Chapter 3

Patent and Copyright

Patent

Elements of Patentability

The requirements for patentability of inventions can be considered as one of the most important
parts of patent law. They form the basis for grant of a patent, scope of protection, and patent
validity, among others. At a general level, they influence the efficiency of the patent system in
achieving its objectives of promoting scientific and technological progress,
economic/industrial growth and public benefit. Owing to their value, they may be termed as
essential parts of the patent machinery. If they fail, the patent machine also fails.

Under the Indian Patents Act (“Act”), patentability requirements and their elements have not
been laid out in an organised manner. Though the definitions capture the requirements at a
general level, finding specifics of some of the requirements requires more effort than expected.
Like in many other countries, there are five (5) patentability requirements under the Indian
patent law.

PATENTABILITY REQUIREMENTS

An invention will be eligible for a patent grant in India only if it satisfies the patentability
requirements. To be patentable, the invention must satisfy all of the requirements, which check
worthiness of the invention for patent grant from different perspectives. Some of the
requirements are relatively easy to satisfy when compared to others, but all of them are equally
important for purposes of patentability assessment.

The five (5) requirements for patentability of inventions in India are:

A. Patentable Subject Matter;

B. Industrial Applicability;

C. Novelty;

D. Inventive Step; and

E. Specification.

Patentability requirements may be viewed as filters arranged in succession for purposes of

analysing patentability of inventions. Only inventions that pass through all the filters will be
eligible for patent grant, and those that get filtered out will be refused. The picture below
provides a view of the patent filter model.

INVENTIONS

Under Section 2(1)(j) of the Patents Act, inventions are defined as those that are either products
or processes, are novel, have an inventive step, and are industrially applicable. When seen
through the lens of patent law, inventions are only those products and processes that satisfy
patentability requirements. The definition of invention however includes only three of the
patentability requirements, and inventions must satisfy two additional requirements to be
eligible for patent grant. One of them relates to the list of subjects that are not patentable even
if they are inventions, and the other reviews the description and workability of the invention.

A. PATENTABLE SUBJECT MATTER

The Patents Act does not use the phrase patentable subject matter anywhere, and this phrase
has been borrowed from the US Patent Code. The TRIPS Agreement uses the phrase
‘Patentable Subject Matter’ in a context broader than that of this chapter. For purposes of this
chapter, patentable subject matter refers to subjects that are considered patentable, and those
that are excluded from patentability.

Patentable subjects are provided in broad terms in the definition of invention, which states that
an invention under the Act must either be a product or process. In other words, in order to be
considered for patentability an invention must either be a product or process. Patent eligible
subjects are therefore products and processes without any limitation of field, technology, or
any other. At a general level, every invention is either a product and/or process, and
patentability objections at this level are not very common. However, the Patents Act provides
a long list of inventions not patentable, which form material part of the patentable subject
matter requirement.

Sections 3 and 4 of the Patents Act provide a list of inventions that are not patentable. While
Section 3 deals with a general list of subjects not considered as inventions, Section 4 excludes
inventions relating to atomic energy from the scope of patentability. If the subject matter of an
invention falls within the list provided in the said sections, the invention will not satisfy the
patentable subject matter requirement.

The interplay between Section 2(1)(j), which defines ‘invention’ and Section 3, which provides
a list of subjects that are not inventions can sometimes get very complicated. For several
subjects not considered as inventions under Section 3, the analysis of their scope and coverage
overlaps with analysis of invention assessment criteria under Section 2(1)(j). Having said that,
the Supreme Court in the Novartis case stated that determination of Section 2(1)(j) and Section
3 are independent of each other and must be conducted separately. The demarcation of
assessment by the Supreme Court means that the determination of one should not have a
bearing on the other, but that is more theoretical than practical with respect to many excluded
subjects.

Section 3 has sixteen (16) clauses each of which list multiple subjects that are not considered
inventions. By one count, around forty-six (46) subjects form part of the sixteen (16) clauses.
On its face, the long listing of non-patentable inventions restricts the scope of patentable subject
matter in India. However, the statutory language of the subjects leaves scope for interpretation,
which has been, and will continue to be employed by applicants to carve out patentable
inventions from the scope of unpatentable ones.

To elucidate the applicability and analysis of Section 3, the following important exclusions to
patentability in the section have been discussed in this chapter:

1. New Forms (Section 3(d));

2. Computer Programs Per Se (Section 3(k));
3. Plants and Animals (Section 3(j)); and
4. Traditional Knowledge (Section 3(p)).

Section 3(d) that deals with new forms reads as follows:

“3. What are not inventions.

The following are not inventions within the meaning of this Act, –

(d) the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property
or new use for a known substance or of the mere use of a known process, machine or apparatus
unless such known process results in a new product or employs at least one new reactant.

Explanation. —For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites,
pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other
derivatives of known substance shall be considered to be the same substance, unless they differ
significantly in properties with regard to efficacy;”
The clause excludes new forms, new uses and new properties from the scope of patentability.
With respect to new forms, the explanation provides an illustrative list of forms that are
considered as the same substance as the known substance. An exception is provided in the
clause based on efficacy, satisfying which a new form will be patentable. If the new form has
enhanced efficacy when compared with the known efficacy of the known substance, the new
form will be patentable. This is a narrow exception to exclusion from patentability, but is
nevertheless an invaluable opening to satisfy the patentable subject matter requirement.

Section 3(d) has been a hotly contested clause, and has by far been the most reported and
publicized provision of the Indian Patents Act. This clause was the subject of discussions and
debates, many of them led by Shamnad Basheer, a distinguished IP professor, who made
significant contributions with respect to the provision’s scope, and its role in enabling access
to medicines. Analysis of whether a new form is patentable involves the following steps:

1. Identifying the known substance;

2. Identifying the known substance’s purpose and efficacy;
3. Checking if the invention being claimed is a new form of the known substance;
4. Identifying the efficacy of the new form; and
5. Comparing the efficacy of the new form with the efficacy of the known substance with
respect to the purpose.

If the efficacy of the new form for the purpose for which the patent is claimed is higher than
the efficacy of the known substance for the same purpose, than the new form is considered to
have enhanced efficacy, which makes it patentable subject matter. Advantages provided by the
new form, which are unrelated to the purpose of the substance in question will have no value
in proving enhancement of efficacy. In the Novartis case, the Supreme Court held that attributes
of a new form such as enhanced bio-availability and stability, and reduced hygroscopicity are
not sufficient to prove enhanced efficacy because the said advantages are not related to the
purpose of the invention.
Novartis Case Brief

The Appellant in the case, Novartis AG, filed an application for patent in 1998 for a
crystalline salt form of Imatinib and its use in cancer treatment. It specifically claimed the
methanesulfonic acid addition salt form of the compound, Imatinib, called as Imatinib
Mesylate (commonly referred to as Glivac or Glivec), in its beta crystalline form, which is
non-needle shaped, having better flow properties, thus better processible, less hygroscopic
and more thermodynamically stable, thus better storable than its needle shaped, alpha
crystalline form, characterized by the differences in the melting points and the X-ray
diffraction diagrams. It also claimed that the Beta crystalline form of Imatinib Mesylate has
higher bio-availability when compared to the free base form of Imatinib by thirty percent.
The application was rejected by the patent office and later by the Intellectual Property
Appellate Board on the ground that the compound did not meet the requirements of Section
3(d), which excludes new forms of a known substance with known efficacy from the scope of
patentability unless enhanced efficacy is shown. The Appellate Board relied on the decision
of the Madras High court, which held that enhanced efficacy means enhanced therapeutic
effect and stated that the compound in question lacked efficacy and therefore fell within the
scope of Section 3(d). It however agreed that the compound satisfied the other patentability
requirements such as industrial applicability, novelty and inventive step. Novartis challenged
the decision of the Appellate Board before the Supreme Court of India, which led to this
decision.

Analysis

Reiterating its prior decisions stating that the text of a statute must be seen in the light of its
context, which is understood from internal and external sources, the Supreme Court reviewed
the history of the patent law in India from 1911 to 2005, with specific emphasis on
Agreement on TRIPs and changes brought about for its compliance. Stating that patent
systems are not created for inventors but in the interests of national economy, the Court
pointed out how the patent law in India impacted the pharmaceutical industry. Noting that the
growth of Indian pharmaceutical and chemical industry was propelled by the 1970 Patents
Act, which enabled effective health care in India and many other countries, the Supreme
Court observed that the changes in patent provisions to comply with TRIPs agreement were
brought about bearing in mind the context of health care as served by the Indian
pharmaceutical companies. Though the Court cited discussions about Section 3(d) in the
parliament and its perceived role in safeguarding access to health, it did not delve into the
role of public health and public interest in interpreting Section 3(d).

Talking about patentability, the Court pointed out that an invention would be patentable only
if it satisfies the twin tests of invention, which tests novelty, industrial applicability and
inventive step, and patentability, which is provided under sections 3 and 4. Though certain
products or processes are inventions in the general sense, the Court observed that they may
not be eligible inventions under the patent law. Discussing the backdrop of Section 3(d), the
Court pointed out that the section primarily deals with pharmaceutical and chemical
inventions and that its objective was to prevent abuse of product patents in medicines.
According to the Court, the amended portion of section 3(d) clearly sets up a second tier of
qualifying standards for chemical substances/pharmaceutical products in order to leave the
door open for true and genuine inventions but, at the same time, checks any attempt at
repetitive patenting or extension of the patent term on spurious grounds.
With respect to Imatinib Mesylate, pre-cursor of the invention in question, the Supreme Court
after analyzing the scope of a prior patent filed by the Appellant on Imatinib, infringement
action initiated by the Appellant against NATCO, an Indian pharma company, and articles
published by the inventor, came to the conclusion that Imatinib Mesylate was not new and
lacked inventive step. It pointed out that the salt form was covered in the US Patent, which
claimed Imatinib and all its pharmaceutically acceptable salt forms. While coming to the said
conclusion, the Court pointed out that the scope of claims in a patent cannot go beyond the
disclosure and teaching in the patent. It stressed that it did not want the law of patents to
develop on lines where there may be a vast gap between the coverage and the disclosure
under the patent; where the scope of the patent is determined not on the intrinsic worth of the
invention but by the artful drafting of its claims by skillful lawyers, and where patents are
traded as a commodity not for production and marketing of the patented products but to
search for someone who may be sued for infringement of the patent.

Having established that Imatinib Mesylate formed part of prior disclosure, the Supreme Court
compared its efficacy with that of Beta Crystalline form of Imatinib Mesylate, which was its
polymorph, for purposes of Section 3(d). Stating that efficacy under Section 3(d) for
pharmaceutical substances, meant therapeutic efficacy, the Court reviewed the data with
respect to enhanced flow properties, increased thermodynamic stability, reduced
hygroscopicity and enhanced bioavailability, submitted by the Appellant, and concluded that
the Beta Crystalline form of Imatinib Mesylate did not have enhanced efficacy. The said
properties, according to the court, did not contribute towards enhancing the efficacy in
treatment of cancer when compared to the free base Imatinib or its Mesylate salt.

Discussing the meaning of efficacy, the Court stated that therapeutic efficacy of a medicine
must be judged strictly and narrowly. It came to this conclusion based on the fact that the
text added to section 3(d) by the 2005 amendment, which laid down the condition of
“enhancement of the known efficacy” and the fact that the explanation required the derivative
to “differ significantly in properties with regard to efficacy”. According to the Court, not all
advantageous or beneficial properties are relevant, but only such properties that directly relate
to efficacy, which in case of a medicine, is its therapeutic efficacy. The mere change of form
with properties inherent to that form would, as per the Court, not qualify as “enhancement of
efficacy” of a known substance. As a precautionary measure with respect to interpretation of
the judgment, the Court stated at the end that Section 3(d) does not bar patent protection for
all incremental inventions of chemical and pharmaceutical substances.

Following the Supreme Court’s judgment, several patents have been granted with respect to
new forms as applicants were able to show enhancement of efficacy related to the purpose of
the invention. Section 3(d) sets higher standards for new forms based on showing of
enhanced efficacy by way of enabling data and information, which calls for a change in
strategy with respect to disclosures made in patent documents as well as timing of filings. It
places higher standards for patentability of new forms, which are to be tested by the extent of
their efficacy, and does not completely bar their patentability.

i) Computer Programs Per Se

Section 3(k), which excludes mathematical algorithms, mathematical methods, business

methods and computer programs per se from patentability reads as follows:

“3. What are not inventions.

The following are not inventions within the meaning of this Act,—

(k) a mathematical or business method or a computer programme per se or algorithms;”

‘Computer programs per se’ are excluded under Section 3(k), but other computer program
inventions are patentable. The general dictionary meaning of “per se” is “by itself” or “in
itself” or “as such” or “intrinsically.” The said definition has been cited in the Guidelines
with respect to computer related inventions (CRI) that form part of the Manual of Patent
Office Practice and Procedure. (MPPP), [Link] per the CRI guidelines, any invention that
includes only a computer program that covers instructions to a computer is not patentable.
Representing the computer program in the form of a process, system, apparatus, device,
computer readable medium, product, or otherwise will not give rise to patentability if what is
being claimed is in substance a computer program per se. However, if the invention being
claimed includes something more than a computer program, it will not be covered under the
exclusion.

As of date, no court has clearly expounded the meaning of what amounts to a ‘computer
program per se’ and what does not amount to such a program. In the Ericsson case, the Delhi
High Court observed in an interim order that the existence of technical contribution or
technical effect may be used to differentiate computer programs that are per se from those
that are not. But the Court did not delve into the question of whether the computer program in
the case was patentable or not, and the applicability of the technical contribution/effect test
that is followed in Europe to determine patentability of computer programs in India is still
open. Having said that, the MPPP uses language similar to that of the technical contribution
test and decisions of the patent office based on the said test are not uncommon.

To add to the confusion, the Intellectual Property Appellate Board (IPAB) has not followed a
specific approach in assessing patentability of computer programs under Section 3(k). In a
case relating to a system for analyzing speech voice signal, the IPAB held that technical
advance is not sufficient to make excluded subjects under Section 3(k) patentable. In
another case involving a patent application relating to a software application service provider,
the IPAB stated that the requirement of novel hardware for patentability of computer
programs is not valid. In another case, IPAB held that a computer operated or computer
controlled technical instrumentation processing of the utilities to achieve the target in a wind
machine is a process that produces technical effect and result, and is not excluded from
patentability under Section 3(k). It is well accepted that computer programs embedded in
hardware are patentable subject matter and that novelty of hardware is not material to
computer program patentability, but the specific test that will determine whether a computer
program is ‘per se’ or not is still undefined.

