Module – 3rd

Topic 1: History, Concept, and Scope of Copyright

1. Historical Evolution and Legal Nature

Copyright is a statutory negative right that prevents third parties from

copying or exploiting a creator’s original expression without express
authorization. It traces its ancestry from the British Statute of Anne (1710)
through colonial iterations (the Indian Copyright Act, 1914) to the post-
independence architecture of The Copyright Act, 1957.

2. The Idea-Expression Dichotomy

Copyright law does not protect an abstract idea, methodology, operational

system, or historical fact; it protects purely the tangible expression of that
idea.

Landmark Precedent: R.G. Anand v. Delux Films (1978 AIR SC 1613)

The Supreme Court held that there can be no copyright in an idea, subject
matter, or historical plot. To find infringement, the court must determine if
the defendant’s work is a substantial copy of the plaintiff's specific
expression. If the reader/viewer gets an unmistakable impression that the
two works are the same, infringement occurs.

3. Conditions for the Grant of Copyright (Section 13)

For copyright to subsist, a work must satisfy two baseline criteria:

 Fixation: The work must be recorded, written down, or otherwise

reduced to a material, digital, or physical medium.
  Originality: The work must not be a copy. India rejects the simplistic
English "Sweat of the Brow" doctrine (mere labor yields protection)
and the strict US "Modicum of Creativity" standard, opting instead for
a middle path.

Originality Standard: Eastern Book Company v. D.B. Modak (2008 1 SCC

1)

The Supreme Court ruled that for a compilation to be "original," it must

display an exercise of skill and judgment that is more than a mere
mechanistic, copyist layout, while not requiring a high degree of artistic
novelty.

4. Categorization of Protected Works under Section 13(1)

1. Original Literary Works: Textual matter, including computer

software programs, source code, object code, tables, and digital
databases (defined under Section 2(o)).
2. Original Dramatic Works: Choreographic pieces, scenic
arrangements, or entertainment in dumb shows where the acting form
is fixed in writing (excludes cinematograph films).
3. Original Musical Works: Compositions of combination of melody or
harmony, or both, printed or graphically reduced (excludes any words
spoken or sung with the music).
4. Original Artistic Works: Paintings, sculptures, drawings (diagrams,
maps, charts), photographs, and architectural structures.
5. Cinematograph Films: Any visual recording on a medium from
which moving images can be produced, including accompanying audio
tracks.
6. Sound Recordings: Any recording of sounds from which those
sounds may be reproduced, regardless of the medium (CDs, streaming
files, vinyl).
Topic 2: Extent of Rights, Moral Rights, and Neighboring Rights

1. The Bundle of Economic Rights (Section 14)

Copyright is not a single right; it is a bundle of independent commercial

rights tailored to the nature of the work:

Category of Work Core Exclusive Rights Granted to the Owner

Right to reproduce; issue copies to the public;

Literary, perform or communicate the work to the public;
Dramatic, & make translations; make adaptations; or execute a
Musical cinematograph film or sound recording based on
it.

Right to reproduce in any material form

(including converting a 2D work into 3D);
Artistic Works
communicate to the public; issue copies; include it
in a film.

All literary rights, plus the exclusive right to sell

Computer
or give on commercial rental any copy of the
Programmes
computer programme.

Right to make a copy of the film/recording on any

Cinematograph
medium; sell or give on commercial
Films & Sound
hire/rental any copy; communicate the
Recordings
film/sound recording to the public.

2. Moral Rights / Author’s Special Rights (Section 57)

Independent of economic rights, an author retains moral rights even after

assigning the economic copyright to a third party. They are perpetual, non-
assignable, and pass to legal heirs.
  Paternity Right (Right of Attribution): The right to claim
authorship of the work and have their name explicitly associated with
it.
 Integrity Right: The right to restrain or claim damages for any
distortion, mutilation, modification, or other derogatory action
done to the work, provided it satisfies the statutory bar of being
prejudicial to their honor or reputation.

3. Neighboring / Related Rights

These protect the administrative, technical, and creative intermediaries who

bridge the gap between creators and audiences.

 Broadcast Reproduction Right (Section 37): Vests in broadcasting

organizations (TV, radio, digital streaming channels) for a duration of
25 years from the year of broadcast. Unauthorized recording, re-
broadcasting, or charging commercial entry fees for public viewing
constitutes infringement.
 Performer’s Rights (Sections 38, 38A, 38B): Protects actors,
singers, musicians, dancers, or acrobats for a term of 50 years from
the year of performance.
o Section 38A (Economic Performance Rights): Once a performer
consents to the incorporation of their performance in a
cinematograph film, they retain a non-waivable Right to
Receive Royalties (RTR) for any commercial exploitation of
that performance outside the film medium.
o Section 38B (Performer's Moral Rights): Grants performers the
right to be identified as the performer and object to
modifications that harm their professional reputation.

Topic 3: Assignment and Licensing

1. Assignment of Copyright (Sections 18, 19, 19A)

An assignment transfers ownership of the copyright entirely or partially to

an assignee.

