NOTE: REFER PDF TO CROSS VERIFY ALL THE ANSWERS

Module III:
Introduction To Intellectual Property:
Role of IP in the Economic and Cultural Development of the Society, IP Governance, IP as a
Global Indicator of Innovation.
Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent an Invention.
Rights Associated with Patents. Enforcement of Patent Rights. Inventions Eligible for Patenting.
Non-Patentable Matters. Patent Infringements. Avoid Public Disclosure of an Invention before
Patenting. Process of Patenting. Choice of Application to be Filed. Patent Application Forms.
Jurisdiction of Filing Patent Application. Publication. Examination. Grant of a Patent. Validity of
Patent Protection. Commercialization of a Patent. Need for a Patent Attorney/Agent. Can a
Worldwide Patent be
Obtained. Do I Need First to File a Patent in India. Patent Related Forms. Fee Structure. Types of Patent
Applications. Commonly Used Terms in Patenting. National Bodies Dealing with Patent Affairs. Utility
Models. Process of Patenting. Prior Art Search. Choice of Application to be Filed. Patent Application
Forms. Jurisdiction of Filing Patent Application. Publication. Examination. Grant of a Patent. Validity of
Patent Protection.

1 Discuss Intellectual Property Rights (IPR) CO3 PO1.PO6,PO12 L6 5M

(PAGE NO 1)

INTRODUCTION TO INTELLECTUAL PROPERTY

Intellectual Property (IP) is a special category of property created by human intellect (mind) in the
fields of arts, literature, science, trade, etc. Since IP is a novel creation of the mind, it is intangible (i.e.
invisible and indivisible) in nature and differs from the tangible property, such as land, house, gold and
car with which we are quite familiar. Intellectual Property Rights (IPR) are the privileges accorded to the
creator/inventor (of IP) in conformance with the laws. These rights are given to the creator/inventor in
exchange for revealing the process of creation/invention in the public domain. The inventor is conferred
with the special rights to use, sell, distribute, offering for sale and restricting others from using the
invention without his prior [Link] aforementioned rights do not apply to the physical object
(e.g. book or computer or mobile phone) in which the creation may be embodied but attributed to the
intellectual creativity.

Broadly, IP comprises of two branches i.e. ‗Copyrights and Related Rights‘ and ‗Industrial Property
Rights‘. ‗Copyrights and Related Rights‘ refer to the creative expressions in the fields of literature and
art, such as books, publications, architecture, music, wood/stone carvings, pictures, portrays,
sculptures, films and computer-based softwares/databases. The ‗Industrial Property Rights‘ refer to the
Patents, Trademarks, Trade Services, Industrial Designs and Geographical Indications. The salient
features of all the above-mentioned categories are discussed in the ensuing chapters.
2 write a note on role of IP in economic & CO3 PO6 L1 8M
Cultural development of the society
(PAGE NO 1,2,3)

1.1. Role of IP in the Economic and Cultural Development of the Society

Creativity being the keystone of progress, no civilized society can afford to ignore the basic
requirement of encouraging the same. The economic and social development of a society is largely
dependent on creativity. The protection provided by the IPR to the creators/innovators is in fact an act
of incentivization for encouraging them to create more and motivates others to create new and novel
things.
However, if IPR is practised rigidly, it may have a negative impact on the progress of society. For
example, compliance with the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement
has affected the farming community as they are unable to store seeds for the next crop. Multinational
companies regulate the price of seeds, which is generally beyond the reach of a majority of the farmers.

To circumvent the negative impact of IPR, certain laws, exceptions and limitations associated with
IPR have been enacted to maintain a balance between the interests of the creators/inventors and the
community. For example, farmers‘ rights under the Protection of Plant Varieties and Farmers‘ Rights
(PVP&FR) Act, 2001 entitles them to many privileges, such as ‗Rights on seeds’ provides rights to the
farmers to save seeds, use seeds and share, exchange or sell seeds to other farmers and ‗Right to
protection against accusations of infringement’ protects the farmers from infringement and other legal
accusation levied upon them due to his legal ignorance in using other‘s plant varieties. The use of
copyrighted material for education and religious ceremonies is exempted from the operation of the
rights granted in the Copyright Act. Similarly, a patent can be revoked in favour of compulsory licensing
by the government during an emergency or a natural calamity. In addition, if an invention/creation is
not in the interest of society, it is not registered by the government for grant of any rights associated
with IP. For example, cloning of human embryos is banned for IP protection, and so is the creation of
super microbial pathogens, which can play havoc with human lives.