As it stands today, the Indian Patent Office (IPO) rejects patents that merely claim computer
programs irrespective of the way in which they are claimed as a general practice. It accepts
patent applications that claim computer programs as part of hardware, programs that form
part of special purpose devices, programs that interact with networks, and programs that give
instructions to devices outside the computer as patentable subject matter. In such inventions,
a computer program is considered as just one part of the whole inventive concept, and
therefore, not computer program per se. Patentability of computer program inventions that
claim more than a computer program but less than those that form part of, or interact with
external hardware is fraught with uncertainty.

For illustration, a computer program for making a playlist on a computer is considered as ‘per
se’ and excluded, but a computer program to make a playlist on a mobile phone is patentable
subject matter. However, it is not certain if a computer program that collects data from a few
websites and prepares a playlist on a computer is patentable subject matter or not. All the
computer programs may be rejected based on novelty or inventive step requirements, but the
analysis of those requirements do not play a role in assessing patentable subject matter.

ii) Plants, Animals and Parts

Section 3(j) of the Patents Act that excludes plants, animals and their parts from patentability
reads as follows:

“3. What are not inventions.

The following are not inventions within the meaning of this Act, —
(j) plants and animals in whole or any part thereof other than microorganisms but including
seeds, varieties and species and essentially biological processes for production or propagation
of plants and animals;”

The clause excludes the following subjects:

1. Plants as a whole and their parts;

2. Animals as a whole and their parts;
3. Seeds;
4. Plant and animal varieties;
5. Plant and animal species; and
6. Essential biological processes for production and propagation of plants and animals.

On its face, Section 3(j) excludes plants and animals without any limitations. It excludes all
kinds of plants and animals including those that are the result of breeding and genetic
modification. The words ‘varieties’ and ‘species further qualify the general exclusion from
patentability. Seeds are also not patentable, and the same applies to biological processes for
creating and spreading plants and animals, which are essential for the said purposes.
Microorganisms are excepted from the scope of the exclusion, and are patentable subject
matter.

With a basic interpretation of the language used in the clause, it may be concluded that the
exclusion from patentability extends to multi-cellular organisms and essential processes for
their production and propagation. The caveat however is that the multi-cellular organisms
must be considered as either plants or animals. As microorganisms are unicellular, it may be
concluded that subject matter at the cellular level and lower is not excluded under Section
3(j). At the genetic level, complementary DNA is considered patentable, and so are
biotechnological inventions that are cellular or sub-cellular. However, in the Monsanto case,
the Delhi High Court came to the conclusion that gene constructs are parts of plants, and are
therefore, not patentable.

Monsanto Case Brief and Comment

Monsanto (Monsanto Technology LLC.) holds an Indian Patent (Patent No. 214436,
hereinafter referred to as “BT Patent”) with respect to gene sequences and methods for
inserting such gene sequences into plant cells to express Bacillus thuringiensis (BT) Delta-
endotoxin to provide Bollworm resistance in plants. The final granted patent has two sets of
claims: one set claiming the isolated, purified and modified gene sequences, and the second
set claiming methods of inserting the gene sequences into plant cells. Claims with respect to
transgenic plants, hybrid varieties and seeds that formed part of the patent application were
rejected during prosecution by the Indian Patent Office.
Nuziveedu (Nuziveedu Seeds Ltd.), a licensee of Monsanto’s BT Patent, initially challenged
the ‘trait fee’ charged by Monsanto, and later challenged the license validity based on claims
of patent invalidity. Nuziveedu contended that Monsanto’s BT Patent is not valid because the
subject matter of the invention falls within the scope of excluded inventions under Section
3(j) of the Patents Act.

BT PATENT CLAIMS

Independent claims of BT Patent read as follows:

“1. A method of producing a transgenic plant comprising incorporating into its genome a
nucleic acid sequence comprising a plant functional promoter sequence operably linked to a
first polynucleotide sequence encoding a plastid transit peptide, which is linked in frame to a
second polynucleotide sequence encoding a Cry2Ab Bacillus thuringiensis d- endotoxin
protein, within said plastid transmit peptide functions to localize said d- endotoxin protein to
a subcellular organelle or compartment.”

“25. A nucleic acid sequence comprising a promoter operably linked to a first polynucleotide
sequence encoding a plastid transit peptide, which is linked in frame to a second
polynucleotide sequence encoding a Cry2Ab Bacillus thuringiensis d- endotoxin protein,
wherein expression of said nucleic acid sequence by a plant cell produces a fusion protein
comprising an amino-terminal plastid transit peptide covalently linked to said d- endotoxin
protein, and wherein said fusion protein functions to localize said d- endotoxin protein to a
subcellular organelle or compartment.”

ANALYSIS AND COMMENT

The Court started its analysis of patentability by constructing Section 3(j) of the Patents Act.
It stated that the mechanism adopted by Parliament was to spell out what was not patentable
i.e., plants, seeds, plant varieties, – whole or part and then exclude micro-organisms, but
clarify that the exclusion would not apply to “seeds, varieties and species and essentially
biological processes for production or propagation of plants and animals.” In the Court’s
words, “the expression ‘includes’ is used as a legislative device to enlarge the meaning of
words or phrases “occurring in the body of the statute; and, when it is so used, these words or
phrases must be construed as comprehending, not only such things as they signify according
to their natural import, but also those things which the interpretation clause declares that they
shall include (Ref. Dilworth v. Stamps Commissioners (1899) A.C. 99) which the Supreme
Court of India consistently followed.”
Based on the aforestated, the Court looked at dictionary definitions to define the meaning of
the term “microorganism” as the term was not defined in the Patents Act or any other related
statute. Citing meanings from Cambridge, Oxford and Black’s Law dictionaries, the Court
stated that gene sequences in the BT Patent are not microorganisms because they have no
existence of their own, and that they are useful only after their introgression at a particular
place, and because seed materials must undergo hybridization to suit local conditions. While
arriving at the conclusion, the Court did not explain how the aforestated reasons excluded
gene sequences that are present in Bacillus thuringiensis, a microorganism, from the scope of
patentability, and how the meaning in dictionaries was relevant for this analysis. Neither did
the Court feel the need to elaborate why parts of microorganisms are not patentable while
microorganisms themselves are patentable. Instead, it went on to point out that Monsanto
failed to deposit the biological material and that it did not disclose the source and
geographical origin of the material, which is not only irrelevant with respect to the subject
matter of the invention, but is also not required if the invention can be described without the
deposit.

Inexplicably, the Court then went on to elaborate the meaning of the phrase “essentially
biological process” in Section 3(j) by citing the European Patent Convention, EU Directive,
and several European decisions to conclude the well-known fact that creating hybrid plants
through breeding amounts to an essentially biological process despite the human intervention.
It discounted and did not address the fact that introducing a gene through genetic engineering
through human intervention makes the process not essentially biological. The Court then
went on to conclude that transgenic plants are not patentable in India, and therefore, gene
sequences that form part of transgenic plants are also not patentable because the gene
sequences can be propagated through breeding, which is an essentially biological process.
The reasoning may make some sense from the infringement perspective, but the relevance of
patentability of transgenic plants and the process of breeding for determining gene sequence
patentability is legally and scientifically absurd because they are independent, unconnected
subjects for purposes of patent analysis.

Thereafter, the Court went on to point out that gene sequences are inert and inanimate, and
that they are relevant only as parts of seeds and plants. Once a gene sequence is introduced
into seeds and/or plants, what follows is an essentially biological process, which, according to
the Court, makes the gene sequences and processes of introducing them unpatentable under
Section 3(j). In other words, the Court stated that because plants, seeds and breeding
processes are not patentable, gene sequences and processes related to them are also not
patentable. Here, the Court has wrongfully combined different inventions to analyze
patentability of one based on patentability of another.
Contrary to reason, the Court finally concluded that gene sequences are not patentable
because plant variety protection and patent protection are mutually exclusive and not
complementary. By the said logic, gene sequences must be patentable because plant variety
protection statute does not protect gene sequences. the Court then went ahead and gave an
opportunity to Monsanto to acquire plant variety protection if it so desires by claiming the
priority of the patent filing. Leaving aside the question of whether the Court can grant such a
permission, there may not be any term left for plant variety protection to subsist from the
patent priority date unless the Court wishes to grant protection from the plant variety filing
date.

As of the date of this publication, the decision of the Delhi High Court has been overruled by
the Supreme Court, and the case has been remanded for a full trial on the patentable subject
matter issue. On full trial, the Court will hopefully arrive at a conclusion that makes legal and
scientific sense.

iii) Traditional Knowledge

`Section 3(p) that excludes subject matter relating to traditional knowledge reads as follows:

“3. What are not inventions.

The following are not inventions within the meaning of this Act –

(p) an invention which in effect, is traditional knowledge or which is an aggregation or

duplication of known properties of traditionally known component or components.”

Three types of inventions are excluded from patentability under the clause:

Inventions that are in effect traditional knowledge;

Aggregation of known properties of traditional knowledge components; and
Duplication of known properties of traditional knowledge components.
Section 3(p) excludes inventions that claim traditional knowledge and its components, but
does not bar inventions that are based on traditional knowledge. In other words, an invention
is not excluded under the clause merely because it relates to traditional knowledge. Specific
phrases such as “in effect traditional knowledge” and “aggregation or duplication of known
properties,” provide sufficient scope for interpreting inventions out of the scope of the
exclusion. For example, use of ginger and celery as aphrodisiacs is known in traditional
knowledge and is not patentable subject matter, but active ingredients in ginger and celery
that enhance libido will not be excluded from patentability if those ingredients are not
traditionally known.

The Council of Scientific and Industrial Research (CSIR) maintains a database of traditional
knowledge called as the Traditional Knowledge Digital Library, which has 2.5 lakh
formulations pertaining to Ayurveda, Unani and other ancient medicinal systems in India. It
documents information relating to traditional knowledge with the objective of preventing
patent grants over subject matter covered in TKDL. As of date, nine (9) patent offices
including those of India, US and Europe have access to the library, and efforts are in progress
to provide access to other patent offices. The information in TKDL is available to Indian
patent examiners to search for traditional knowledge and assess patentability of traditional
knowledge-based inventions.

The standards for assessing patentability of inventions relating to traditional knowledge are
high compared to other inventions, and it is relatively difficult to convince the IPO and
Courts to grant patents on modifications or improvements over traditional knowledge. In a
case involving a traditional basket for hauling farm produce called ‘Kilta,’ the Himachal
Pradesh High Court held that an invention claiming a plastic long basket instead of the
traditional one made of bamboo with adjustable straps is not patentable under Section 3(p).
The Court came to the said conclusion because mere replacement of bamboo with plastic and
addition of straps, which are known in the prior art, does not make the invention an
enhancement over traditional knowledge. Though the inventor in the case increased the size
of the traditional basket, made it lighter and easy to carry, the Court placed the invention
within the scope of mere aggregation and duplication of traditional knowledge components
and revoked the patent.

B. INDUSTRIAL APPLICABILITY

Industrial applicability requirement checks if an invention is capable of being made or used in

an industry (Section 2(1) (ac)). If a product can be manufactured repeatedly and has at least
one use in an industry, it will be considered as industrially applicable. A process must be
capable of being used in an industry to satisfy this requirement. Uncertain, vague, futuristic or
non-specific use is not considered as valid use. The same is the case with insubstantial or non-
credible use of a product or process.

In a case between Cipla and Roche, the Delhi High Court reviewed some Indian and foreign
cases relating to the utility or industrial applicability requirement and observed that an
invention must be commercially viable. It must have a commercial use, and commercial
success need not be proved. At a basic level, the invention must have a practical use and has to
be useful for the purpose claimed in the patent specification. Nothing more will be required to
prove utility of an invention for patentability.

In another case between MSD and Glenmark, the Delhi High Court applied principles for
industrial applicability laid down by the UK Court of Appeals to arrive at the conclusion that
Sitagliptin, a pharmaceutical compound, is industrially applicable. The principles cited by the
Court are as follows:

” i) The patent must disclose “a practical application” and “some profitable use” for the claimed
substance, so that the ensuing monopoly “can be expected [to lead to] some … commercial
benefit”;

ii) A “concrete benefit”, namely the invention’s “use … in industrial practice” must be
“derivable directly from the description”, coupled with common general knowledge;

iii) A merely “speculative” use will not suffice, so “a vague and speculative indication of
possible objectives that might or might not be achievable” will not do;

iv) The patent and common general knowledge must enable the skilled person “to reproduce”
or “exploit” the claimed invention without “undue burden”, or having to carry out “a research
programme”; …”

By applying the aforestated principles, the Court concluded that Sitagliptin is industrially
applicable even if it cannot be put to practical use due to an ineffective carrier.

C. NOVELTY

A product or process will be considered as an invention under the Patents Act only if it is novel
and inventive. Novelty simply means newness based on what is existing as of the priority date
of the patent application. An invention will be considered to be novel if it is different from
what is already existing, which is referred to as ‘prior art.’ Novelty is always assessed in the
light of a single prior art reference at a time, and prior art references are not combined for
novelty analysis. Having said that, general knowledge of the art not expressly provided in a
prior art reference may be read into the reference.

Novelty has not been defined under the Patents Act, and is provided under different sections
pertaining to examination, anticipation, opposition and revocation. For purposes of novelty as
well as inventive step analysis, prior art includes the following:
i. Prior patents relating to the invention, which include patent applications and granted patents
in India, whose priority date precedes that of the patent application;

ii. Prior Publications relating to the invention, which include any document published before
the priority date of the patent application;

iii. Prior commercial working of the product or process in India before the priority date of the
patent application;

iv. Prior communication of the product or process to the Government before the priority date
of the patent application;

v. Prior display of the product in an exhibition before the priority date of the patent application;

vi. Prior public working of the invention in India, before the priority date of the patent
application; and

vii. Prior use of the invention in India before the priority date of the patent application.

Prior publication and prior patent filing will not negate novelty of an invention if the
publication or filing was based on wrongful obtainment, or in contravention of the rights of the
inventor or applicant. Public display in a Government recognised exhibition will also not
negate novelty of the invention. Also, prior publication of the invention before a learned society
will not amount to prior art for a period of twelve (12) months from the date of the said
publication. A grace period of twelve (12) months is also available for prior public working,
which amounts to a reasonable trial.

For a prior art reference to negate novelty of an invention, it must anticipate all elements of the
invention. A single prior art reference must possess all elements expressly or inherently. Even
if one element is missing the prior art will not anticipate the invention and negate its novelty.
Relatively, the novelty requirement is more objective than the next requirement, which is
inventive step.

D. INVENTIVE STEP

The inventive step requirement is the most subjective and complex of all patentability
requirements. Under the Indian Patents Act, the assessment of inventive step includes two
aspects, technical advance or economic significance; and non-obviousness. Section 2(ja) of the
Patents Act defines inventive step as follows:
“(ja) “inventive step” means a feature of an invention that involves technical advance as
compared to the existing knowledge or having economic significance or both and that makes
the invention not obvious to a person skilled in the art;”

To satisfy this requirement, an invention has to:

1. have technical advance over existing knowledge; or

2. have economic significance; and
3. must not be obvious to a person skilled in the art.

