MODULE III

The Indian Patent Act of 1970 is the primary law governing patents in the country. It
was created to replace the older Patents and Designs Act of 1911. The main goal of the
1970 Act was to promote and support local innovation and technology development
within India. It marked a significant shift in India's approach to intellectual property.

The Act initially introduced a system of process patents for food, drugs, and chemicals,
meaning only the method of making a product could be patented, not the product itself.
This was a key feature designed to ensure that essential goods like medicines remained
affordable and accessible to the public. It also established provisions for compulsory
licensing, which allows the government to authorize a third party to produce a patented
product without the patent holder's permission in cases of public need or national
emergency.

Over time, the Act has been updated to align with global trade agreements, most notably
in 2005 to comply with the WTO's TRIPS Agreement. This amendment extended patent
protection to products in all fields of technology, including pharmaceuticals.

PATENT

patent is a form of intellectual property granted by the government to inventors. It

provides the owner with the legal right to prevent others from making, using, or selling
an invention for a specific period. In exchange for this exclusive right, the inventor must
disclose the details of the invention. The primary goal of patent law is to strike a balance
between the interests of inventors and the general public.

The Department for Promotion of Industry and Internal Trade (DPIIT) administers the
patents in India. DPIIT operates under the Ministry of Commerce and Industry.

The inception of patent law in India dates back to 1911 with the enactment of the Indian
Patents and Designs Act. The Patents Act of 1970, which came into effect in 1972,
remains the prevailing legislation governing patents in the country.

SALIENT FEATURES OF THE PATENT ACT, 1970

The Patent Act, 1970, which took effect on April 20, 1972, replaced an older law from
1911. It has been updated several times, especially in 2005, to align with international
standards. Here are its main features explained clearly:
 What Counts as an Invention: According to Section 2(j), an invention is a new
product or process that involves creativity (an “inventive step”) and can be used
in industry. An inventive step, as per Section 2(ja), means the invention offers a
technical improvement or economic benefit and isn’t obvious to someone skilled
in the field.
 What Cannot Be Patented: Section 3 lists things that cannot be patented,
including inventions that are trivial, against public morals, or harmful. Scientific
 discoveries, new forms of known substances without better results (like under
Section 3(d)), farming or medical methods, plants/animals (except
microorganisms), math or business methods, computer software by itself, books,
schemes, or traditional knowledge. Section 4 also bans patents for inventions
related to atomic energy.

Section 3 (a) of the Patents Act 1970 restricts patents for perpetual motion
machines whereas Section 3 (b) does not allow patents for gambling devices
and house-breaking tools. Similarly, Section 3 (d) plays an important aspect in
public health by restraining the ‘evergreening’ of patents in the pharmaceutical
industry and helps to foster affordability of life-saving drugs.
 Patent Duration: Under Section 53(1), a patent lasts 20 years from the filing date,
which matches global standards.
 Exclusive Rights: Section 48 gives the patent holder the right to stop others from
making, using, selling, or importing their invention without permission.
 Opposition Process: The law allows challenges to a patent: Pre-grant opposition
(Section 25(1)): Anyone can object before the patent is granted, citing reasons
like the invention being already known or not properly described. Post-grant
opposition (Section 25(2)): Within one year after the patent is published,
objections can be raised for similar reasons.

Grounds for opposition includes -

o wrongful claims
o prior publications
o public knowledge
o insufficient descriptions
o traditional knowledge infringements

 Compulsory Licensing: Section 84 allows others to use a patented invention

after three years if it’s not meeting public needs, is too expensive, or isn’t being
used in India. This ensures the invention benefits society.
 Government Use: Sections 100–102 let the government use a patented invention
for public purposes, like health or defense, with compensation if the invention
wasn’t already developed or tested before its filing date.
 Secrecy Rules: For inventions related to defense, Sections 35–38 allow the
Controller to block publication or sharing to protect national security, with
reviews every six months.
 Restoring or Cancelling Patents: Restoration (Section 60): If a patent expires
due to unpaid fees, it can be restored within 18 months. Revocation (Section 64):
A patent can be cancelled for reasons like being unoriginal, wrongly obtained,
not useful, or poorly described.
  Amendments: Changes to a patent can be made before the Controller, Appellate
Board, or High Court, but only to clarify or correct, not to add new claims
(Sections 57–59).
 Patents of Addition: Sections 54–55 allow patents for improvements to an
existing patented invention. These last as long as the original patent, don’t
require renewal fees, and can stand alone if the main patent is cancelled.
 Co-Ownership: Under Sections 50–51, co-owners of a patent share equal rights
unless they agree otherwise. Any license or sale needs all co-owners’ approval,
and the Controller can step in to manage disputes.
These features show how the Patent Act encourages innovation while ensuring patents
are used fairly, benefit India, and address public needs like health and affordability.
PATENTABILITY CRITERIA IN INDIA
Patentability is established through well-defined legal criteria under the Patents
Act, 1970, primarily under Sections 2, 3, and 4. In India, an invention must fulfill three
core criteria to qualify for patent protection: novelty, inventive step, and industrial
applicability. Besides, there are provisions on what can be regarded as patentable
subject matter and what cannot. Below is a comprehensive explanation of these basic
criteria.
1) Novelty (Section 2(1)(j))
An invention will be novel if it is not included within the prior art. Prior art
includes all publicly accessible information existing prior to the date on which the
application for patent was filed, including patents or applications for patent,
publications, or public releases, as well as public demonstrations of an invention. An
invention disclosed in any form to the public-on publication, public use, or prior patent
filing-will not be novel.
For an invention to be novel, it must:
 Be new: The invention has not been disclosed before by any other source.
 Not have been anticipated: It must not be identical or obvious in light of previous
disclosures.
Determining Novelty: Prior Art Search
A prior art search is one of the steps that determine whether an invention is novel. Such
a search would involve patents, scientific literature, and other publicly available
sources, which may contain disclosures prior to the newness of the invention. The patent
office usually conducts a substantive examination to ensure novelty, although
applicants are encouraged to conduct an extensive prior art search on their own before
filing.
Prior art can be: Published patents, articles, product catalogs, conference papers, and
even disclosures made in scientific journals, online publications, and on the internet.
Effect on Novelty: If one piece of prior art discloses all elements of an invention as
claimed in a patent application, then the invention will fail the novelty test.
In F. Hoffmann-La Roche AG v. Cipla Ltd. (2015), the Delhi High Court
addressed the issue of novelty on the facts of a patent application for a cancer drug
where Cipla challenged the patent claim by Roche under the grounds that the
formulation of the drug was not novel since there were prior patents disclosing the same
compound. The court ruled for Cipla by stressing that novelty has to be determined
based on the whole corpus of prior art, which includes patent applications, scientific
literature, and other information publicly known.
2) Inventive Step (Section 2(1)(ja))
Definition of Inventive Step: An invention has to involve an inventive step. It
must not be obvious to a person having technical knowledge or experience in the
particular field, which means that the person skilled in the art would not arrive at the
same conclusion. An invention will not be considered patentable if, in view of prior art,
it is evident to a person skilled in the relevant technical field. The inventive step is one
of the key tests to prevent granting patents for trivial or obvious modifications of
existing inventions.
Non-Obviousness Test (Person Skilled in the Art)
The non-obviousness test forms an important element in the determination of the
inventive step. This tests whether the invention involves some kind of inventive leap
which would not be obvious for a person skilled in that relevant technology or industry.
Factors to be considered in applying the test:
 Person skilled in the art: A person who has knowledge of the prior art and a
normal degree of skill in the given field.
 Obviousness: The invention is regarded as obvious if it logically or obviously
follows from earlier art.
In Bristol-Myers Squibb Co. v. Anand (2006), the Indian Patent Office rejected
an application for an anti-cancer drug, stating that the subject matter was devoid of an
inventive step. This was based on the fact that the drug formulation was simply an
obvious variation of known compounds and thus failed to satisfy the inventive step.
The patent was held to be a refinement and not inventive enough to be granted
protection.
3) Industrial Applicability (Section 2(1)(ac))
An invention must have industrial applicability to qualify for patentability. This
indicates that the invention should be capable of being made or used in any kind of
industry, such as manufacturing, agriculture, healthcare, or in any other commercial or
industrial application. The invention must have practical utility and not simply be a
theoretical or abstract concept.
The invention must be useful in some tangible form.
Relevance to industry: The invention should be capable of being reproduced
consistently in an industrial process or used in an industrial setting.
NON – PATENTABLE SUBJECT MATTER:
The Patents Act, 1970 supports innovation while protecting public interests.
Section 3 and 4 of Patent Act are important because they list what cannot be patented.
These provisions ensure that only true inventions that benefit society get patents,
blocking ideas that are silly, harmful, or not new. For lawyers, inventors, and
policymakers, understanding these sections is vital to handle patent applications well.
This article explains Section 3 and 4 of Patent Act in simple terms, covering their rules,
meanings, examples, and effects.
(a) Frivolous Invention / Against Natural Laws
Patent protection is not available for inventions that fundamentally contradict
established scientific principles or natural laws. For instance, a time machine would not
be patentable, as time travel is scientifically impossible and defies the laws of physics
and Einstein’s Theory of Relativity. Hence the Section 3(a) explicitly excludes
pseudoscientific claims and establishes that an invention must have scientific base.
(b) Against Public Order / Morality / Harmful to Life or Environment
Inventions deemed unethical, dangerous or harmful or those that disrupt the
peace, safety, and well-being of the community, are not patentable and to be rejected.
Inventions that introduce intoxicating drugs or promote harmful substances shall not be
patented, as they are contrary to the public interest. Biological Weapon with unethical
effect serves as another example under this provision.
(c) Mere Discovery of a Scientific Principle / Natural Substance
To be patentable, an invention must have a novel industrial application.
Discoveries of scientific principles, natural substances (living or non-living), or
mathematical equations/formulas without industrial application are not eligible for
patent registration.
Hence the discoveries of any mathematical equation or formula, scientific
theories, any chemical compound or element from earth or space, any microorganism,
virus, bacteria or plant shall not be patented. However, the genetically modified
organisms with industrial applications shall be patented.
In the case Dimminaco AG v. Controller of Patents & Designs (2002), the
issue was the patentability of Bursitis vaccine which was manufactured by using a living
organism. The Culcutta High Court held that there is no statutory bar for patenting if
a discovery is applied in a technical manner. Hence a new process of vaccine
preparation using living organisms is patentable.
 This section also excludes discoveries of scientific facts such as water melts at
zero degree Celsius or natural biological process such as process of photosynthesis
from the ambit of patent registration.
(d) New Form of a Known Substance Without Enhanced Efficacy
This section excludes patent registration for new forms of existing substances or
methods, such as new forms of existing drugs without enhanced efficacy, new
properties or uses of existing substances, and existing manufacturing processes, unless
they result in an entirely new product. Pharmaceutical firms from prolonging
medication monopolies by making small changes and applying for new patents. This
'evergreening' approach efficiently extends the patent life of proven drugs that give no
further therapeutic value.
According to Section 3(d), salts, esters, polymorphs, isomers, formulations, or
derivatives of known compounds are not patentable unless they show a considerable
improvement in effectiveness over the original chemical. As a result, only substantial
inventions that significantly increase therapeutic benefit are patentable under this
exclusion.
For example, a beta-crystalline form of a known drug without improved
therapeutic efficacy is not patentable. Additionally, minor modifications like different
salts, esters, ethers, polymorphs, metabolites, or isomers of a known drug without
improved efficacy are considered the same substance and are not eligible for patent
protection.
In the relevant case law Novartis AG v. Union of India (2013), the Supreme
Court set a precedent that for a new form of a known drug to be patentable, it must
demonstrate improved therapeutic efficacy. The Supreme Court upheld the rejection of
the patent application for the cancer drug Glivec (Imatinib Mesylate in beta crystalline
form). The court also clarified the meaning of “efficacy” under Section 3(d) as
“therapeutic efficacy” and not just improvements in properties.
(e) Mere Admixture Without Synergistic Effect
This section prohibits the patenting of known substances put together unless
there is a synergistic effect. If the combination of two components merely combined
together the properties of the two substances, then it does not rise to a patentable
invention. However, such combination of drugs or other components shall be patentable
if it gives rise to a product with a better therapeutic effect than the individual
components.
 In the case Ajanta Pharma Ltd. v. Allergan Inc. (2013), the patent application
for combination of two drugs (Brimonidine + Timolol) for the treatment of Glaucoma
was rejected by Intellectual Property Appellate Board (IPAB).
(f) Mere Arrangement or Duplication of Known Devices
This part rules out patenting for inventions which simply combine existing
elements without any functional improvement. When those elements work
independently of each other in a way that does not enhance performance of either, the
invention is not patentable.
In the case Bishwanath Prasad Radhey Shyam Vs. Hindustan Metal
Industries, the validity of patent related to a means for holding utensils for turning
purposes was challenged on the ground of lack of novelty and inventive step. The court
ruled that the patentability of combination or improvement of existing devices should
be depended upon the satisfaction of the test of invention and inventive step and must
produce a new result or product. It must not be mere application, improvement or
normal development of existing device or product.
(h) Method of Agriculture or Horticulture
This section prohibits the methods of agricultural and horticultural practice from
patentability. The reasoning behind the exclusion of agricultural and horticultural
methods is that they are usually natural, traditional or based on biological principles.
Such methods should be free to use publicly rather than being patented and
monopolized.
This section excludes methods such as Organic Farming Methods, Hydroponics
or Aeroponics, Seed Treatment Techniques, Grafting and Hybridization Methods,
Irrigation Techniques, etc from the ambit of patentability. However, a new device,
apparatus, or a unique composition of a nutrient solution, as well as a new chemical
composition related to such agricultural or horticultural methods, shall be patentable,
but not the method itself.
(i) Medical Treatment Methods for Humans / Animals
This section excludes medical and surgical methods (procedures) from the
patentable subject matter. The reasoning for this exclusion is that these types of methods
must be available to physicians and to provide the public access to medical services
without any restrictions or patents. However, compositions for pharmaceutical
composition, medical devices, and diagnostic kits may be patentable.
Hence Surgical Methods such as method of performing a robotic-assisted knee
replacement surgery, Diagnostic Methods such as method of diagnosing neurological
disorders using MRI scans, Therapeutic and Curative Methods such as method of curing
diabetes through gene therapy, Veterinary & Animal Treatment Methods such as
method of increasing milk production in cows through hormonal injections are excluded
from patentable subject matters.
(j) Plants, Animals, and Biological Processes
This section excludes plants, animals, seeds, varieties, species, and natural
biological processes from patentability. The only exception is microorganisms, which
can be patented if they are genetically modified or artificially engineered. The provision
ensures that farmers’ rights and biodiversity are protected, preventing the
monopolization of life forms.
For example, Naturally occurring wheat, rice, or any crop variety, Hybrid plants
and seeds produced using natural cross-breeding methods, new plant species developed
using conventional breeding techniques, A naturally occurring high-yield breed of
cows, goats, or chickens, A process of selective breeding for faster-growing poultry
and A biological process for increasing the yield are not patentable while A biochemical
composition used to enhance seed growth, A genetically modified microbe that protects
plants from pests, A genetically modified micro-organism that improves livestock
health and A new biotech method for enhancing milk production using genetically
engineered bacteria are patentable.
The supreme court held in the Monsanto Technology LLC v. Nuziveedu Seeds
Ltd. & Ors. (2018) that genetically modified plants and seeds cannot be patented under
section 3 (j).
(k) Mathematical / Business Methods & Computer Program Per Se
Under this section, mathematical methods, business methods, and computer
programs shall be rejected from patenting. Hence, the discovery of a new theorem,
formula, or any mathematical or statistical method cannot be patented. This section also
excludes business methods such as a method for calculating interest rates for loans, a
method for managing financial transactions, and computer programs with no technical
effects.
In the case law, Yahoo v. Controller, and Rediff, the IPAB reiterated that
business methods are not patentable. However, The Delhi High Court, in the case Ferid
Allani v. Union of India (2019) held that computer-related inventions can be patented
if such inventions provide “technical effect” or “technical contribution”. Hence the
software which is novel in terms of technicality, shall be eligible for patent.
The inclusion of the word 'per se' in Section 3(k) of the Patents (Amendment)
Act, 2002 was intended to clarify the patentability requirements for computer programs.
Previously, the Act did not allow for the patenting of computer programs without any
restrictions.
The change made in 2002 included the term 'per se' to indicate that while
computer programs are not eligible for patent protection, software innovations may be
eligible for patents if they exhibit a 'technical application' or a 'technical impact.'
Consequently, the amendment implemented the technical effect test as a criterion for
determining the eligibility of software for patent protection.
(l) Literary, Artistic, or Aesthetic Creations
This section in actual stands, separates the patents from copyrights. Works
related to artistic, literary, dramatic, aesthetic, or music creations cannot be patented
but can be protected under copyrights act. Hence the Films, TV productions, method of
writing books or articles, musical composition, choreography of a dance program or
painting shall not be protected under the patent act 1970.
(m) Mental Acts, Games, and Methods
This section prevents the patenting of any scheme, rule, method or idea of
performing any mental act or method of a game that does not involve any technical
advancement or industrial applicability.
For example, a newly introduced exercise or yoga method or a strategy for
playing chess shall not be patented. However, the techniques having industrial
application such as a new sports equipment or a device designed to improve or enhance
memory, may be patented.
(n) Presentation of Information
A mere presentation of facts lacks technical advancement and industrial
application. On other hand, it provides a way to display or arrange the information.
Hence, these are not patentable.
A new font style for text, a method for gathering or publishing reports, or a way
to arrange content in a book for printing or on a webpage is not patentable.
(o) Topography of Integrated Circuits
The topography or layout design of an integrated circuit is protected under he
Semiconductor Integrated Circuits Layout-Design Act, 2000 (SICLD Act) not under
the Patent Act 1970. A design or layout of an integrated circuit is a functional aspect
rather than an invention.
(p) Traditional Knowledge / Duplication of Known Properties
This section prohibits an invention from being patented that is merely based on
traditional knowledge without any novel and substantial invention. This provision was
added to prevent biopiracy and the exploitation of indigenous knowledge and culture.
For example, wound healing by turmeric is traditionally followed; thus, an application
for claiming the same shall not be considered for a patent.
Safeguarding India's Traditional Knowledge from Biopiracy
 Section 3(p) of the Indian Patent Act excludes fundamentally biological methods
for generating or multiplying plants and animals from patent eligibility. The drafters
created this clause expressly to prevent the immoral biopiracy patenting of India's
traditional medical knowledge.
India has a rich tradition of indigenous treatments that use biological or botanical
resources, such as Ayurveda and Unani. Indian plants have been providing therapeutic
benefits for millennia, and people commonly use them to heal ailments. However,
international corporations sought patents on such Native bioresources by portraying
their advantages in contemporary scientific jargon. This commits flagrant theft of
traditional knowledge.
Righting Historical Wrongs – Revocation of Controversial Neem and Turmeric
Patents
Turmeric and neem are two major examples of such biopiracy. The University
of Mississippi Medical Centre received two US patents in 1995. One for "using turmeric
in wound healing" and the other for "turmeric for treatment of peptic ulcers." In India,
people have well-documented the wound-healing benefits of turmeric for ages. After a
lengthy legal struggle, India persuaded the USPTO to withdraw these contentious
turmeric patents.
India pointed out previous art showing neem's use. This led to the rejection of
US and Japanese patents on neem extraction processes and pesticidal applications. India
has once again successfully defended its traditional knowledge from patent monopolies.
The 2002 Patent Act amendment introduced Section 3(p) prohibiting such
biopiracy. It fundamentally removes biological techniques from patentability for
propagating or growing plants and animals. This protects India's traditional medical
knowledge from sudden patent monopolies. India can prevent biopiracy by codifying
the exclusion of patents on indigenous bioresources.
Section 3(p) establishes a compromise between India's international patent law
commitments and its commitment to protecting indigenous traditional knowledge.
Copyright laws still allow for the protection of creative discoveries involving biological
resources. The public domain prohibits granting exclusive rights on traditional
therapeutic use. Thus keeping such information open to everyone. This affirms India's
commitment to its rich history of medicinal systems, such as Ayurveda, which belong
in the public domain. This prevents it from falling under private ownership via
biopiracy.

