RM&IPR– 21RMI56

MODULE3:INTELLECTUALPROPERTYRIGHTS,PATENTSAND PROCESS
OF PATENTING

Syllabus

Introduction to Intellectual Property: Role of IP in the Economic and Cultural Development of

the Society, IP Governance, IP as a Global Indicator of Innovation, Origin of IP, Historyof 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, and 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,JurisdictionofFilingPatentApplication,Publication,Pre-grantOpposition,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, UtilityModels

INTRODUCTIONTOINTELLECTUALPROPERTY

 Intellectual Property (IP) is the terminology attributed to intangible assets having

commercial value, and arising from human intelligence, creativity, and imagination, but
typically lacking physical form.
 IntellectualPropertyRights(IPR)istheprivilegesaccordedtothecreator/inventor(ofIP) 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
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 Broadly, IP comprises of two branches i.e. Copyrights and Related Rights and Industrial
PropertyRights.
o 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.
o The Industrial Property Rights refer to the Patents, Trademarks, Trade Services,
Industrial Designs and Geographical Indications
 Copyright: Copyright is the right bestowed on the owner or creator in relation to
publication, and distribution of a piece of writing, music, picture or related works.
Copyright also applies to technical contents such as software, datasheets and related
documents.
 Patents: A patent is a legal record that bestows the holder the exclusive right over an
invention as per the claims, in a limited geographical domain and for a limited durationby
thwarting possible interested parties from any form of manufacture, use or sale of the
product or outcome of the invention
 Trademarks: A trademark is a sign that suitably differentiates the owner‘s goods or
services from those of others
 Trade services: Any services in relation to trade or any trade related financing,lending or
other financial accommodation provided(or to be provided) by the bank, including but not
limited to issuance/amendment of letter of credit, document arrival under letter of credit,
application for negotiation and inquiries etc.,
 Industrial Designs: An industrial design protection is related to certain specific
ornamental shapes associated with products whose duplication the owner may wish to
prevent
 Geographical Indications: A geographical indication (GI) is a name or sign used on
products which corresponds to a specific geographical location or origin. Items that meet
geographical origin and quality standards may be endorsed with a government-issued
stamp which acts as official certification of the origins and standards of the product.
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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.
 However, if IPR is practiced rigidly, it may have a negative impact on the progress of
society. Forexample,compliancewiththe Trade-RelatedAspectsof IntellectualProperty
Rights (TRIPS) Agreement has affected the farming community as they are unable to
store seeds for the next crop. Multinational companies regulate the price of seeds, which
is generally beyond the reach of a majority of the farmers.
 To circumvent the negative impact of IPR, certain laws, exceptions and limitations
associated with IPR have been enacted to maintain a balance between the interests of the
creators/inventors and the community.
 For example, farmers rights under the Protection of Plant Varieties and Farmers Rights
(PVP&FR) Act, 2001 entitles them to many privileges, such as Rights on seeds provides
rights to the farmers to save seeds, use seeds and share, exchange or sell seeds to other
farmers.
 Right to protection against accusations of infringement protects the farmers from
infringement and other legal accusation levied upon them due to his legal ignorance in
using other‗s plant varieties.
 Theuseofcopyrighted materialforeducationandreligiousceremoniesis exemptedfrom the
operation of the rights granted in the Copyright Act.
 Similarly, a patent can be revoked in favor 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
thegovernmentfor grantofanyrightsassociated with [Link] example,cloningofhuman
embryos is banned for IP protection, and so is the creation of super microbial pathogens,
which can play havoc with human lives.
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IPGOVERNANCE

 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, manyorganizations/agencies deal with various aspects of IP. The governance of
all categoriesof IP, except thePlant Varietyand FarmersRights Act, is carriedout bythe
Department for Promotion of Industry & Internal Trade (DPIIT) under the aegis of
Ministry of Commerce and Industry, Govt. of India.
 There area fewotherdedicatedorganizations/departments established bythe government to
promote patent-ecosystem (patent awareness, patent filing and patent commercialization)
in India e.g. Technology Information Forecasting and Assessment Council (TIFAC),
National Research Development Corporation (NRDC) and Cell forIPR Promotion and
Management (CIPAM), etc.
 In order to create a hassle-free exchange of IP related activities amongst all the nations,it
isimperativetohaveminimumstandardsofrulesandregulationspertainingtoallaspects 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).
 Thisagencyisattheforefrontofimpartingknowledgeabout IPand governsinternational filing
and registration of IP through various Conventions and Treaties like Paris Conventions,
Patent Cooperation Treaty (PCT), Rome Convention, Berne Convention, etc.