All prior art references constitute the knowledge for assessing technical advance as well as
non-obviousness. Prior art references may be selected, combined and integrated for making
inventive step determination. Obviousness is seen through the eyes of a person with ordinary
skill in the art to which the invention belongs. Once the person with ordinary skill with respect
to an invention is determined, the prior art references available to the said person on the priority
date of the invention are identified and combined. Based on the prior art references on hand, if
the person with ordinary skill would have found the invention obvious on the priority date, the
invention is considered as obvious and will not meet the inventive step requirement.

Suggestion, teaching, motivation and other factors are considered for deciding what prior art
references are applicable, whether they can be combined, and if the combination of prior art
makes the invention obvious. The determination cannot be made based on hind sight, and
secondary indications such as commercial success, long felt yet unresolved need, praise from
experts, and so on, can sometimes be used to feed into the analysis if ambiguity subsists after
the initial assessment of prior art. Cherry picking information from different prior art references
and drawing prior art from diverse fields is not permitted for inventive step analysis unless
guidance for such picking and drawing exists in the prior art.

In the Biswanath Prasad Radhey Shyam case, the Supreme Court spelled out the meaning of
inventive step in 1978, which is applied for inventive step analysis even today. Relevant
paras of the case read as follows:

“It is important to bear in mind that in order to be patentable an improvement on something

known before or a combination of different matters already known, should be something
more than a mere workshop improvement; and must independently satisfy the test of
invention or an ‘inventive step’. To be patentable the improvement or the combination must
produce a new result, or a new article or a better or cheaper article than before. The
combination of old known integers may be so combined that by their working inter relation
they produce a new process or improved result. Mere collocation of more than one integer or
things, not involving the exercise of any inventive faculty, does not qualify for the grant of a
patent. ‘It is not enough’, said Lord Davey in Rickmann v. Thierry (1896) 14 Pat. Ca. 105
‘that the purpose is new or that there is novelty in the application, so that the article produced
is in that sense new, but there must be novelty in the mode of application. By that, I
understand that in adopting the old contrivance to the new purpose, there must be difficulties
to be overcome, requiring what is called invention, or there must be some ingenuity in the
mode of making the adoption’. As Cotton L. J. put in Blackey v. Latham (1888) 6 Pat. Ca.
184, to be new in the patent sense, the novelty must show invention”. In other words, in order
to be patentable, the new subject matter must involve ‘invention’ over what is old.
Determination of this question, which in reality is a crucial test, has been one of the most
difficult aspects of Patent Law, and has led to considerable conflict of judicial opinion.

This aspect of the law relating to patentable inventions, as prevailing in Britain, has been
neatly summed up in Encyclopedia Britannica, Vol. 17, page 453. Since in India, also, the
law on the subject is substantially the same, it will be profitable to extract the same
hereunder:

“A patent can be granted only for ‘manner of new manufacture’ and although an invention
may be ‘new’ and relate to a ‘manner of manufacture’ it is not necessarily a ‘manner of new
manufacture’-it may be only a normal development of an existing manufacture. It is a
necessary qualification of a craftsman that he should have the knowledge and ability to vary
his methods to meet the task before him-a tailor must cut his cloth to suit the fashion of the
day-and any monopoly that would interfere with the craftsman’s use of his skill and
knowledge would be intolerable.

The expression “does not involve any inventive step” used in Section 26(1) (a) of the Act and
its equivalent word “obvious”, have acquired special significance in the terminology of
Patent Law. The ‘obviousness’ has to be strictly and objectively judged. For this
determination several forms of the question have been suggested. The one suggested by
Salmond L. J. in Rado v. John Tye & Son Ltd. is apposite. It is: “Whether the alleged
discovery lies so much out of the Track of what was known before as not naturally to suggest
itself to a person thinking on the subject, it must not be the obvious or natural suggestion of
what was previously known.”

Another test of whether a document is a publication which would negative existence of

novelty or an “inventive step” is suggested, as under:

“Had the document been placed in the hands of a competent craftsman (or engineer as
distinguished from a mere artisan), endowed with the common general knowledge at the
‘priority date’, who was faced with the problem solved by the patentee but without
knowledge of the patented invention, would he have said, “this gives me what I want?”
(Encyclopedia Britannica; ibid). To put it in another form: “Was it for practical purposes
obvious to a skilled worker, in the field concerned, in the state of knowledge existing at the
date of the patent to be found in the literature then available to him, that he would or should
make the invention the subject of the claim concerned ?” Halsbury, 3rd Edn, Vol. 29, p. 42
referred to by Vimadalal J. of Bombay High Court in Farbwrke Hoechst & B. Corporation v.
Untchan Laboratories.”

The Supreme Court in the case revoked a patent relating to a means for mounting metallic
utensils for turning them before polishing because the invention claimed was obvious, and no
more than a mere workshop improvement. The Court came to the said conclusion after
reviewing prior art pertaining to turning utensils that the invention lacked inventive step.

In a case involving Roche and Cipla, the Delhi High Court reviewed if selecting one
compound from several compounds disclosed in the prior art and modifying the selected
compound by substituting ethynyl with methyl at a specific position is obvious. The case
involved Erlotinib Hydrochloride, which demonstrated capabilities as an Epidermal Growth
Factor Receptor (EGFR) inhibitor which spiked survival benefit in cancer including non-
small cell lung cancer (NSLC) patients. After reviewing relevant prior art references, the
Court came to the conclusion that a person with ordinary skill would not have found the
selection of the compound from a number of compounds and its modification obvious, and
that structural similarities between compounds would not prima facie make the claimed
compound obvious. While arriving at its conclusion, the Court expounded some important
principles with respect to inventive step analysis, which read as follows:

“151. From the decisions noted above to determine obviousness/lack of inventive steps the
following enquiries are required to be conducted:

Step No.1 – To identify an ordinary person skilled in the art,

Step No.2 – To identify the inventive concept embodied in the patent,

Step No.3 – To impute to a normal skilled but unimaginative ordinary person skilled in the
art what was common general knowledge in the art at the priority date,

Step No.4 – To identify the differences, if any, between the matter cited and the alleged
invention and ascertain whether the differences are ordinary application of law or involve
various different steps requiring multiple, theoretical and practical applications,
Step No.5 – To decide whether those differences, viewed in the knowledge of alleged
invention, constituted steps which would have been obvious to the ordinary person skilled in
the art and rule out a hind side approach.

Thus obviousness is a question of law based on facts and the burden to prove is on the party
which alleges obviousness. however, after the party which alleges makes out a prima facie
case of invalidity on the ground of obviousness, the burden shifts on the inventor to
disprove.”
Illustration
This illustration elucidates novelty and inventive step analysis at a general level. For purposes
of the illustration, assume that the invention does not exist today, and that it has only two
prior art references.

Invention: Pencil with eraser fastened to it at one end.

Prior art references: Pencils and Erasers.

ANALYSIS

The claimed invention, pencil with eraser attached to it at one end, is novel because it is
different from each of the prior art references considered independently. It has at least one
difference when compared to pencils or erasers separately.

The invention satisfies the inventive step requirement because a person with ordinary skill in
the art will not find the invention obvious based on existing prior art, and because the
invention is a technical advance based on existing knowledge. The person with ordinary skill
with respect to the invention is a mechanical engineer, who deals with writing and erasing
instruments. He will not think about fastening an eraser to the pencil based on the prior art
references. The prior art references are merely products existing in the market, and no
guidance, requirement, or motivation to combine can be presumed.

Based on the same prior art references, it may also be argued that the invention lacks
inventive step. The person with ordinary skill, a mechanical engineer, who is well versed
with attachment and fastening of mechanical devices, components or parts will find attaching
an eraser to a pencil very easy. If you give him a pencil and an eraser and ask him to attach
them, he will do it without any difficulty. For him, this is merely a workshop improvement
and not a technical advance.
Analysis of inventive step can be more complex than aforestated, and generally
requires organised effort and application of mind to find relevant prior art references,
combining them, and viewing the invention based on the prior art references through the eyes
of a person with ordinary skill in the art. Novelty analysis on the other hand is relatively more
straight forward and objective than inventive step analysis.

E. SPECIFICATION

To obtain a patent, the inventor has to file a patent application containing a specification
(Section 10). The object of the specification is to provide complete information to the public
about the invention and the mode of carrying it out and to define the boundaries of the
invention. The specification has to contain a written description of the invention and of the
manner and process of making and using it. The written description may contain drawings
where and when required to clearly describe the invention. A model or sample may have to be
submitted if the patent office requires such a model or sample as an illustration of the invention.
However, such a model or sample will not form part of the specification. If the invention
involves biological materials, the biological materials may be deposited at a recognized
depository in order to describe the invention and such materials would form part of the
specification.

The specification has to enable the invention, which means it must fully and particularly
describe the invention and its operation or use and the method by which it is to be performed.
It must describe the embodiment of the invention claimed in each of the claims. The description
of the invention must be so clear that any person in the field can carry it out and no further
experimentation must be required to practice the invention. The specification must also disclose
the best method of performing the invention which is known to the applicant at the time of
filing the patent application.

Furthermore, the specification has to end with a claim or claims defining the scope of the
invention for which protection is claimed. The function of the claims is to define the metes and
bounds of the invention claimed in the patent application. Claims in a specification have to
relate to a single inventive concept, and be clear and succinct. The claims must mark out with
adequate distinctiveness, the boundary of the territory of the invention sought to be protected.
The principle idea in the invention has to be presented in the claims and must not be left for
general review of the specification. All claims in the patent have to be supported by the matter
provided in the written description of the specification.
Though the specification requirement is normally not listed as one of the patentability
requirements, it is as important as other requirements. If the invention is not fully described,
claimed, supported or enabled in the specification, the patent application will be rejected.
Through the specification, the inventor has to show that he is not only in possession of the
invention, but also that the invention is workable without undue experimentation.

While deciding a Writ Petition praying for revocation of a patent relating to compositions for
augmenting kidney function, the Madras High Court made important observations about the
value and sufficiency of disclosure under the Patents Act. The relevant paras from the
judgment read as follows:

92. The patent system is based on a “bargain”, or quid pro quo. An inventor is granted an
exclusive right in a new and useful invention for a limited period in exchange for disclosure
of the invention so that society can benefit from this knowledge.

The patent bargain encourages innovation and advances science and technology. This is the
fundamental policy and rationale for grant of monopoly in the form of patent. The claim in a
Patent limits the monopoly while the specification explains the invention. Thereto,
specification has to describe the invention and the changes over the existing art.
In Tubes, Ld. v. Perfecta Seamless Steel Tube Company, Ld. (1902), 20R.P.C 77, Lord
Halsbury observed as under:
“. . . if one has to look at first principles and see what the meaning of a Specification is . . .
why is a Specification necessary? It is a bargain between the State and the inventor: the State
says, “If you will tell what your invention is and if you will publish that invention in such a
form and in such a way as to enable the public to get the benefit of it, you shall have a
monopoly of that invention for a period of fourteen years.” That is the bargain. The meaning
which I think, in my view of the Patent Law, has always been placed on the object and
purpose of a Specification is that it is to enable, not anybody, but a reasonably well informed
artisan dealing with a subject- matter with which he is familiar, to make the thing, so as to
make it available for the public at the end of the protected period. [Emphasis added.] Lord
Halsbury's view was cited with approval by Dickson J. (as he then was) in Consol
board, atpara. 523.

[34] Therefore, adequate disclosure in the specification is a precondition for the granting of a
patent. As Hughes [Link] in Eli Lilly Canada Inc. v. Apotex Inc., 2008 FC 142, 63C.P.R
(4th) 406, at para. 74:
Thus, one must both advance the state of the art and disclose that advance in order to gain the
patent monopoly. Failing to do so, thus invalidating the monopoly, can be in the form of one
or more of several matters such as, the “invention” was not new, or the so-called invention
was “obvious” or the disclosure was “insufficient” or “what you disclosed doesn’t support the
monopoly that you claim”.

In return for such disclosure, patent is granted to the inventor for a specified period provided
so that the patented invention is also worked in the country without undue delay and if there
is any infringement by anybody, the patent holder invokes the rights under the Act to protect
the claims in the patent.
country, a monopoly is given by the Government so that the patented invention is available to
consumers at a cheaper cost and is available for being used at the end of the term of the
patent.”

Registration Procedure of Patent

tarts with performing patent searches before patent application filing. After determining the
novelty of the invention, the patent application can be filed with the Indian Patent Office in any
of the branches i.e Delhi, Mumbai, Chennai or Kolkata. The patent application can be filed as
the provisional application or as the non-provisional application with the Indian Patent Office.
It would be easier to explain the procedure of patent registration in India in steps. Step by
Step Procedure For Patent registration in India.

Step 1: Patent Searches

Step by Step Procedure For Patent registration in India Procedure Patent Registration in
India searches are conducted and worldwide to know the novelty of an invention. Generally,
it is considered safe to do patent searches before patent application filing. If an invention is
found in prior arts or closes to prior arts then the novelty of that invention can be challenged
by the Indian Patent Office. Therefore, it is important to perform prior art searches in order to
save the money and time of an applicant.

Step 2: Patent Drafting

Step by Step Procedure For Patent registration in India After conducting thorough searches
worldwide, the invention is written in a techno-legal language known as the specification which
can be with or without claims. Without claims is the provisional specification and with claims
is the complete specification. The specification specifies the field of invention, detailed
description of the invention with working examples and the best method to perform an
invention so that a person skilled in the art can perform the invention. The legal part comes
with the claims of the invention which define the legal protection sought by an inventor.
Step 3: Patent Application Filing
Step by Step Procedure For Patent registration in India A patent application filing is the first
step towards obtaining a patent. Procedure Patent Registration in India application filed as
a provisional application is generally filed to claim priority date over other applications. A
patent application consists of series of forms prepared according to the Indian Patent Act, 1970.
The drafted provisional or complete specification is filed in Form-2 of the Indian Patent
Act,1970. If a provisional patent application is filed then within 12 months of its filing complete
specification has to be filed. There are 6 different kinds of filing filed in the Indian Patent
Office. These are:
1. Ordinary application
2. PCT National phase application
3. PCT International application
4. Convention application
5. Divisional application
6. Patent of addition application

Step 4: Publication of Patent Application

Once the Procedure Patent Registration in India has been filed, then after the expiry of 18
months from the date of filing or date of priority whichever is earlier, the application is
published in an official journal and is open to the public. This is a chance given to the public
to raise an objection if any.