TYPES OF PATENTS IN INDIA

India offers two different types of patents, based on the type of invention being
made:
  Invention Patents: These patents are granted to inventions that fulfill the general
criteria of novelty, non-obviousness, and industrial applicability.
 Design Patents: These patents are granted to new and original designs for an
article. The design patents aim to safeguard the aesthetic look of an object.
 Utility Patents: These are patents that protect new and useful inventions or
processes that provide a particular and practical benefit.
 Process Patents: These patents protect the method or process by which an
invention is created or achieved.
AMENDMENTS TO THE INDIAN PATENT ACT
The Indian Patent Act, 1970 has witnessed some important amendments in recent
years, which were mostly in response to global trade obligations, emerging
technological landscapes, and unique economic and developmental needs of India. Here
is a synopsis of the recent amendments and their impact on the patent law system in
India:
1. Patent (Amendment) Act, 1999
This amendment marked a major shift in Indian patent law, aligning it with the
World Trade Organization's (WTO) TRIPS (Trade-Related Aspects of Intellectual
Property Rights) Agreement. Key changes introduced by this amendment include:
 Product Patents: India granted patents for the process, not the product, in
pharmaceutical and agro-chemical sectors prior to 1999. With this amendment,
product patents could now be claimed in these sectors, mainly pharmaceuticals,
bringing Indian patent law at par with the international world. Therefore, it had
a very significant impact on the availability and affordability of generic drugs in
India.
 Patentability of Chemical and Pharmaceutical Inventions: It permitted patents
on chemical and pharmaceutical inventions that were otherwise barred. Thus, it
opened up avenues for multinational pharmaceutical companies to file patents
on new drugs in India.
 Patent Term: The amendment further granted a 20-year patent term, which is
aligned with the international standard.
 Compulsory Licensing: The amendment included provisions for compulsory
licensing that permit the government to allow the use of a patented invention
without the patent holder's approval under certain conditions, particularly if it is
to serve the public health requirement.
2. Patent (Amendment) Act, 2002
This amendment incorporated additional amendments that would bring the
Indian Patent Act fully into TRIPS compliance. Some of the notable changes were:
 Compulsory Licensing Provisions: The compulsory licensing provisions
(Section 84) have been further refined to provide for the grant of a compulsory
 license where the patented invention is not available at a reasonably affordable
price or the reasonable requirements of the public are not met.
 Introduction of Provisions for Granting Voluntary Licenses: The amendment
had provided for voluntary licensing under which the patent holder can license
his invention to another with mutual consent.
 Mail-box System for Patent Filing: The 2002 amendment brought the mail-box
system, through which applicants could file patent applications for products in
sectors such as pharmaceuticals and agriculture, which were previously barred
under Indian law, but in conformity with the TRIPS Agreement. These
applications were to be processed after January 1, 2005.
3. Patent (Amendment) Act, 2005
This amendment, one of the most crucial updates to the Indian Patent Act, puts India
fully in conformity with the TRIPS Agreement by altering some critical provisions,
especially in the sphere of pharmaceuticals.
 Shift from Process Patents to Product Patents: The amendment introduced a shift
from process patents to product patents in the pharmaceutical industry. This shift
enabled multinational pharmaceutical companies to apply for patents on new
drugs, significantly increasing the price of drugs in India.
 Provisions to Avoid "Evergreening": The 2005 Amendment incorporated
provisions that avoid evergreening - a practice in which the pharmaceutical
companies make minor changes to an existing drug so that it falls under a new
patent protection. The amendment had incorporated Section 3(d), which required
that the invention must show enhanced efficacy for a patent, particularly for
pharmaceutical inventions.
 Protection of Traditional Knowledge: The amendment also went about
addressing the issue of protecting traditional knowledge and biodiversity. An
institution called the Traditional Knowledge Digital Library was established to
prevent foreign companies from patenting Indian traditional knowledge.
 Compulsory Licensing (Section 84): The government could allow other
companies to produce a patented product if the patent holder wasn’t making it
available affordably or in enough supply.
 Parallel Imports: This allowed importing patented products from other countries
without the patent holder’s permission under certain conditions, helping keep
prices lower.
4. Patent (Amendment) Act, 2016
This amendment seeks to make the patenting system more streamlined and efficient in
its functioning. Some of the essential provisions are:
 Facilitating the Grant of Patents for Start-ups and MSME: The amendment
introduced provisions that facilitated expedited patent examination for Start-ups
and Micro, Small, and Medium Enterprises (MSMEs) from India. This was done
 to provide a boost to innovation among small-sized businesses and
entrepreneurs.
 Introduction of e-filing and Digitalization: The amendment expanded the scope
of e-filing of patent applications and provided for the digitalization of the patent
filing process, making it more user-friendly and efficient. This is in line with
India's push toward Digital India and has helped improve the speed of patent
applications and granted patents.
 Increased Fines for Patent Infringement: The Act introduced more stringent
penalties for patent infringement, with increased fines and imprisonment for
patent rights violation.
5. Patent (Amendment) Act, 2021
The 2021 Amendment was aimed at modernizing the Indian patent system and adapting
it to new technological trends, particularly in the digital and biotechnology sectors. Key
provisions include:
 Digitalization of Patent Filing Process: The amendment was directed to further
improve the digital infrastructure and make the filing and processing process of
patent applications easier. It brought the online examination process for patent
applications. It reduced delays in patent grants, increased transparency, and
made the processes easier.
 Public Health Provisions relating to Access to Medications: The COVID-19
Pandemic highlighted the need to rapidly produce patents related to public health
inventions that might include vaccines, treatments, or any medical devices.
Compulsory licensing provisions are relaxed even more in case of emergencies
dealing with public health because of the Amendment.
6. Patent (Amendment) Rules, 2024
These rules took effect on March 15, 2024, as announced by the Ministry of
Commerce and Industry. Key changes include:
 Rule 70A and Form 8A: These allow inventors to get a certificate recognizing
their contribution to an invention, making it easier to prove their role.
 Form-31 for Grace Period: This form supports a 12-month grace period, meaning
inventors can publicly share their invention (like at a conference) and still apply
for a patent within a year without losing their rights.
 Updated Form 3: This form is used for sharing details about international patent
applications and was simplified to make the process easier.
 Electronic Communication: The rules now encourage online filing and
communication with the Patent Office, saving time and effort.
 Impact: These changes make the patent system more user-friendly, especially
for startups, small businesses and individual inventors, by simplifying processes
and offering more flexibility.
7. Patents (2nd Amendment) Rules, 2024
A draft of these rules was published on January 2, 2024, in the Gazette of India,
with final versions expected to follow. Key changes include:
 New Definitions: These clarify terms to make legal processes smoother.
 Improved Communication: The rules further support electronic communication
and clearer procedures.
 Impact: These updates aim to make the patent system even more efficient and
clear, helping applicants navigate it more easily.
Importance of Patent Registration
IMPORTANCE OF PATENT REGISTRATION
 Legal Protection: It provides legal protection for the patent holder. In patent
infringement, the patent holder has the right to take legal action and seek
damages. Without registration, legal protection cannot be enforced.
 Transferable Rights: Patent registration allows the patent holder to sell or transfer
the patent, generating revenue.
 20-Year Validity: Once registered, a patent is legally protected for 20 years.
 Competitive Advantage: It offers a competitive edge to businesses, preventing
competitors from using the patented invention for similar products.
 Asset Creation: A patent is an intellectual property right and an exclusive asset
for a business. It can be sold, transferred, or used for commercial agreements.
REGISTRATION OF PATENTS:
Application Form for Patent Registration Process in India
Section 6: Defines who is entitled to make a patent application (e.g., the true and first
inventor, their assignee, or legal representative). According to section 7 of the Patents
Act 1970, every application for a patent registration process in India shall be for singular
investigation. The application for a patent registration in India is to be filed in the Patent
Office.
Under the Patents act of 1970, the patent office could be established at various places.
An application for a patent is to be made in the form prescribed and filed in the
appropriate patent office. Territorial Jurisdiction of the Patent Office for patent
registration process in India is decided based on the following:
1. Place of Residence, Domicile or business of the application (mentioned first in
the application in the case of joint application)
2. Place form where the invention originated.
3. Address for the service in India given by the applicant, when the application has
no place of business or domicile in India (foreign applicants)
INTERNATIONAL APPLICATION UNDER THE PATENT COOPERATION
TREATY
Section 8: Requires applicants to provide details of any corresponding foreign
patent applications
Every international application for a patent under the patent cooperation treaty as may
be filed designating India is to be deemed to be an application under this act if a
corresponding application has also been filed before the controller general of patents,
design, and trademarks in India. The filing date of such application and its complete
specification processed by the patent office as a designated office or elected office
Shelby the international filing date accorded under the PCT.
PROCESS FOR PATENT REGISTRATION IN INDIA
The patent registration process involves several stages, starting with Patent Search and
ending with issuing a Patent Registration Certificate. Here's a detailed explanation of
the Patent Registration process in India:
Step 1: Indian Patent Search
The first step in the Patent Filing process in India is conducting a worldwide
search to determine the uniqueness of your invention. It's generally recommended to
perform patent searches before applying for a patent. If your invention is found in prior
art or closely resembles existing inventions, the novelty of your invention could be
challenged by the Indian Patent Office. Therefore, conducting prior patent searches is
crucial to assess the likelihood of your patent being approved.
Step 2: Drafting Patent Specification
After conducting comprehensive global searches, you need to draft a patent
specification. This specification is written in technical and legal language and may or
may not include the inventor's claims. If it doesn't include claims, it's a provisional
specification; if it does, it's considered a complete specification. The specification
delineates the scope of the invention, providing an in-depth description of the invention
along with practical examples and the optimal method for utilizing it. Legal protection
for the patent is conferred when the specification is crafted with the inventor's claims
and is comprehensive. Legal protection for the patent is granted when the specification
is drafted with the inventor's claims and is complete.
Step 3: Patent Application Filing
Following the drafting of the Patent Specification, you can initiate the process
of filing a Patent Application in India. As mentioned earlier, patent applications can be
provisional or complete, depending on the specifications drafted. The provisional or
complete specification is filed in Form 2, while the Patent Application form is filed in
Form 1, as per the Indian Patent Act. If a provisional patent specification is filed, a
complete specification with the inventor's claims must be filed within 12 months of the
initial filing. There are six types of Patent Application forms, each serving different
purposes, depending on the applicant's needs.
Step 4: Patent Publication for Public Opposition
After the patent application process, the patent is published in an official journal
and available for public viewing and inspection. This allows the general public to raise
objections to the patent on valid grounds.
Step 5: Requesting Patent Examination
Examination of the patent application occurs only when a request for
examination has been filed. This request must be submitted within 48 months of the
patent filing date or the priority date. The patent examiner reviews the application and
issues an examination report containing objections raised by the examiner. Responding
to the examination report must be filed within 12 months of issuance. The examiner can
call the applicant or agent for a show-cause hearing to resolve objections if necessary.
This phase is also known as patent prosecution.
Step 6: Grant of a Patent
After all objections in the examination report have been addressed and the
examiner is satisfied with the applicant's response, the patent application is prepared
for the grant of a Patent Registration. This marks the end of the patent registration
process. However, if the examiner is not satisfied with the response and arguments from
the applicant, they can reject the patent application. In such a case, the applicant must
repeat the entire patent procedure in India to seek patent protection again.
Patent Renewal
To maintain the validity of a patent, it must be renewed annually. Failure to renew a
patent results in its expiration and becomes part of the public domain. In India, patent
renewal can be done by the patentee for one year by submitting a renewal application
with the required fees. The patent renewal fee becomes due at the end of the 2nd year
from the date of patent registration. The patent retains its effect if the renewal fees are
paid within the specified time. To reinstate a patent after it has lapsed, one can file a
restoration application using the prescribed Form-15 within 18 months from the date
the patent lost its effect.
List of Documents Submitted During Procedure for filing Patent Application
Section 9: Addresses the requirements for provisional and complete specifications,
which are the technical documents describing the invention
 Application Form (Form-1): Application for Patent Registration
 Provisional/Complete Specification: Detailed description of the product, its
features, and functional aspects.
 Abstract of the Invention: Brief description of the invention
  Power of Attorney: Authorisation to the person or entity filing the application
 Statement and Undertaking (Form 3): Declaration regarding accuracy of
information and the inventor’s rights
 Priority Document (if applicable): Evidence of priority claims
 Proof of Right to File: Required applicant is not the inventor
 Acknowledgment of Fee Payment: Proof that the Requisite Fees for Patent
Registration is paid.
 Form 28: Required if the applicant claims a rebate in fees as a recognised MSME
or startup

RIGHTS AND OBLIGATIONS OF PATENTEE:

Rights of a Patentee
The rights of patentee are not absolute; they come with certain conditions. Here
are the key rights of a patentee:
Exclusive Right
The exclusive right is detailed in Section 48 of the Patent Act of 1970. Whether
it’s a method or a product, this section grants exclusive rights. If the patent covers a
product, the patentee has the exclusive right to prevent others from manufacturing,
selling, importing or using the patented product without permission. If it’s a method,
the patentee can prevent others from using, selling or importing products made using
that method.
1) Right to Exploit the Patent
A patentee has the exclusive right to make, use, exercise, sell or distribute the
patented product or use the patented method. This right can be exercised by the patentee,
their agents or licensees. However, these rights are only valid during the patent’s term,
which is 20 years from the date of filing the patent application. The patent remains in
force as long as the required renewal fees are paid.
2) Right to License
Section 70 of the Indian Patents Act, 1970, provides the right of patentee to grant
licenses to others for using the patented invention in exchange for consideration. If there
are multiple owners of the patent, all owners must collectively grant the license to a
third party. The license must be in writing and documented (registered) with the
Controller of Patent.