 Formalities (Section 19): An assignment is legally void unless it is

in writing and signed by the assignor. It must explicitly identify
the work, specify the rights assigned, the duration, the territorial
boundaries, and the royalty structure.
 Statutory Default Rules:
o If the duration is left blank $\rightarrow$ It is deemed to be 5
years by law.
o If the territorial extent is not defined $\rightarrow$ It is
restricted strictly to the territory of India.
 The 2012 Equalization Safe Bar: Authors of literary or musical works
used in cinematograph films or sound recordings cannot assign away
their right to receive a 50:50 share of royalties generated from non-
theatrical commercial exploitations. Any contract waiving this is void.

2. Voluntary Licensing (Section 30)

The owner grants an interest in the copyright through a written license

while retaining ownership. It can apply to existing or future works.

3. Compulsory Licensing Framework

 Works Withheld from the Public (Section 31): If a copyright

owner refuses to republish a work or allows a performance/broadcast,
an application can be made to the High Court to force a compulsory
license to serve the public interest.
 Unpublished/Dead Author Works (Section 31A): Applies when an
author is dead, untraceable, or anonymous, allowing publication
under public notice parameters.
  Benefit of Disabled Persons (Section 31B): Allows non-profit
organizations to apply for a compulsory license to adapt works into
accessible formats (like Braille) if the owner fails to provide them.

4. Statutory Licensing Framework

Unlike compulsory licenses (which require an adversarial hearing), a

statutory license allows anyone to use a work provided they pay a
predetermined fee set by regulatory parameters.

 Cover Versions (Section 31C): Allows anyone to record a cover

version of a song, provided:
1. A period of five calendar years has passed since the original
song was released.
2. Advance notice is given to the original owner.
3. Royalties are paid at the rate fixed under the rules.
4. The cover version does not alter the core lyrics or melody
without consent.
 Broadcasting of Literary and Musical Works (Section 31D):
Allows radio and television broadcasters to broadcast any published
musical or literary work by providing advance notice and paying
standard royalty rates.

Topic 4: Exceptions to Copyright Protection & The Fair Dealing

Paradigm

Unlike the United States, which uses an open-ended four-factor "Fair Use"
test, India follows a rigid "Fair Dealing" doctrine under Section 52. If an
act of copying does not fall within one of the explicit statutory exemptions
listed in Section 52, it is treated as an infringement.

Key Statutory Exemptions under Section 52(1):

  Section 52(1)(a): Fair dealing with any work for the purpose of:
1. Private or personal use, including academic research.
2. Criticism or review of that work or any other work.
3. Making a copy of a computer programme for backup or
interoperability purposes.
 Section 52(1)(b): Fair dealing for the purpose of reporting current
events and current affairs, including the broadcasting of public
lectures.
 Section 52(1)(i) – The Educational Shield: The reproduction of
any work by a teacher or a pupil in the course of instruction, or
as part of a question paper, is fully protected.

The Landmark Educational Ruling: Chancellor, Masters & Scholars of

University of Oxford v. Rameshwari Photocopy Service (ILR 2016 26 Del)

Popularly known as the DU Photocopy Case, the Delhi High Court ruled
that creating compiled course packs of copyrighted textbook chapters for
students does not constitute infringement. The court held that "course of
instruction" includes the entire pedagogical cycle, and if the copying is done
to advance education, it falls squarely within the Section 52(1)(i) defense,
regardless of the volume copied.

Topic 5: Collective Administration, Copyright Office, and Regulatory

Boards

1. Collective Administration via Copyright Societies (Sections 33 to

36A)

Individual creators cannot police every restaurant, radio channel, or

website using their works. They register with Copyright Societies (e.g.,
IPRS for musical compositions, PPL for sound recordings, ISRA for singers)
to manage licensing collectively.
  Registration (Section 33): No association can engage in the
business of issuing licenses for copyrighted works unless it is
registered as a Copyright Society with the Central Government.
 Transparency Mandates: Under the Copyright (Amendment) Rules,
2021, societies must publish a comprehensive Annual Transparency
Report (Rule 65A) on their websites within six months of the financial
year-end. This report details undistributed royalty pools and ensures
transparent, electronic tracing of collections.

2. Copyright Office and Registrar (Sections 9 & 10)

The Copyright Office is headed by the Registrar of Copyrights.

Registration of copyright is optional and not a prerequisite to claim
ownership or sue for infringement. However, entries made in the Register
of Copyrights serve as prima facie evidence of title in a court of law.

3. The Structural Overhaul: Abolition of the Copyright Board

The regulatory administration underwent a massive institutional change via

legislative updates:

 Phase 1: The historical administrative Copyright Board was merged

into the Intellectual Property Appellate Board (IPAB) via the Finance
Act, 2017.
 Phase 2: The Tribunals Reforms Act, 2021 completely abolished
the IPAB.
 Current Architecture: All judicial, dispute resolution, rate-fixing,
rectification, and statutory licensing functions have been transferred
directly to the High Courts (specifically commercial benches/IPD
divisions).