In addition, India is enriched with massive biodiversity and genetic resources and their use is
embodied in what is referred to as Traditional Knowledge (TK). However, the use of such knowledge and
resources are not limited to local contexts as many innovations relate to and draw on them. Therefore,
the main issue of concern is to protect TK and genetic resources, which are rapidly coming under the
governance of sometimes conflicting IPR policies. To derive maximum benefit from them, the
establishment of adequate legal infrastructure and enforcement is required. With initiatives like
‗Make in India‘, ‗Atmanirbhar Bharat‘ and supporting local homegrown brands, and easy as well as
accessible approach to patents and trademarks registration, it is possible to reap the benefits of our
resources.
3 Outline the inventions eligible for patenting, CO3 PO1,PO6,PO12 L2 10M
Explain any 5 matters that are considered
non-patentable?
(PAGE NO 19,20)

2.1.5. Inventions Eligible for Patenting

Patents may be granted for inventions/technologies in any field, ranging from a paper clip or
ballpoint pen to a nanotechnology chip or a Harvard mouse (mouse with cancer genes).

It is a general belief that patents are awarded only to major scientific breakthroughs. But, it is not
true. In fact, the majority of patents are granted to inventions displaying an improvement over the
existing invention. For example, many patents can be awarded to a single molecule e.g. penicillins (an
antibiotic that kills microbes) and its derivatives. The derivatives are made by making subtle changes in
the structure of the penicillin resulting in new/improved properties, such as acid stability or
temperature stability or killing a wide range of microbes (germs). The new antibiotic molecules, known
as second, third or fourth generation penicillins can also be patented.

In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen,
eyeglasses, textiles, mobile phones, wrist watch, bicycle, scooter, car, television, cold drinks, beverages
and many more. It is not uncommon that many products contain several inventions (patents) e.g. the
laptop computer involves hundreds of inventions working together. Similarly, cars, mobile phones and
televisions have many patented components.

2.1.6. Non-Patentable Matters

In the ‗Patent Act, 1970, there are some exclusions (product and processes) that cannot be
patented, such as:

• Invention contrary to public morality - a method for human cloning, a method for gambling.
• Mere discovery - finding a new micro-organism occurring freely in nature, laws of gravity.
• Mere discovery of a new form of a known substance - use of aspirin for heart treatment. Aspirin
was patented for reducing fever and mild pains.
• Frivolous invention - dough supplemented with herbs, merely changing the taste of the dough, 100
years calendar, bus timetable.
• Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to a bucket.
• Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 - inventions relating to
compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as
notified by the Central Government from time to time.
• Literary, dramatic, musical, artistic work - books, sculptures, drawings, paintings, computer
programmes, mathematical calculations, online chatting method, method of teaching, method of
learning a language as they are the subject matter of Copyright Act. 1957.
• Topography of integrated circuits - protection of layout designs of integrated circuits is provided
separately under the Semiconductor Integrated Circuit Layout Designs Act, 2000.
 • Plants and animals - plants and animals in whole or any part including seeds, varieties and species
and essentially biological processes for the production or propagation of plants and animals are
excluded from the scope of protection under patents.
• Traditional knowledge - an invention which in effect is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known components are also
excluded.
4 Define the term patent Explain invention and CO3 PO5 L2 6M
innovation in patent
(PAGE NO 17)

2.1 PATENTS
A patent is an exclusive right granted for an innovation that generally provides a new way of
doing something or offers a new technical solution to a problem. The exclusive right legally
protects the invention from being copied or reproduced by others. In return, the
invention must be disclosed in an application in a manner sufficiently clear and complete to enable it to
be replicated by a person with an ordinary level of skill in the relevant field.

Invention is the creation of a new idea or concept.

Innovation is the process of translating an invention into commercial entity or widespread use.

5 what are the conditions that must be met for CO3 PO2,PO6 L1 10M
obtaining patent protection?
(PAGE NO 17,18)

2.1.1. Conditions for Obtaining a Patent Protection

There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be
fulfilled for a product or a process to qualify for the grant of a patent. The criterion encompasses:

• Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application is new and
not known to anybody in
the world. In other words, the innovation is a) not in the knowledge of the public, b) not published
anywhere through any means of publication and c) not be claimed in any other specification by any
other applicant.
• Inventive step - Not obvious to the person (s) skilled in the art. The innovation is a) a technical
advancement over the existing knowledge, b) possesses economic significance and, c) not obvious
to a person skilled in the concerned subject.
• Capable of industrial application - For the benefit of society. The invention is capable of being made
or used in any industry.
6 Can a worldwide patent be obtained? Do I CO3 PO2,PO6 L4 10M
need First to File a patent in India?
(PAGE NO 36,37)

2.1.12. Can a Worldwide Patent be Obtained

There is no such term as ‗Universal Patent‘ or ‗World Patent‘ or ‗International Patent‘ as the
patent rights are territorial. An application for a patent must be filed with a Patent Office of the country
in which one wishes to seek patent protection. Unfortunately, this option becomes laborious,
cumbersome, timeconsuming and expensive if one wishes to file a patent application in many countries.
To ease out this issue, many Regional Offices have been established which receive patent applications
on behalf of a group of nations e.g. European Patent Office and African Regional Intellectual Property
Organization. A single application is sufficient to cover many nations that are members of a particular
regional office/organization. However, if one wishes to seek patent protection in several countries
worldwide, it is preferred to file an international patent under the Patent Cooperation Treaty (PCT). The
only condition is that the applicant‘s country should be a member of PCT. India, along with over 190
nations, is a member of PCT.