3) Right to Assign
 Section 69(5) of the Patent Act of 1970 provides the right of patentee to assign
or give licenses to third parties for producing and distributing the patented goods. In
cases where multiple owners share the patent, all owners must agree to grant the license
collectively. The license is only considered valid after the administrator has properly
authorised the request. Therefore, for the assignment or license to be legal and valid, it
must be in writing and submitted to the Patent Authority.
4) Right to Surrender the Patent
Under Section 63 of the Indian Patents Act, 1970, there is a right of patentee has
the option to surrender their patent. There’s no obligation to maintain the monopoly
right for the entire 20-year term. The patentee can submit a surrender application to the
Controller, who then publishes it in the official gazette. Interested parties can oppose
the surrender and if the Controller finds sufficient grounds, a hearing is conducted to
make a decision.
5) Right to Sue for Infringement
Infringement occurs when the patentee’s rights are violated, involving the
unauthorised making, using, selling or distributing of the invention. The patentee, their
assignee, licensee or agent has the right to file a civil suit for infringement in a court not
lower than the District Court. If the court establishes a violation, it may grant an
injunction or award damages.
6) Right to be Issued a Duplicate Patent
Section 154 of the Indian Patents Act, 1970, addresses the loss or destruction of
patents. It is the right of patentee apply for a duplicate patent if the original is lost,
destroyed or if its non-production is satisfactorily explained to the Controller.
7) Right to Make a Convention Application
Every patentee in India has the right to make a Convention Application for patent
protection in Convention Countries. This right of patentee is based on the principles of
reciprocity and national treatment in international law.
8) Right to Make a Patent of Addition
Sections 54 to 56 of the Indian Patents Act, 1970, provide right of patentee for
a Patent of Addition, allowing modifications to an existing invention. The patent holder
is granted rights to the modified invention after the notification of acceptance. These
rights are equivalent to those provided in the original patent, but only when the
notification is presented.
Obligations of Patentee
As the proprietor of a patent, a patentee carries specific obligations to uphold
and enforce their rights in the patent. These obligations of a patentee include:
1) Duty to Pay Statutory and Maintenance Fees
The patentee is obligated to pay all statutory costs associated with the registration
procedure to obtain the patent. Non-payment of these charges, as outlined in Section
142 of the Patent Act, renders the patent ineligible for consideration.
2) Duty to Disclose the Patent
According to Section 8 of the Patent Act of 1970, the patentee must disclose the
innovation to society. This obligation of patentee involves revealing all necessary
information about similar innovations documented in distant applications at the time of
applying for a patent or within six months of submitting applications.
3) Duty to Request for Examination
Section 11B of the Indian Patents Act, 1970, places the obligation on the patentee to
request examination within the prescribed time. No patent application will be examined
unless such a request is made by the applicant or an interested party.
4) Duty to Work the Invention
The patentee is obligated to actively work on the invention in India, either by
manufacturing the product or licensing it to others. This obligation of patentee aims to
prevent the patentee from merely holding the invention without contributing to its
development. The patented products should be made available to the public at
reasonable prices, meeting the reasonable requirements of the public.
5) Duty to Respond to Objections
If the Patent Examiners raise objections in the First Examination Report (FER),
it is the obligation of patentee to respond to these objections. Failure to seek
clarifications within one year from the date of the FER can result in automatic rejection
of the patentee’s application.
6) Duty to not Misuse the Patent
The patentee is prohibited from using the patent to violate laws or regulations,
harm public interest or unfairly dominate a market. Additionally, false or misleading
statements about the invention in advertising, marketing or promotional materials are
not permitted. It is the obligation of patentee to ensure the ethical use of their patent.
7) Duty to pay statutory fees:
To be eligible for a patent, patentees must also pay any statutory fees connected
to the registration process. If the payment is not made, the patent will not be considered
for the grant. Section 142 of the Patent Act addresses the payment of appropriate fees
and the penalties of failing to pay certain costs.
TRANSFER OF PATENT RIGHTS:
 Section 68 of the Indian Patents Act, 1970, provides the legal framework for creating
any interest in a patent, including mortgages, licences and other assignments. The section
mandates that any transfer of patent rights must be documented and executed in a specific
manner to be valid.
Section 68: Assignments, etc., Not Valid Unless in Writing and Duly Executed
 Writing Requirement: An assignment of a patent, a share in a patent, a mortgage,
licence or the creation of any other interest in a patent is invalid unless it is documented.
The agreement must be in writing, embodying all the terms and conditions governing
the parties’ rights and obligations.
 Duly Executed: The document must be duly executed by all concerned parties. This
includes signing the document in the presence of witnesses and ensuring compliance
with any other formal requirements stipulated by law.
 Registration: To effectuate the transfer, an application for registration of the document
must be filed in the prescribed manner using Form-16 within the time frame specified
under Section 68. Upon registration, the document will take effect from the date of
execution.
Forms and Nature of Transfer of Patent Rights
The grant of a patent confers upon the patentee the exclusive right to prevent others from
making, using, exercising or selling the patented invention without permission. There are
several ways a patentee can deal with a patent:
1. Assignment
2. Licences
3. Transmission by Operation of Law
1. Assignment
Although the term ‘assignment of patent’ is not defined in the Indian Patents Act
of 1970, patent assignment is like a permanent deal of IP between two parties. An
assignment agreement is a legally binding contract that transfers all or part of the
ownership rights of a patent from the assignor (the current patent holder) to the assignee
(the new rights holder). The assignee then has the exclusive right to prevent others from
making, using, selling, or offering to sell the invention, including the right to sue anyone
who infringes on the patent.
To be valid, a patent assignment must be properly documented, signed by the
parties involved, and registered according to Section 19 of the Patent Act.
Patent assignments are of three kinds (i) legal; (ii) equitable; and (iii) mortgages.
(i) Legal Assignment -
A legal assignment is the formal transfer of patent rights from the assignor (the original
patent owner) to the assignee (the new patent owner). The assignee then enters their
name as the patent owner in government records. Such an assignment is typically
executed through a deed, and once the process is completed, the assignee gains full
ownership rights to the patent.
(ii) Equitable Assignment -
Any form or agreement that includes a letter stating that the assignor has agreed
to share a certain portion of the patent rights with the assignee is termed an equitable
assignment of the patent. Unlike in legal assignment, the assignee cannot enter his/her
name into the official government records as a patent owner but can notify the patent
office of their interest in the patent. Equitable assignments may involve sharing specific
benefits or profits from the patent, but the assignee does not gain complete ownership
rights as in a legal assignment.
(iii) Mortgages -
An agreement where the patent owner transfers the patent rights either wholly
or partly to the assignee in return for a lump-sum payment of royalty. Once the assignor
repays the sum to an assignee, the patent owner gains back the patent rights to the
mortgaged property. Even in this assignment, the assignee's name is not entered as a
patent owner in government records but is mentioned as a mortgagee, reflecting their
interest in the patent.
2. Patent Licensing
Licensing is a permission-based arrangement wherein the patent owner
(licensor) grants rights to another party (licensee) to use the patented technology under
predefined terms. Unlike assignment, ownership remains with the licensor.
Patent Act section 70 allows a patentee to grant a license through a contractual
agreement to allow the licensee to make, use, or exercise the invention. The licensor
and licensee sign the contract which certifies the shared use of IP rights (in part or
whole) for mutually agreed payments (i.e., royalties).
A patent licensing agreement can be classified as exclusive, non-exclusive, voluntary,
statutory, co-exclusive, sole-licensing, express and implied, limited, and compulsory.
However, the two agreements that are commonly agreed upon are:
i. Exclusive License Agreement:
An agreement that gives a grant of exclusive rights to the licensee (the person or
entity receiving the license) by the licensor (the patent holder), to use the patented
invention; excluding all others (including the patentee) to exploit, use, or license the
invention to anyone else during the term of the agreement. The rights can be divided
and assigned, restrained entirely, or in part. The patent holder retains ownership of the
patent, but only the licensee holds exclusive rights for the agreed-upon scope. The
simplest instances of exclusive licensing agreements are copyright, trademarks, and
patent licenses.
ii. Non-exclusive License Agreement:
A license agreement in which the licensee can exploit the patented invention,
but not exclusively. Under this arrangement, the patent holder may exploit the invention
himself and can grant licenses to multiple parties, including the licensee, for the same
invention for the length of the agreement entered into.
The Patents Act 1970 has been transformed by several landmark judicial
pronouncements. The cases have explained the important aspects of patent protection,
innovation standards and the balance between public health and intellectual property
rights.
iii. Sole License:
A sole license is a hybrid between exclusive and non-exclusive licenses. The
licensor grants exclusive rights to the licensee, but the licensor retains the right to use
the patent itself. This arrangement is less common but can be useful in specific
circumstances.
iv. Cross-Licensing:
In a cross-licensing agreement, two or more parties grant each other rights to
their respective patents. This arrangement allows each party to use the other’s patents
without infringement, often facilitating cooperation and reducing litigation risks.
3. Transmission by Operation of Law
When a patentee dies, their interest in the patent passes to their legal
representative. Similarly, in cases of company dissolution or bankruptcy, the patent
rights are transferred by operation of law.
Transmission by operation of law occurs in cases such as:
 Death of Patentee: The patent rights pass to the legal representative of the
deceased.
 Company Dissolution: The patent rights are transferred as part of the liquidation
process.
 Bankruptcy: The patent rights may be sold or transferred to settle debts.
SURRENDER OF PATENT:
Section 63 of the Patents Act, 1970 allows a patentee to surrender a patent. The
patentee can offer to surrender his patent by giving notice to the Controller. The offer
to surrender the patent should be published by the Controller, and every person
interested in the patent must also be notified of the same.
After the publication, any interested person can oppose the surrender, by giving
notice to the Controller which should be notified by the Controller to the patentee. If
the patentee or the opponent wants to be heard, the Controller, on being satisfied that
the patent may be surrendered and after the hearing, may accept the offer and revoke
the patent by order. The notice of opposition must be given to the Controller within a
period of 3 months from the date of publication of the notice to surrender the patent. If
the patentee’s offer to surrender the patent is accepted by the Controller, he may:
 direct the patentee to return the patent; and
 on receiving the patent revoke it by order; and
 publish the revocation of the patent.
In the case of AstraZeneca AB v. Orchid Chemicals & Pharmaceuticals Ltd,
AstraZeneca, a pharmaceutical company, initiated legal proceedings against Orchid
Chemicals & Pharmaceuticals Ltd. The case primarily involved the voluntary surrender
of a patent by AstraZeneca. AstraZeneca requested the surrender of its patent, and
Orchid Chemicals & Pharmaceuticals Ltd. did not oppose the surrender. As a result, the
court accepted the surrender and subsequently revoked the patent held by AstraZeneca.
The case highlights the legal process and acceptance of voluntary surrender of patents
in India.
REVOCATION OF PATENTS
Section 64 of the Patents Act, 1970 deals with the ‘Revocation of patents’. A
patent that has been granted to an invention can be revoked by the Appellate Board in
the following ways:
 on a petition filed by any interested person; or
 on a petition filed by the Central Government; or
 on a counter-claim in a suit for infringement of the patent by the High Court.
Grounds for Revocation of Patents
A patent may be revoked on any of the following grounds:
 where an invention as claimed in a valid claim of earlier priority date which is
included in the complete specification of another patent;
 where the patent application was filed by a person who is not entitled under the
provisions of the Act and was granted a patent on such application;
 where the patent was wrongfully obtained and the rights of the petitioner or any
person under/through whom he claims, were contravened;
 when the subject of a claim of the complete specification is not an invention
within the meaning of the Act;
 where the invention that is being claimed is not new having regard to what was
publicly known or used in India before the priority date of the claim and also
having regard to what was published in any of the documents, whether in India
or elsewhere;
  where the invention that is claimed is obvious and lacks any inventive step,
having regard to what was publicly known, used or published in India, before
the priority date;
 where the invention is not useful;
 where the invention and the method by which it is to be performed is not
sufficiently and fairly described by the complete specification. In other words,
the description of the method or the instructions for the working of the invention
as specified in the complete specification are insufficient to enable a person of
average skill and knowledge of the art to which the invention relates, to operate
or work the invention or where the best method of performing the invention
which is known to the applicant is not disclosed;
 where the scope of any claim is not defined properly or based on the matter which
his not disclosed in the specification;
 where a false suggestion or representation was made to obtain the patent;
 where the subject of any claim of the complete specification is not patentable
under the Act;
 the invention that is being claimed was secretly used in India before the priority
date of the claim;
 where the information required under Section 8 has not been disclosed by the
applicant of the patent to the Controller or the information that has been
furnished is false to his knowledge;
 where any direction of secrecy passed under Section 35 has been contravened
by the applicant or made an application in contravention of Section 39 for the
grant of a patent outside India;
 where the permission to amend the complete specification under Section 57 or
58 was obtained by fraud;
 the complete specification does not disclose or mentions the wrong source or
geographical origin of biological material used for the invention;
 the invention was anticipated having regard to the knowledge which was
available within any local or indigenous community within India or elsewhere.