Topic 6: Infringement, Remedies, Penalties, and Appeals

1. What Constitutes Infringement? (Section 51)

Copyright is infringed when any person, without a license from the owner or
Registrar, or in violation of the strict conditions of a license:

 Does anything that only the copyright owner has the exclusive right to
do under Section 14.
 Permits a place to be used for profit for the
communication/performance of infringing work, unless they had no
reasonable ground to believe it was infringing.
 Imports infringing copies into India (except for private/domestic use
of two copies).

2. The Three-Tier Enforcement Remedies

A. Civil Remedies (Section 55)

The owner can approach a District Court or High Court exercising original
jurisdiction to secure:

 Interim & Permanent Injunctions: Orders restraining the

defendant from continuing the infringing activity.
 Anton Piller Orders: Court-appointed commissions authorized to
enter the defendant's premises without notice to search, seize, and
seal infringing stock to preserve evidence.
 John Doe Orders (Ashok Kumar Orders): Ex-parte injunctions
issued against anonymous or unknown defendants (often used to
block pirate website domains before release events).
 Damages or Accounts of Profits: Financial compensation for losses
or recovery of profits made by the infringer.
 Jurisdiction Safe Harbor (Section 62): Departing from normal civil
procedures, a copyright suit can be filed where the plaintiff resides or
carries on business, rather than where the defendant is located.
B. Criminal Remedies (Sections 63, 63A, 64)

Copyright infringement is a cognizable and non-bailable offense.

 Section 63 Penalties: Imprisonment for a term not less than six

months but which may extend to three years, and a fine not less
than ₹50,000 extending to ₹2 Lakhs.
 Section 64 (Enhanced Police Power): Any police officer, not below
the rank of Sub-Inspector, can seize without warrant all infringing
copies and reproduction machinery if they are satisfied that an act of
infringement is occurring.

C. Administrative Remedies (Section 53)

The owner can move the Customs Authority to record a border-enforcement

notice, allowing them to confiscate and destroy infringing imported goods at
ports of entry.

3. Appeals (Section 72)

Any person aggrieved by a final decision or order of the Registrar of

Copyrights may file an appeal to the High Court within a strict window of
three months from the date of the order.

Topic 7: International Conventions and Treaties

 Berne Convention (1886): Built on the principle of National

Treatment (member states must give foreign creators the same
copyright protection they give their own citizens) and Automatic
Protection (protection cannot be conditioned on registration, notice,
or deposit).
 Universal Copyright Convention (UCC): Drafted by UNESCO as an
alternative for nations (like the US) that required formal copyright
 notices (the © symbol) to gain title. It is now largely historical since
almost all nations have integrated into Berne.
 WIPO Internet Treaties: Drafted to adapt copyright protections to
digital network environments.
o WIPO Copyright Treaty (WCT): Explicitly recognizes
computer programs as literary works and data compilations as
protected assets under digital data streaming layouts.
o WIPO Performances and Phonograms Treaty (WPPT):
Grants economic and moral rights to performers and sound
recording producers in digital spaces.
o Indian Integration: To satisfy these treaties, India’s 2012
Amendments added Section 65A (punishing the circumvention
of technological protection measures/DRM) and Section 65B
(punishing the unauthorized removal of digital rights
management signatures).
 TRIPS Agreement (WTO): Ties intellectual property enforcement
directly to international trade law. It forces all WTO member states to
comply with Articles 1 to 21 of the Berne Convention and mandates
strict, available criminal and civil remedies within municipal laws.

Bare Act Reference Checklist

Read the following sections and provisions line-by-line from your Bare Act
to master this module:

 Section 2(o), (p), (ff), (fa), (x), (y), (z) (Key Statutory Definitions)
 Section 9 & 10 (Establishment of Copyright Office and Register of
Copyrights)
 Section 13 (Works in which copyright subsists)
 Section 14 (Meaning of copyright / Bundle of Economic Rights)
 Section 18 & 19 (Assignment and execution of assignment
parameters)
 Section 30 (Licensing by owners)
 Section 31, 31A & 31B (Compulsory Licensing provisions)
 Section 31C & 31D (Statutory Licenses for Cover Versions and
Broadcasting)
 Section 33 & 34 (Registration and administration of Copyright
Societies)
 Section 37 & 38 (Broadcast Reproduction Right and Performer's
Right)
 Section 38A & 38B (Performer’s Economic and Moral Rights)
 Section 51 (When copyright infringed)
 Section 52 (Exhaustive list of Fair Dealing exemptions)
 Section 55 (Civil remedies for infringement)
 Section 57 (Author’s Special/Moral Rights)
 Section 62 (Special Jurisdiction parameter for filing suits)
 Section 63 & 63A (Criminal Penalties for Infringement)
 Section 64 (Power of police to seize infringing copies)
 Section 65A & 65B (Protection of Technological Measures and
Rights Management Information)
 Section 72 (Appeals framework)
 Rule 65A of the Copyright Rules (Annual Transparency Report
parameters)
 Module – 4th

Topic 1: Development, Rationale, and Nature of Patent Law

1. Historical Development

 Colonial Beginnings: Act VI of 1856 marked the first patent

legislation in India, closely mirroring British structures to protect
manufacturing inventions.
 The Post-Independence Shift (The Ayyangar Committee Report,
1959): Justice N. Rajagopala Ayyangar concluded that the colonial
system failed to catalyze domestic innovation and instead permitted
foreign monopolies to block local development, especially in medicine.
This report formed the direct foundation of the Patents Act, 1970.
 The TRIPS Integration: To join the World Trade Organization
(WTO), India signed the TRIPS Agreement and amended its Act in
1999, 2002, and 2005, transitioning from a "process-only" patent
regime to a unified "product and process" patent framework for
food, chemicals, and pharmaceuticals.