IPAS AGLOBALINDICATOROFINNOVATION

 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.
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 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 positionin
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.
 ThenativesofSybarisweregrantedayear‗sprotectionforusingtheirintellecttocreate
 anynewimprovement inluxury.
 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
countrystarted laying down IP legislation to protect their novel inventions and creations.
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HISTORY OFIPIN INDIA

Patents

 The history of the Indian patent system dates back to the pre independence era of British
rule. The first patent related legislation in India was Act VI of 1856, adapted from the
British Patent Law of 1852. The objective of this legislation was to encourage the
inventions of new and useful manufactures.
 At the beginningof the 20th century, all the earlier Acts related to inventions and designs
weredoneawaywiththeintroductionof―TheIndianPatentsandDesignsAct‖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;
o Useofinventionbythegovernment
o PatentofAddition
o Enhancingthetermofthepatentfrom14yearsto16years.
o FilingofProvisionalApplicationandsubmissionofCompleteApplication within 9
months from the date of filing the application.
 Keeping the national interest in mind, recommendations were made in 1949 as a
modification to existing ―The Indian Patents and Designs Act‖. And those
recommendations are as follows
o Misuseofpatentsrightsneedstobeprevented.
o 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.
o Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on
the lines of the UK Patent Act.
 TheserecommendationswereintroducedintheActXXXIIof1950.
 Two years later, another amendment (Act LXX of 1952) was made toprovide compulsory
licensingofpatentsrelatedtofood,drugsandchemicalskilling insectsand
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microbes. Based on these amendments, a bill was presented in the parliament in 1953 but
was rejected.
 In 1957 a committee was constituted and the committee submitted its report to the
government in 1959. It comprised of two segments addressing
o Generalaspects ofthepatentlaws,and
o Billrejectedbackin1953.
 The revised patent legislation was submitted to the Lok Sabha in 1965. After many
hiccups, clarifications and modifications the Patents Act, 1970
 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
 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. 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.
 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:
o Productpatentforinventionsinall fieldsoftechnology.
o Newforms ofknownsubstancesexcludedtopreventever greeningofthe patent.
o Rationalizationoftheopposition procedure.
o Introductionofpre-grantoppositionbyrepresentation.
o Introductionofpost-grant opposition.
o Compulsorylicense forexportpurposes.
o Compulsorylicenseformanufacture.
o Extensionofgraceperiodfrom6monthsto12monthsforfilingapatent,if published in
government exhibition.

Copyrightsandrelated rights

 Theconceptofcopyrightsstartedwaybackinthe 15thcentury. However,theactualneed for

copyrights law was felt onlyafter the invention of printers and copiers.
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 Before the invention of printers, writing could be created only once. It was highly
laborious and the risk of errors was involved in the manual process ofcopying by a scribe.
 The evolution of copyrights law in India occurred in three phases. First, two phases were
enacted during the British Raj.
o 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. The registration of
copyright was mandatory for the enforcement of rights under the Act. The
government could grant a compulsory license topublish a book if the owner of the
copyright, upon the death of the author, refused to allow its publication.
o In the second phase Indian legislature, under the British Raj, enacted the
CopyrightActof1914basedonthe ImperialCopyrightAct(1911)ofthe [Link] Act for
criminal sanction for an infringement was introduced.
o The third phase of the copyrights regime was witnessed post-independence. The
Copyright Act 1957 was enacted, superseding the Indian Copyright Act, 1914, in
order to suit the provisions of the Berne Convention (1886).
 The 1957 Act has been amended six times (1983, 1984, 1992, 1994 and 1999, 2012), to
comply with WIPO Copyright Treaty (WCT), 1996 and WIPO Performances and
Phonograms Treaty (WPPT), 1996.
 India is an active member of nearly all significant international Conventions/Treaties
related to Copyright Law e.g. the Berne Convention as modified in Paris in 1971, the
Universal Copyright Convention (1951), the Rome Convention (1961), WCT, WPPT and
(TRIPS, 1995).

Trademarks

 The first statutory law related to Trademarks (TM) in India was the Trade Marks Act,
1940, which was carved out from the Trade Marks Act, 1938 of the UK.
 ItwasfollowedbytheincorporationofprovisionsofTMstatedintheIndianPenalCode, Criminal
Procedure Code and the Sea Customs Act.
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 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 register TM.

GeographicalIndications

 India,asamemberofWTO,enactedtheGeographicalIndicationsofGoods(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.

IndustrialDesign

 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 patternsby
the inventors.
 TheActwasreplacedbytheBritishPatentsandDesignsActin1907,whichlaterbecame 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,inthe year2000, adedicatedActforthe IDwaspassed,whichcameintoforcein 2001.

SemiconductorIntegrated CircuitsandLayoutdesigns

 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
[Link],including WTO and TRIPSAgreementlaid down rules
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andregulations regardingtheprotectionofSemiconductor IntegratedCircuitsandLayout

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. 35to
38) concerning the protection of SICLD.