Pfizer Products Inc. v. Union of India [2016 231 DLT 169]

This case is also known as the Sutent Case, involved the revocation of a patent held
by Pfizer for the cancer drug Sutent. The patent was challenged by various Indian
generic drug manufacturers. The Delhi High Court ruled in favor of the defendants and
revoked Pfizer's patent on the grounds of lack of inventive steps and obviousness. The
patent's claimed innovation, according to the court, was evident to a person of ordinary
ability in the art and did not require any technological progress. It concluded that the
alleged invention only revealed a new form of an existing chemical without improving
its already established efficacy. The case made it clear that in order for a patent to be
legitimate and enforceable, it must show a substantial improvement or addition to a
field.
COMPULSORY LICENSING IN PATENT LAW:
In simple terms, compulsory licenses are authorizations given to a third-
party by the Government to make, use or sell a particular product or use a particular
process which has been patented, without the need of the permission of the patent
owner. The provisions regarding compulsory licenses are given in the Indian Patents
Act, 1970 and in the TRIPS (Trade-Related Aspects of Intellectual Property Rights)
Agreement at the International level. Although this works against the patent holder,
generally compulsory licenses are only considered in certain cases of national
emergency, and health crisis. There are certain pre-requisite conditions which need to
be fulfilled if the Government wants to grant a compulsory license in favour of
someone.
Compulsory licensing, a more regulated aspect, is detailed in Chapter XVI of
the act, titled "Working of Patents, Compulsory Licences and Revocation." This
Chapter consists of Sections 84 to 94, addresses situations where the patent holder's
rights are overridden for public benefit. These provisions ensure that patents are worked
in India, meet public needs and are accessible at affordable prices, particularly in critical
sectors like pharmaceuticals. For example, Section 92A of Patents Act facilitates
exporting generic medicines to countries lacking manufacturing capacity which aligns
with the public health goals. The essential provisions are as follows:
Section 84: Getting a Compulsory Licence
 After 3 years of a patent being granted, anyone can ask for a licence if the public
isn't getting enough of the invention, it's too expensive for most people and it's
not being used in India.
 The Controller decides fair terms based on what the invention is, how long it's
been since the patent was granted and the applicant's ability to use it.
 Normally, you get 6 months to try for a licence, but this can be shorter in urgent
cases.
Section 88: Controller's Powers
 The Controller can give licences to the applicant's customers if the patent holder's
rules unfairly affect non-patented items, cancel or change existing licences and
grant licences for related patents if they're important for technical or economic
reasons.
 Licensees can ask to change terms after 12 months if they're too tough.
Section 90: Rules for Compulsory Licences
 The licence includes a fair royalty based on the invention's value and the patent
holder's costs ensuring the invention is used as much as possible while making
a profit.
 Keeping prices affordable.
 Being non-exclusive (others can get licences too) and non-transferable.
  Lasting for the patent's duration, unless public interest says it should be shorter.
 Mostly supplying [Link] exports as per specific rules.
 No imports unless the government says so.
Section 91: Licences for Related Patents

 If someone has rights to one invention but needs another related patent to use it,
they can get a licence for that patent if fair terms can be agreed. The other
invention is important for business or industry in India.
 This licence can't be passed on to others.
Section 92: Emergency Licences
 In cases like national emergencies, urgent situations and public needs (e.g., for
diseases like AIDS, HIV, tuberculosis, malaria, or epidemics), the Controller
can grant a licence to keep prices as low as possible.
 Normal procedures (under Section 87) are skipped.
Section 92A: Exporting Medicines
 Allows compulsory licences to export patented medicines to countries that can't
make them.
 Comes with conditions to ensure medicines reach those in need globally.
 Section 92 A (1) – To a country which has insufficient or no manufacturing
power in the pharmaceutical sector to address public health.
Section 93: Licence as a Legal Document
 The licence order acts like a legal contract.
 Includes terms set by the Controller.
Section 94: Ending a Licence
 A licence can be stopped if the reasons for it no longer apply.
 The licensee can object to protect their interests ensuring they're not unfairly
harmed.
India’s first case of granting compulsory license
License was granted by the Patent office in 2012 to an Indian Company called
Natco Pharma for the generic production of Bayer Corporation’s Nexavar. All the 3
conditions of Sec 84 was fulfilled that the reasonable requirements of the public were
not fulfilled, and that it was not available at an affordable price and that the patented
invention was not worked around in India.
The Government took this decision for the general public benefit. However, it was
heavily criticized by the Pharmaceutical Companies as they felt the license should not
have been given.
Procedure for processing compulsory licence application
On filing the application for grant of a compulsory licence along with the
relevant facts and evidence, the controller will analyse the prima facie case made by the
applicant against the patentee. After considering such factors as the nature of the
invention, the applicant’s ability to work the invention and whether the applicant has
made efforts to obtain a licence from the patentee on reasonable terms and, if such
efforts have not been successful within a reasonable period (ie, six months from the
date of application), the controller will decide whether to grant or reject the compulsory
licence.
In case the controller is not satisfied with the applicant’s request, a notice will
be issued to the applicant regarding rejection of the grant of a compulsory licence. In
this scenario, the applicant may request a hearing with the controller, within one month
from the date of such notice of rejection. The controller will thereafter decide the fate
of the application based on the hearing discussion held with the applicant.
Terms and conditions of a compulsory licence
 the patentee’s investment in the invention;
 the workability of the patentee’s invention by the applicant;
 the selling price of the patented articles (at affordable prices); and
 the term of the licence.
The government may, if it is necessary to do so in the public interest, direct the
controller at any time to authorise any licensee in respect of a patent to import the
patented article or an article or substance made by a patented process from abroad. Such
authorisation is subject to conditions, including details of royalties and other
remuneration, the quantum of import, sale price of the imported article and import
period, among other things.
Opposition to the grant of a compulsory licence
When the controller is satisfied, on consideration of an application under Section
84, that a prima facie case has been made out for the making of an order, the applicant
will be directed to serve copies of the application to the patentee and any other person
appearing from the register (eg, a licensee mentioned in the register). The application
made by the applicant is thereafter published in the OfficialJournal.
The patentee or any other person desiring to oppose the application for the grant
of a compulsory licence may, within the prescribed time (two months from the date of
publishing the application in the Official Journal), file a notice of opposition via Form
14, along with the prescribed fee. The opposition statement should contain statements
pertaining to the grounds on which the grant of the compulsory licence is opposed.
When such a notice is served, the controller will notify the applicant and give both the
applicant and opponent an opportunity to be heard before deciding the case.
Compulsory licence for exporting patented products
A compulsory licence for exporting goods usually relates to exporting
pharmaceutical products, particularly in certain exceptional circumstances. A
compulsory licence is available for the manufacture and export of patented
pharmaceutical products to any country with insufficient or no manufacturing capacity
in the pharmaceutical sector for the concerned product, to address public health
problems. Such export is allowed, provided that the compulsory licence has been
granted by such country or such country has, by notification or otherwise, allowed the
import of the patented pharmaceutical products from India. The pharmaceutical
products may be any patented product or product manufactured through a patented
process of the pharmaceutical sector needed to address public health problems and
should be inclusive of ingredients necessary for their manufacture and diagnostic kits
required for their use. On receiving an application in the prescribed manner, the
controller will grant a compulsory licence solely for manufacture and export of the
concerned pharmaceutical product to such country under the terms and conditions as
may be specified and published.
Termination of compulsory licence
On an application along with evidence, made by the patentee or any other person
deriving title or interest in the patent, the compulsory licence granted under Section 84
may be terminated by the controller when the circumstances considered for grant of the
compulsory licence cease to exist. The applicant is thereafter required to serve a copy
of the application and evidence to the holder of the compulsory licence and to inform
the controller of the date on which the service was made effective.
The holder of the compulsory licence may file his or her objection along with
evidence to the application for termination, within one month from the date of the
controller’s receipt of the application (and evidence). A copy of the objection and
evidence is also required to be served to the applicant by the licence holder.
Thereafter, the controller will appoint a hearing for analysing the facts and issuing a
verdict. If the controller decides to terminate the compulsory licence, an order setting
out terms and conditions (if any) of such termination will be served to both the parties.
Important Case Laws dealing with Compulsory License
Bayer v Natco
India’s first ever compulsory licence was granted by the Patent Office on 9 March 2012
to Hyderabad-based Natco Pharma for the production of a generic version of Bayer’s
Nexavar, an anti-cancer agent used in the treatment of liver and kidney cancer. It was
established in Bayer v Natco that only 2% of the cancer patient population had easy
access to the drug and that the drug was being sold by Bayer at the exorbitant price of
Rs280,000 for a month’s treatment. Further, on the grounds that Nexavar was being
imported within India, the Patent Office issued a compulsory licence to Natco Pharma,
which assured that the tablets would be sold for Rs8,880 per month. It was settled that
6% of the net selling price of the drug would be paid to Bayer by Natco Pharma as
royalties.
BDR Pharmaceuticals International Pvt Ltd v Bristol-Myers Squibb Co
In BDR Pharmaceuticals the controller rejected BDR’s application for a compulsory
licence (4 March 2013) for the Bristol-Myers Squibb cancer drug SPRYCEL. The
controller rejected the compulsory licence application made by BDR by stating that
BDR had failed to make a prima facie case for the grant of the compulsory licence. The
controller observed that BDR had made no credible attempt to procure a licence from
the patent holder and the applicant had also not acquired the ability to work the
invention to public advantage. Thus, the request for grant of the compulsory licence
was refused.
Lee Pharma v Astra Zeneca AB[4]
In order to make a prima facie case, Lee Pharma declared that request for a
licence with the patent owner was not responded to within a reasonable period. The
grounds alleged by Lee Pharma were that:
 the patentee failed to meet the reasonable requirements of the public;
 the patented invention is unavailable to the public at a reasonably affordable
price; and
 the patented invention is not used in India.
However, all three grounds as well as the compulsory application were rejected. The
application was rejected on the basis that Lee Pharma failed to demonstrate the
reasonable requirement of the public and further failed to demonstrate the comparative
requirement of Saxagliptin in relation to other drugs in the market. Further, the
controller held that all the related drugs available in the market were in the same price
range and the allegation that Saxagliptin alone was being sold at an unaffordable price
was not justified. The controller also stated that Lee Pharma failed to demonstrate the
exact number of patients that were unable to obtain the drug due to its non-availability.
GOVERNMENT USE OF PATENT
Various statutory provisions in the Patents Act, 1970 (the Act) deal with
governmental use of patented inventions. To comprehend these provisions better and
appreciate different factual situations, it is important to understand the scope of the
rights conferred on grant of a patent. Section 47 provides that the grant of patents is
subject to certain conditions. This section inter alia, states that the government may
import or make or have made on its behalf any patented product or product made by a
patented process for purposes ‘merely of its own use’.
Section 100 provides that the Government, or any person authorized by it, is
empowered to use the patented invention ‘for purposes of Government’. These statutory
provisions it seems, render the otherwise guaranteed rights conferred by Section 48 of
the Act, conditional in nature.
A recent case in the Bombay High Court explores the exception under Section
100 of the Patent Act, dealing with the use of an invention by the government or its
agencies. In Garware Wall Ropes Ltd v Al Chopra and Konkan Railway
Corporation Ltd [1](2009(111) BomLR479), the appellant filed for a temporary
injunction as well as rendition of accounts against the respondents for infringing his
patent. The respondents pleaded immunity under Section 100, by stating that Section
100 of the Patents Act grants complete protection for using the patents for the work of
railways, which is a department of the central Government and such contracts are signed
on behalf of the president of India.
The court recognized that Section 48 creates certain rights in favor of the
patentee which cannot be taken away in the manner that was being done. At this stage,
the court referred to Section 156, which says that a patent shall have the same effect as
against the Government, as it has against any person. Under Section 47, the government
may practice the invention “merely of its own use”, as against this, if they are used by
the government or any person authorized by the government under Section 100, it has
to be through an agreement or license by the patentee.
Section 47 of the Patents Act also outlines other instances where patented
inventions may be used, such as for imparting educational instructions and the
distribution of patented medicines in government dispensaries or hospitals on account
of public service.

PATENT INFRINGEMENT:
Patent infringement occurs when a person or entity makes, uses, sells, offers to
sell, or imports into a country a product or process that is covered by a valid patent
without the consent of the patent holder. The fundamental idea is that patent holders
have exclusive rights over their patented inventions, and any unauthorized use of those
inventions constitutes infringement.
Patent infringement scope usually depends on the comparison between the
allegedly infringing product or process with the claims made in the granted patent. A
patent claim describes all the specific features of the invention that are protected. If
such features exist in the accused product or process, then it might be construed as an
infringement. This analysis can often be done through a "claim construction" or "claim
interpretation" process whereby courts interpret the claims to determine whether the
alleged infringer's product or process falls within the claim scope of the patent.
There are two basic elements in a patent infringement claim –
 Validity of the Patent: For a valid infringement claim, the patent itself must be
valid first. A court may analyze whether the patent was legally granted
considering the prior art, novelty, and non-obviousness.
 Infringement: This is whether the infringer's activities or product falls within the
scope of the patent claims.
Types of Patent Infringement
Patent infringement can happen in more than one form, depending upon the
nature of the infringement and what an infringing party is doing. There are broadly two
forms of patent infringement in general: direct infringement and indirect infringement.
1. Direct Infringement
Direct infringement happens when a party directly makes, uses, sells, or imports
a patented invention without permission of the patent holder. This type of infringement
is the most straightforward and happens when the infringer's actions directly violate
one or more claims of the patent. It is fairly simple to discern, as it represents a blatant
violation of the exclusive rights of the patent.
Making: A person or company who manufactures a product that incorporates all
elements of a patented invention is directly infringing the patent.
Using: Practicing the patented invention in the course of business or personal activity,
without permission, also amounts to infringement.
Selling or Offering to Sell: Offering a product for sale or service that embodies the
patented invention is also one form of infringement
Importing: Importing goods containing or embodying the patented invention into a
jurisdiction where such patent is valid amounts to infringement.
2. Indirect Infringement
Indirect infringement arises when a party does not directly infringe a patent but
can help or induce some other party to infringe it. Two primary types are:
Contributory Infringement: This is when a party sells or supplies an element of a
patented invention with the knowledge that it will be used to infringe a patent. Even
though the party did not infringe the patent directly, by supplying the infringing
element, they contributed to the infringement.
Induced Infringement: Induced infringement is when a party encourages another
person to infringe on the patent. It can be in the form of advertising, giving instructions,
or in any other form of persuasiveness or direction leading to infringement of the patent.
To prove the act of inducing infringement, one has to show that the defendant had
knowledge of the patent and that they knew that, to induce, others would infringe.
3. Willful Infringement
Willful infringement occurs when the infringer knows about the patent and
intentionally ignores the rights of the patent holder. It is an act of infringement
committed with or without consideration for the existing patent. In such cases, courts
may award enhanced damages if the case of willful infringement is proved. It usually
consists of circumstances where the alleged infringing party was aware of the patent
but still infringed it, at times directly disregarding the rights of the patent owner.
Legislation for Patent Infringement
India has a very well-defined legal framework regarding patents, which
especially includes specific provisions in relation to dealing with patent infringement.
Here is a brief overview of significant legislative provisions related to patent
infringement:
1. The Patents Act, 1970
The Patents Act, 1970 is India's cornerstone piece of patent legislation. It regulates the
issuance and granting of patents in the country and spells out the rights and duties of
patent owners, such as the right to prevent others from making, using, or selling the
patented invention without authorization.
Key sections of the Act relevant to patent infringement include:
Section 48: Grants the patent owner the right exclusively to make, use, sell, or offer for
sale the patented invention.
Section 104: States the remedy for infringement of patent rights. This is where a patent
owner can file an infringement action.
Section 105: Expounds on the law court's jurisdiction over the infringement of patents.
Section 107: Outlines the defences which could be put forward in a case of patent
infringement. Notable among these is the challenge to the validity of the patent itself.
2. The Patents Rules, 2003
The Patents Rules, 2003, further details procedural matters in regard to patent
application, rights of the patentee, and means of resolving the dispute. The rules also
have guidelines about dealing with patent infringement cases, including filing a
complaint about and defending cases of infringement alleged against one.
3. International Treaties and Agreements
A WTO member, India complies with the agreements signed by the world body on
TRIPS. TRIPS stands for Trade-Related Aspects of Intellectual Property Rights. It is
the international agreement that standardizes protecting intellectual property rights.
These include patents. The 2005 amendment of India's Patents Act brought India's
patent law into conformity with the TRIPS requirements. Member countries agree to
give their citizens effective legal procedures to enforce their patent rights. Remedies
available include relief that can be obtained against infringement of a patent.
4. Amendment to the Patents Act
Over the years, various amendments to the Patents Act have been made to strengthen
the system of patent protection and enforcement in India. These amendments were
aimed at making the patent system more streamlined and less complicated in solving
issues such as patent infringement. Notably, the Patents (Amendment) Act 2005 has
brought major changes:
Product Patents: The Act has brought product patents into sectors like pharmaceuticals,
which were not allowed prior.
Compulsory Licensing: Provisions relating to compulsory licensing were made. The
government was empowered to allow a third party to manufacture a patented invention
primarily in cases of public health emergencies, without the consent of the patentee.
Patent Term Extension: The amendments provided for the patent term extension also
under certain circumstances, just like all international standards.
Remedies for Patent Infringement
In case of infringement of patents, there are several legal remedies available to
a patent holder. These remedies may vary with the jurisdiction, but they generally fall
into the following categories:
1. Injunctive Relief
Injunctive relief is one of the main remedial measures regarding patent
infringement. It usually involves an order that a court issues to prevent an infringer from
continuing in any infringed activity. It is granted in cases where there is a large
possibility that the patent holder will prevail at trial and if the patent holder suffers
irreparable harm. There are two forms of injunctions:
Pre-Trial Injunction: A court order restraining further infringement until the case is
tried.
Permanent Injunction: A court order permanently prohibiting the infringer from
continuing in the infringing activity after the court has found infringement.
2. Monetary Damages
Compensation by monetary damages is given to the patent holders. Monetary damages
include:
Actual Damages: The losses in actual money that the patent holder incurred due to the
infringement.
Statutory Damages: These are awarded at the discretion of the law.
Enhanced Damages: it's their enhanced value, which happens if willful infringement is
established, multiplied according to how the court sees fit, usually threefold of actual
damages.
3. Royalty Payments
In some jurisdictions, the infringer may be ordered to pay the patent owner a
royalty to use the patented invention. This amount can be agreed upon between the
parties or established by the court.
4. Costs of Litigation
The winning party in a patent infringement case may be awarded costs of
litigation, which can include attorney's fees, in some jurisdictions. This occurs most
often when the infringement is egregious.
5. Confiscation of Infringing Products
In some cases, a patent holder may seek the seizure of infringing goods,
especially in cases where the goods are being sold or imported illegally.
6. Criminal Sanctions
In some jurisdictions, patent infringement can result in criminal penalties,
including fines or imprisonment, especially in cases of willful infringement or
counterfeiting.
Defence of Patent Infringement
Section 107 of the Patents Act prescribes several defences open to the defendant
in a case of patent infringement:
Invalidity of Patent: The defendant can attack the patent as being invalid on the basis
that the patent was improvidently granted in the first instance for reasons of lack of
novelty or non-obviousness.
Non-infringement: The defendant can argue the alleged infringing product or process
does not fall within the scope of the patent claims.
Use of a Patent for Research or Experimental Purposes: the Patents Act offers an
extremely restricted exception for the use of a patented invention for research or
experimental purposes.
Compulsory Licensing: If the patentee has not worked the patent in India, or even
refused to grant a license, then a defence based on compulsory licensing may be made.
PATENTS ACT 1970 NOTABLE CASE LAW
Hoffmann-La Roche Ltd vs Cipla Ltd., Mumbai Central
This case was the first patent infringement case under the Patents Act 1970 after India’s
independence. The plaintiff sought an interim injunction to stop the defendant from
selling a generic version of the patented drug. However, the court denied the plaintiff’s
request and highlighted that the sale of the patented drug served the public interest.
Additionally, there was an ongoing counterclaim in a separate court seeking to revoke
the patent.
Dr. Snehlata C. Gupte v. Union of India & Ors
The case of Dr. Snehlata C. Gupte v. Union of India & Ors explained the important
issue regarding the exact date when a patent is considered granted under the Patents Act
1970. Some argued that a patent is granted as soon as the patent authority decides not
to reject the application. However, the court held that the issuance of a formal patent
certificate is merely procedural, and the patent is deemed granted only when the
Controller officially passes the order accepting the patent application.
Novartis AG v. Union of India
In Novartis AG v. Union of India the Supreme Court dismissed the patent application
filed by Novartis for the cancer drug Glivec, referring to Section 3 (d) of the Patents
Act 1970 which restricts patents for incremental innovations. The verdict of the Court
upheld the stance of India on promoting affordable generic medicines and highlighted
the constitutionality of Section 3 (d) of the Act.
The Delhi High Court in Strix Ltd. v. Maharaja Appliances Ltd. awarded an interim
injunction against Maharaja Appliances for violation of patent of an electric kettle
model. The Court ruled that the Defendant had failed to provide sufficient scientific
evidence or expert testimony to challenge the legality of Strix’s patent under the Patents
Act 1970.
 MODULE- IV