2. Rationale & Nature

 The Patent Bargain: A patent is a socio-economic contract. The

State grants an exclusive monopoly for a fixed term of 20 years
(Section 53) from the filing date. In exchange, the inventor must fully
 disclose their technical know-how (Section 10) so the public can freely
build upon it once the patent expires.
 Negative Territory: A patent does not automatically give the owner a
right to manufacture or use the invention; it gives them a negative
right to exclude unauthorized third parties from exploiting it
commercially.

Topic 2: Patentability Criteria & Subject Matter

For an item to qualify as a patentable invention under Section 2(1)(j), it

must successfully clear three independent legal tests.

1. Novelty (Section 2(1)(l) - "New Invention")

The technology must not have been anticipated by publication in any

document, used anywhere in the world, or entered into the public domain
prior to the filing date of the patent application.

 The Grace Period Protection: Under the 2024 Amendment rules, a

formal grace period is extended via Form 31, allowing filing even after
a public disclosure under strict qualifying parameters.

2. Inventive Step / Non-Obviousness (Section 2(1)(ja))

The technical advancement or economic viability of the invention must be

such that it is not obvious to a Person Ordinarily Skilled In The Art
(PHOSITA) at the time of filing.

The Definitive Non-Obviousness Standard: Roche v. Cipla (2012)

The court established that evaluating an inventive step requires identifying

what was known in the prior art, analyzing the differences between the
prior art and the claimed invention, and deciding whether those differences
would be obvious to a standard technician working in that specific field.

3. Industrial Applicability (Section 2(1)(ac))

The invention must be capable of being made or used in an industry. It

cannot be purely theoretical or abstract; it must possess physical,
commercial utility.

Topic 3: Non-Patentable Inventions (The Statutory Gatekeepers)

Even if an invention is novel, non-obvious, and useful, it will be rejected if it

falls within the exceptions listed under Section 3.
  Section 3(a): Inventions that are frivolous or claim something
obviously contrary to well-established natural laws (e.g., perpetual
motion machines).
 Section 3(b): Inventions whose commercial exploitation goes against
public order, morality, or causes serious prejudice to human, animal,
or plant life or health (e.g., bio-weapons).
 Section 3(c): The mere discovery of a scientific principle or the
formulation of an abstract theory; discovery of any living thing or non-
living substance occurring in nature.
 Section 3(d) – The Indian Pharma Shield: The mere discovery of a
new form of a known substance which does not result in the
enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance.
o The Ultimate Patent Battle: Novartis AG v. Union of India
(2013 SC)

The Supreme Court rejected Novartis' patent application for the

Beta crystalline form of Imatinib Mesylate (Gleevec). The Court
held that for medicine, "efficacy" under Section 3(d) means
therapeutic efficacy. A mere change in physical properties like
bioavailability or stability does not qualify unless it directly
improves patient treatment outcomes. This blocks the practice
of pharma "evergreening."

 Section 3(h): A method of agriculture or horticulture.

 Section 3(i): Any process for the medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic, or other treatment of human
beings or animals to render them free of disease.
 Section 3(j): Plants and animals in whole or any part thereof other
than micro-organisms; seeds, varieties, and species (protected
separately under plant variety laws).
 Section 3(k): A mathematical or business method, a computer
programme per se, or algorithms.
 Section 3(p): An invention which in effect is traditional knowledge or
an aggregation or duplication of known properties of traditionally
known components (e.g., using turmeric for wound healing).
 Section 4: Explicitly bars any invention relating to atomic energy
from receiving a patent.

Topic 4: Rights of a Patentee & Transfer Options

1. The Right Matrix (Section 48)

 Product Patents: The exclusive right to prevent third parties from

making, using, offering for sale, selling, or importing that product into
India.
  Process Patents: The exclusive right to prevent third parties from
using that process, or using, selling, or importing products obtained
directly by that process.

2. Modes of Transfer (Sections 68 to 70)

 Assignment: The absolute transfer of ownership of the patent asset

from the assignor to the assignee.
 Licensing: Granting permission to exploit the patent under specific
conditions while retaining ownership.
 The Strict Writing Mandate (Section 68): An assignment or
mortgage of a patent is completely invalid unless it is in writing
and executed in a formal document containing all explicit terms. It
must be registered with the Controller within the prescribed statutory
timelines to be admissible as evidence of title.