Plantvarieties

 Till 1970s, not much emphasis was laid on patentable matter originating from animalsand
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.
 Thesedecisions weretakentoaddressenvironmentalandpublicinterest concerns.
 The Indian Patents Act, 1970 excludes ―plants and animals in whole or any part thereof
other than microorganisms‖ from patentability.
 TocomplywiththemandateofArticle27.3(b)ofTRIPS, IndiaadoptedtheProtectionof Plant
Varieties and Farmers Rights (PPV&FR) Act, 2001 as a sui generis regime protecting not
only new plant varieties but also farmer‘s rights.

Biodiversityconservation

 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 inIndia include
Mining and Mineral Development Regulation Act, 1957; Water (prevention and control
of pollution) Act, 1974; Forest Conservation Act, 1980; Biological DiversityAct, 2002;
Scheduled Tribes and otherTraditional Forest Dwellers (recognition ofrights) Act, 2006;
National BiodiversityAction Plan, 2009; National Environment Policy, 2006 and a few
more.
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MAJORAMENDMENTSIN IPLAWSANDACTSIN INDIA

In order to fill the gaps existing in the IP Laws and Acts and also to introduce new
guidelines/directions based on the current scenario (socially and politically), each nation keepson
updating the concerned IP Laws and Acts. Some of the salient amendments made in Indian Laws
and Acts on IPR are mentioned below:
Sl. No Year HistoricalProceedings
PATENTS

1 1856  TheActVIof1856ontheprotectionofinventionsbasedonthe British

Patent Law of 1852.
 Rightsrenamedas"ExclusivePrivileges"
2 1859
 Timeforthe priorityincreased from6 months to 12 months.
 ThePatternsandDesigns Protection Act
3 1883  Introduction ofnoveltyin theinvention.
 Agraceperiod of6 months forthe disclosureofthe invention.
 Renamedas"TheIndianPatentandDesignAct"andbroughtunder
4 1911
themanagementof"ControllerofPatents"
 IntroductionofPatentof Addition.
5 1930  Governmentcanusetheinventionif required.
 Thetermofpatentprotection increasedfrom14to16years.
 Filingoftheprovisionalspecification tosecuretheprioritydate.
6 1945
 Provisionofsubmittingcompletespecificationswithin9months.
 DedicatedCommitteeformedundertheleadershipofJusticeBakshi
7 1949 Tek Chand for reviewing patent system as per the national
Environment.
 AworkingstatementneedstobesubmittedatthePatent Office
 EndorsementofthePatentswiththewords"LicenseofRight‖onthe
8 1950
application madebythe government so that the Controller could grant
The license.
 Provision of "Compulsory License"in the areas of food, medicine and
9 1952 insecticide germicide.
 Processforproducingsubstanceoranyinventionrelatingtosurgical
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orcurativedevices.
 After incorporation of the recommendation submitted bythe
10 1965 committee formed in 1949, a new billwas introduced inLok Sabhabut
was not cleared.
 AgainsubmittedtoParliamentaryCommittee.
11 1967
 1911Actremained applicableforDesigns.
12 1970  ThePatent Act, 1970passed bytheParliament Committee.
 ThePatentAct,1970cameintoforcewiththeintroductionofpatent
13 1972
rules.
 TRIPSAgreementwassigned byIndiaandgot transitionperiod1995-
14 1995
2005tomakedomesticlaws compatiblewith TRIPS.
 Introducing the provisions for receiving the applications for the
product patent in the field of pharmaceuticals and agro-chemicals
(mail box)*.
 Provisions for the grant of EMRs for distribution and sale of pharma
15 1999 products on fulfillment of certain conditions.
 Grant of EMR subject to certain conditions. After the amendments
(1999) the product patents related to the pharmaceuticals and
agrochemicals were kept on hold forexaminationtill 2005. It is called
amailboxorblack box.
 Theuniform20-yeartermof thepatent forallinventions.
 Disclosureofsourceandgeographicaloriginofbiologicalmaterial
16 2002 made compulsory.
 EstablishmentofAppellateBoard.
 CompulsoryLicenseprovisions strengthened.
17 2003  ThePatentsRules, 2003wereintroduced.
 Productpatentforinventionsinallfieldsoftechnologyincluding food,
drug, chemicals and microorganisms.
18 2005  Newformsofknownsubstancesexcludedinordertopreventtheever-
greening of the patent.
 Introductionofthepre-grantopposition.
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 Introductionofpost-grant opposition.
 Extensionofgraceperiodto 12 months.
COPYRIGHTSANDRELATEDRIGHTS
 TheconceptofCopyrights in Indiawasintroduced.
1 1847
 Validity- Lifetime+7yearsbutnotmorethan42yearsintotal.
 CopyrightAct,1914wasintroducedbasedonthe
2 1914
 ImperialCopyrightAct, 1911of UK.
 CopyrightAct,1914wasreplacedwithCopyright Act, 1957 with
3 1957
minormodifications
4 1984  Penaltyon secondand subsequent conviction
5 1994  RegistrationofCopyrightSocietymademandatory
 To complywith international Treaties for copyrights protection in the
digital environment.
6 2012  Righttoreceiveroyaltiesforauthorsandmusiccomposers.
 Exception of copyrights for physically disabled persons to access any
work.
7 2013  CopyrightsRules,2013introduced.
TRADEMARKS
1 1940  TrademarksRegistryestablishedinIndia.
 TheTradeandMerchandiseMarksAct,1958enactedasperTRIPS
2 1958
Agreement.
 Amendedtoavoidduplicityandensuresecuringproprietorstradeand
3 1999
goodwill
4 2002  TrademarksRulesintroduced.
 Amendedtocomplywith Madrid Protocolforinternational filing.
5 2010
 Provisionforfilingoppositionoftheregistrationwithin4months.\
6 2013  TrademarksRulesintroduced.
GEOGRAPHICALINDICATIONS
 BeingamemberoftheWorldTradeOrganization(TRIPS),GIof goods
1 1999
(Registration and Protection) Act was introduced.
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 TheGeographicalIndicationsofGoods(RegistrationandProtection)
2 2002
Rules,2002was introduced.
 TheGeographicalIndicationsofGoods(Registration&Protection)
3 2003
Actcameinto force
INDUSTRIALDESIGNS/DESIGNS
 PatternsandDesignsProtectionActintroducedfortheprotectionof
1 1872
newpatterns anddesigns.
 Amended asInvention and DesignAct,1988fortheprotectionofnew
2 1888
inventionsand designs.
3 1911  RenamedasTheIndianPatentandDesignAct.
 DesignAct,2000wasintroduced;separatedfromtheIndianPatent
4 2000
andDesignAct.
5 2001  DesignRules,2001introduced.
SEMICONDUCTORINTEGRATEDCIRCUITS:LAYOUTDESIGNS (SICLD)
 SemiconductorIntegratedCircuitsLayoutDesign(SICLD)Act2000
1 2000
introducedas asignatoryofWTO.
2 2001  SICLDRulesintroduced.
PROTECTIONOFPLANTVARITIESANDFARMERSRIGHTS
 ThePatentAct, 1970excluded plantsandanimalsinwhole orin any
1 1970
partfrom patentability(in 1999 amendments).
 Enactmentofprotection ofnewvarietiesofplantsonsuigenerisbasis
2 1991
on the lines ofUPOV.
 InlinewithTRIPSAgreementenactmentofPPV&FRActwas
3 2001
introduced.
BIOLOGICALDIVERSITY
 TheBiological DiversityAct, 2002introducedonthelinesofthe
1 2002
ConventiononBiological Diversity(CBD, 1992).
 EstablishmentofNationalBiodiversityAuthority.
2 2003
 Designationofrepositories undertheBiological DiversityAct
3 2004  BiologicalDiversityRulesintroduced.
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PATENTS
 A patent is an exclusive right granted for an innovation that generally provides a
newwayof 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
andcomplete toenableit tobe replicatedbyapersonwithanordinarylevelofskillinthe relevant
field.