COPYRIGHT
The term “copyright” is not defined under the Indian Copyright Act, 1957
(hereinafter referred to as “Copyright Act”). The general connotation of the term copyright
refers to the “right to copy” which is available only to the author or the creator, as the case
may be. Thus, any other person who copies the original work would be amount to
infringement under the Copyright [Link] is a right given by the law to creators of
literary, dramatic, musical and artistic works and producers of cinematograph films and
sound recordings. It is a bundle of rights including, inter alia, rights of reproduction,
communication to the public, adaptation and translation of the work. The only criterion to
determine whether a person is entitled to copyright protection is originality in expression.

Copyright in a work is considered as infringed only if a substantial part is

usedunauthorized. What is ‘substantial’ varies from case to case. More often than not, it is
a matter of quality rather than quantity. For example, if a lyricist copy a very catching
phrase from another lyricist’s song, there is likely to be infringement even if that phrase is
very short. The best example would be “Oh, Pretty women” dealt in the case of Campbell
Vs Acuff Ross Music Inc.

CRITERIA FOR PROTECTION:

Copyright protects the expression and not the content or substance per se. For
example, an author writes about making of an aircraft. Here, the idea of making of the plane
is not protected but the only the way of expressing is protected. The idea is protected under
the Patent law and not under Copyright Act.

Copyright also does not protect the titles per se or the names, word or a set of words.
But there can be exceptions based on the facts and circumstances of each case. For
example, the actor Shah Rukh Khan has copyrights his name (SRK) and the music
composer [Link] copyrighted the title “Jai Ho” for the Oscar song which is currently
under litigation. It is noteworthy to mention here that the defendant can always take a stand
of cancellation of copyright in any suit unless he is estopped by any implied or express
acceptance.

Copyright may also be granted for things that would come under patents, trademarks
or designs. As copyright protects only the expression and nothing more, it is not much
preferred in practice except in case of film industry.

Work in which copyright subsists (Chapter III, Section 13 of Copyright Act)

  Literary works (including computer programmes, tables and compilations including
computer literary data bases)
 Dramatic works
 Musical works
 Artistic works
 Cinematograph films
 Sound recordings.

Foreign Works

The copyright of foreign works is also protected in India. Copyright of nationals of

countries who are members of the Berne Convention for the Protection of Literary and
Artistic Works, Universal Copyright Convention and the TRIPS Agreement are protected
in India through theInternational Copyright Order, as if such works are Indian works.

Copyright as provided by the Indian Copyright Act is valid only within the borders
of the country. To secure protection to Indian works in foreign countries, India has become
a member of the following international conventions on copyright and neighbouring
(related) rights:

a. Berne Convention for the Protection of Literary and Artistic works.

b. Universal Copyright Convention.

c. Convention for the Protection of Producers of Phonograms against Unauthorised

Duplication of their Phonograms

d. Multilateral Convention for the Avoidance of Double Taxation of Copyright Royalties.

e. Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement.

Copyright act and 2012 amendment:

The Copyright (Amendment) Act, 2012 was passed by the Indian Parliament to update the
Copyright Act, 1957.

It came into force on 21 June 2012.

The main aim was to align Indian copyright law with international treaties, protect creators
in the digital age, and safeguard the rights of authors, performers, and users.

Key Objectives

1. To comply with WIPO Internet Treaties —

  WIPO Copyright Treaty (WCT)
 WIPO Performances and Phonograms Treaty (WPPT)

2. To give authors and music composers better rights in the digital and film industries.

3. To make the law technology-neutral, covering digital and online use.

4. To ensure access for persons with disabilities.

Major Provisions Explained

1. Authors’ and Music Composers’ Rights

 Authors of literary and musical works included in cinematograph films or sound

recordings retain their right to receive royalties.
 Even if they transfer other rights to producers, they cannot waive this right to
royalties.

This ensures composers and lyricists are paid when their songs are used commercially
(e.g., streamed online).

2. Rights of Performers

 Performers (singers, actors, musicians, etc.) now get:

 Exclusive rights over their performances.
 Moral rights— to claim authorship and object to distortion or mutilation.
 Performers also have a right to royalties when their performances are commercially
exploited.

3. Protection for Persons with Disabilities

 Non-profit organizations can adapt, reproduce, and distribute copyrighted works in

accessible formats (like Braille, audio, or digital) without needing permission.
 This ensures access to knowledge for visually impaired persons.

4. Digital Rights Management (DRM) and Technological Protection

 Introduced penalties for circumventing digital protection measures (like

encryption).
 Made it illegal to remove or alter rights management information (like author names
or copyright notices).

5. Covering Digital and Internet Use

  Copyright now extends to digital and online works (e.g., internet streaming, online
broadcasts).
 Introduced the concept of “communication to the public” via digital means.

6. Licensing and Copyright Societies

 Copyright societies (like IPRS, PPL) must be registered and transparent.

 They are required to share royalties fairly among members.

7. Government Works and Educational Use

 Simplified compulsory licensing for translations and reproduction for educational

or library use.
 Encourages public access while protecting creators.

International Alignment

The amendment brought India closer to:

 WIPO treaties (WCT and WPPT)

 TRIPS Agreement (WTO)
 Strengthened India’s position in global copyright enforcement.

REGISTRATION OF COPYRIGHT

Copyright is automatic once the original work is created and it does not require any
formality. However, certificate of registration of copyright and the entries made therein
serve as prima facie evidence in a court of law with reference to dispute relating to
ownership of copyright.

Procedure for registration:

Chapter VI of the Copyright Rules, 1956 sets out the procedure for the registration
under the Copyright Act. The procedure for registration is as follows:

a. Application for registration is to be made on Form IV ( Including Statement of Particulars

and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;

b. Separate applications should be made for registration of each work;

c. Each application should be accompanied by the requisite fee prescribed in the second
schedule to the Rules ; and
d. The applications should be signed by the applicant or the advocate in whose favour a
Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by
the party and accepted by the advocate should also be enclosed.

Each and every column of the Statement of Particulars and Statement of Further
Particulars should be replied specifically.

Both published and unpublished works can be registered. Copyright in works

published before 21stJanuary, 1958, i.e., before the Copyright Act, 1957 came in force,
can also be registered, provided the works still enjoy copyright. Three copies of published
work may be sent along with the application.

If the work to be registered is unpublished, a copy of the manuscript has to be sent

along with the application for affixing the stamp of the Copyright Office in proof of the
work having been registered. In case two copies of the manuscript are sent, one copy of the
same duly stamped will be returned, while the other will be retained, as far as possible, in
the Copyright Office for record and will be kept confidential.

Also it would also be open to the applicant to send only extracts from the
unpublished work instead of the whole manuscript and ask for the return of the extracts
after being stamped with the seal of the Copyright Office. When a work has been registered
as unpublished and subsequently it is published, the applicant may apply for changes in
particulars entered in the Register of Copyright in Form V with prescribed fee.

Some of the advantage of Registration are:

 Registration establishes a public record of the copyright claim.

 Before an infringement suit may be filed in court, registration is necessary for
works.
 Registration establishes sufficient evidence in court concerning the validity of the
copyright and the facts stated in the copyright certificate.
 If registration is made, statutory damages and attorney's fees will be available to the
copyright owner in court actions. Otherwise, only an award of actual damages and
profits is available to the copyright owner.
 Registration allows the owner of the copyright to record the registration with the
Indian Customs for protection against the importation of infringing copies.

Concept of Originality:
As per Section 13 of the Indian Copyright Act, copyright subsists in dramatic,
artistic, musical works as well as cinematographic films and sound recordings. The
Copyright Act as such does not define the term “originality” but the Indian courts have
relied on various doctrines laid down by the foreign courts.

The Privy Council, in the case Macmillan & Company Ltd. v. Cooper, approved
the principle laid down in University of London Press v. University Tutorial Press,
which laid down that copyright over a work arises and subsists in that work due to the skill
and labour spent on that work, rather than due to inventive thought. This is more popularly
known as the ‘sweat of the brow’ theory. It has been held that originality derives merely
from the fact that sufficient labour, skill, capital and effort (whether physical or otherwise)
has been applied in the work.

This “sweat of the brow” theory was adopted in India, as evidenced from the Delhi
High Court judgment in the case of Burlington Home Shopping v. Rajnish Chibber,
wherein it was held that a compilation may be considered a copyrightable work by virtue
of the fact that the there was devotion of time, labour and skill in creating the said
compilation from many available works.

In the case of Feists Publication Vs Rural Telephone Services, the court

introduced another concept for determining originality namely minimum modicum of
CREATIVITY wherein it has been held that it must be independently created by the author
and that it possesses at least some minimal degree of creativity in it to make it eligible for
attaining originality. As per the judgment any independent creation with certain degree of
creativity would be considered as original.

The Indian Supreme Court, in its landmark judgment of Eastern Book Company
v. D.B. Modak, departed from both these approaches and established the standard of
originality that fell midway between ‘sweat of the brow’ and ‘minimum modicum of
creativity’. In doing so, the Indian Supreme Court was followed the reasoning given by the
Canadian Supreme Court in CCH Canadian Ltd. v. Law Society of Upper Canada. But
in practice, this midway standard is extremely difficult to practice and implement.
According to this midway standard, an ‘original’ must be a “product of an exercise of skill
and judgment”, where ‘skill’ is “the use of one's knowledge, developed aptitude or
practised ability in producing the work” and ‘judgment’ is “the use of one's capacity for
discernment or ability to form an opinion or evaluation by comparing different possible
options in producing the work”. As per the Canadian Supreme Court, this exercise of skill
and judgment must not be “so trivial that it could be characterized as a purely mechanical
exercise” and must be “more than a mere copy of another work.” At the same time,
“creativity is not required” to make the work ‘original’. It is thus evident that a great deal
of ambiguity exists around the practical implementation of this standard.
OWNERSHIP RIGHTS

Indian perspective on Copyright Protection :

The principle of ‘ownership of copyrights’ would be the very first instance where
the essence of a copyright begins, which is a statutory right, vested on the person who owns
the copyright. A key variation should be clearly understood by the readers on the difference
between ‘ownership’ and ‘authorship’ of copyrights, since both the terms sounds similar
like ‘ownership’ and ‘possession’.

Section 17 of the Copyright Act, 1957 (hereinafter referred as ‘the principal Act’),
has categorically mentioned and clarified the difference among the two terms which has
laid down the essential conditions to acquire the position of ownership to whom the
copyright belongs and has provided what constitutes the first ownership of the copyright.
All the works that has been initiated and governed by a person would not constitute a right
of ownership which has been made understood through a landmark judgment of Eastern
Book Co. v Navin J Desai, where an issue has been raised with regards to the ownership
of copyright on Government works. The Court held that the reproduction of any order or
judgment delivered by the Court or judicial authority would not make up an act of
infringement and are open to the public to reproduce and publish the same.

Section 17 of the Copyright Act, 1957:

The conditions that are ought to be specifically kept in mind while interpreting the state of
ownership has been provided statutorily under Section 17 of the principal Act are discussed
as follows –

 For literary, dramatic or artistic works – The author who creates them would be the
first owner;
 Works performed under contractual service as an employment – ownership lies
upon the employer;
 In case of photographs shot for cinematographic films – ownership lies at whose
instance it has been taken;
 Works done under a value of consideration – ownership lies on the person who pays
for such work;
 For a speech delivered at public – ownership lies on who delivers such speech;
 If a speech is made on behalf of another person – the person who assigned the work
to deliver such speech would be the owner of the same;
 Works published or orders passed by the Government or any organization –
ownership lies on the Government or the organization which has published it.
 The Copyright Act, 1957 provides copyright protection in India. It confers copyright
protection in the following two forms:

(a) Economic rights of the author

(b) Moral Rights of the author

The owner of the Copyright has the following rights under the Act:

a) Economic rights of a Copyright Owner –

Any right that yields or payoffs the owner monetarily are said to be the economic rights.
The economic right of the owner is been listed out in Section 14 of the principal Act, under
the meaning of copyright.

i)Right to reproduce the work :

The Copyright confers upon the assessee the sole right to reproduce the authored work. In
other words, no other person except the author shall make copies (one or many) of the work
or copy the substantial part of the work in any form including sound and film recording etc
without the permission of the copyright owner. For example, a person buys a film CD and
the person makes multiple copies of it and sells it to others. This would amount to copyright
infringement.

ii) Right to distribute in market :

Similar to the right of reproduction, the owner of the copyrighted work also has a
right to distribute in the market and make money out of it. The act of distribution may be
in the form of sale, lending for free or for a consideration, rental, or free distribution by the
way of gift. The right of distribution differs from case to case and shall not be exercised in
a similar manner at each instance. If the work that has been sold is a book, the rule of
exhaustion shall be applied. Wherein the right to distribute the book will be exhausted and
ceases to exist after the first sale of it and the buyer of the book will be further entitled to
resale it as a second hand material. Whereas this condition is not the same in case if the
owner of copyright set ups a library and charges rental fee to read the books available there
and the law does not prohibit to do so also the rule of exhaustion will not come to play.

iii) Right to communicate to the public :

Communication to the public means making any work available to general public
for the purpose of being seen or heard or otherwise enjoyed by the public directly or by any
means of display or diffusion. It is not necessary that any member of the public actually
sees, hears or otherwise enjoys the work so made available. For example, a cable operator
may transmit a cinematograph film, which no member of the public might have seen. Still
it is a communication to the public. The fact that the work in question is accessible to the
public is enough to say that the work is communicated to the public.