Topic 5: Procedure for Granting a Patent & Oppositions

[ Filing of Application ] (Provisional or Complete u/s 9ed by *person
interested* u/s 25(2))

1. Examination Mechanics

 The RFE Timeline Shift: Under the Patents (Amendment) Rules

2024, the timeline to file a Request for Examination (Form 18) was
shortened from 48 months to 31 months from the priority or filing
date.
 Section 8 Compliance Relaxed: While information regarding
corresponding foreign filings (Form 3) must still be initiated within 6
months of filing, updates under Section 8(2) are now streamlined. The
2024/2026 rules direct the Controller to use accessible global
databases directly rather than placing continuous compliance burdens
on the applicant.

2. Dual Opposition Systems (Section 25)

Pre-Grant Opposition Post-Grant Opposition
Feature
(Section 25(1)) (Section 25(2))

Any time within one year

From publication up until the from the date of
Timing
exact moment of patent grant. publication of the patent
grant.

Locus Can be filed by any person Can be filed only by a

Standi whomsoever. person interested
(someone engaged in or
 Pre-Grant Opposition Post-Grant Opposition
Feature
(Section 25(1)) (Section 25(2))

financing research/trade in
the identical field).

Handled directly by the Handled by a specialized

Controller. No formal fees Opposition Board
Procedu were required historically, but constituted by the
re the 2024 rules introduced Controller to examine
streamlined entry fees to evidence before making a
discourage frivolous filings. final decision.

Topic 6: Compulsory Licensing, Revocation, and Management

1. Compulsory Licensing (Sections 84 & 92)

A mechanisms to prevent patentees from abusing their market monopoly or

failing to meet public demand.

 Section 84 Grounds: Any person can apply for a compulsory license

after three years from the date of grant if:
1. The reasonable requirements of the public with respect to the
patented invention have not been satisfied.
2. The patented invention is not available to the public at a
reasonably affordable price.
3. The patented invention is not worked on a commercial scale
within the territory of India.
 Section 92 (Special Notification): The Central Government can
issue a notification for a compulsory license at any time during a
national emergency, extreme urgency, or public non-
commercial use.

2. Commercial Working Statements (Form 27 Updated)

Under the 2024 procedural updates, patentees are no longer required to

submit a detailed revenue or value statement every single year. Form 27 is
now filed once every three financial years. It requires a statement
confirming whether the patent is working or not, and explicitly notes
whether the technology is open and available for commercial licensing.

3. Structural Adjustments
  Surrender (Section 63): A patentee can offer to surrender their
patent at any time by giving notice to the Controller, who publishes it
to allow third parties to object.
 Revocation (Section 64): Details the explicit legal grounds (such as
lack of novelty, obviousness, or insufficiency of description) upon
which a patent can be revoked by the High Court or through a
counterclaim in an infringement suit.
 Restoration (Section 60): If a patent lapses due to non-payment of
renewal fees, the patentee can apply for restoration within 18
months from the date on which the patent ceased to have effect.

Topic 7: Infringement, Remedies, and Decriminalized Adjudication

1. Civil Infringement Framework (Section 104)

An infringement suit cannot be filed in lower junior courts; it must be

instituted in a District Court or directly on the Original Side of the
High Court.

 Remedies available (Section 108): Injunctions (interim and

permanent), damages or an account of profits, and orders for the
seizure or destruction of infringing materials.
 The IPAB Abolition Reminder: Following the Tribunals Reforms
Act, 2021, the Intellectual Property Appellate Board (IPAB) was
dissolved. All statutory appeals against decisions of the Controller
move directly to the regular High Courts (such as the specialized
Intellectual Property Divisions / IPD).

2. The Decriminalized Penalty System (2025/2026 Operational Rules)

Following structural changes introduced by the Jan Vishwas Act, criminal

liability and imprisonment terms for procedural defaults were removed from
the Patents Act. They were replaced with an administrative penalty
framework governed by Chapter XIV-A (Rules 107A onwards) of the
Patents Rules:

 The Adjudication Process: Violations under Section 120

(unauthorized or false claims of patent rights) and Section 122 (failure
to furnish working info/Form 27 updates) are handled by designated
Adjudicating Officers within the Patent Office.
 Timelines:
o Upon receiving an electronic complaint (Form 32), the
Adjudicating Officer issues an electronic notice.
o The respondent must submit their defense within 15 days.
o The entire inquiry must be completed within three months
from the notice date.
  Appeals: Any person unsatisfied with an order can file an electronic
appeal (Form 33) before the designated Appellate Authority within
60 days. The Appellate Authority is directed to resolve the matter
with a reasoned order within six months.

Topic 8: Specialized Sectors: Bio-Patents, Software, and Pharma

 Bio-Patents: Microorganisms are patentable if they require human

intervention and are not mere discoveries of naturally occurring
entities. Under Section 10(4), if an invention involves biological
material, the applicant must deposit a sample with an International
Depository Authority (such as MTCC Chandigarh) before filing.
 Software and Artificial Intelligence (AI): Section 3(k) bars
"computer programmes per se." The current regulatory guidelines
establish that a software application can be patented only if it shows a
clear technical effect or interfaces with hardware to solve a tangible
technical problem.
o The AI Standpoint: India aligns with global frameworks in
rejecting applications naming AI engines (like DABUS) as
inventors. The law mandates that an inventor must be a natural
human person.
 Pharmaceutical Sector: Governed by the strict combined operations
of Sections 3(d), 3(i), and the Compulsory Licensing exceptions to
balance corporate returns with public healthcare affordability.