CONDITIONSFOROBTAININGA PATENT PROTECTION

There isa setcriterion,as provided inSection 2(1)(j) of the PatentsAct,1970,which mustbe

fulfilledforaproduct oraprocess toqualifyforthe grant [Link] criterion encompasses:
 Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application
is new and not known to anybodyin the world. In other words, the innovation is
o notin theknowledgeof thepublic,
o notpublishedanywherethroughanymeans ofpublication and
o notbeclaimedin anyotherspecificationbyanyotherapplicant.
 Inventivestep-Notobviousto theperson(s)skilled inthe [Link] is
o atechnical advancementover theexistingknowledge,
o possesseseconomicsignificance and,
o notobvioustoapersonskilledintheconcerned subject.
 Capable of industrial application - For the benefit of society. The invention is capable of
being made or used in any industry.

TOPATENTORNOTTOPATENTAN INVENTION

 Once an invention has been developed, the inventor has to decide whether to exploit the
inventionforpersonalbenefitsasprovidedbythe statutorylawsofthecountryorputitin the
public domain.
 By and large, the inventor prefers the former option. Only a miniscule of inventions is
placed in the public domain without claiming any benefits.
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 In the latter case, anybody can exploit the innovation for commercial or societal benefit
without paying any money to the inventor.
 If the owner of an invention wishes to seek monetary gains, he can choose from either of
the two options, i.e. patenting or Trade Secret. If the inventor is absolutely sure of
maintaining the secrecy of invention for a very long period (maybe 100 years or more)
andtheprobabilityofreverseengineeringofthetechnologyisnilorverylow,thenthe
―TradeSecret‖categoryispreferred.
 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 publicdomain, then the ―patent‖ categoryis preferred.

RIGHTSASSOCIATEDWITHPATENTS

 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.
 Thepatent ownermaypermit otherparties to use theinvention onmutuallyagreedterms.
 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.