Step 5: Examination of Patent Application/Patent Prosecution

The patent application is examined only when a request for examination has been filed. The
request for examination has to be filed within 48 months of the application filing date or date
of the priority. The patent examiner examines a patent application and issues an examination
report. The examination report contains a series of objections raised by an examiner. The
response to an examination report has to be filed within 12 months of the issuance of the
examination report. If needed examiner calls applicant or his agent for hearing. This phase is
called as patent prosecution.

Step 6: Grant of a Patent

After all objections to the examination report have been compiled and the examiner is satisfied
with the reply of an applicant, the application is put in order for grant. On the other hand, if the
examiner is not satisfied with the reply and arguments of an applicant, then he/she can reject
the application.

Rights And Obligations of Patentee In India

India, the owner of an invention is required to get his/her invention patented under the Patent
Act, 1970. The Registration of Patent provides certain Rights to the Patentee, which is
mandatory to be followed by the Patentee. With the Rights also come certain restrictions or
obligations which are required to be followed by the Patentee. Hence, the Patent Act, 1970,
provides certain Rights and Obligations of Patentee that he/she is required to follow.
Additionally, the Controller of Patent also awards some Rights and Obligations of Patentee to
be followed by the Patentee in order to comply with the provisions of the Patent Act, 1970. In
this article, we will discuss in complete detail the Rights and Obligations of Patentee under
the Patents Act, 1970.

Who Is A Patent Holder?

A Patent holder invents a procedure or product whose exclusive Rights and Obligations of
Patentee are given to the Patent holder as an inspiring force for investment in creative or
inventive exercises and for the spread of such exercises in public at large for learning. However,
these exclusive Rights and Obligations of Patentee are not unending and can revocation of such
rights can be done in certain exceptional circumstances where is need to balance the interest of
the Patent holders and with others.
There are a number of limitations and exceptions to these Rights and Obligations of Patentee
which are as follows:

• Research or experimental utilization;

• usage on outdoor vessels;
• receiving administrative authorization from various professionals;
• reduction of Patent rights and similar imports;
• Compulsory relating and acquisition or use of inventions by the Governments.
Even if there are limitations or exceptions, yet term to hold a Patent remains unaltered. Thus,
a Patent is a set of exclusive Rights and Obligations that is granted by a state to an inventor of
the invention or his/her assignee for a fixed time period in exchange for the disclosure of the
invention of the inventor. It refers to a grant of some advantage, property, or expert made by
the government or the sovereign of the country to as a minimum of one person. The way or
procedure according to which it is done is known as Patent. An invention of the inventor is the
creation of intelligence applied to labor and capital and for the production of something useful
and new. Such creation or invention turns into the restrictive property of the inventor on the
grant of Patent.

What Are The Benefits Conferred Upon The Patentee Of A Patent?

 • In India, the Patent law identifies the exclusive Rights and Obligations of Patentee to
gain certain commercial advantages out of the invention invented by him/her. Such
Rights and Obligations of Patentee are provided to boost the inventor to invest in the
new innovative offices, and should also realize that the developments done by them
will be ensured and protected by the law and hence no other person has the capacity to
make a duplicate of their inventions or creations.
• Such protection is provided for a certain time period (for the most part, 20 years)
amongst which the inventor will have certain selective Rights and Obligations of
Patentee as per the Patent Act, 1970. When a patent comes in all reality, certain
exploitative Rights and Obligations of Patentee are presented as an incentive for the
revelation of the creation or invention of the Patentee to people at large.
• These controlling Rights and Obligations of Patentee are, generally, for a time period
of 20 years and are also assignable, thus enabling the Patentee of the Patent to get a
license for the invention and maximize the profit associated with such an invention.
As per Article 284 of the TRIPS (Trade-Related Aspects of Intellectual Property Rights),
Agreement provides the following Rights and Obligations of Patentee:

• A registered Patent should confer the following exclusive Rights on its owner:

1. where the Patent’s subject matter is a product, to prevent any third parties, which is also
not having the consent of the owner, from the following acts of using, making, offering
for selling, sale, or importing for these purposes such product of the owner;
2. where the Patent’s subject matter is a process, to prevent any third parties, which is also
not having the consent of the owner, from the following acts of using, making, offering
for selling, sale, or importing for these purposes at least the product that is obtained
directly by such a process.

• The owner of the Patent should also have the right to transfer by succession or assign
the Patent and to conclude the licensing contracts.

What Are The Rights Of Patentee As Per The Patent Act, 1970?
A grant of Patent in India gives the Patentee the exclusive model to utilize or make the patented
invention or utilize the patented procedure related to the invention. Certain Rights and
Obligations of Patentee are enshrined under the Patent Act, 1970. The various kinds of Rights
of Patentee are as follows:
 • Where the grant of Patent is done for a product, the exclusive right to prevent any third
party, who is no having his/her consent, from any act of offering, using, making for
sale, importing or exporting for such products in the territory of India;
• Where the subject matter associated with the Patent is a process, the exclusive right to
prevent any third party, who is no having his/her consent, from any act of offering,
using, making for sale, importing or exporting for such products that are directly
obtained from the process in the territory of India;
• Moreover, the product produced by the Patentee should not be such that it cannot be
patented in India as per Section 48 of the Patent Act, 1970.

The elaborated Rights of Patentee in India are as follows:

Right To Exploit The Patent

When the new invention is a product, the Patentee has the exclusive rights to use, make, import,
or sell for these purposes related to an invention in India. On the other hand, when the invention
of the inventor is a procedure or process of manufacturing of any article or substance, the right
to exploit means the exclusive right exercise or use the procedure or method in the territory of
India.
Right To Grant License
The Patentee of a Patent is given the right to grant license or transfer rights or enter into some
arrangement for some consideration. The assignment or license to be valid and legitimate it is
required to be in writing and should be registered with the Controller of Patent. Unless a
document of assignment of a Patent is not registered, it is not admitted as evidence of title of
the Patent, and such a rule is applicable to the assignee, not the assignor. (As per Section 69(5)
of the Patent Act, 1970)

Right To Surrender
By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender a
Patent at any time and at his/her own discretion. The advertisement for such an offer of
surrender is required to be done in the Journal. The publication is done to give an opportunity
to the people to oppose the offer of surrender of the Patentee. This is done when the Patentee
apprehends his/her non-performance of the Patent in the future and upon which he/she decides
to surrender the Patent.

Right To Sue For Infringement

The Patentee has the right to sue for Infringement of Patent in District Court has the jurisdiction
to try the suit.

Right To Use And Enjoy Patent

The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or
the patented substance or article in India or to practice or utilize or the process or techniques
associated with the invention. Such rights can be exercised either by the Patentee
himself/herself or by his/her licensees or agents.

What Are The Obligations Of Patentee As Per The Patent Act, 1970?
Once a Patent is granted to a Patentee, there are certain Rights and Obligations of Patentee.
The Obligations of Patentee are as follows:
Duty To Disclose
Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the
Patentee. Section 8(1) of the Patent Act, 1970, tells that the Patentee has an obligation to
disclose all required data related to the remote uses of comparative or same invention
documented by him/her or through him/her or through someone by him/her at the time of
applying or within 6 months of applying.
The Patentee of a Patent is required to record an announcement of all the listed particulars
viewing the applications and, in addition to the above, an endeavor to disclose all the points of
interest of any subsequent applications that might be documented at the future stages.
Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data
required by the Controller of Patent with regards to the relating of any remote applications at
whatever point demand is made by the Controller of Patents within a time period of 6 months
of such a demand by the Controller of Patent. The first part of the obligation of Patentee begins
when a man records an application of Patent. On the other hand, the second part begins after a
demand is made by the Controller of Patents under the Patents Act, 1970.

Duty To Request For Examination

Not like other Intellectual Property Rights, the Registration process of Registration of Patent
does not accommodate any kind of programmed examination of the grant of Patent application.
In the procedure above mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the
obligation is thrown on the Patentee himself/herself to ask for the Controller of Patents to look
at the growth or development connected for Patent.
Duty To Respond To Objections
The Controller of Patent before accepting the examination request passes it to the analyst who
looks at the growth and gives a report to the Controller of Patent known as the First
Examination Report (FER). On certain cases there may be some protests which will be brought
up in the First Examination Report, it is the right of Patentee to reply to such opposition
complaints and consent to the corresponding within a time period of a year of the issuance of
the First Examination Report (FER) falling which the application of the Patentee will be
considered to be surrendered by the Controller of Patent.

Duty To Clear All Objections

It is the obligation of the owner of the Patent to respond to the raised objections as well as to
clear and remove each one of the raised objections and, in addition, certain oppositions raised
against his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it
may also require a meeting also. Furthermore, it is the obligation of the owner of Patent to go
for a consultation and clear all the objections and, in addition, oppositions, if are raised any,
against the invention of the inventor.

Duty To Pay Statutory Fees

The Patentee has an obligation to pay all the statutory expenses required to get a grant of a
Patent in the process of Registration without failure generally, his/her application for the grant
of Patent won’t be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions
recognized with payment of charges and, in addition, the consequences for non-payment of
such prescribed fees.
After this process is imitated to and the Patentee of Patent clears every one of the restrictions
and protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will
grant a Patent to the invention and publishes it in the Journal, or generally, the Controller rejects
such a Patent.

Forms Of Transfer Of Patent Rights

Patent Registration or Grant of the Patent confers to a patentee ‘the right to prevent others’
from making, exercising, using, or selling an invention without his permission. The methods
in which a patentee can deal with the transfer of patent are as follows:
1. Assignment
The term ‘assignment of patent’ is not defined in the Indian Patents Act. An assignment is an
act by which the patentee assigns whole or part of the patent rights to the assignee who acquires
a right to prevent others from making, exercising, using, or vending the invention. There are
three kinds of assignments. Those are as follows:-

• Legal Assignment
An assignment or an agreement to assign for an existing patent is the legal assignment, where
an assignee may enter his name as the patent owner. A patent that is created by the deed can
only be assigned through a deed. A legal assignee entitled as a proprietor of the patent acquires
all rights thereof.

• Equitable Assignments
Any agreement that includes a letter in which the patentee agrees to give the certain defined
share of a patent to another person is an equitable assignment of patent. However, in that case,
an assignee cannot have his name entered in the register as a proprietor of the patent. But the
assignee can give notice of his interest in the patent entered in a register.

• Mortgages
A mortgage is an agreement where the patent rights are wholly or partly transferred to the
assignee in return for the sum of money. Once an assignor repays the sum to an assignee, the
patent rights are restored to the assignor and patentee. A person in whose favor the mortgage
is made must not be entitled to have his name entered in the register as a proprietor, but he can
get his name entered in the register as the mortgagee[1].

2. Licenses
The Patents Act allows the patentee to grant a License by way of an agreement under section
70 of the Act. A patentee, by way of granting a license, may permit a licensee to make, use, or
exercise the invention. The license granted is not valid unless it is in writing. A license is a
contract signed by the licensor and the licensee in writing. The terms agreed upon by them
include the payment of royalties at a rate mentioned for all articles made under the patent.
Licenses are of the following types:

• Voluntary licenses
It is a license given to any other person to make, use, and sell the patented article as agreed
upon the terms of the license in writing. As it is a voluntary license, the Controller and Central
government do not have any role to play. The agreement is mutually agreed upon the terms and
conditions made by the licensor and licensee. In case of any disagreement, the licensor has the
right to cancel the licensing agreement.

• Statutory licenses
The central government grants statutory licenses by empowering the third party to make/use
the patented article without the patent holder’s consent in view of public interest. For an
example of such statutory licenses which is a compulsory license. Compulsory licenses are
defined as “authorizations permitting a third party to make, use, or sell a patented invention
without the patent owner’s consent.

• Exclusive Licenses and Limited Licenses

It depends upon a degree and extent of rights conferred on the licensee; a license can be an
Exclusive or Limited License. An exclusive license excludes all the other persons, including
the patentee, from the right to use the invention. Anyone or more rights of the patented
invention can be conferred from the patentee’s bundle of rights. The rights can be divided and
assigned, restrained entirely, or in part. The limitation may arise in a limited license as to
persons, time, manufacture, place, use, or sale.

• Express and Implied Licenses

An express license is one where the permission to use a patent is given in express terms. This
license will not be valid unless it is in writing in the document embodying upon terms and
conditions. In case of implied license, though permission is not given in express terms, it is
implied from the circumstances. For instance, where a person buys a patented article, either
within a jurisdiction or abroad either directly from a patentee or his licensees, there is an
implied license in any way and to resell it.

RESTORATION OF LAPSED PATENTS .

Applications for restorations of lapsed patents

.—(1) Where a patent has ceased to have

effect by reason of failure to pay any renewal fee within the period prescribed under
section 53 or within such period as may be allowed under sub-section (4) of section 142, the
patentee or his legal representative, and where the patent was held by two or more persons
jointly, then, with the leave of the Controller, one or more of them without joining the
others, may, within eighteen months from the date on which the patent ceased to have
effect, make an application for the restoration of the patent.

(2) [Omitted by the Patents (Amendment) Act, 2002]

(3) An application under this section shall contain a statement, verified in the prescribed
manner, fully setting out the circumstances which led to the failure to pay the prescribed
fee, and the Controller may require from the applicant such further evidence as he may
think necessary.

Procedure for disposal of applications for restoration of lapsed patents.

—(1) If, after
hearing the applicant in cases where the Applicant so desires or the Controller thinks fit,
the Controller is prima facie satisfied that the failure to pay the renewal fee was
unintentional and that there has been no undue delay in the making of the application, he
shall publish the application in the prescribed manner; and within the prescribed period
any person interested may give notice to the Controller of opposition thereto on either or
both of the following grounds, that is to say,—
(a) that the failure to pay the renewal fee was not unintentional; or
(b) that there has been undue delay in the making of the application.

(2) If notice of opposition is given within the period aforesaid, the Controller
shall notify the applicant, and shall give to him and to the opponent an
opportunity to be heard before he decides the case.

(3) If no notice of opposition is given within the period aforesaid or if in the

case of opposition, the decision of the Controller is in favour of the applicant, the Controller
shall, upon payment of any unpaid renewal fee and such additional fee as may be
prescribed, restore the patent and any patent of addition specified in the application which
has ceased to have effect on the cesser of that patent.

(4) The Controller may, if he thinks fit as a condition of restoring the patent,
require that an entry shall be made in the register of any document or matter which, under
the provisions of this Act, has to be entered in the register but which has not been so
entered.

Rights of patentees of lapsed patents which have been restored.

—(1) Where a patent is
restored, the rights of the patentee shall be subject to such provisions as may be
prescribed and to such other provisions as the Controller thinks fit to impose for the
protection or compensation of persons who may have begun to avail themselves of, or
have taken definite steps by contract or otherwise to avail themselves of, the patented
invention between the date when the patent ceased to have effect and the date of
publication of the application for restoration of the patent under this Chapter.