Topic 9: International Patent Treaties

1. Paris Convention for the Protection of Industrial Property (1883)

 Right of Priority: Gives an applicant who files a patent in one

member country a window of 12 months to file applications in any
other member country while retaining the original filing date as their
"priority date." This insulates them against intervening prior art
disclosures.

2. Patent Cooperation Treaty (PCT)

 The Unified Pipeline: Administered by WIPO, the PCT creates a

single international application framework. Instead of filing dozens of
separate foreign applications simultaneously, an inventor files a single
"International Application."
 This grants the applicant up to 30 or 31 months of delay to assess
commercial viability before entering the "National Phase" of
individual target countries, significantly lowering upfront costs.

Bare Act Reference Checklist

Read the following sections and rules line-by-line from your Bare Act and
updated rules for this module:

 Section 2(1)(j), (ja), (l), (ac) (Essential Patent Definitions)

 Section 3(a) to 3(p) (Complete List of Non-Patentable Subject
Matter)
 Section 4 (Atomic Energy Exclusion)
 Section 8 (Statement and Undertaking regarding foreign
applications)
 Section 9 & 10 (Provisional/Complete Specifications and Contents of
Disclosure)
 Section 11A (Publication Framework)
 Section 25(1) & 25(2) (Pre-Grant and Post-Grant Opposition
Criteria)
 Section 48 (Exclusive Rights of a Patentee)
 Section 53 (The 20-Year Term Allocation)
 Sections 60 & 61 (Applications and Procedures for Restoration of
Lapsed Patents)
 Section 63 & 64 (Surrender and Complete Grounds for Revocation of
Patents)
 Section 68 & 69 (Writing Mandates for Valid Transfer and
Registration)
 Sections 84, 90 & 92 (Compulsory Licensing Grounds and
Notifications)
 Section 104 (Jurisdiction for filing Infringement Actions)
 Section 108 (Civil Judicial Remedies)
 Sections 120 & 122 (Decriminalized Civil Liability Provisions)
 Chapter XIV-A of the Patent Rules (Rules 107A - 107E)
(Adjudication of Penalties and Appeals Workflow)
 Forms 18, 27, 31, 32, & 33 (Procedural Execution Forms)

Module – 5th
Topic 1: Industrial Designs Protection (The Designs Act, 2000)
Industrial design protection focuses exclusively on the visual, aesthetic
appeal of an article of manufacture rather than its functional utility or
underlying technology.

1. Definitive Subject Matter: Design vs. Article

To qualify for registration, a design must be applied to a specific tangible or

identifiable medium.

 Meaning of "Design" (Section 2(d)): Features of shape,

configuration, pattern, ornament, or composition of lines or colors
applied to any article.

o The Modality: Can be two-dimensional, three-dimensional, or

both.

o The Method: Applied via any industrial process or means

(manual, mechanical, chemical, separate, or combined).

o The Legal Test: In the finished article, the features must appeal
to and be judged solely by the eye.

o Statutory Exclusions: Design explicitly excludes:

1. Any mode or principle of construction.

2. Anything which is in substance a mere mechanical device

(functional layout).

3. Any Trademark (as defined in the Trade Marks Act, 1999).

4. Any Property Mark (as defined under penal laws).

5. Any Artistic Work (as defined under Section 2(c) of the

Copyright Act, 1957).
  Meaning of "Article" (Section 2(a)): Any article of manufacture
and any substance, artificial, or partly artificial and partly natural. It
includes any part of an article capable of being made and sold
separately (e.g., the handle of a unique briefcase).

 Modernization Update: The Department for Promotion of Industry

and Internal Trade (DPIIT) issued a core legislative roadmap to amend
the Designs Act. The goal is to explicitly expand the definition of
"article" and "design" to decouple protection from physical products,
extending coverage to virtual and digital designs (such as
Graphical User Interfaces (GUIs), app icons, spatial projections, and
screen transition animations) to align with the Riyadh Design Law
Treaty (DLT).

2. Conditions for the Grant of Protection (Section 4)

The Controller shall not register a design if it falls into any of the following
statutory prohibitions:

 Lack of Novelty: It is not new or original.

 Prior Public Disclosure: It has been disclosed to the public

anywhere in India or in any other country by publication in tangible
form, by use, or in any other way prior to the filing date (or priority
date) of the application.

 Lack of Distinctiveness: It is not significantly distinguishable from

known designs or combinations of known designs.

 Scandalous/Obscene Matter: It comprises or contains scandalous or

obscene material.