ENFORCEMENTOFPATENTRIGHTS

 Enforcement is the process of ensuring compliance with laws,regulations,

rules,standards and social norms.
 Patentrights are usuallyenforced bythe judicialcourts.
 TheCourt of Lawhas the authorityto stoppatent infringement.
 However,themainresponsibility formonitoring,identifying andtaking actionagainst
infringers of a patent lies with the patent owner.
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INVENTIONSELIGIBLEFOR PATENTING

 Patentsmaybe grantedforinventions/technologiesinanyfield, rangingfromapaperclip or

ballpoint pen to a nanotechnology chip or a Harvard mouse (mouse withcancergenes).
 It is a general belief that patents are awarded only to major scientific breakthroughs. But,
it is not true.
 In fact, the majorityof 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 changesin the structure of the penicillin resulting in new/improved properties, such
as acid stabilityor temperature stabilityor killing a wide range of microbes (germs). The
new antibiotic molecules, known as second, third or fourthgeneration penicillin‘s can also
be patented.
 In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen,
eyeglasses, textiles, mobile phones, wrist watch, bicycle, scooter, car, television, cold
drinks, beverages and many more.
 It is not uncommon that many products contain several inventions(patents) e.g. the laptop
computer involves hundreds of inventions working together. Similarly, cars, mobile
phones and televisions have many patented components.

NON-PATENTABLEMATTERS

In thePatentAct, 1970, therearesomeexclusion (product andprocesses)that cannot be patented,

such as:
 Inventioncontrarytopublicmorality-amethodforhumancloning,amethodfor gambling.
 Merediscovery-findinganewmicro-organismoccurringfreelyinnature,lawsof gravity.
 Merediscovery of anew formof a known substance - useofaspirin forheart
treatment. Aspirin was patented for reducing fever and mild pains.
 RM&IPR– 21RMI56

 Frivolous invention - dough supplemented with herbs, merely changing the taste of the
dough, 100 years calendar, and bus timetable.
 Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to a
bucket.
 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 - inventions
relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite,
Lithium and more as notified by the Central Government from time to time.
 Literary, dramatic, musical, artistic work - books, sculptures, drawings, paintings,
computer programmer, mathematical calculations, online chatting method, method of
teaching, method of learning a language as they are the subject matter of Copyright Act.
1957.
 Topography of integrated circuits -protectionoflayoutdesignsofintegratedcircuitsis
provided separately under the Semiconductor Integrated Circuit Layout Designs Act,
2000.
 Plants and animals - plants and animals in whole or any part including seeds, varieties
and species and essentially biological processes for the production or propagation of
plants and animals are excluded from the scope of protection under patents.
 Traditional knowledge - an invention which in effect is traditional knowledge or which
is an aggregation or duplication of known properties of traditionally known components
are also excluded.

PATENTINFRINGEMENTS

 Once the patent is granted to the applicant, he owns the right to use or exploit the
invention in any capacity. Ifanyone uses the invention without the prior permission of
theowner,[Link] be
classified into two categories
 Direct Infringement -whenaproductissubstantiallyclosetoanypatented productorin 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
happenswithoutany [Link]
 RM&IPR– 21RMI56

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:
o Interlocutory/interiminjunction.
o Damagesoraccountsof profits.
o Permanentinjunction

AVOIDPUBLICDISCLOSURE OFANINVENTIONBEFOREPATENTING

 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,disclosureofaninventionbeforefilingapatentapplicationisunavoidable,
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 advisableto sign aNon-Disclosure Agreement (NDA)oranyotherconfidential
agreement to safeguards your interest

PROCESSOFPATENTING

 InIndia,theprocessof grant ofapatent isalengthyprocedurethat maytakeanywhere3-

[Link]
 RM&IPR– 21RMI56

 While the process of patenting includes – Prior art search, Choice of Application to be
Filed, Patent Application Forms, Jurisdiction of Filing Patent Application, Publication,
Pre-grant Opposition, Examination, Grant of aPatent, Validityof Patent Protection, Post-
grant Opposition

PRIORARTSEARCH

 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/she has to
check whether or not his invention already exists in the public domain.
 For this, he/she needs to read patent documents and Non-Patent Literature (NPL),
scientific journals/reports/magazines, etc.
 The information lying in the public domain in any form, either before the filing of the
patent application or the priority date of the patent application claiming the invention, is
termed as Prior Art.
 Conducting a prior art search before filing the patent has advantages as it averts
infringement, tracks research and development and provides access to detailed
information on the invention.
 The prior art search is carried out on the parameters such as novelty, patentability, stateof
the art, infringement, validity and freedom to operate.
 The commonly used databases for prior art search fall in two categories i.e. Patents
Databases and NPL. The patent databases are
o Indian Patent Advanced Search System (InPASS-
[Link]
o Patentscope(WIPO-[Link]
o Espacenet(EU-[Link]
o USPTO(USA-[Link]
o GooglePatentsAdvancedSearch([Link]
o OrbitIntelligence([Link]
intelligence/).
o Derwent Innovation ([Link]
innovation/).
 RM&IPR– 21RMI56