(2) No suit or other proceeding shall be commenced or prosecuted in respect of an

infringement of a patent committed between the date on which the patent ceased to have
effect and the date of the publication of the application for restoration of the patent.

SURRENDER AND REVOCATION OF PATENTS

Surrender of patents.—

(1) A patentee may, at any time by giving notice in the prescribed

manner to the Controller, offer to surrender his patent.

(2) Where such an offer is made, the Controller shall publish the offer in the prescribed
manner, and also notify every person other than the patentee whose name appears in the
register as having an interest in the patent.

(3) Any person interested may, within the prescribed period after such publication, give notice
to the Controller of opposition to the surrender, and where any such notice is given the
Controller shall notify the patentee.

(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of
being heard, that the patent may properly be surrendered, he may accept the offer and, by
order, revoke the patent.
Revocation of patents
(1) Subject to the provisions contained in this
Act, a patent, whether granted before or after the commencement of this Act, may, be
revoked on a petition of any person interested or of the Central Government by the
Appellate Board or on a counter-claim in a suit for infringement of the patent by the High
Court on any of the following grounds, that is to say—

(a) that the invention, so far as claimed in any claim of the complete
specification, was claimed in a valid claim of earlier priority date
contained in the complete specification of another patent granted in India;

(b) that the patent was granted on the application of a person not
entitled under the provisions of this Act to apply therefor:

(c) that the patent was obtained wrongfully in contravention of the rights of the
petitioner or any person under or through whom he claims;

(d) that the subject of any claim of the complete specification is not an invention within
the meaning of this Act;

(e) that the invention so far as claimed in any claim of the complete specification is not
new, having regard to what was publicly known or publicly used in India before the
priority date of the claim or to what was published in India or elsewhere in any of
the, documents referred to in section 13:

(f) that the invention so far as claimed in any claim of the complete specification is
obvious or does not involve any inventive step, having regard to what was publicly
known or publicly used in India or what was published in India or elsewhere before
the priority date of the claim:

(g) that the invention, so far as claimed in any claim of the complete specification, is not
useful;

(h) that the complete specification does not sufficiently and fairly describe the invention
and the method by which it is to be performed, that is to say, that the description of
the method or the instructions for the working of the invention as contained in the
complete specification are not by themselves sufficient to enable a person in India
possessing average skill in, and average knowledge of, the art to which the invention
relates, to work the invention, or that it does not disclose the best method of
performing it which was known to the applicant for the patent and for which he was
entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and
clearly defined or that any claim of the complete specification is not fairly based on
the matter disclosed in the specification;

(j) that the patent was obtained on a false suggestion or representation;

(k) that the subject of any claim of the complete specification is not patentable under
this Act;

(l) that the invention so far as claimed in any claim of the complete specification was
secretly used in India, otherwise than as mentioned in sub-section (3), before the
priority date of the claim;

(m) that the applicant for the patent has failed to disclose to the Controller the
information required by section 8 or has furnished information which in any
material particular was false to his knowledge;

(n) that the applicant contravened any direction for secrecy passed under section 35 or
made or caused to be made an application for the grant of a patent outside India in
contravention of section 39;

(o) that leave to amend the complete specification under section 57 or section 58 was
obtained by fraud.

(p) that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;

(q) that the invention so far as claimed in any claim of the complete specification was
anticipated having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere.

(2) For the purposes of clauses (e) and (f) of sub-section (1)—,
(a) no account shall be taken of personal document or secret trial or secret use; and
(b) where the patent is for a process or for a product as made by a process described
or claimed, the importation into India of the product made abroad by that process
shall constitute knowledge or use in India of the invention on the date of the
importation, except where such importation has been for the purpose of
reasonable trial or experiment only.
(3) For the purpose of clause (1) of sub-section (1), no account shall be taken of any use of the
invention—
(a) for the purpose of reasonable trial or experiment only; or
(b) by the Government or by any person authorised by the Government or by a
Government undertaking, in consequence of the applicant for the patent or
any person from whom he derives title having communicated or disclosed
the invention directly or indirectly to the Government or person authorised
as aforesaid or to the Government undertaking; or
(c) by any other person, in consequence of the applicant for the patent or any
person from whom he derives title having communicated or disclosed the
invention, and without the consent or acquiescence of the applicant or of any
person from whom he derives title.
(4) Without prejudice to the provisions contained in sub-section (1), a patent may be
revoked by the High Court on the petition of the Central Government, if the High Court is
satisfied that the patentee has without reasonable cause failed to comply with the
request of the Central Government to make, use or exercise the patented invention for
the purposes of Government within the meaning of section 99 upon reasonable terms.
(5) A notice of any petition for revocation of a patent under this section shall be served on all
persons appearing from the register to be proprietors of that patent or to have shares or
interests therein and it shall not be necessary to serve a notice on any other person.

Revocation of patent or amendment of complete specification on directions from

Government in cases relating to atomic energy. — (1) Where at any time after grant of a
patent, the Central Government is satisfied that a patent is for an invention relating to
atomic energy for which no patent can be granted under sub-section (1) of section 20 of
the Atomic Energy Act, 1962 (33 of 1962), it may direct the Controller to revoke the
patent, and thereupon the Controller, after giving notice, to the patentee and every other
person whose name has been entered in the register as having an interest in the patent,
and after giving them an opportunity of being heard, may revoke the patent.
(2) In any proceedings under sub-section (1), the Controller may allow the patentee to amend
the complete specification in such manner as he considers necessary instead of revoking
the patent.
66. Revocation of patent in public interest.—Where the Central Government is of opinion that
a patent or the mode in which it is exercised is mischievous to the State or generally
prejudicial to the public, it may, after giving the patentee an opportunity to be heard,
make a declaration to that effect in the Official Gazette and thereupon the patent shall be
deemed to be revoked.

Patent Infringement in India

Patent Registration is a techno-legal document of the invention. It is a provide of exclusive

rights to the owner, to exclude others from making, presenting for sale, selling or uploading
patented invention. Infringement is the unauthorized use of individual’s invention claimed in a
valid patent. Patent infringement is an unauthorized or unrecognized use of selling,
manufacturing, imparting to sell, uploading or using in-force patented invention with out the
permission of a patented owner.

patent infringement complaints can only be initiated after provide of patent in India but may
encompass a claim retrospectively from the date of publication of the application for grant of
the patent. Infringement of a patent consists of the unauthorized making, uploading, the use of,
imparting for sale or selling any patented invention inside India. Under the (Indian) Patents
Act, 1970 handiest a civil action may be initiated in a Court of Law.
Sections 104 to 114 of the Indian Patents Act 1970 provide guidelines regarding patent
infringement.
According to Section 53, the validity of a patent is 20 Years from the date of filing a patent
application for Patent Registration in India.
Limitation
Indian Limitations act governs the duration of limitation for bringing a match for infringement
of a patent, that’s for 3 years from the date of infringement.
If the patent has ceased to have an effect because of non-fee of renewal fee, then the patentee
will no longer be entitled to institute the lawsuits for infringement devoted between the date on
which the patent ceased to have an impact and date of e-book of the application for recovery
of patent registration.
Jurisdiction
A Patent holder can report a fit in a district court or High court. However wherein counter-
claims for revocation of the patent is made by means of the defendant, the in shape along side
counter-claims are transferred to the excessive court for a selection on validity of a patent.
According to Section 19 of the Civil Procedure Code, the patentee can convey the suit for
infringement in the courtroom which has jurisdiction in region in which he/she resides or
contains on a business or for my part works for the gain. The Patentee can also bring the healthy
for infringement in a court docket which has jurisdiction in the area wherein infringing interest
took place.
A healthy for patent infringement can be instituted most effective after the patent has been
sealed. But damages sustained in respect of infringement committed for the duration of the
duration among the date of advertisement of reputation of complete specification and the date
of sealing can be claimed within the fit.

The proper to sue for infringement belongs to the patentee. An assignee is entitled to document
a in shape if the application for patent registration of the project has been filed earlier than
the date of filing of match. A co-proprietor may additionally convey a match for infringement.
In India most effective High Courts have the energy to copy with depend of each infringement
and invalidity simultaneously. A specialized forum is now been established because the
Intellectual Property Appellate Board (IPAB).The Patents (Amendment) Act 2002 was enacted
to deliver our patent regime in step with the TRIPS agreement. The IPAB became conferred
through this Act with the jurisdiction to hear all cases against any order or choice of the
controller and all cases touching on revocation of patent registration aside from on a counter
declare in a in shape for infringement and rectification of registers and all such instances which
had been pending earlier than the High Court’s stood transferred to the IPAB by Section 117-
G of this Act.
The IPAB has its headquarters at Chennai. The Registry is situated at Chennai, in which sittings
also are held. Circuit sittings are held at gift at Delhi, Mumbai, Kolkata and Ahmedabad.
Remedies available to Patentee for infringement
Section 108 (1) of the Patents Act, 1970 provides for the Reliefs in match for infringement. It
states that – “The reliefs which a court may grant of patent registration in any fit for patent
infringement includes an injunction (problem to such terms, if any, as the court thinks fit) and,
at the choice of the plaintiff, both damages or an account of profits.”
The reliefs that are to be had to a patentee in in shape for patent infringement in opposition to
an infringer are:-
• Permanent injunction;
• Temporary / Interlocutory injunction;
• Ex-parte injunction;
• Damages or an account of profits;
• Seizure, forfeiture or destruction of infringing products / goods and / or substances and
implements predominantly used in the advent of the infringing products / goods
Temporary Injunction/Interlocutory Injunction
For furnish of temporary injunction in a fit for infringement, the courtroom should don’t forget
that-
1. There is a prima facie case that the patent infringement is legitimate and infringed;
2. The balance of convenience is in favour of injunction being granted;
3. The plaintiff will go through irreparable loss.
It is a rule of practice that if a patent registration is new one, an meantime injunction will
with ease be granted. If the patent is adequately old and has been worked, the courtroom may
properly presume the patent to be legitimate and supply injunction.
Permanent Injunctions
Permanent Injunctions are granted publish trial of the patent infringement suit. Once the
meantime injunction is issued, the lawsuit maintains as normal. If the plaintiff wins at the trial,
the preliminary injunction usually becomes permanent. If the defendant wins, the preliminary
injunction is dissolved, and the defendant can searching for recovery in opposition to the bond
as discussed.
The US Supreme Court in eBay, Inc. V. MercExchange L.L.C. Has set a four-factor take a look
at which a plaintiff have to demonstrate as a way to searching for a permanent injunctive
remedy from the court docket.
‘A plaintiff have to demonstrate –
• That it has suffered an irreparable injury,
• That remedies available at law, such as economic damages, are inadequate to atone for that
injury,
• That, considering the balance of hardships between the plaintiff and defendant, a remedy in
fairness is warranted,
• That the public interest would now not be disserved by way of a everlasting injunction,
Canadian and English courts no longer most effective have the energy and discretion to supply
an injunction but additionally to require infringers to “deliver up” and ruin any goods with
regards to the infringing innovation.
Even below the USA Patent Code, the patentee shall have a treatment by way of civil
movement for infringement of his motion. According to Section 283, ‘The numerous courts
having jurisdiction of cases underneath this identify may supply injunctions in accordance with
the ideas of equity to prevent the violation of any proper secured by using patent, on such terms
as the court docket deems reasonable’.
Damages
Once the healthy is determined in favour of the plaintiff, the Court can either award damages
or direct the defendant to render an account of earnings. The treatments are opportunity and
not concurrent in nature.
In a in shape for infringement of patent, damages shall now not be granted in opposition to the
defendant who proves that at the date of infringement he was unaware and had no affordable
grounds for believing that the patent registration existed or wherein an modification of a
specification were allowed after the booklet of the specification, and the infringement motion
is in admire of the specification before the date of publication unless the Court is satisfied
unique specification turned into made in god faith and with affordable talent and knowledge.
There are recognized form of compensable damages for patent infringement-
1) Lost Profits
Lost income damages may be measured primarily based upon the causation elements set forth
in Panduit Corp. V. Stahlin Bros. Fibre Works, Inc.
Under the Panduit test, the patentee have to prove four elements to establish lost earnings. The
4 elements are:
(1) A name for for the goods protected by the patent;
(2) An absence of suited non-infringing substitutes to the patented product or process;
(3) The manufacturing and marketing skills to exploit the demand; and
(4) The amount of profit the patentee could have made had the infringement no longer occurred.
2) Reasonable Royalty
When real damages cannot be proved, or are not sought for reasons of proof, trial method or
otherwise, the patent owner is entitled to not much less than a reasonable royalty as damages.
The purpose of the royalty alternative is not to direct the shape of compensation, however to
set a floor underneath which harm awards might not fall.
Reasonable royalty was defined in Panduit Corp. V. Stahlin Bros. An quantity which a person
desiring to fabricate and promote a patented article, as a business proposition, would be
inclined to pay as a patent royalty and yet be capable of make and promote the patented article
inside the marketplace at an inexpensive profit.
This can be illustrated from the Ericsson v. Micromax judgment where the Delhi High Court
directed the respondents to pay intervening time royalty to the plaintiff.

Patent Appeal

Introduction

Intellectual Property Appellate Board (IPAB) is a committee to which the decisions of the
Central Government or Patent Controller, Registrar underneath the Trade Marks Act, 1999
and the Geographical Indications of Goods (Registration and Protection) Act, 1999, can be
appealed against. The IPAB is a competent authority or confreres the jurisdiction to appeal to
against verdict of the Controller or Central Government of India in matters about the denial
of a request for non-compliance with the requirements of its Act; directives of a divisional
implementation; directives on either the date of issuance; decisions relating to jubilation;
decisions and cases relating to the potential infringement; directives pertaining towards the
application substitution; directives pertaining regarding the revocation of the patent regarding
the public interest; clerical errors corrections, etc.

Directives issued by the Central Government of India in the relation of defence-related

innovations, including directives of confidentiality relating to these innovations, withdrawal
where if the patent is detrimental to or prejudicial to the public interest or referring to atomic
energy, are exempted from the competence of IPAB to appeal.

A Controller’s order that an extension of time is granted under any clause of the Patent Act
1970 is also not subject to appeal.

Appeal Board

It shall file the Appeal regarding the application towards the patent in the given prescribed
time limit along with the pre-determined fee. The format for the appeal must be strictly
followed according to the grounds of filling; further, the appeal must also be accompanied by
the sign of the appellant.

IPAB is headquartered in Chennai and there are circuit sessions in Mumbai, Delhi, Kolkata
and Ahmedabad. The Intellectual Property Appellate Board (IPAB) Delhi registration
system-cum-bench was officially established on 31 August 2015 by the high court of Delhi
Chief Justice G. Rohini. As a product of this extension, appeals for patent applications and
patents filed or issued at the Delhi Patent Office could now be registered at Delhi registration
system-cum-bench of IPAB. Issues related to patent applications or patents are being
reviewed at Mumbai, Kolkata and Chennai Patent Office are still to be filed at IPAB,
Chennai.