3. Registration Process & The Ambit of Protection

[ Filing of Application ] (Form 1 with drawings/specifications u/s 5)
|
v
[ Examination by Controller ] (Check for Section 4 bars and Locarno Class)
|
+-----+-----+
| |
[ Objections ] [ Acceptance ]
| |
v v
[ Hearing ] $\rightarrow$ [ Registration & Publication in Official Journal u/s
7]

 Application Protocol (Section 5): Filed at the Patent Office in the

prescribed manner. A design can only be registered in one specific
class under the Locarno Classification system. In case of any doubt
regarding the proper classification, the Controller's decision is final.

 Copyright in Registered Designs (Section 11): Registration grants

the owner an exclusive right called "copyright in design."

o Duration: The initial term of protection lasts for 10 years from

the date of registration.

o Extension: Can be extended by an additional 5 years (totaling

15 years) upon filing an extension application accompanied by
the prescribed fee before the initial 10-year period expires.

4. The Critical Design-Copyright Interface (Section 15, Copyright

Act)
To prevent creators from claiming dual protection and securing perpetual
monopolies, the law establishes a strict boundary between the Designs Act
and the Copyright Act:

 Section 15(1), Copyright Act: If a design is formally registered

under the Designs Act, 2000, all copyright protection under the
Copyright Act for that artistic work ceases immediately.

 Section 15(2), Copyright Act: If an artistic work is capable of being

registered as a design but the owner chooses not to register it,
regular copyright remains intact only up to a point. The moment the
design is applied to an article through an industrial process and
reproduced more than 50 times, all copyright protection vanishes
completely, placing the design in the public domain.

5. Cancellation of Registration (Section 19)

Any person interested may present a petition to the Controller at any time
after registration for the cancellation of a design's registration on any of the
following five statutory grounds:

1. That the design has been previously registered in India.

2. That it has been published in India or in any other country prior to the
date of registration.

3. That the design is not a new or original design.

4. That the design is not registrable under this Act.

5. That it is not a design as defined under Section 2(d).

6. Infringement / Piracy of a Design (Section 22)

Piracy occurs when a third party, for the purpose of sale, applies the
registered design (or any fraudulent or obvious imitation of it) to any article
in the class where it is registered without the explicit written consent of the
registered proprietor.

Enforcement Options and Civil Remedies (Section 22(2)):

The proprietor can file a civil suit against the infringer to claim one of two
alternate remedies:

 Option A (Statutory Liquidated Sum): The infringer is liable to pay

the registered proprietor a sum not exceeding ₹25,000 for every
contravention, subject to a maximum cap of ₹50,000 recoverable in
respect of any one single design as a contract debt.

 Option B (Damages & Account of Profits): The proprietor can

bring a regular suit for an injunction and recovery of actual damages
sustained, alongside an equitable account of profits made by the
infringer.

 Jurisdiction: The suit cannot be instituted in any court lower than a

District Court. If the defendant files a defense challenging the basic
validity of the registration, the suit is automatically transferred to the
High Court for final adjudication.

7. Powers and Duties of the Controller (Sections 3 & 32)

 The Controller-General of Patents, Designs, and Trade Marks acts as

the Chief Controller of Designs under this Act.

 Section 32 (Inherent Judicial Powers): In all proceedings, the

Controller has the explicit powers of a Civil Court under the CPC
regarding:
 o Summoning and enforcing the attendance of witnesses.

o Compelling the discovery and production of documents.

o Receiving evidence on affidavits.

o Awarding costs that can be executed as a civil decree.

Topic 2: Geographical Indications (The GI of Goods Act, 1999)

A Geographical Indication (GI) identifies a good as originating from a

specific territory, region, or locality where a given quality, reputation, or
other characteristic of the good is essentially attributable to its
geographical origin.

1. Definitive Framework & Rationale (Section 2(1)(e))

 The Scope of Goods: GIs apply to agricultural goods, natural

goods, manufactured goods, handicrafts, or food products.

 The Nexus Rule: The law mandates that for manufactured or

handicraft goods, one of the direct stages of production, processing,
or preparation must take place within the specified geographical
boundary to maintain the integrity of the indicator (e.g., Darjeeling
Tea, Alphonso Mango, Pashmina Shawl).

 Rationale: Protects local communities from deceptive exploitation,

preserves traditional cultural expressions, and protects consumers
from buying counterfeit goods.

2. Official Machinery & Registry (Sections 3 & 6)

 The Controller-General of Patents, Designs, and Trade Marks is

designated as the Registrar of Geographical Indications.
  The GI Registry: Headquartered in Chennai, it maintains the
Register of Geographical Indications, which is split into two separate
books:

o Part A: Contains particulars of the registered geographical

indications themselves.

o Part B: Contains particulars of the Authorized Users (the

specific local producers who have applied and gained individual
authority to use the registered GI tag).