o PROQUEST([Link]
 Non-PatentLiterature(NPL)
o Scholarly publications: Handbooks, Textbooks, Withdrawn, Patents,
Encyclopedias, Journals (IEEE, Research Gate, Springer, Wiley Online Library,
etc.), Dissertations, NCBI‗s, PubMed, Conference Proceedings, Technical
Reports, Public Conferences, etc.
o Industry/trade publications: Industry reviews and public disclosures (Socialmedia,
YouTube, Books, Magazines, Datasheets, Blueprints, etc.).
o Others:Newspapers,Websites, Technologyblogs,Researcherswebsites,etc.
o Although, majority of NPL data is available freely on the public forum, some of
the journals are paid and can be accessed after paying the subscription.
o Major Patent Office‘s such as the United States Patent and Trademark Office's
(USPTO), European Patent Office (EPO), Japan Patent Office (JPO), etc. are
maintaining in house NPL databases to make patents examination more effective

CHOICEOFAPPLICATION TOBEFILED

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:

 Itischeaper,takeslesstime,andinvolvesfewer 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.
 Aprovisionalapplicationallowsyouto secureaprioritydateforthepatent applied.

PATENTAPPLICATIONFORMS

 AsperthePatentAct,1970(Section39)andthePatentsRules,2003(Rule7,54,135and sub rule

(1) of rule 20, the application for the grant of patent is filed using Form-1 and Form-2.
 RM&IPR– 21RMI56

 The information sought in Form-1 is general in nature i.e. Title of Application, Names of
Applicant(s) and Inventor(s), Type of Application (Ordinary, Convention,PCT-NP(PCT-
National Phase), Divisional, Patent of Addition, etc.).
 Whereas Form-2 seeks technical information and whether to file the provisional
application or complete the application. For Provisional Application, only Description of
the Invention and the Abstract is to be furnished. Whereas, CompleteApplication requires
Description of the Invention, Abstract, Claims and the manner inwhich invention have to
be performed.
 The Claims of the patent are a very crucial part of the specifications because they define
the actual boundary of the invention.
 Claims specify what is actually claimed by the invention and what is being sought to be
protected. It clearly describes what the patent does and does not cover
RM&IPR– 21RMI56
RM&IPR– 21RMI56
RM&IPR– 21RMI56
 RM&IPR– 21RMI56

JURISDICTIONOFFILINGPATENTAPPLICATION

Region States Address

IntellectualPropertyOfficeBuilding,Plot

Haryana,HimachalPradesh,Punjab, No. 32,

Rajasthan, Uttar Pradesh, Sector 14, Dwarka,

NORTH New Delhi-110078
Uttarakhand, Delhi and the Union
TerritoryofChandigarh,Jammuand Phone:011-28032491

Kashmir and Ladakh. Fax:011-28034301

Email:delhi-patent@[Link]
PatentOfficeIntellectualPropertyBuilding
AndhraPradesh,Karnataka,Kerala, [Link],Guindy,Chennai-600032
Tamil Nadu, Telangana and the Phone: 044-22505242
SOUTH
Union Territories of Pondicherry Fax:044-22502066
and Lakshadweep Email:chennaipatent@[Link]
BoudhikSampadaBhawan,AntopHill,S.M.
Maharashtra, Gujarat, Madhya Road, Mumbai - 400 037.
Pradesh, Goa and Chhattisgarh and Phone:022-24153651, 24148165
WEST
theUnionTerritoriesofDamanand Fax:022-24130387
Diu & Dadra and Nagar Haveli Email:mumbaipatent@[Link]
IntellectualPropertyOfficeBuilding,CP-2 Sector
V, Salt Lake City, Kolkata-700091 Phone: 033-

RESTOF 23679101,
RemainingStates 033-23671987
INDIA
Fax:033-23671988
Email: kolkatapatent@[Link]

PUBLICATION

 Once thepatentapplication has beenfiled at theRegional Patent Office,the patent

application is kept secret for 18 months in the Patent Office.
 RM&IPR– 21RMI56

 Aftertheexpiryof18 months (fromthedateoffilingoftheapplication orthepriority

claimeddate,whichever isearlier),the applicationispublishedinthe OfficialJournal of
Patent Office ([Link]
 The purpose of publishing the application is to inform the public about the invention.
The publication of an application is a mandatory step.

PRE-GRANTOPPOSITION

 If anybodyhas an objection to the invention claimed in the patent application, he/she 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).
 Forthis,theapplicanthas tofillaForm-9 andsubmit itto theController 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
 RM&IPR– 21RMI56

GRANTOFPATENT

 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.
 ThegrantedpatentispublishedintheOfficialJournalofthePatent 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.