In Indian performing right society Ltd. V Aditya Pandey, the Delhi High Court
held that “the defendant is accordingly restrained from communicating any of such works
to the public, or performing them, in the public, without such appropriate authorization, or
licensing”.

iv) Right of adaptation :

Adaptation involves the preparation of a new work in the same or different form
based upon an already existing work. The Copyright Act defines the following acts as
adaptations:

a. Conversion of a dramatic work into a non-dramatic work

b. Conversion of a literary or artistic work into a dramatic work
c. Re-arrangement of a literary or dramatic work
d. Depiction in a comic form or through pictures of a literary or dramatic work
e. Transcription of a musical work or any act involving re-arrangement or alteration of an
existing work.
For example, the book “Five Point Someone” written by Chetan Bhagat was
made as a film named “3 Idiots” in Hindi. It is noted that the concept of the film alone
was taken and not the whole of its expression. Again, the remake of the film “3 idiots”
was done in Tamil in the name of “Nanban”. Again here some alterations were made to
suit the targeted audience and therefore, only amounted to copying of idea and not the
expression.
Although the right of adaptation are being protected by the statute, it is also been
governed by the principles laid down under a classical case, by the Privy Counsel, in
Macmillan and Company Ltd. V K. and J. Cooper. The defendants were alleged on
infringing the book published by the plaintiff and the nature of the book which was
previously published by the Plaintiff was put to test and was figured out the work was
made out of a non – copyrighted source, such that the Plaintiffs book lacked its nature of
originality and held that the defendants are not guilty of infringement. The principle
employed here is that, although a work has been adapted from such source it must possess
a quality of originality to an extent.
v) Right to translate :

The owner of the copyrighted work has a right to translate his work to any other
languages he wants.

In Academy of General Edu., Manipal & ANR. Vs. B. Malini Mallya, petition
was filed by the plaintiff, alleging on the use of his idea without authorization. The Court
held that “mere adaption of an idea would not amount the act of infringement and there
must be a substantial copy of work to attain the same.

Similarly, the owner has the full and sole authority to translate the work done by
him in one language to one or many other languages. Any other person interested in doing
so must get the prior permission of the owner. For example, a film taken in English can be
dubbed or remade only by the owner or any other person with the consent of the owner.

b) Moral rights of a Copyright Owner:

A moral right would stand a step ahead of an economic right in which it is based on the
dignity, uniqueness and the reputation that a work has gained and maintained. It has been
well illustrated in the case of Amarnath Sehgal v Union of India, the plaintiff’s
masterpiece was damaged by the defendant by which it lost its aesthetic and market value.
A mandatory injunction was passed by the court in addition of fine amount of 50 lacs as
the cost of damage.

The moral rights of the copyright owner has been provided under Section 57 of the
principal Act that encompasses three basic moral rights.

 Right of paternity;
 Right of integrity; and
 Right to retraction.

i)Right of paternity:

The right of an owner of copyright to claim and prevent others to claim the ownership of
his copyrighted work is said to be a right of paternity. Sholay Media Entertainment and
Pvt. Ltd. V Parag M. Sanghavi, was a landmark judgement delivered on the Right of
paternity of the copyright owner, where the court granted protection to the title of the movie
which made the defendant to replace his’ movie title completely by refraining the use of
the name which causes damage to the cult of the name “Sholay” since it was deceptively
similar with the same.

ii) Right of integrity:

 The right of the owner of the copyright to protect the reputation of his own work
from exploitation is the right of integrity. Sajeev Pillai v. Venu Kunnapalli & ors., the
respondent was alleged on the act of pre – release publicity of the movie which was yet to
be released without ant authorized permission. The court granted relief to the aggrieved
petitioner by restraining the respondent to carry on such act which damages the
exclusiveness and reputation of the movie.

iii) Right to retraction :

Retraction is an act of taking back the previous assertion made. The author at times
may feel to give up his own right as an act of honoring the dignity of his work which sounds
like assassinating ones own life for the sake of protecting the so far gained reputation. The
principal Act, under section 57 grants the author the right to withdraw from the publication
of his work. In simple terms it means waiving of his granted rights for the sake of protection
of reputation or integrity. In Amarnath Sehgal v Union of India, the court pointed out the
right to retraction as to withdraw ones own publication if the author feels the condition of
his work is derogatory in nature and are advisable to do the withdrawal of the same. This
would be the author’s right to retraction.

LIFE OF RIGHT

Generally copyright lasts for Life + 60 years in India.

 Original literary, dramatic, musical and artistic works - 60-year from the year
following the death of the author. In case of joint authorship, the date has
reference to author who dies last.
 Posthumous Work - 60 years from the date of demise of the owner
Anonymous and pseudonymous publications - 60 years from beginning of the
calendar year following the year of publication.
 Photographs - 60 years from the beginning of the calendar year next following the
year in which the photograph is published
Work of Government, Public undertaking and 60 years from the year next to the
year of publication
 Cinematographic film - 60 year from the post calendar year of the release of the
Film

LICENSING
 The copyright owner may grant a license and transfer some or all of his rights to
others to exploit his work for monetary benefits. A license is different from an
assignment as licensee gets certain rights subject to the conditions specified in the license
agreement but the ownership of those rights is not vested with him while in case of an
assignment the assignee becomes the owner of the interest assigned to him. A license
may be exclusive or of non-exclusive type.
i) Voluntary Licensing

The owner of the Copyright in any existing or future work may grant any interest in
the work by way of license. As regards the future works the license shall take effect only
when the works comes into existence. For a license to be valid it must be in writing and
signed by either the owner or his duly authorized agent. And where a person to whom a
license relating to copyright in any future work dies before the work comes into existence,
his legal representative shall be entitled to the benefit of the license.
A License Agreement generally contains the following particulars:

 Identification of the work licensed

 Duration of the license
 Territorial extent of the license
 Amount of royalty payable
 Conditions relating to revision, extension and/or termination of license dispute in
respect of the license shall be settled by the Copyright Board or by way of
Arbitration.
 Allowability of sub-licensing etc.

ii) Compulsory Licensing

Compulsory Licensing can be invoked under certain circumstances with respect to

both published works and unpublished works. Compulsory licenses can also be obtained
for the purposes of production and publication or translation of the work. The procedure
for obtaining compulsory licensing with respect to the Indian works and foreign works is
different.
Compulsory licensing on Published Works

With respect to the Indian works published or performed in public, compulsory licenses
can be obtained by making a complaint to the Copyright Board on the ground that the owner
has:
• Refused to re-publish or allow the republication of the work or has refused to allow the
performance of the work in public and by reason of such refusal the work is withheld from
the public.

• Refused to allow the communication of the work to the public by broadcast of the work
or work in the sound recording on such terms, which the complainant considers reasonable.

• · Refused to allow the performance of the work in pubic and by reason of such refusal
work is withheld from public;

Compulsory licensing on Unpublished Works

Compulsory licenses can also be obtained with respect to the unpublished works by
making an application to the Copyright board in the following circumstances:

• Author is dead

• Author is unknown

• Author cannot be traced

• Author cannot be found

Before making an application in respect of an unpublished work the applicant is

required to publish his proposal in one issue of a daily newspaper in the English language
having circulation in major part of the country and also in one issue of any daily
newspaper in that language.

Compulsory licensing with regard to copyright is mostly paper realism as books or

films are seldom licensed compulsorily. Recently, the compulsory licensing was enforced
in the field of Patents which were not welcomed by the foreign counterparts as this would
reduce their income. This law supported by conventions such as Vienna Conventions and
TRIPS has to be taken advantage to include the foreign works and the foreign books must
be made available to the general public at a lesser cost.

Cancellation of License
The Copyright Board can cancel the license granted on any of the following
grounds:
• The licensee has failed to produce and publish the translation of the work within the
specified period or the extended period.
• The license was obtained by fraud or misrepresentation as to any essential fact.
• The licensee has contravened any of the terms and conditions of the license.

ASSIGNMENT
The owner of the copyright in an existing work or the prospective owner of the
copyright in a future work may assign to any person the copyright either wholly or
partially and either generally or subject to limitations and either for the whole term of the
copyright or any part thereof.
A right to assign work under the Copyright Act 1957 arises naturally when the
work comes into existence. However, certain rights are specific to certain types of
subject matter/work. Further an author/owner is entitled to multiple rights broadly
categorised as Economic rights and Moral rights. The owner of a copyright may grant an
interest in the copyright by a [Link] Act prescribes that a prospective owner of a
copyright in future work may assign the copyright, to any person, either wholly or
partially, although the assignment shall take effect only when the work comes into
existence.

The requirements for a valid assignment

a. It must be in writing.

b. It should be signed by the Assignor.

c. The copyrighted work must be identified and must specify the rights assigned.

d. It should have the terms regarding revision, royalty and termination.

e. It should specify the amount of royalty payable, if any, to the author or his legal heirs.

f. In the event the Assignee does not exercise the rights assigned to him within a period of
one year, the assignment in respect of such rights is deemed to have lapsed unless otherwise
specified in the Agreement.

g. If the period of assignment is not stated, it is deemed to be five years from the date of
assignment, and if no geographical limits are specified, it shall be presumed to extend
within India.

h. If the territorial extent of assignment of the rights is not specified, it shall be presumed
to extend within the whole of India.
The above provisions apply both to registered and unregistered copyright. Apart from the
above requirements, in case of registered copyright, the following additional steps also
have to be taken.
 In case of Registered Copyright the Assignee has to make an application for
registration of changes in the particulars of copyright entered in the Register of Copyrights
in Form V under Rule 16 of Copyright Rules, 1958 to be delivered by hand or registered
post. Attested copies ofthe deeds of assignments should be enclosed with the application.

Difference between Assignment and License

 Assignment of copy right and copyright license are two forms of contract involved
in the exploitation of copyright work by a third party. License is an authorization of
an act without which authorization would be an infringement. Licensing usually
involves licensing of some of the rights and not the whole. Licenses can be exclusive
or non exclusive. An assignment involves the disposal of the copyright. The author
(assigner) assigns the copyright to another person (assignee) or transfers the
ownership of the copyright.
 Assignee will be the owner of the copyright as regard rights so assigned. The owner
will be the owner of the copyright of remaining rights. The assignment could be for
whole duration of the copyright or for a short duration. In case of Licensing, the
ownership shall always vest with the owner (Licensor).
 The licensee can join with the owner of the copyright and as a party to the
infringement, and take an action for infringement against third party but a bonafide
purchaser in good faith and for consideration of the proprietors interest without
notice of previous licensee is unaffected by it , held in the case Bharat Law House
Vs. Wadhwa AIR 1988,Del 6. On the other hand, in case of assignment, where the
ownership is transferred, the assignee himself can take action against the third party.
 The licensee can however, sue the licensor for damages for breach of contract if the
latter does not protect his interest. A licensee has a right to make alterations except
in so far as his license expressly or impliedly restricts the right. A failure to pay
royalties enables the licensor to revoke the license. But in the case of assignment it
is not possible (Gramophone Co of India Ltd v. Shanti Films Corpn AIR 1997
Cal 63). But if there is any harsh terms which affects the author’s right, it can lead
to revocation if a complaint is made to the copyright Board. Where the assignee of
a copyright becomes entitled to any right comprised in the copyright, the assignee
as respects to the rights so assigned, and the assignor as respects the rights not
assigned, shall be treated for the purposes of this Act as the owner of copyright and
the provisions of this Act shall have effect accordingly.
 Under Section 30 of the Copyright Act, if the licensee in the case of future work
dies before the work comes in to existence his legal representatives shall be entitled
 to such works, in the absence of any provision to the contrary. The expression
"assignee" as respects the assignment of the copyright in any future work includes
the legal representatives of the assignee, if the assignee dies before the work comes
into existence. The owner of the copyright has the power to assign his entire rights
or assign only some of the rights. In case the rights are split up there is only partial
assignment.

Mode of assignment:

No assignment of the copyright in any work shall be valid unless it is in writing

signed by the assignor or by his duly authorized agent. It shall identify the work, specify
the rights assigned, duration, territorial extent of such assignment, amount of royalty
payable to the author. If the period is not stated it shall be deemed to be five years and
territorial extend shall be presumed to extend within India. If the assignee does not
exercise such rights within one year from the date of such assignment it shall be deemed
to have lapsed unless otherwise specified in the assignment. The assignor can file a
complaint to the copyright board if the assignee fails to make sufficient exercise of the
rights assigned, failure not attributable to the act or omission, then copyright. board after
such enquiry as it deem necessary may revoke the assignment, this provision may be used
for u/s 31 as a ground for compulsory licensing.
Also regarding any dispute to assignment it follows the same procedure including
an order for recovery of any royalty payable. If the terms of the assignment is harsh to the
assignor (owner), it can be revoked, but after five years from the date of assignment. In
the case of unpublished work the author must be a citizen of India or domiciled in India
at the time of the creation of the work. Copyright in an architectural work will subsist
only if the work is located in India irrespective of the nationality of the author.

INFRINGEMENT:
In dealing with copyright, we should bear in the mind that copyright does not protect
novelty but only originality. Copyright protects only the expression and not the idea.
Therefore, if it is the only method of expressing the work, it cannot be protected. Best
example would be the Telephone Directory wherein the Name, Address, Phone No. are
given and also given in alphabetical order. There can be no other way of expressing the
same. Therefore, this would not amount to copyright infringement. This is popularly
referred to as Idea-Expression Dicothomy.

The key factors required for initiating any infringement case are:
  Prove ownership of Copyright
 Infringer has copied (Substantially Similar)
Once the rights of the owner have been established, the next step is to prove that
that there is an actual infringement. If the defendant makes copies of a copyrighted
work and commercially exploits such copies or any blatant infringement, nothing
further needs to be proved to establish infringement apart from what has been
discussed above. However, more complicated questions arise when the defendant
the alleged infringing work involved relates to something, which is similar, but not
identical with the plaintiff’s work.

In such cases, in order to prove infringement, the plaintiff must show the following:

a. The defendant copied directly from the plaintiff’s work, and

b. The elements copied, when taken together, amounts to an improper appropriation.

Realizing that direct evidence of copying will be rarely available, courts have universally
allowed copyright owners to prove copying on the basis of circumstantial evidence,
specifically through inferences from the defendant’s access to the plaintiff’s work and
from any similarities between two works.
In the case of Super Cassette Industries Vs Nodules Co. Ltd ., the defendant
played cassette in hotel amounts to copyright infringement. This was clearly held to be
act of infringement of author’s right over copyright. Copying can, therefore, be proved by
inference. It can be inferred that the defendant has in fact copied the plaintiff’s work from
the fact that the defendant had access to the plaintiff’s work and from the similarities
between his work and that of the plaintiff’s. The rationale behind this is that given the
sufficient opportunity that the defendant had to copy the plaintiff’s work in addition to
the striking similarity between the two works, the evidence in hand is indicative of
copyright infringement.

In the case of Roma Mitra Vs State of Bihar, the Plaintiff, a student gave the work
to the guide. The guide published the work as her own. The published article was
substantially similar and therefore, amounted to copyright infringement.
In the case of Ty Ink Vs GMA Accessories, it was held that Similarity between works
is highly unlikely to have been in accident of independent creation. This is evidence of
access. Therefore, there is a reciprocal relationship between proof of access and similarity
and this relationship is subject to two important limitations

In the case of S.K. Dutt vs Law Book Co. And Ors., the court determined the amount
of substantiality should be more than half of the total work. It has also held that where the
half of the work is copied and the remaining being original work, it does not constitute
infringement.
Therefore, to summarise the Condition to prove infringement can be summarized
as follows:
a. Closely Similarity

b. Unlawful

c. Some connection

d. Access to original work

The Protected Expression Test

The first test for improper appropriation is to identify whether the defendant’s work
copies any protected expression from the plaintiff’s work, i.e., exclude those elements from
the plaintiff’s work, which are not protectable under law. Examples of such elements are
expressions which to which the Idea-Expression Doctrine applies or the doctrine of
“Scenes a faire” applies. This arises in situations where the idea and expression merge and
since copyright law does not protect ideas per se, that element is not protected under
copyright. Also, this relates to those elements, which necessarily have to be present in any
form of expression of an idea and hence, not protected under copyright. The Court first
separates these elements from the work that is alleged to be copied.