Procedure of Appeal

According to the Section 117A (4) of the patents Act, 1970, there must be an appeal filed
under the three months period after the date of the decision, order or direction, as the case
maybe, received by the Controller or the Central Government Recently, though, the IPAB
Circuit Serving Bench in Delhi issued a decree in the case of ‘Microsoft Corporation USA&
Assistant v. Controller Of Patent And Design New Delhi’[1]in the behalf of Microsoft
Corporation wherein the issue to be addressed here is whether the three-month limitation
period specified under section 117A(4) of the Patents Act , 1970, for filing an application
before the IPAB, opposing the decision of the controller would begin to run from the date of
the order or date of the receipt of order.

The relevant part of the order;

“The limitation period referred to in Section 117A(4), namely three months from the date
of the ruling, shall be read as being three months from the date of notification or issuance
of the order, and the appeal shall not be prohibited by restriction, so the same shall be
maintainable. We make it quite clear, moreover, that even in such a case of making the
above interpretation of Section 117A(4), that it’s the petitioner ‘s obligation to produce
documents to establish that they have acquired the challenged order on such and such a
date”

Furthermore, there is also an extension available towards filling the appeal by way of
condonation of delay (COD) petition, followed with the determined official fees. However,
there shall be genuine reasons in the COD regarding the delay.

With ‘Pfizer Products Inc v. The Controller of Patents’[2]IPAB permitted a delay of 33

months and 12 days to be condoned because perhaps the delay occurred owing to the filing
and disposal of the evaluation application. The said petition was allowed since the delay was
neither wilful nor oblivious.

The relevant part of the order;

“’The fact of the matter remains that, by order of 09/06/2011, the petitioner favoured the
review application the same has been dismissed on 27/03/2014, which culminated in a
delay of 33 months and 12 days. The petitioner also received a verified copy of the order on
20/08/2014 from this Bench. However, the limitation towards the filling of the appeal
commences from the date of the decision, i.e., 09/06/[Link] are of the constrained
opinion that the applicant has not only given legitimate purpose but also provided ample
cause to approve the delay”

In the case of ‘Flextronics International USA, Inc.’[3] the IPAB allowed for a condonation
of delay for a period of 461 Days relying on the fact, That the applicant, upon receiving of the
contested order, approached the attorneys through their agents; nevertheless, owing to the
unavailability of communication between both the attorneys and the agents, the change of
agents and the petitioner’s misconception also that appeal was already preferred, there had
been a delay of 461 days, a delay that was neither deliberate nor gross negligence.

The relevant part of the order;

“It has been shown that there’s been a switch of agents for the petitioner which has
culminated in a discrepancy in communication with the lawyers and it is clearly reported
that the petitioner had the idea that the appeal has already been chosen but resulting in
some delay. We are of the opinion that the petitioner has given legitimate reasons and has
shown ample cause to support the delay. Hence, petition is allowed”.
Documentation Required
• Cover text- showing document listing;
• Patent application in duplicate in Form 1 [Sections 7, 54 & 135 and Rule 20(1)];
• Full / provisional type 2 definition in parallel [Section 10; Rule 13]
• Form 3 Declarations and Undertaking [Section 8; Rule 12];
• Power of Attorney as given in Form 26 (original) (Rule 3.3(a) (ii)); (if filed by
counsel)
• Innovator-ship declaration in Form 5 (for an Indian Application only; (Rule 4.17) ;
• Request for assessment: Form 18
• Statutory Fees Required (cheque / DD)
• Demand for publication. It is optional (Form 9) if it requires express release.
• Small agency only needed to apply Form 28

Options after the rejection of Patent Application

If the Controller of Patents has rejected a patent application, the claimant still gets a grant.
There lie two different options regarding the same —

• An appeal in the Intellectual Property Appellate Board

• Application of Review before Controller of Patents
Appeal in the Intellectual Property Appellate Board

In the case, the controller rejects the approval of the patent; the claimant can bring this
decision before the Intellectual Property Appeals Court. The board was established in 2003
by the Central Government to hear and determine all appeals originating from the judgments
and orders of the Registrar previously under the jurisdiction of the High Courts and Section
116 of the Patents Act, 1970, such a Board is also the Board of Appeals for this Act.

1. When can the board hear the appeal

The section sets out all the circumstances under which an appeal may arise from the
Controller’s decision to the Board. Section 117A of the Patents Act, 1970 concerns with
appeals to the Appellate Board against any judgment, directive or direction taken or issued by
the Central Government under the Act or any act or order of the Controller. The relevant
instance for the purpose of this article resides in Section 15 of the Patents Act, 1970, and
Section 25(4). Section 15 interacts with the controller’s right to dismiss patent grant
applications and Section 25(4) indicates that, after allowing the claimant and the complainant
the opportunity to be heard, the Controller shall request that the patent be retained or changed
or revoked. this means that once the controller provides the claimant the required time to
make the adjustments and to also conduct a hearing of both parties and believes that now the
specifications of the Act have not been met or that a pre-grant opposition of the patent has
merit and is effective, he may pass an order declining to grant the patent of the claimant. It
may bring this order refusing the grant before the Appellate Board against the applicant.

2. Appeal Filling Time

Under Section 117A (4) of the Act, an appeal to be heard by the Board shall be filed in less
than 3 months of the verdict. The appeal can also be lodged at a later date but that will be
subject to the rules made by the Board themselves if any. A recent analysis of a Board’s
Bench circuit further explained that the three-month period will start from delivery of the
order confirmation and not from the decision. Under Section 117A (3), a description of the
order must follow the appeal against which they have appealed it and the prescribed payment
for the same.

3. Challenging the decision further

Now that we have defined the power of the Board of Appeals for Intellectual Property to hear
and resolve appeals, the question that arises is what besides that? Can the applicant make
further appeals against the Board’s order?

It is necessary to pay close attention to Section 117C of the Act which specifically shows that
neither court nor other authority has jurisdiction over the matters referred to under Section
117A. This implies that when the Board has issued its verdict on an appeal it against
Controller’s decision denying approving the patent, no further appeal can lie with either the
High Court or the Supreme Court. Under Section 117D of the Act, it transmits the order
passed by the Appellate Board to the Controller and the Controller shall give force to the
same as prescribed.

Application of Review before Controller of Patents

Besides lodging an appeal in the Intellectual Property Appeals Court, the claimant has
another remedy in case the Controller rejects his application. The claimant has the alternative
of making an appeal for review before the Patent Controller .In this situation, under
exceptional situations or circumstances that are rare, the Controller who passed the decision
will reconsider his / her judgment and may change his / her judgement. This power in the
Controller is defined under section 77(1) (f) of the 1970 Patents Act.

1. Section 77 (1) (f)

Clause (f) of Section 77(1) of The Patents Act, 1970 specifically deals with the Controller’s
right to review its own decisions. This provision requires an applicant to file a request for
approval with the Controller under Form 24 of the 2003 Patent Rules.

Section 77 in the Patents Act, 1970: Controller has a certain power of a civil court –

(1) “Theme to any rules laid down in that name, in any proceedings before the Controller
under this Act, the Civil Court will have the power to bring a deed under the 1908 (5 of 1908)
Code of Civil Procedure regarding the following matters: —

(f) Checking its own decision on the request made within the specified period and in the
manner specified

The power conferred under section 77 is directly comparable to the powers of a Civil Court
(under section 114 of the 1908 Code of Civil Procedure), and one that extends the powers of
the Controller. That authority allows the controller to examine and test a case falling under
the 1908 Code of Civil Procedure in violation of Section 77(1) (f) of The Patents Act, 1970.

2. Limitation
Such a request must be filed within one month of the date on which such a decision is issued
to the claimant or within a period not exceeding one month. Thereafter, as allowed by the
Controller on request in Form 4. Where the judgment in question corresponds to any person
other than just the claimant, the controller shall immediately transmit a copy of each request
and the declaration to the individual concerned.

3. Ground for the Review

Although the power conferred under section 77(1) (f) is similar to that conferred under
section 114 of the Civil Procedure Code, 1908, both provisions share the very same
foundation for review. The following could be the basis for a review request –

Unearthing of fresh and imperative evidence or mater.

On the account of mistake/error, face of the record of apparent; or

For any other appropriate object

COPYRIGHTS

Nature of copyright
In nature, copyright is an incorporeal property. The premise that the legitimate owner
developed or created the work justifies the property in it. The property owner has two options
for disposing of his property: outright sale (assignment of his rights) or licensing. Copyright
is also a collection of exclusive rights. A negative right is one that allows the owner to stop
someone from copying his creation or carrying out any other actions that, under Copyright
Law, are only permitted to be carried out by him. The exclusive rights to works protected by
copyright have a term limit. In contrast to physical property, which endures for the lifetime of
the thing on which it is bestowed, copyright only exists for a finite amount of time. After this
time period has passed, the work enters the ‘public domain’. In other words, it becomes
public property and is available for use without restriction by everyone. Therefore, the public
interest is served by exclusive rights to copyrighted works for a short time.

Subject matter of Copyright

All subject matters protected by copyright are called protected works. Thus, according to
Section 13 of the Copyright Act 1957, it may be subjected for the following works: Original
Musical work, Original Literary Work, Original Dramatic work, Cinematography films,
Original Artistic work and Sound recordings.
Original Musical work –
Musical work was defined as “a work consisting of music and includes any graphical notation
of such work but does not include any work or any action intended to be sung, spoken or
performed with the music”. In 2012 Amendment, there was a grant of statutory license for
cover versions. A song typically contains both literary and musical work. Therefore, the tune
and lyrics together forms the song. Lyric of a song is the literary part and it is protected as a
literary work and the writer of the lyrics is the author of the work. Music accompanying the
song is treated as a musical work and the author of the musical work is the composer of the
musical work. So, in the song there can be two rights that are set of rights in the literary work
and rights in the musical work and they are owned by different people. The author of this right
is different people.

Original literary work –

Literary work refers to works that are in writing. The Act does not classify literary work, but
we understand that as work that are captured in writing. The act says that literary work includes
computer programmes, tables, and compilations including computer databases. The literary
work need not have any literary merit and it is not the job of the courts to look into the literary
merit of copyright work.

So, courts have found that football fixture lists, mathematical tables, tombola tickets, etc. are
capable of copyright protection. The number of words in a copyrighted material is not an
indicator of quality and the author of copyrighted work is the author who makes the work or
who creates the work. There are certain things that cannot be protected under a copyright. For
instance, phrases, names, invented words and slogans cannot form a part of copyright
protections. The names especially used in commerce or in trade are protected by trademarks
and invented work and slogans, for example the slogan which Pepsi used a while ago “Yeh
Dill Mange more”, which is an advertising slogan was held something that can not protected
under the copyright Act.

Secondary or derivative works can also be protected. They can be prospected only if, it involves
the right kind of labor, it should be of such a nature that the effort brings a material change in
the work. Therefore, the work should get changed based on the effort that change should be of
the right kind and the prior work should be different from the secondary work. When the author
assigns the copyright to another person, the new work will be entitled to a copyright as well.
Adaptations and abridgment of existing works can have a copyright; translations can also be
entitled to a copyright. Compilations and collective works can have copyrights. A copyright
can subsist in the individual item as well as in the collection as a whole. For computer programs
the source code can be protected as a literary work.

Original dramatic work –

It defined as “including any piece of recitation, choreographic work or entertainment in dumb
show, the scenic arrangement or acting, form of which is fixed in writing or otherwise but does
not include a cinematograph film”. The terms literary and dramatic are used together and the
principle applicable to literary work will be applicable to dramatic work as well. The author of
a dramatic work is the person who authors the work.

Cinematography films –
It means any work of visual recording and includes a sound recording accompanying such
visual recording and sound recording accompanying such visual recording and
“cinematograph” shall be construed as including any work produced by any process analogous
to cinematography including video films. The author of cinematography films is the producer
of the films

Original artistic work –

An artistic work as mentioned in the Act, a painting, a sculpture, a drawing includes a diagram,
map, chart or plan, an engraving or a photograph, and whether or not any such work possesses
artistic quality. A work of architecture is included as an artistic work and any work of artistic
craftsmanship can also come under the ambit of an artistic work. The author of an artistic work
is the artist of the artistic work other than photograph. The photograph is a person who takes
the photograph, who is regarded as the author. Recently there was an issue with regard to a
selfie taken by a monkey. The Court has held that, the person has to be a human being and so
far intellectual property rights have only covered Intellectual work of humans.

Sound recordings –
It means a recording of sound from which such sounds may be produced regardless of the
medium on which such recording is made or the method by which the sounds are produced.
The author of sound recording is the producer of the sound recording. The sound recording
may involve musicians, it may involve singers, but the author is the producer.

The term of copyright varies depending on the kind of work that is protected. Literary, musical,
dramatic and artistic works are protected for the life of the author and after the death for a
period of 60 years. For posthumous work published after the death of the author. It is 60 years
from the time the work is first published. Therefore, cinematograph films sound recording,
government works, works of international organizations all are prospected for 60 years from
the work first published.

Here the ownership in copyright may vest in different persons under different circumstances.
Like of a work is created by an employee in the course of his or her employment, the employer
owns the copyright. If the work is created by an independent contractor and the independent
contractor signs a written agreement stating that the work shall be “made for hire,” the
commission person or organization owns the copyright only if the work is a part of the larger
literary work, such as an article in a magazine or a poem or story in anthology; part of a motion
picture or other audiovisual work, such as screenplay, a translation, a supplementary work,
such as an afterword, an introduction, chart, editorial note, bibliography, appendix or index; a
compilation; an instructional text; a test or answer material for a test; or an atlas. Works that
do not fall within one of these eight classifications constitute works made for hire only if
created by an employee within the scope of his or her employment. If the creator has sold the
entire copyright, the purchasing business or person becomes the copyright owner.

Copyright Registration Procedure in India

Copyright protects the rights of the creator of his actual work to specifically copy or
reproduce or publish the work for monetary gains or otherwise. It doesn’t specifically require
copyright registration, and copyrighting is an exclusive legal right to the work creator to
reproduce, generate copies, translate, or adapt his work.

It is governed by the Indian Copyright Act, 1957 (as amended in 2012) and Copyright rules
1958 (as amended in 2013, 2016).
Importance of Copyright Registration:

Registering a copyright is an added advantage, which protects the ownership of the work
from any unnecessary disputes. In case of a possible copyright infringement dispute, a
certificate of copyright registration and the Register of Copyright containing particulars of
registered copyrights are considered “admissible evidence” in the court of law. These serve as
prima facie evidence concerning disputes relating to ownership of Copyright.