VALIDITYOFPATENT 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-paymentofPatent RenewalFeemight resultinthecancellationofthepatent.
 Insomecountries, patent protectionmaybeextendedbeyond20years.
 The extension aims to compensate for the time expended on the administrative approval
procedure before products can be put on the market. The time taken for this procedure
means that the patent owner may sometimes not be able to benefit from his right for a
considerable period after the grant of the patent.

POSTGRANT OPPOSITION

 OncethepatenthasbeengrantedbythePatentOffice,itstillcanbechallengedby anyone within

one year from the date of publication of the grant of the patent.
 Thegrantedpatent canbechallengedeither viaaPatent Officeorin aCourtofLaw.
 Thesebodiesmayinvalidateorrevokeapatentuponasuccessfulchallengebythe interested
party on the grounds mentioned below:
 RM&IPR– 21RMI56

o The applicant for the patent wrongfully obtained the invention or any part of the
invention.
o Theinvention claimed has been publishedbeforetheprioritydate.
o Theinvention claimed was publiclyknown/ usedbeforethe prioritydate.
o Theinvention claimed isobvious anddoes notinvolveaninventive step.
o ThesubjectoftheclaimisnotpatentableasperChapterIIofthePatentAct, 1970.
o The details/specifications of the invention do not sufficientlyand clearlydescribe
the invention.

COMMERCIALIZATIONOFA PATENT

 The patent owner may grant permission to an individual/organization/industry to make,

use, and sell his patented invention. This takes place according to agreed terms and
conditions between the involving parties.
 Apatent ownermaygrantalicenseto athird partyforthereasons mentioned below:
o The patent owner has a decent job e.g. university professor and has no desire
oraptitude to exploit the patent on his own.
o Thepatentownermaynothavethenecessarymanufacturingfacilities.
o Themanufacturingfacilityisnotabletomeetthemarketdemand.
o Thepatentownerwishestoconcentrateononegeographicmarket;forother
geographical markets, he may choose to license the patent rights.
 Once the patent is granted, the patentee (person holding the rights to the patent) enjoysthe
exclusive rights to use the patented invention.
 Only the patentee has the right to license or deal with the patent for any deliberations.
Although, the validity of the granted patent is for 20 years (from the date of filing apatent
application), but the patentee is required to furnish information (Form-27), on an annual
basis relating to the commercialization/selling of the patent. It is called as
Working/Licensing of the Patent.
 Thelicensingofapatentcan beexclusiveor non-exclusive.
 RM&IPR– 21RMI56

 In an Exclusive License, 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 theControllerofPatents for grant ofCompulsoryLicensing (ofthe patent),
subject to the fulfillment of following conditions:
o Reasonablerequirements ofthepublicconcerningthepatented inventionhavenot
been satisfied.
o Thepatentedinventionisnotavailable tothepublicatareasonable price.
o Thepatented inventionisnot workedin theterritoryofIndia.

NEEDFORPATENTATTORNEY/AGENT

 In general, applicants can prepare their patent applications and file them without
assistance from a patent attorney.
 However, given the complexity of patent documents, it is advisable to seek legal
assistance from a patent attorney/agent when drafting a patent application.
 Furthermore, the legislation of many countries requires that an applicant, whose ordinary
residence or principal place of business is outside the country, be represented by an
attorney or agent qualified in the country (which usually means an agent or attorney who
resides and practices in that country

CANAWORLDWIDEPATENTBE 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 countryin 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.
 RM&IPR– 21RMI56

 Toeaseout this issue, manyRegional Offices havebeen established which receivepatent

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.

DOINEEDFIRSTTOFILEAPATENTININDIA

 Yes, in general, Indian residents are required to file the patent application first in India.
Subsequently, they may file for patent protection in other countries.
 But for this, prior approval is needed from the Patent Office. However, this approval can
be waived off under the following circumstances:
o Theapplicant isnotanIndian resident.
o If 6 weeks have expired since the patent application was filed inIndia by an Indian
resident.
o If two ormoreinventors areworkingon an invention in aforeign countryand one of
the inventors is an Indian resident. The invention does not have a potential market
in India and hence does not wish to file the patent in India. In such a scenario, the
Indian resident has to seek Foreign Filing Permission (FFP) from an Indian Patent
Office.
o 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.
o 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.
 RM&IPR– 21RMI56

PATENTRELATED FORMS

 Thereareover30 patent-relatedforms. Someofthemarementioned below.