In the case of 20th Century Fox Interstate Ltd Vs Zee TV Ltd., the plaintiff and
the defendant were in the same kind of business i.e TV shows which was copied by the
defendant. The court held that this does not amount to infringement as it comes under Idea-
Expression Dicotomy and there is no other way of expressing the idea. It was also held that
mere outline of copyright is not copyrightable except being distinct.

In the case of Campbell Vs Acuff Ross Music Inc., the plaintiff composed a song
that begins with “Oh, Pretty Women” which became very famous. The defendant copied
the famous 1st line of the song alone and completed the song in his own words and
expression. The court held that the act did not constitute infringement.

Audience Test

To establish infringement, the plaintiff should demonstrate that any audience

would find the expression in the defendant’s work substantially similar to the plaintiff’s
work. Courts sometimes refer to this test as an “audience test “ and sometimes as an
“ordinary observer” test. This principle of test is from the prospective of a third person,
or a layman, the two works should be seem so substantially similar that a layman they
would not be able to distinguish between the two.

Contributory Infringement

Contributory infringement is where the copyrighted work is duplicated by another

person without the consent of the owner or existence of any lawful excuse by another with
the aid of another. This may be simply put a abetment to an offence. For example, a person
has a Rs.1000 note and takes a color Xerox in a shop. The person is an infringer and the
Xerox shop is abettor or the person who commits contributory infringement.

Similarly, where a book or compact disc is copyrighted which can be easily

ascertained, any person who helps in the offence of infringement like making duplicates
copies, translation, adaptation, communication to public etc, would amount to contributory
infringement.

In the A&M Records, Inc. v. Napster, Inc., the Defendant maintained a central
unit which enabled two or more remote computers to share all the music files in other
system. The defendant was held vicariously liable and for contributing to the infringement.

In the case of Sony Corp. of America v. Universal City Studios, Inc., the Supreme
Court of the United States which ruled that the making of individual copies of complete
television shows for purposes of time shifting does not constitute copyright infringement
though the lower courts considered it to be a contributory infringement, but it is only a fair
use.

Acts which may not amount to Infringement

The act/ copying by defendant may not always amount to infringement. Some
examples of acts which do not constitute Infringement under the Copyright Act are as
follows:

 Fair dealing such as criticisms, personal use, newspaper report, review etc.
 Adaptation of Computer Program
 Judicial Proceedings
 Exclusive work of member of House of Legislature
 Non-Corporate matter for institution purpose
 Question Papers
  With Consent
 Non-paying Audience
 Issue being Current Topic such as economic, social, political Etc.
 Made less than 3 copies
 Research or Private study
 Available in Official Gazette.
 Report of committee or Commission
 After the expiry of Copyright.

FAIR USE

For the purpose of deciding fair use of the work, the following factors has to be
taken into consideration before determining it to be a copyright Infringement.

a. the purpose and character of the use, including whether such use is of a commercial
nature or is for nonprofit educational purposes;
b. the nature of the copyrighted work;
c. the amount and substantiality of the portion used in relation to the copyrighted work as
a whole; and
d. the effect of the use upon the potential market for or value of the copyrighted work.
At the outset, it should be mentioned that the “Fair Use” of the work depends upon
facts and circumstances of each case. In a copyright infringement case dealing with fair
use, the duty of the court is to first determine whether the defendant has use the copyrighted
information in a natural or justifiable manner or has taken advantage of already existing
work of the plaintiff. In deciding that, the court has to deal with the above-mentioned
factors before coming to any conclusion.

The purpose and character of the use plays a major role in determining the copyright
infringement. If the defendant has used it for a purpose which is justifiable or excusable
under the Copyright Act, it may not constitute infringement. It is important that the each
fact is weighted properly in deciding fair use.
For example, if a person writes a book on topic “Mother’s care” and gets his book
copyrighted and subsequently, another person with title “Mother’s care” writes a article on
mother’s care on child. Under ordinary circumstances, it may be an infringement, but here
it is just an article on care of mother towards the child to an non-paying audience with no
commercial element involved in it. Therefore, it would be come under fair use not
amounting to infringement.
 In the case of Harper & Row v. Nation Enterprises, Former President Gerald
Ford had written a memoir including an account of his decision to pardon Richard Nixon.
Ford had licensed his publication rights to Harper & Row, which had contracted for
excerpts of the memoir to be printed in Time. Instead, The Nation magazine published 300
to 400 words of verbatim quotes from the 500-page book without the permission of Ford,
Harper & Row, or Time magazine. The Nation asserted as a defense that Ford was a public
figure, and his reasons for pardoning Nixon were of vital interest, and that appropriation in
such circumstances should qualify as a fair use. The court ruled that fair use is not a defense
to the appropriation of work by a famous political figure simply because of the public
interest in learning of that political figure's account of an historic event.

As stated before, the concept of fair use come into play once the act of the defendant
is justifiable or is excusable under the law. In the case of Eastern Book Company Vs D.B.
Modak, the plaintiff reported the judgments of the courts along with a head note giving
synopsis of the judgment. Question arose as to whether judgment can be given copyright
to an individual who reported the judgment. The court held negatively and held that head
notes alone were eligible for copyright and not the judgment.
Secondly, the nature of use by the defendant is very crucial in determining the liability of
the defendant. If the defendant uses the subject matter of the copyright that exploitative of
the plaintiff work, it would be infringement. Also if the defendant uses the copyrighted
work in a manner that defame or derogates the author or his work, it would amount to
infringement.

In Phoolan Devi v. Shekhar Kapoor, (1995-PTC Del), the plaintiff claimed that
the basis of the film, being a novel dictated by the illiterate plaintiff herself had been
considerably mutilated by the film producer. The plaintiff sought a restraint order against
the defendant, from exhibiting publicly or privately, selling, entering into film festivals,
promoting, advertising, producing in any format or medium, wholly or partially, the film
“Bandit Queen” in India or else where. Granting an injunction, held that “the defendant
had no right to exhibit the film as produced violating the privacy of plaintiff’s body and
person. The balance of convenience is also in favour of restraining the defendants from
exhibiting the film any further as it would cause further injury to the plaintiff. No amount
of money can compensate the indignities, torture, and feeling of guilt and shame which has
been ascribed to the plaintiff in the film. Therefore, the defendants were refrained from
exhibiting the film in its censored version till the final decisionof the suit.”

In Smt. Mannu Bhandari, Appellant v. Kala Vikas Pictures Pvt. Ltd. and
another, AIR 1987 Delhi 13, the court observed that “section 57 lifts the author’s status
beyond the material gains of copyright and gives it a special status. An author’s right to
restrain distortion etc. of his work is not limited to a case of literary reproduction of his
work. The restraint order in the nature of injunction under section 57 can be passed even
in cases where a film is produced based on the author’s novel. The language of section 57
is of the widest amplitude and cannot be restricted to ‘literary’ expression only. Visual and
audio manifestations are directly covered. The court observed that by reading the contract
with section 57, it is obvious that modifications, which are permissible, are such
modifications, which do not convert the film into an entirely new version from the original
novel. The modifications should also not distort or mutilate the original novel. The fact
that Mannu Bhandari is the author of the story will be published in all the credits. This is
for giving due recognition to the author’s reputation.” The court therefore, directed certain
modifications and deletions to the film before screening it.

In cases of factual matters, there cannot be much of infringement except where they
are literally copied as the facts per se cannot be copyrighted and copying the same is
justifiable act. For example, News cannot be said to have been copied by another. The case
is also applicable to factual matter or scheme or the scene of an individual. One must bear
in mind that copyright does not protect idea but only the expression. For example, a person
writes a story and another person copies the story with same number of persons, their
characters, situation etc but in his own words. This would not amount to infringement as
the expression is not copied here.

The Supreme Court’s decision in [Link] v. Delux Films, would show that
infringement in India is normally established through comparison of the two works from
a holistic perspective. Although the said decision does specifically state, for instance, that
ideas per se are not protectable, the similarity in the ideas between the two works involved
in that case seems to have been a factor that the Court considered. Therefore, the law in
India prescribes more of a total “look and feel” or the “Lay Observer Test” of the work
involved, as seen from the perspective of a layman.

Again, if the subject matter is copied by the defendant making substantial changes
to the original work or modifies the original work to suit the targeted audience, it may not
be an act of infringement. For example, the book ‘Five point someone’ was transformed
into a Hindi movie named ‘Three Idiots’. Again the same was translated to Tamil by the
name ‘Nanban’. All of these does not constitute infringement as some changes were made
to suit the interest of the targeted audience by the copier and therefore, this work becomes
a original work. If the author creates any fictional stories and it is copied by the defendant,
it may be a blatant copying of the author’s work leading to infringement. But, if the copying
is of the kind that may naturally occur in the course, it may not be an infringement. For
example, hero or heroine of the film introduced with the song cannot be copyrighted. This
is called as scenes affair Doctrine.
Also, it is of utmost important that the act of the defend causes some effect upon the
author. If the act of the defendant deteriorates the reputation of the author or the defendant
by copying the authors work becomes the competitor of the author covering the targeted
audience or by any other way affects the rights available under the Copyright Act, the act
of the defendant would constitute infringement under the Copyright Act. Some of the
defenses available for the defendant are as follows:

 Not Copyrightable

Consent

 Public Interest

 Permitted acts

 Fair Dealings

 Education

 Libraries and Archieves

 Computer programs

 Adaptation

 Statutory License etc.

Computer Programs
In India, the Intellectual Property Rights (IPR) on computer software is also
covered under the Copyright Law unlike US where the computer programs are given
patent protection. Accordingly, the copyright of computer software is protected under the
provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were
introduced in 1994 and came into effect from 10 May 1995. These changes or
amendments made the Indian Copyright law one of the toughest in the world.

The amendments to the Copyright Act introduced in June 1994 were, in themselves, a
landmark in the India's copyright arena. For the first time in India, the Copyright Law
clearly explained:

• The rights of a copyright holder

• Position on rentals of software

• The rights of the user to make backup copies

Since most software is easy to duplicate, and the copy is usually as good as original, the
Copyright Act was required. Some of the key aspects are as follows:

a. According to section 14 of this Act, it is illegal to make or distribute copies of

copyrighted software without proper or specific authorization.
b. The violator can be tried under both civil and criminal law.
c. A civil and criminal action may be instituted for injunction, actual damages (including
violator's profits) or statutory damages per infringement etc.
d. Heavy punishment and fines for infringement of software copyright.
e. Section 63 B stipulates a minimum jail term of 7 days, which can be extended up to 3
years.

In the case of Whelan Associates Inc. v. Jaslow Dental Laboratory, Inc., the
plaintiff and the defendant had the same output but through different process. This was
done through different programming language. The court considered it as an infringement
and protected the Structure, Sequence and Organization (SSO)

In certain cases, just by running the program, the person in the field would be able
to under the ingredient and the programs in it commonly referred to as Black Box Test.
Subsequently in the case of Computer Associates International, Inc. v. Altai, Inc, the
court overruled Vellan’s Case and came up with three tier test to be applied for determining
the software copyright infringement.

a. Abstraction

b. Filtration

c. Comparison
From the above ruling, the court must first break down the program alleged to be
infringing into its constituent structural parts, thus segregating the ideas from the
expressions through abstraction. Then, by examining each of these expressions for
exceptions such as the Merger Doctrine, accounting for an expression that is necessarily
incidental to those ideas, and other expressions which are public knowledge and are
openly available in the public domain, a court would thereafter be able to filter out all
non-protectable material.

REMEDIES
CIVIL REMEDIES :
The most importance civil remedy is the grant of interlocutory injunction since most
actions start with an application for some interlocutory relief and in most cases the matter
never goes beyond the interlocutory stage. The other civil remedies include damages -
actual and conversion; attorney’s fees, rendition of accounts of profits and delivery up.

INTERLOCUTORY INJUCTIONS

The principles on which interlocutory injunctions should be granted were discussed

in detail in the English case of American Cyanamid v Ethicon Ltd. [1975] AC 368 (HL(E)].
After this case, it was believed that the classic requirements for the grant of interim
injunction are:

 Prima facie case

 Balance of Convenience; and

 Irreparable injury

In the case of Series 5 Software Ltd. v Philip Clarke & Others, Laddie J re-
examined the principles and took a fresh look at what Cyanamid had actually decided.
The learned judge held :
 The grant of an interlocutory injunction was a matter of discretion and depended on all
the facts of the case;
 there were no fixed rules;

 the court should rarely attempt to resolve complex issues of disputed fact or law;

 major factors the court should bear in mind were (i) the extent to which damages were
likely to be an adequate remedy and the ability of the other party to pay (ii) the balance of
convenience (iii) the maintenance of the status quo, and (iv) any clear view the court may
reach as to the relative strength of the parties' case.

Thus, this case places emphasis on the merits and the effect may well be to obtain
a non-binding view by a judge on the merits. This may lengthen the hearing of application
for interlocutory injunction as parties may lead evidence on the merits but it may have the
overall effect of putting an early end to the main action.

PECUNIARY REMEDIES

Under the Copyright laws of some countries like the United Kingdom, it is essential
for the plaintiff to elect between damages and an account of profits although in the two
recent cases, namely Baldock v Addison [1994] FSR 665 and Island Records v Tring
International Plc [1995]FSR 560, the Court held that there could be a split trial and a
procedure could be adopted by which the trial could be divided so that once liability has
been established, thereafter the plaintiff would be able to seek discovery in order for him
to make an informed decision on which of the two of the remedies to elect, namely damages
or account of profits. In Cala Homes (South) Ltd. v Alfred McAlpine Homes East Ltd
[I995] FSR 818, Laddie J held that additional statutory damages could be granted even
where the plaintiff elected for account of profits.
Under Sections 55 and 58 of the Indian Copyright Act, 1957, the plaintiff can seek the
following three remedies, namely

 account of profits

 compensatory damages and

 conversion damages which are assessed on the basis of value of the article converted.

ANTON PILLOR ORDER

The Anton Piller Order derives its name from a Court of Appeal decision in Anton
Piller AG vs Manufacturing Processes. An Anton Piller Order has the following
elements:
 An injunction restraining the defendant from dealing in the infringing goods or
destroying, them;
 An order that the plaintiffs solicitors be permitted to enter the premises of the
defendants, search the same and take goods in their safe custody; and
 An order that defendant be directed to disclose the names and addresses of suppliers
and customers and also to file an affidavit will a specified time giving this information.
MAREVA INJUNCTION

Mareva Injunction is an order which temporarily freezes assets of a defendant thus

preventing the defendant from frustrating the judgment by disposal of such assets.

NORWICH PHARMACAL ORDERS

These orders are made to ascertain information from third parties to enable the
plaintiff or the defendant to produce evidence before the courts of law.
CRIMINAL REMEDIES

Criminal remedy includes imprisonment of the infringer and the infringing copies
seized.
 Besides one can get ANTON PILLER order from court, which means that court
grants an ex-parte order if it feels that the case is balanced in favour of copyright holder.
The owner can claim damages from the infringer. The author can get an order for search
of defendant’s premises, if there is clear evidence to show the presence of infringing copies
in the premises of infringer.

The infringer is be liable for imprisonment ranging 6 months to 3 years and/or fine
of Rs.50,000/- to Rs. 2 lakhs. For the first time, the punishment would be for a period of
6 months to 3 years and/or Rs.25,000 to 2 lakhs and for the second Time it would be for 1
to3 years and/or Rs.50,000 to 2 lakhs. And for infringement on computer Program, the
punishment may vary from 7 days up to 3 years and/or Rs.50,000 – 2 lakhs.

ADMINISTRATIVE REMEDIES

An application can be made by the owner of copyright in any work or by his duly
authorized agent, to the Registrar of Copyrights to ban the import of infringing copies into
India and the delivery of infringing copies of copyrighted article which were earlier
confiscated from infringer to the owner of the copyright.

COPYRIGHT BOARD

There are no special courts for the purpose of dealing with copyright cases. The
regular courts try these cases which basically lack knowledge and expertise in the field of
copyright. There is a Copyright Board to adjudicate certain cases pertaining to copyright.
The government has set up a Copyright Enforcement Advisory Council (CEAC) to
adjudicate certain matters relating to copyright.