Term of Copyright:

Copyright shall exist in work from when it is published within the author’s lifetime until sixty
years after the author dies. Section 22 of the Indian Copyright Act, 1957; is mentioned as,

“Except as otherwise from now on provided, copyright shall subsist in any literary, dramatic,
musical or artistic work (other than a photograph) published within the lifetime of the author
until 60[sixty] years from the beginning of the calendar year next following the year in which
the author dies”.

The procedure of Copyright Registration in India:

Chapter X of the Indian Copyright Act,1957 and Rule 70 of Copyright Rules, 2013, mention
the following procedure for the registration of copyrights in India:

1. Application:

An author or applicant can apply for registration of Copyright himself or via his authorized
legal representative. The registration of copyright (Form-XIV) can be made physically in the
copyright office, through speed/registered post, or through the e-filing facility available on
the official website of the Copyrights Office ([Link]). There should be one
application for one work. Each application in Form IV should be accompanied by the
requisite fee prescribed in the second schedule to the Rules. The fee ranges from 500 INR to
40,000 INR, depending on the form of work. The fee can either be a Demand Draft or Indian
Postal Order favoring “Registrar of Copyright Payable at New Delhi” or through E-payment.

Other information which needs to be provided is:

a) Name, address, the nationality of the applicant;

b) Nature of applicant’s interest in the work;

c) Title of the work;

d) Name, address, the nationality of the author of the work, and if the author is deceased, the
date of his death;

e) Language of the work;

f) Whether the work is published or unpublished;

i) Year and Country of first publication and Name, address, the nationality of the publisher;
ii) Year and Countries of subsequent publications, if any, and name, address, the nationality
of subsequent publishers;

g) Name, address, the nationality of a person authorized to assign or license the rights
comprising the Copyright, if any;

h) No-objection Certificate signed by the author (if different from the applicant);

i) Vakalatnama or Power of attorney signed by the advocate and the party (if the advocate
makes the application of the party);

j) Three copies of published work must be sent along with the application.

k) If the work is unpublished, two copies of the manuscripts must be sent with the application
(one copy will be duly stamped and returned, and the other will be retained).

l) Application for registration of a computer programme must be filed with the source and/or
object code.

m) Application for registration of an artistic work used or capable of being used about goods
must be filed with a statement to that effect and a no-objection certificate from the Registrar
of Trademarks.

n) Application for registration of an artistic work capable of being registered as a design must
be filed with a statement in the form of an affidavit stating that it has not been registered
under the Designs Act, 2000, and has not been applied to any article through an industrial
process.

o) Application must be signed by the applicant or the advocate;

p) Applicant must provide his mobile number and email address to receive the filing number.

2. Examination:

Once the application is filed, a diary number is received. There is a provision of a mandatory
wait period of 30 days so that “No Objection” is filed against the claim made by the author. If
some objection is filed against the copyright claim, it may take one more month. The
Registrar of Copyrights gives both parties an opportunity of hearing the matter. After the
decision on the ownership or if the objection is rejected, the application goes for scrutiny.
The applicant is asked to remove any discrepancy if found; within 30 days.

3. Registration:

On further submission of documents, if the Copyright Registrar is completely satisfied with

the completeness and correctness of the claim made in the application, he shall enter the
Copyright’s particulars in the copyrights register and further issue a Certificate of
Registration. Registration completes when the applicant is issued a copy of entries made in
the Register of Copyrights.

Copyright in India is recognized virtually worldwide under the “Berne Convention” and the
applicable law of its member nations. If total compliance is followed, the “certificate of
copyright” is a future safeguard for creative minds to preserve their creativity and reap
exclusive monetary benefits.

Term of Copyright

Copyright is protected for a limited time. Economic rights have a time limit, which can vary
according to national law. In those countries which are members of the Berne Convention, the
time limit should be equal to or longer than fifty years after the creator’s death. Longer periods
of protection may, however, be provided at the national level.3 For example, in Europe and the
United States, the term of protection is life plus seventy years.
Under the Indian Copyright Act, 1957, Chapter V enumerates the term of copyright protection.
Section 22 of the Act states the term of copyright in published literary, dramatic, musical and
artistic works shall subsist, published within the lifetime of the author, until sixty years from
the beginning of the calendar year following the year in which the author dies. In this section,
the reference to the author shall, in the case of a work of joint authorship, be construed as a
reference to the author who dies last.4 This term has been increased from fifty years to sixty
years by the Amendment of 1992.
However, in cases where the work falls under the category of a cinematograph film, sound
recording, photograph, posthumous publications5, anonymous organisations, the sixty years
period is counted from the date of publication.
Term of Copyright for Posthumous Publications
it is the publication of work after the death of its author. The term of copyright protection of a
posthumous publication subsists for a period of sixty years and unlike in others, here such
period is calculated from the date of publication.6 The United States Court of Appeals held in
the case of Bartok v. Boosey & Hawkes7that, “A “posthumous work” under section 24 of the
Copyright Act is a work on which the right to copyright has passed by will or intestacy due to
the absence of an effective assignment by the author during his lifetime.”
Term of Copyright for Anonymous Publication

If the publication of the work anonymously, that is, publication when the author of such work
is unknown. The copyright term of an anonymous publication, as provided under Section 23 of
the Copyright Act, 1957, is also for a period of sixty years, calculated from the beginning of
the calendar year next following the year in which the work is first published. The section also
provides for the disclosure of the identity of the author. In its proviso, it is provided that where
the identity of the author is disclosed before the expiry of the said period, the copyright exists
for a period of sixty years, calculated from the beginning of the calendar year next following
the year in which the work is first published.8 The explanation clause to Section 23 of the
Copyright Act, 1957 enumerates about the position of the author, that is, here the identity of an
author shall be deemed to have been disclosed. The identity may be disclosed either publicly
by both the author and the publisher or is otherwise established to the satisfaction of the
Appellate Board by that author.
Term of Copyright for Photographs
While Section 22 contains terms of copyright for all other works, the term for photographs has
been set out separately in Section 25 of the Act. This is in consonance with the Berne
convention, which also arrays separate terms for photographs and other works under Article
7.4 and Article 7.1 of the Berne Convention (Paris text) respectively. The Indian Copyright Act
provides for copyright in a photograph for a period of 60 years from the beginning of the
calendar year, following the year in which the photograph is published. But this Section has
been omitted by the amendment of 2012.
Term of Copyright for Cinematograph Films
Copyright of Cinematograph Films9 shall subsist until sixty years from the beginning of the
calendar year next following the year in which the film is published.
Term of Copyright for Sound Recordings
Copyright of sound recordings10 shall subsist until sixty years from the beginning of the
calendar year following the year in which the sound recording is published.
Term of Copyright of government works
In the case of a Government work, where Government is the first owner of the copyright
therein, copyright subsists until sixty years from the beginning of the calendar year next
following the year in which the work is first published.
Term of Copyright where a public undertaking is the first owner
In the case of a work, where a public undertaking is the first owner of the copyright therein,
copyright subsists until sixty years from the beginning of the calendar year next following the
year in which the work is first published.
Term of Copyright of work of an international organisation
In the case of a work of an international organisation to which the provisions of section 41
apply, copyright subsists until sixty years from the beginning of the calendar year next
following the year in which the work is first published.
An author’s moral right as a right against distortion is available even after the expiry of the
term of copyright.

OWNERSHIP OF COPYRIGHT

Copyright is one of the Intellectual Property Rights. In India, copyright is sui generis right. It
is considered a natural right as it is automatically granted to the creator of the original literary
(including computer programs), dramatic, musical and artistic works; cinematographic films;
and sound recordings. Registration of work is not mandatory for availing the protection under
the Copyright Act, 1957. The Apex Court in R.G. Anand’s5 Case held that registration of
works is not mandatory for availing copyright protection.
In the case of Sunil Agarwal Vs Kumkum Tandon,6 it was observed that Section 18 of the
Copyright Act, 1957 confers ownership rights in copyright on the assignment.
Generally, the creator or the author of the work is the owner of the work and therefore entitled
to get the copyright for the work. Where the author of the work is employed by another person,
the work belongs to the employer of the author. And where the creation of the works is
incidental, but not the purpose, the work belongs to the authors. But in practice, out of the
contractual agreement between the employer and the employee, the creation during the course
of employment would be belonging to the employer.

According to Section 17 of the Copyright Act, 1957, the author of a work shall be the first
owner of the copyright. “Author” means as contained in the Act7, “(i) in relation to a literary
or dramatic work, the author of the work; (ii) in relation to a musical work, the composer; (iii)
in relation to an artistic work other than a photograph, the artist; (iv) in relation to a photograph,
the person taking the photograph; (v) in relation to a cinematograph film or sound recording,
the producer; and (vi) in relation to any literary, dramatic, musical or artistic work which is
computer-generated, the person who causes the work to be created.”
Hence, we can say that the following are the owners of the copyrights:

• In musical sound recordings: lyricist, composer, singer, musician and the

person or company who produced the sound recording
• In works by journalists during their employment: in the absence of any
agreement to the contrary, the proprietor
• In works produced for valuable consideration at the instance of another
person: in the absence of any agreement to the contrary, the person at whose
instance the work is produced
There are certain cases or in other words exceptions to the general rule that the author of a work
shall be the first owner of the copyright. These circumstances are enumerated in the Proviso to
Section 17 of the Copyright Act.

For instance, in the case8 of a literary, dramatic or artistic work made by the author in the course
of his employment by the proprietor of a newspaper, magazine or similar periodical under a
contract of service or apprenticeship, for the purpose of publication, the said proprietor shall
(in the absence of any agreement to the contrary) be the first owner of the copyright in the work
in so far as the copyright relates to the publication of the work in any newspaper, magazine or
similar periodical, or to the reproduction of the work for the purpose of its being so published,
but in all other respects, the author shall be the first owner of the copyright in the work.
V.T. Thomas And Ors. vs Malayala Manorama Co. Ltd.9,
it was held that in the case of termination of employment, the employee is entitled to the
ownership of the copyright in the works created subsequently and the former employer has no
copyright over the subsequent work so created. The Hon’ble Delhi High Court in the case of

American Express Bank Ltd. V. Ms. Priya Puri10

The court clarified that for American Express to claim copyright over their ex-employee’s
work, the bank should have abridged, arranged or done something material in the public
domain to claim exclusive rights over it.

Further, in the case11 of a photograph taken, or a painting or portrait drawn, or an engraving or

a cinematograph film made, for valuable consideration at the instance of any person, such
person shall (in the absence of any agreement to the contrary) be the first owner of the copyright
therein. Also, in the case12 of a work made in the course of the author’s employment under a
contract of service or apprenticeship, to which the above-mentioned two situations do not
apply, the employer shall, in the absence of any agreement to the contrary, be the first owner
of the copyright therein.
Neetu Singh v. Rajiv Saumitra13
The Hon’ble Delhi High Court via its order confirmed that in a dispute relating to when the
ownership of copyright is disputed between an employer and an employee – it is the terms of
employment of the employee that has to be looked into. It must be determined that the work
was created by the employee as part of the terms of employment for the employer to claim
ownership over the same. The case even clarifies what is to be looked into to determine the
terms of employment – in the case of a Director, it is any subsisting agreement or the
AOA/MOA of the company. This decision could be applied to other forms of employment by
simply looking at any agreement between an employer and an employee.14In the case15 of
Government work, the Government shall, in the absence of any agreement to the contrary, be
the first owner of the copyright therein.
Another situation16 was added by the Amendment of 1984 wherein the author of the work shall
not be the first owner of the copyright, that is, in the case of a work made or first published by
or under the direction or control of any public undertaking, such public undertaking shall be
the first owner of the copyright therein. For the purposes of this clause, “public undertaking”
means an undertaking owned or controlled by the Government; or a Government company as
defined in section 617 of the Companies Act, 1956 or a body corporate established by or under
any Central, Provincial or State Act.
Important sections regarding ownership of copyright
According to Section 18 of the Copyright Act, 1957, the owner of the copyright in an existing
work may assign to any person the copyright:

1. either wholly or partially, and

2. either generally or subject to limitations, and
3. either for the whole term of the copyright or any part thereof.
Further as contained in Section 19 of the Copyright Act, 1957, such assignment17 of the
copyright in any work shall be valid unless it is in writing signed by the assignor or by his duly
authorised agent. If the period of assignment is not stated, it shall be deemed to be five years
from the date of assignment.

RIGHTS OF OWNERS OF THE COPYRIGHT

Statutory rights of the owners of the copyright

The following19 are the rights listed in the Act in respect of a copyright owner.
• In the case of literary, dramatic or musical works – the exclusive right to
reproduce, including storage in any medium by electronic means, issue copies,
public performance, make any film or sound recording in respect of that work, to
translate and adapt the work and the right of communication to the public (which
is defined widely enough to cover dissemination over the internet).
• In the case of computer programs – all rights as mentioned for literary works in
addition to selling or giving on hire, or offering for sale or hire for commercial
rental any copy of the computer program.
• In the case of artistic works – to reproduce the work in any material form. This
may include storing it in any medium by electronic or other means or depicting a
two-dimensional work in three dimensions or vice versa. Copyright in an artistic
work also includes the exclusive right to communicate the work in public, issue
copies of it, include it in a cinematograph film, and translate or adapt the work in
any way.
• In the case of cinematograph films – to make copies of the film (on any medium,
electronic or otherwise) including copies in the form of photographs that form a
part of the film, sell or give on hire, or offer for sale or hire any copy of the film,
to sell, give or offer for sale on commercial rental copies of the film and
communicate the film to the public.
• In the case of sound recordings – to make any other sound recording embodying
it on any medium including storing of it on any medium, to sell or give on
commercial rental or offer for sale such rental and to communicate the sound
recording to the public.
Moral rights of the owners of the copyright
The author enjoys moral rights independent of copyright, being the right to paternity and
integrity, which exists despite the assignment of copyright. However, this does not extend to
the adaptation of a computer program for fair dealing purposes. It is also specifically stated that
violation of moral rights (specific to the right to integrity) is judged objectively.

Moral rights can be enforced by the legal representatives of the author. The 2012 amendments
to the Act provide that a legal representative of an author can exercise both paternity as well as
integrity rights in a work. The 2012 amendments also consciously omit the previous co-
extensive term of moral rights with copyright by specifically removing the copyright term
restriction on a claim for the right to integrity by the legal representative. Moral rights are not
assignable (although on general principles as it is a civil right and not a fundamental right under
the Indian constitution, moral rights can be waived).

Assignment of Copyright (Section 18)

The owner of the copyright of a work has the right to assign his copyright to any other
person. The effect of assignment is that the assignee becomes entitled to all the rights related
to the copyright to the assigned work2. However, mere grant of right to publish and sell the
copyrighted work amounts to publishing right and not assignment of copyright.