FEESSTRUCTURE

 AsperthepatentAct,1970andThePatentsRules(1972),therequisitefeehasbeen
specified based on the type of form/s to be submitted to the Office.
 Electronicallyfiledapplicationsare10%cheaper thanphysical filing.
 RM&IPR– 21RMI56

TYPESOFPATENTAPPLICATIONS

 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
applicantonhisownortomeettheofficialobjectiononthegroundofpluralitymay
 RM&IPR– 21RMI56

divide the application and file two or more applications. This application divided out of
the parent one is known as a Divisional Application.
 Patent of Addition Application - When an invention is a slight modification of the
earlier invention for which the patentee has already applied for or has obtained a patent,
the applicant can go for Patent of Addition, if the modification in the invention is new.
Benefit -Thereis no need to payaseparaterenewal feeforthePatent ofAddition, during the
term of the main patent. It expires along with the main patent.
 Convention Application - If a patent application has been filed in the Indian Patent
Office and the applicant wishes to file the same invention in the one or more Convention
countries (e.g. Paris Convention) by claiming the same prioritydate on which application
was filed in India, such an application is known as Convention [Link]
has to file Convention Application within 12 months from the date of filing in India to
claim the same priority date.

COMMONLYUSEDTERMSIN PATENTING
Sl. No Terms Definition
1 Inventor Creatorofaninvention
Organization/individual/industry that files a patent
2 Applicant
applicationorappliesforapatent
3 Patentee Aperson/organization whoownsthepatent(granted)
Organization/individual/industrywhichobtainsalicense of
4 Licensee the patent from the Patentee for commercialization
purpose
5 Assignee Apersoninwhosename patenthasbeenassignedlegally
Theapplicantispayingtheannuity(renewalfee)forthe
6 Inforce
patenttokeepitalive(Active Patent)
Thesellingofapatenttoanindividual/partyfor
7 Workingofapatent
commercialexploitationiscalledasworkingofa patent
Patent specification is a written description of the
8 PatentSpecification inventionandthewayofrepresentationandprocessof
makingandusingthesame
 RM&IPR– 21RMI56

Itisatime-limitedright,activatedby thefirstfilingofan
9 Priorityright
applicationforapatent
Theclaimeddateonwhichthefirstapplicationforthe
10 Prioritydate
invention is filed
Claims can be defined as the scope of the protection
conferred by a patent, or the protection sought in a patent
11 Patentclaims
[Link]
subjectmatteris protected bythepatent
Anapplicationfiledtoobtainpatentsindifferent
12 Nationalphaseapplication countries simultaneously based on a single
International/PCT application
Therevocationmeanscancellationofthepatentdueto
13 Patentrevocation certain reasons, such as lack of patentability or
wrongfully obtaining a patent
Onceapatenthasbeenceased([Link]-payment
14 Restorationofpatent of the fee) it can be restored within a permitted period by
paying the requisite fee

NATIONALBODIESDEALINGWITH PATENTAFFAIRS
There are many departments/organizations/bodies dealing with various aspects of patents,
namely,
 The Indian Patent Office (IPO) - The Office of the Controller General of Patents,
Designs and Trade Marks generally known as the Indian Patent Office, is anagency
undertheDepartmentforPromotionofIndustryand InternalTradewhichadministersthe Indian
law of Patents, Designs and Trade Marks.
 Department for Promotion for Industry and Internal Trade (DPIIT) - DPIIT, earlier
known as the Department of Industrial Policy and Promotion (DIPP), under the Ministry
of Commerce and Industry, Govt. of India, is the apex IP body. It came into existence in
1995 and is the main body for regulating and administering the industrial sector.
 Technology Information, Forecasting and Assessment Council (TIFAC) - The
importance of undertakingtechnologyforecasting and assessment studies on a systematic
 RM&IPR– 21RMI56

and continuing basis was highlighted in the Government of India‗s Technology Policy
Statement (TPS) of 1983. Therefore in 1985, TIFAC was established as an autonomous
body, registered as a Society in 1988, under the Department of Science and Technology.
It is an important cog in filling a critical gap in the overall Science and Technology
system of India. Its mission is to assess the state-of-art of technologies and set directions
for future technological developments in India in important socio-economic sectors
 National Research Development Corporation (NRDC) - NRDC, an enterprise of
Department of Scientific & Industrial Research (DSIR), Govt. of India, was set up
in1953withamandatetodevelop,promoteandtransfer/commercialize IPandtechnologies
emanating from Higher Education Institutes (HEIs), R&D research
laboratories/institutions and Public Sector Undertakings (PSUs). NRDC has a repository
of 2500 Indian technologies, filed over 1700 Patents and transferred about 5000
technologies in different sectors in India. It has also created a technology data bank
([Link] containing information regarding technologies available in
various fields, such as electrical & electronics, mechanical, coil, mining, biotechnology,
healthcare, leather, etc.

UTILITYMODELS

 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 [Link]
the requirement of industrial application or utilityis the same as that for patents.
 Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since
the grant of a UtilityModel 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/processesand
bringing more financial rewards. Such inventions pass the requirements set aside for
Utility Models but not for patents.
 RM&IPR– 21RMI56

 The life of the Utility Model is less as compared to the patents. It varies from 7-15 years
in different countries.
 Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland,
Russian Federation and Spain, provide protection for Utility Models under theirIPRlaws.
 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.