3. Registration Procedure (Section 11)

[ Application Filing (Form GI-1) ]
(Filed by an Association of Persons/Producers representing the trade)
|
v
[ Examination & Consultative Expert Committee Review ]
|
v
[ Publication in the GI Journal ]
|
v
[ 3-Month Opposition Window ] (Extendable by 1 month u/s 14)
|
v
[ GRANT OF REGISTRATION ] $\rightarrow$ [ Validity: 10 Years
(Renewable indefinitely u/s 18) ]

 Prohibition of Registration (Section 9): The Registrar must reject

applications for GIs that are likely to deceive or cause confusion, go
against public order or morality, hurt religious susceptibilities, or
have become generic names over time.
4. Rights Conferred & The Protection Shield (Section 21)

Registration does not grant a private monopoly to an individual. It grants

collective rights to the community:

 The exclusive right to use the geographical indication in relation to

the registered goods.

 The right to obtain judicial relief in respect of any infringement of the

GI.

 Non-Assignability (Section 24): Because a GI is a public asset tied

to a specific territory, it cannot be assigned, licensed, mortgaged,
or transferred by law. If an authorized user dies, their right passes
strictly to their legal heir who continues the manufacturing trade
within that exact geographical region.

5. Infringement, Passing Off, and Redressal (Sections 20 & 67)

 Infringement (Section 22): Occurs when a person uses a GI on

goods in a manner that falsely misleads consumers into believing the
product originates from the genuine geographic region, or constitutes
an act of unfair competition.

 Passing Off Protection (Section 20): No person can file an

infringement suit for an unregistered GI. However, the law explicitly
preserves the common-law remedy of Passing Off to protect
unregistered traditional indicators from misrepresentation.

 Civil Relief (Section 67): In a civil suit for infringement or passing

off, courts can grant:

o Injunctions (interim and permanent).

 o Damages or an account of profits.

o Delivery-up and destruction of counterfeit labels or packaging.

6. Appeals (Section 31)

Following the structural shifts brought by the Tribunals Reforms Act, 2021,
the historical Intellectual Property Appellate Board (IPAB) was abolished.
Any person aggrieved by an order, decision, or entry made by the Registrar
must file an appeal directly before the High Court within a strict window of
three months.

7. Offences, Penalties, and Administrative Adjudication

The enforcement regime operates under a dual framework, pairing strict

criminal penalties for piracy with modernized administrative civil penalties
introduced by the Jan Vishwas Act:

 Criminal Infringement Standards (Section 39 & 40): Falsifying

or falsely applying a registered GI onto goods remains a serious
criminal offense, punishable by imprisonment for a term not less than
six months extending up to three years, and a fine not less than
₹50,000 extending up to ₹2 Lakhs.

 The Decriminalized Jan Vishwas Amendments: To promote ease

of doing business, minor procedural defaults were removed from
criminal court jurisdictions and converted into administrative civil
penalties:

o Section 42 (Falsely representing an unregistered GI as

registered): Stripped of imprisonment clauses; now penalized
with an administrative fine ranging between ₹25,000 and
₹1,000,000.
 o Section 44 (Falsification of entries in the GI Register):
Imprisonment removed; replaced with standard administrative
fines.

o Section 48A (Adjudication of Penalties): Establishes

dedicated Adjudicating Officers within the GI Registry who
hold inquiries and levy monetary penalties directly, cutting
down court delays. Appeals against these orders move to an
Appellate Authority within 60 days (Section 48B).

Bare Act Reference Checklist

Read the following sections line-by-line from your Bare Acts to master this
module:

I. The Designs Act, 2000

 Section 2(a) (Definition of "Article")

 Section 2(d) (Definition of "Design")

 Section 3 (Appointment of Controller and Officers)

 Section 4 (Prohibition of registration of certain designs)

 Section 5 (Application procedure for registration)

 Section 6 (Registration restricted to particular articles/classes)

 Section 7 (Publication of particulars of registered designs)

 Section 11 (Copyright on registration / The 10+5 year term

parameters)

 Section 15 (Requirements before delivery on sale / Marking rules)

  Section 19 (Grounds and procedure for Cancellation of Registration)

 Section 22 (Piracy of designs, enforcement choices, and jurisdictional

transfers)

 Section 32 (Civil Court powers of the Controller)

 Read together with Section 15 of the Copyright Act, 1957

II. The Geographical Indications of Goods (Registration and

Protection) Act, 1999

 Section 2(1)(e) (Statutory definition of Geographical Indication)

 Section 2(1)(k) (Definition of "Producer")

 Section 6 (The Categories of the Register / Part A & Part B split)

 Section 9 (Absolute prohibitions against registration of specific GIs)

 Section 11 (Application protocol)

 Section 14 (Opposition frameworks)

 Section 18 (Duration, expiration, and renewal criteria)

 Section 20 (No infringement action for unregistered marks /

Protection of Passing Off)

 Section 21 (Rights conferred by registration)

 Section 22 (Infringement criteria)

 Section 24 (Absolute prohibition on assignment, licensing, or

transmission)
 Section 31 (Appeals directly to the High Court)

 Section 39 & 40 (Criminal penalties for falsification)

 Section 42 & 44 (Decriminalized penalty parameters under the Jan

Vishwas Act)

 Section 48A & 48B (Inquiry by Adjudicating Officers and Appellate

workflow)

 Section 67 (Available civil remedies)