Where the assignee of a copyright becomes entitled to any right comprised in the copyright,
he shall be treated as the owner of the copyright in respect of those rights. The assignor shall
also be treated as the owner of copyright with respect to unassigned rights. The legal
representatives of the assignee shall be entitled to the benefits of assignment, if the assignee
dies before the work comes into existence.

In Video Master v. Nishi Production3, the Bombay High Court considered the issue whether
assignment of video rights would include the right of satellite broadcast as well. The Court
agreed with the contentions of defendant that there were different modes of communication
to the public such as terrestrial television broadcasting (Doordarshan), satellite broadcasting
and video TV. The owner of the film had separate copyright in all those modes, and he could
assign it to different persons. Thus, satellite broadcast copyright of film was a separate right
of the owner of the film and the video copyright assigned to the plaintiff would not include
this.

Mode of Assignment (Section 19)

As per section 19, assignment of copyright is valid only if it is in writing and signed by the
assignor or his duly authorized agent. The assignment of a copyright in a work should
identify the work and specify kind of rights assigned and the duration and territorial extent of
such assignment. Further, it should specify the amount of royalty payable, if any, to the
author or his legal heirs during the continuance of assignment and the assignment will be
subject to revision, extension or termination on terms mutually agreed upon by the parties.

If the period of assignment is not mentioned it will be deemed to be taken as five years from
the date of assignment. If the territorial extent of such assignment is not stipulated, it will be
taken as applicable in whole of India.
Also, Section 19(8) contemplates that the assignment of copyright work against the terms and
conditions on which rights have been assigned to a particular copyright society where the
author of the work is a member shall be void. Further, Section 19(9) and section 19(10) opine
that the assignment of copyright for making cinematograph film or sound recording shall not
affect the right of the author to claim an equal share of the royalties and consideration
payable with respect to use of his protected work.

In Saregama India Ltd v. Suresh Jindal4, it was held that the owner of the copyright in a
future work may assign the copyright to any person either wholly or partially for the whole of
the copyright or any part thereof and once the assignment is made the assignee for the
purpose of this Act is treated as the owner of the copyright.

Disputes with Respect to Assignment of Copyright (Section 19a)

As per section 19(a) the Appellate Board may on the receipt of a complaint from the assignor
and on holding such inquiry as it may deem necessary, revoke such assignment, if the
assignee fails to make sufficient exercise of the rights assigned to him , and such failure is not
attributable to any act or omission of the assignor.

In case of a dispute with respect to the assignment of copyright, the Appellate Board may
pass a suitable order on receiving a complaint from the aggrieved party and after holding
such inquiry as it considers necessary including an order for the recovery of any royalty
payable.

Assignment by Operation of Law (Section 20)

When the owner of a copyright dies the copyright will pass on to his personal representative
as part of the estate, provided that no will has been executed. Section 20 provides that if a
person is entitled for copyright under bequest and such work has not been published before
the death of the testator, unless contrary intention is shown under testators will or any codicil
thereto, such person shall be considered as having copyright in the work so far as testator was
the owner of copyright immediately before his death.

Licensing of Copyright
The owner of copyright may grant a license to do any of the act in respect of which he has an
exclusive right to do. The license can be classified into following categories:

Voluntary license (Section 30)

The author or the copyright owner has exclusive rights in his creative work and he alone has
right to grant license with respect to such work. According to section 30 of the Copyright Act
1957, the owner of the copyright in a work may grant any interest in his copyright to any
person by license in writing, which is to be signed by him or by his duly authorised agent. A
license can be granted not only in existing work but also in respect of the future work, in this
situation assignment shall come into force when such future work comes into existence.
Where a licensee of the copyright in a future work dies before such work comes into
existence, his legal representatives shall be entitled to the benefit of the license if there is no
provision to contrary.

The mode of license is like an assignment deed, with necessary adaptations and modifications
in section 19 (section 30A). Therefore, like an assignment, a license deed in relation to a
work should comprise of following particulars:
 a. Duration of license
b. The rights which have been licensed
c. Territorial extent of the licensed
d. The quantum of royalty payable
e. Terms regarding revision
f. Extension and termination

Voluntary licenses can be:

Exclusive - The term exclusive license has been defined in Section 2(j) as a license which
confers on the licensee and persons authorized by him, to the exclusion of all other persons,
any right comprised in the copyright work.

Non-exclusive – It does not confer right of exclusion. It is mere grant of an authority to do a

particular thing which otherwise would have constituted an infringement. When owner grants
an exclusive right, he denudes himself of all rights and retains no claim on the economic
rights so transferred.

Co-exclusive – Here the licensor grants a license to more than one licensee but agrees that it
will only grant licences to a limited group of other licensees.

Sole license – Where only the licensor and the licensee can use it to the exclusion of any
other third party.

Implied license – Author impliedly allows or permits the use of his work. For example, he
had knowledge that someone is using his work but he did not take any action.

Compulsory License
Being a member of Berne Convention, India has incorporated the provision of compulsory
license in the Copyright Act, 1957. The Act provides for grant of compulsory license for
Indian work in the public interest, in certain circumstances:

Works Withheld from Public

The Indian Copyright Act provides for the grant of compulsory licences in work which has
been published or performed in public. It empowers the Appellate Board to direct the
Registrar to grant license, if a complaint is made to it in writing under the Act, during the
subsistence of copyright stating the necessary facts which are conditions precedent to its
exercise of power, provided the owner has been approached in the first instance for the grant
of license and it is only if he has refused to publish or allow the republication of the work and
by the reason of such refusal the work is withheld from the public. In case where two or more
persons have made a complaint, the licence shall be granted to the complainant who in the
opinion of the Copyright Board would serve the interest of the general public. In Super
Cassette Industries Ltd v. Entertainment Network (India) Ltd, Mumbai5 the respondents who
were running a radio FM channel under the brand name Radio Mirchi, made several attempts
to obtain a license from Super Cassette Industries ltd (SCIL) to play its sound recordings but
failed to get it. The Copyright Board ultimately issued them a compulsory license against
which an appeal has been filed in the Delhi High Court. After contemplating over section 31,
Court observed that in case compulsory license had to be granted to all, then there was no
need of any enquiry as envisaged by section 31. The court also opined that once the copyright
was in public, refusal has to be made on reasonable and valid ground. While making an order
under section 31, the Board had to maintain a delicate balance between the private rights and
the copyright vis-a vis- public interest. The case was sent back to the Copyright Board for
fresh consideration.

Compulsory License in Unpublished or Published Work (Section 31-A)

According to this section, where the author is dead or unknown or cannot be traced , or the
owner of the copyright in such work cannot be found, any person may apply to the Copyright
Board for a licence to publish such work or translation thereof in any language.

Before making such an application, the applicant should publish his proposal in one issue of a
daily newspaper in that language. The application to the copyright board should be in the
prescribed form and accompanied by the prescribed fee and with the copy of advertisement
issued.

The Copyright Board after making the certain prescribed enquires direct the Registrar of
Copyright to grant license to the applicant to publish the work or its translation subject to the
payment of royalty and other conditions.

Compulsory License for the Benefit of Disabled Persons (Section 31-B)

Any person working for the benefit of persons with disability on a profit basis or for business
may apply in prescribed manner to the Appellate Board for a compulsory licence to publish
any work in which copyright subsists for the benefit of such persons. However, where a
compulsory licence has been issued, the Appellate Board may on a further application and
after giving reasonable opportunity to the owners of the rights, extend the period of
compulsory licence and allow the issue of more copies as it deems fit. 6

Statutory License for Cover Versions (Section 31-C)

Cover means a sound recording made in accordance with section 31C. Any person desirous
of making a cover version, being a sound recording in respect of any literary, dramatic or
musical work with the consent or licence of the owner of the work, can do so.

The person making the cover version is required to give prior notice to the owner of the
copyright in such works and to the Registrar of Copyright at least 15 days in advance of
making the cover version. Advance copies of all covers with which the sound recording is to
be sold to be provided or royalties to be paid in advance. One royalty in respect of such sound
recordings shall be paid for a minimum of fifty thousand copies of each work during each
year. The Delhi High Court in Star India Pvt Ltd v. Piyush Aggarwal7, stated that sound
recording included a subsequent original sound recording made from the musical and literary
work and which was called a version recording i.e. a sound recording made after a first sound
recording was made by use of the musical work and literary work.

Statutory Licensing for Broadcasting of Literary and Musical Work and Sound
Recording (Section 31-D)
Any broadcasting organization, desirous of communicating published work to the public by
way of broadcast (by way of television broadcast or radio) or a performance of any published
musical/ lyrical work and sound recording, can do so by giving prior notice of this intention
to the owners. The notice must specify the duration and territorial coverage of the broadcast.
Corresponding royalties are required to be paid to the owner of copyrighted work. Rates of
television broadcasting are different from the rate fixed with respect to radio broadcasting. At
the time of fixing the rate of royalty the Copyright Board may ask the broadcasting
organisation to deposit some amount of money in advance to the owner.
License to Produce and Publish Translation of Literary or Dramatic Work in any
Language (Section 32)
Section 32 of the Copyright Act provides that after expiry of a period of seven years from the
first publication of a literary or dramatic work, any person may apply to the Copyright Board
for a license to produce and publish a translation of work. Where the work is not Indian work,
any person may apply to the Board for a license to produce and publish a translation in
printed or analogous form of reproduction of a literary or dramatic work in any language in
general use in India after a period of three years from the first publication of such work, if
such translation is required for the purpose of teaching, scholarship or research. But where
translation is in a language not in general use in any developed country, such application may
be made after the period of one year from such publication.

License to Reproduce and Publish Works for Certain Purposes (Section 32-A)
According to this section, any person may apply to the Copyright Board for a license to
reproduce and publish any literary, scientific or artistic work after the expiration of the
relevant period from the date of first publication of an edition of such work, if the copies of
such edition are not made available in India , or such copies have not been put on sale in
India for a period of six months to the general public or in connection with systematically
instructional activities at a price reasonably related to that normally charged in India for
comparable works by the owner of the right of reproduction or by any person authorised by
him in this behalf.

The period prescribed are:

• Seven years for work related to fiction, poetry, drama, music or art
• Three years for works related to natural science, physical science mathematics or
technology
• Five years for any other work

Copyright Infringement in India

Copyright laws provide certain exclusive rights to the copyright holder, such as the right to
reproduce, distribute, display or perform the protected work, or to make derivative works. Use
of such copyright-protected work without the permission of the copyright owner is copyright
infringement. In this article, we look at copyright infringement in India.

Common Types of Copyright Infringement

The following are some of the most common types of copyright infringement:

• Making copies of copyrighted works for sale or hire or letting them for hire.
• Permitting performance of copyright infringed works at any place for the performance
of works.
• Distributing copyright infringing works.
• Public exhibition of copyright-infringing works.
• Importing copyright infringing works into India.

If any of the activity is performed by a person or business, then they are liable for prosecution
under copyright laws in India.
How to Claim Copyright Ownership
In the case of a literary, dramatic, musical or artistic work, the name of the author or the
publisher which appears on copies of the work is presumed to be the author of the work, unless
the contrary is proved.

Remedy for Copyright Infringement in India

Copyright owners can take legal action against any person or entity that infringes on the
copyright of a work. The copyright owner can file a civil remedies case in a court having
jurisdiction and is entitled to remedies by way of injunctions, damages and accounts. Further,
no court inferior to that of a Metropolitan Magistrate or a Judicial Magistrate of the first class
can try any offence under the Copyright Act.

In case of copyright infringement by an artificial judical person like a private limited

company or limited liability partnership (LLP), the company and all persons who at the time
the offence was committed was in charge or was responsible to the company for the conduct
of the business of the company, would be liable to be proceeded against.

Criminal Prosecution for Copyright Infringement

If any person knowingly infringes or abets the infringement of the copyright in any work, then
such an offence is a criminal offence under Copyright Act. In the case of criminal copyright
infringement, the minimum punishment for an infringement of copyright is imprisonment for
six months with a minimum fine of Rs. 50,000/-. In the case of a second and subsequent
conviction, the minimum punishment is imprisonment for one year and a fine of Rs.1,00,000/-
.

Copyright Infringement a Cognizable Offence

Cognisable offence means a police officer has the authority to make an arrest without a warrant
and to start an investigation with or without the permission of a court. Copyright infringement
is a cognizable offence and any police officer, not below the rank of a sub-inspector, can seize
without a warrant, all copies of the work and all plates used for the purpose of making
infringing copies of the work, to be produced before a magistrate.

What is the punishment for copyright infringement?

• If any person knowingly infringes or abets the infringement of the copyright in any
work, then such an offence is a criminal offence under Copyright Act. In the case of
criminal copyright infringement, the minimum punishment for an infringement
of copyright is imprisonment for six months with a minimum fine of Rs. 50,000/-.
What is the difference between copyright and related rights?

Comparative
Copyright Related rights
Criteria

Related rights arise from the

Copyright arises from the time a
time when encrypted
Grounds for work is created and expressed in a
performances, phonograms,
arising, certain material form, regardless
video recordings, broadcasts,
establishing of content, quality, form, medium,
program-carrying satellite
rights language, published or not. father,
signals are fixed or performed
registered or unregistered.
without prejudice to copyright.

Literary, artistic and scientific

works: Literary, scientific works,
textbooks, textbooks and other
– Performances- Sound
works expressed in writing or
recordings, video recordings-
Protected other characters; Lectures,
Broadcasts, encrypted
object speeches and other speeches;
program-carrying satellite
Journalistic works, ..- Derivative
signals
works do not prejudice the
copyright of the work used to
make derivative works

Performers, performance
The person who directly created
Protected owners, producers of
the work and the owner of the
subject phonograms, video recorders,
copyright
broadcasting organizations

Protected Mainly property rights only

Moral rights and property rights
content performers have moral rights

Originality; shaped in a certain Be original, must have the

Protection material form; in the fields of creative imprint of the subject
conditions literature, art and science; are not concerned and not prejudice the
subject to non-protection rights copyright.
 -Moral rights: protected – Rights of performers: 50
indefinitely except for the right to from the year following the
publish the work; – Property year the performance is fixed-
rights: The term of protection is as Rights of producers of
follows: + Cinematographic, phonograms and video
photographic, theatrical, applied recordings: 50 from the year
art, works of art. anonymous following the year of
works: The term of protection is publication or fifty years from
Term of
75 years from the time the work is the year following according to
protection
first published+ Remaining works: the year of phonogram, video
The term of protection is the recording is fixed if the
lifetime of the author and 50 years phonogram or video recording
after the year of the author’s has not been published yet-
death; In the case of a work with a Rights of broadcasting
co-author, the term of protection organization: 50 counting from
ends in the 50th year after the year the year following the year the
the last co-author dies. broadcast program is made