIPs • Definitions
• Scope/Coverage
Agreement • Duration
• Exclusions
• Other Provisions
Enforcement Issues

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Trade Related Intellectual Property Rights Agreement
(TRIPS)

TRIPs provides for: TRIPs Covers 7 types of IPs

National Treatment Copyrights
Minimum Standard of Trademarks
Protection Patents
Definitions Geographical Indications
Scope/Coverage Industrial Design
Duration Integrated Circuits
Exclusions Trade Secrets
Other Provisions Enforcement Issues
International dimension
• Regional patent systems:
• African Regional Intellectual Property Organization (ARIPO)
• Organisation Africaine de la Propriété Intellectuelle (OAPI)
• Eurasian Patent Convention
• European Patent Convention (EPC).
• EPC most important regional patent system.

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 IPRs became part of
international agreements with
Paris Convention (1883) for WIPO became a specialized
industrial property and Berne agency of United Nations (UN)
Convention (1886) that in 1974 to administer IPRs
protects literary and artistic related matters recognized by
works. member states of UN.
World
Intellectual 1967 Currently
Property Rights 1883 1974
Organization
(WIPO) WIPO came into existence
after 1967 Stockholm WIPO
WIPO administers 26 treaties
covering various types and
Convention. aspects of IPRs and have 188
member states.
European Patent Convention (EPC)
• Created in 1973, it currently has 38 member and 2 extension states.
• EPC not part of the European Union (EU) but all EU countries are member states
of EPC.
• EPC provides single route to obtaining a patent grant in all member and extension
states.
• EPC created EPO, which centrally accepts patent applications, examines them,
and grants the European patent.
• Granted patent has to be validated in each member state in which protection is
wanted and the patent is then subject to national law.
• Validation process is complex, validation requirements differ across countries.
• EPC coexists with national patent systems, applicants have choice to obtain
patent protection either directly via the national patent system or via the EPO.

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 A policy forum to shape balanced international IP rules for a
changing world

Global services to protect IP across borders and to resolve

disputes

What WIPO
Technical infrastructure to connect IP systems and share
knowledge

Does? Cooperation and capacity-building programs to enable all

countries to use IP for economic, social and cultural development

A world reference source for IP information

Source: WIPO (2015)

 Scientific Community:
Local Patent Office: Less information about The Patent Cooperation
Inventor: Costly and
Time and resource international Treaty (PCT) was
time consuming
consuming developments in the adopted in 1970.
related field
 • Principal objective: to simplify,
make more effective and
economical, in the interests of the
users of the patent system and the
Offices that have the responsibility
About PCT for administering it, the previous or
traditional methods of applying for
patent protection for inventions in
several countries. (WIPO, 2012)
• 158 contracting countries.
 PCT does not grant patents.

What PCT is
not about? PCT system does not
provide for the grant of
worldwide patents.
The economics of patents
• Patents generally strongest of IP rights.
• Property right that grant owners broad
legal protection.
• Considerable uncertainty associated
with validity and scope.
• Trade-off involved in patent protection:
• Innovator obtains positive profit which
incentivizes innovation.
• Patent protection results in deadweight
loss due to higher price.

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The economics of patents
• Trade-off important for optimal design of patent system.
• What is the optimal duration of patent protection?
• Increase in patent protection will increase profits and thereby marginal incentive to
invest in R&D.
• Increased incentives are not always necessary or even desirable.
• Uniform patent protection grants “too much” or “too little” protection.
• “Fixed patent life is not optimal in theory, although it may be unavoidable in
practice” (Nordhaus, 1972: 34).
• How much protection does patent provide?
• If protection imperfect, competitors can invent around patent.
• Less market power despite patent protection.
• Possibility of duplication of R&D expenses if firms engage in so-called
“patent races”.

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