Powers of Copyright Board

The Copyright Act provides for a quasi-judicial body called the Copyright Board
consisting of a Chairman and two or more, but not exceeding fourteen, other members for
adjudicating Court. The Board has the power to:

i. hear appeals against the orders of the Registrar of Copyright;

ii. hear applications for rectification of entries in the Register of Copyrights;

iii. adjudicate upon disputes on assignment of copyright;

iv. grant compulsory licences to publish or republish works (in certain circumstances);
v. grant compulsory licence to produce and publish a translation of a literary or dramatic
work in any language after a period of seven years from the firstpublication of the work;

vi. hear and decide disputes as to whether a work has been published or about the date of
publication or about the term of copyright of a work in another country;
vii. fix rates of royalties in respect of sound recordings under the cover-version provision;
and

viii. fix the resale share right in original copies of a painting, a sculpture or a drawing and
of original manuscripts of a literary or dramatic or musical work.

The Registrar of Copyrights has the powers of a civil court when trying a suit under
the Code of Civil Procedure in respect of the following matters, namely,
a. summoning and enforcing the attendance of any person and examining him on oath;
b. requiring the discovery and production of any document;
c. receiving evidence on affidavit;
d. issuing commissions for the examination of witnesses or documents;
e. requisitioning any public record or copy thereof from any court or office;

f. any other matters which may be prescribed.

Copyright Society

A copyright society is a registered collective administration society. Such a society

is formed by copyright owners as a group. The minimum membership required for
registration of a society is seven. Ordinarily, only one society is registered to do business
in respect of the same class of work. A copyright society can issue or grant license in
respect of any work in which copyright subsists or in respect of any other right given by
the Copyright Act.

Basically the a copyright society performs the following functions:

i. Issue licences in respect of the rights administered by the society.

ii. Collect fees in pursuance of such licences.

iii. Distribute such fees among owners of copyright after making deductions for the
administrative expenses.
Generally, it is necessary to obtain licenses from more than one society. For example,
playing of the sound recording of music may involve obtaining a licence from the IPRS for
the public performance of the music as well as a licence from the PPL for playing the
records, if these societies have the particular work in their repertoire.
RIGHTS OF BROADCASTING ORGANISATION:

Broadcast reproduction rights are special protections for broadcasting organizations

under the Copyright Act, 1957. They stop others from copying, rebroadcasting, or using
broadcasts for profit without permission. Section 37 defines these rights for all
broadcasters, whether for radio or TV.

Section 2(dd) explains that a "broadcast" is any communication to the public

through wireless signals or wires including rebroadcasts. This covers live events, recorded
shows and satellite transmissions. Broadcast Reproduction Rights protects the signal, not
the content itself, which may have separate copyrights. For example, a song in a broadcast
has its own copyright, but Broadcast Reproduction Rights protects the broadcast signal.

Why do these rights matter?

Broadcasting requires big investments in equipment, staff, and licenses. Without Broadcast
Reproduction Rights, others could copy and sell broadcasts, hurting the original
broadcaster’s business. In trademark law, an "abandoned" mark loses protection if not
used. Similarly, without Broadcast Reproduction Rights, broadcasts could be freely used
by others too soon.

Broadcast Reproduction Rights are "neighbouring rights," related to copyrights.

The 2012 amendments included digital broadcasts, like streaming. Exceptions allow fair
use, such as for education or news reporting, but using broadcasts for profit without
permission is illegal.

Imagine a TV channel airing a live cricket match. If someone records and sells
DVDs of it without permission, they violate Broadcast Reproduction Rights. Like an
abandoned trademark, broadcasters must actively protect their rights to keep them
exclusive.

Broadcast reproduction rights under Copyright Act, 1957

The Copyright Act, 1957, covers broadcast reproduction rights in Chapter VIII
(Sections 37 to 39A). These rules form the foundation of Broadcast Reproduction Rights
in India.

Section 37: Broadcast Reproduction Right

Section 37(1) gives every broadcaster a special right called the broadcast reproduction
right. This right lasts 25 years from the start of the year after the broadcast. For example,
a 2024 broadcast is protected until December 31, 2049.
Section 37(3) lists actions that are not allowed without permission:

 Rebroadcasting the broadcast.

 Charging people to watch or hear the broadcast.
 Recording the broadcast as sound or video.
 Copying those recordings.
 Selling or renting those recordings to the public.

Doing these without permission is illegal. Broadcast Reproduction Rights does not affect
the copyrights of the content in the broadcast, so there’s layered protection.

Like an abandoned trademark, which loses protection if not defended, failing to enforce
Broadcast Reproduction Rights can weaken a broadcaster’s rights.

Section 38: Performer’s Rights

Section 38 protects the rights of performers under Copyright Law like actors or musicians,
for 50 years. It stops others from recording or broadcasting their performances without
consent. This works alongside Broadcast Reproduction Rights since broadcasts often
include performances.

Section 39: Acts Not Constituting Infringement

Section 39 allows some uses without permission:

 Recording for private use or teaching.

 Fair use for reviews, criticism, or news reporting.
 Use by schools or non-profit clubs.

These exceptions balance public access with protection. In trademarks, an abandoned mark
can be claimed by others if unused. Similarly, these exceptions allow limited use of
broadcasts.

Section 39A: Other Provisions

Section 39A applies other copyright rules, like compulsory licensing (Section 31), to
Broadcast Reproduction Rights. This allows legal use of broadcasts in some cases. The
2012 amendments updated rules to include internet and digital media, covering modern
issues like streaming.

Infringement and Remedies

 Infringement happens when someone does a prohibited act from Section 37(3)
without permission. Broadcasters can seek remedies like those for copyright violations:

Civil: Court orders to stop infringement, payment for damages, or sharing profits (Section
55).

Criminal: Up to 3 years in jail and fines (Section 63).

Administrative: Police or customs can seize illegal copies.

Broadcasters can get quick court orders for urgent cases, like live events. In
trademark law, an abandoned mark loses protection without effort. Similarly, broadcasters
must actively fight piracy to protect Broadcast Reproduction Rights.

Signal piracy, like decoding and rebroadcasting without permission, is a common issue.
Global agreements, like the WIPO Copyright Treaty, guide India’s approach to these cases.

Case Laws of Broadcast Reproduction Right

Courts have shaped Broadcast Reproduction Rights through key cases. These cases
show courts balancing protection with public access:

Star India Pvt. Ltd. v. Piyush Agarwal (2013)

Star India had exclusive cricket broadcast rights, and sued websites for sharing live
score updates on phones. The Delhi High Court said that Broadcast Reproduction Rights
protects the broadcast signal and not public facts like scores. This is like an abandoned
trademark, where unused marks lose protection, as Broadcast Reproduction Rights doesn’t
cover general information.

Star India Pvt. Ltd. v. Magicwin Games (2024)

Star India sued websites for illegally streaming IPL matches. The court stopped
those websites, and prevented Broadcast Reproduction Rights violation through
unauthorized recording and rebroadcasting. It stressed quick action for live events in order
to protect the investments of broadcasters.

INDUSTRIAL DESIGNS ACT, 2000

The Designs Act 2000, provides for the registration, application and protection of
such designs in the form of intellectual property. Any intellectual property to be registered
follows a “first to file first to get” system where the inventor should register through an
application as earlier as he has invented it. In India the history of designs backs a century
when the Patent and Designs Act, 1872 was passed by the British government to the last
repealed act as Designs Act of 2000, when India became a member of WTO in the year
1995. This law was enacted in compliance with the Trade Related Aspects of Intellectual
Property Rights having its enforcement on 11th may 2001.

What is a Design?

The term "design" is defined under Section 2(d) of the Designs Act, 2000. A design refers
to the ornamental or aesthetic features of a product. It must be visually appealing and
judged solely by its appearance not by its functional aspects.

 Visual Features: The Act protects things that can be seen with the naked eye, like
shape, configuration, pattern or colour. These things help make a product stand out
from others. One way to tell a designer chair from another is by its unique shape or
pattern. These visual elements must not do anything for them to be eligible.
 2D or 3D or Both: Designs can exist in two-dimensional forms like patterns or three-
dimensional structures like a bottle’s shape. The law covers both flat and solid
designs, provided they appeal to the eye. For example, a printed fabric (2D) and a
molded phone case (3D) both qualify.
 Industrial Application: The design must be applied through a manufacturing process
and used commercially. It must not be a one-time artistic piece but reproducible
through industrial means. This ensures that the design is part of market-driven
production.
 Eye Appeal: The aesthetic of the design should be the primary consideration for
registration. If a design is pleasing and distinguishable, it fulfills this criterion.
Functionality alone cannot be the basis for registration.

Objectives of Designs Act 2000

This part talks about the Act's goals which are to encourage new ideas and economic
growth by giving designs legal protection.

 Protection of Originality: The Design Act 2000 protects original designs from being
copied without permission. This encourages designers to make one-of-a-kind pieces
because they know they'll have the only rights to them. It also makes sure that people
who make things are credited and rewarded.
 Promote Creativity: It encourages innovation in industrial and product design. By
ensuring creators can commercialize their ideas, industries feel more confident in
investing in research and development.
  Fair Competition: Legal protection deters unfair copying and promotes healthy
market practices. This levels the playing field for innovators, reducing piracy and
unethical duplication of creative products.
 TRIPS Compliance: The Act aligns with WTO’s TRIPS agreement to meet
international standards. India, being a WTO member, is obligated to protect
intellectual property rights in a globally accepted framework. This boosts global
trade and trust.
 Legal Remedies: Offers civil remedies, such as injunctions and damages, for
infringement of design. If someone copies a registered design, the law gives the
owner of the design the right to sue, stop the use, and get money damages.

What Can Be Registered as Design?

Not all designs qualify for protection. Here’s the criteria that a design must meet to
be eligible for registration.

 Novelty (section 4): The design should be new and not existing in the public domain.
Novelty is the heart of the registration process. A design already used or known to
the public cannot be protected again.
 No Prior Disclosure: It must not have been displayed or published anywhere before
the filing date. Even exhibitions, catalogs, or online posts count as disclosures. Prior
display cancels out originality.
 Morality Clause: The design should not violate public order or morality. Any
offensive, vulgar, or socially unacceptable designs are ineligible. This maintains
the cultural and legal standards of the country.
 Uniqueness: The design must stand out from existing ones. Minor changes to a
known design do not count as new. The uniqueness should be easily identifiable to
the average viewer.
 Non-Mechanical: It should not be a design solely for functionality. For instance,
gear shapes used purely for movement don't qualify. The design must be decorative
and not technical in nature.

As per the case of “Hello Mineral Water Private Limited v. ThermoKing

California Pure” it was held that mere shape and form is not sufficient to prove novelty.
The Court observed that Novelty also involved the presence of some new element or
Innovative position of an old element if it is in combination with which is different from
anything found in any prior structure.
 The Court in the case of “Kemp and Company v. Prima plastics Ltd.,” observed that
the discussion of design by the proprietor to any third person cannot be cleaned as
publication as the disclosure was in good faith and in conformation to Section 16 of the
Designs Act 2000.

What Cannot Be Registered?

Being aware of what is protected is just as important as being aware of what is not
protected. By including these exceptions, you can be sure that only real artistic innovation
will be recognised.

 Functional Elements: Features that exist only for utility can’t be registered. For
example, the functional blade of a fan is not protected—only its decorative casing
might be.
 Known Publications: Anything already shown or printed publicly is ineligible. Even
if it was published years ago or in another country, prior availability disqualifies a
design.
 Obscene Designs: Anything that is thought to be rude or offensive to the public is
not allowed. This stops people from abusing design rights to protect works that are
rude or inappropriate.
 Lack of Originality: Copying minor parts of known designs doesn't count as new. It
must not be a mix-and-match of known elements, unless it creates an entirely fresh
design.

Procedure for Design Registration

The Act sets out a clear legal process to register a design. This ensures authenticity
and transparency in protecting design rights. The process of registration under Chapter II
includes

1) Filing of Application (Section 5)

 The applicant must file Form 1 along with the prescribed fee and representation of
the design.
 The article must be categorized under the Locarno Classification System.

2) Examination and Objection (Section 5 read with Rules)

 The application is examined by the Controller.

 Any objections raised must be addressed by the applicant within the prescribed
time.
3) Registration and Publication (Sections 9–11)

 Upon acceptance, the design is registered and published in the Designs Journal.
 A Certificate of Registration is issued to the proprietor.

Section 10: Register of Designs

Section 10 mandates the maintenance of a Register of Designs at the Patent Office. This
register contains

 The names and addresses of proprietors.

 Details of registered designs including class, article, and date of filing.
 It acts as prima facie evidence in all courts concerning any matter entered therein.

Rights of the Registered Design Owner

Upon registration, the creator receives legal rights that empower them to control the
use of their design. A registered proprietor enjoys the following rights

 Exclusive right to apply the registered design to any article within India.
 Right to license or assign the design to third parties.
 Right to institute legal proceedings in case of infringement or piracy under Section
22.

INFRINGEMENT OF INDUSTRIAL DESIGN:

In the Case of “Disney Enterprises Inc. v. Prime Houseware Ltd.,” Mumbai

based company known as time houseware used to manufacture characters like Donald
Duck and Mickey Mouse which resulted in suit being filed by Disney Enterprises for the
infringement of International Registered Designs. This was the case where International
Registration of Industrial Design become a matter of concern in the court of law. It was
held by the Court that the plaintiff ‘s Trademark is not protected under Indian law but
however the Court passed an order for delivering all the influencing material to the
petitioner company and ruled that it should not be used further.

PIRACY OF REGISTERED DESIGNS–

As per Section 22 of the Designs Act 2000, any obvious fraudulent imitation of a
registered design without the proprietors concerned is considered unlawful. This Section
also prohibits such closely resembling design. It provides for a compensation which shall
not exceed Rupees 50000 in such case of infringement.
 In the case of “Bharat glass tube Limited v. Gopal glass Works Ltd.,” Design
was registered by the respondent company in collaboration with German company. The
appellant started using the design for their marketing which resulted in an infringement
suit filed by the respondents who moved to the court. The appellants contended that the
respondent’s Design were not Novel as the German company has already been using it
since 1992 and it was already published in United Kingdom Patent Office and it has lost
its originality. Rejecting all such of the arguments of the appellants the High Court on its
appeal restored the Designs to the respondents which was later upheld by the Supreme
Court of India.

The interface of design with copyright.

The copyright and design are exclusive for legal purposes in accordance to Section
15(2). As per the said Section a copyright in any design which is capable of being
registered if not registered shall cease if any other article is registered with design and if
more than 50 times the designed article is been produced by the owner of the copyright. In
the case of “Mattel incorporation v. Jayant Agarwa", the Mattel lost it copyright in design
which could have been registered if it is not registered and has already produced the article
for more than 50 times. In an infringement suit metal could not restore its copyright for
it’s Scrabble board.

LANDMARK JUDGMENTS RELATING DESIGNS ACT, 2000

“Microfibers Incorporation v. Giri and Co & anr”

The Delhi High Court suggested a distinction between copyright and design and it
observed that a copyright protection ipso facto will not merit a design and a design
registration is concerned with the class of goods. It also suggested the view of copyright as
a ‘work of art’ and design as a ‘work of Commerce’. If the work of art is applied
commercially due to its industrial utility it ceases for the protection of copyright and only
entitled to the protection of design.

“Tarun Sethi & Ors. v. Vikas Budhiraja & Ors”

The Delhi High Court held that a minor displacement and changes made through
variations and modifications if substantially didn’t alter a design which was already
registered are previously published shape available in the private Publication is not
sufficient to prove Novelty of a design.

M/S. Whirlpool of India Ltd. v. M/S Videocon Industries Ltd.

In this case the Whirlpool would have got two designs registered. Videocon also got a
design registered which covers the same features of shapes and configuration and that was
evident at its first look to be its replication. The Videocon contended that it has already got
the design registered and therefore it is not liable for the infringement or passing off. The
Court rejected the contention of the Videocon and held that there are similarities between
the plaintiff and the defendant and therefore Videocon was held liable for the infringement
and for the passing of the plaintiff design.

Troikaa Pharmaceuticals Ltd v. Pro Laboratories Ltd.

A tablet in D shaped design was provided to be capable have been registered under the
designs act do the shape Divas not novel its application in the tablet pass the test of
ascertaining but it is identical to any other designs and can be judged by eye through all
of its component features.