2.1.13. Do I Need First to File a Patent in India

Yes, in general, Indian residents are required to file the patent application first in India.
Subsequently, they may file for patent protection in other countries. But for this, prior approval is
needed from the Patent Office. However, this approval can be waived off under the following
circumstances:

• The applicant is not an Indian resident.

• If 6 weeks have expired since the patent application was filed in India by an Indian resident.
• If two or more inventors are working on an invention in a foreign country and one of the inventors
is an Indian resident. The invention does not have a potential market in India and hence does not
wish to file the patent in India. In such a scenario, the Indian resident has to seek Foreign Filing
Permission (FFP) from an Indian Patent Office.
• In case of international collaboration, if one part of the invention originated in India and the
inventor is an Indian resident, he has to seek permission to file the patent outside India.
• If the invention is related to defense or atomic energy or utility model, the inventor/s needs to seek
permission from the Indian Patent Office because inventions related to these domains are not the
subject matter of patentability in India.
7 Explain the commercialization of a patent? CO3 PO6 L2 8M

(PAGE NO 35,36)

2.1.10. Commercialization of a Patent

The patent owner may grant permission to an individual/organization/industry to make, use, and
sell his patented invention. This takes place according to agreed terms and conditions between the
involving parties. A patent owner may grant a license to a third party for the reasons mentioned below:
 • The patent owner has a decent job e.g. university professor and has no desire or aptitude to exploit
the patent on his own.
• The patent owner may not have the necessary manufacturing facilities.
• The manufacturing facility is not able to meet the market demand.
• The patent owner wishes to concentrate on one geographic market; for other geographical markets,
he may choose to license the patent rights.
Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the
exclusive rights to use the patented invention. Only the patentee has the right to licence or deal with
the patent for any deliberations. Although, the validity of the granted patent is for 20 years (from the
date of filing a patent application), but the patentee is required to furnish information (Form-27), on an
annual basis relating to the commercialization/selling of the patent. It is called as ‗Working/Licensing of
the Patent‘.

The licensing of a patent can be exclusive or non-exclusive. In an Exclusive Licence, the patent is
sold to only one individual/organization for a fixed time period. During this time period, no other person
or entity can exploit the relevant IP except the named licensee. In Non-Exclusive Licence, a patentee
can sell his patent rights to as many individuals/parties as he likes.

If the patentee is not able to commercialize his patent within three years from the date of the grant
of a patent, any person may submit an application to the Controller of Patents for grant of Compulsory
Licensing (of the patent), subject to the fulfilment of following conditions:
• Reasonable requirements of the public concerning the patented invention have not been satisfied.
• The patented invention is not available to the public at a reasonable price.
• The patented invention is not worked in the territory of India.

8 Discuss the commonly used terms in the CO3 PO6 L3 5M

domain of patenting.
(PAGE NO 40,41)

2.1.17. Commonly Used Terms in Patenting

There are certain terms that are commonly used in the field of patenting, as listed in table 2.4.

Table 2.4: Commonly used terms in the domain of patenting.

S. No. Term Definition
1. Inventor Creator of an invention
Organization/individual/industry that files a patent application or applies for a
2. Applicant
patent
A person/organization who owns the patent (granted)
3. Patentee
 Organization/individual/industry which obtains a license of the patent from
4. Licensee the Patentee for commercialization purpose

A person in whose name patent has been assigned legally

5. Assignee

The applicant is paying the annuity

6. In force (renewal fee) for the patent to keep it alive (Active Patent)

The selling of a patent to an individual/party for commercial exploitation is

Working of called as working of a patent
7.
a Patent

Patent Patent specification is a written description of the invention and the way of
8. Specification representation and process of making
and using the same

Priority A ‗Priority Right‘ or ‗Right of Priority‘ is a time-limited right, activated by the

9. first filing of an application for a patent
Right

The claimed date on which the first

10. Priority Date
application for the invention is filed
Claims can be defined as the scope of the protection conferred by a patent,
or the protection sought in a patent application. The purpose of the claims is
Patent
11. to define which subject matter is protected by the patent
Claims

National An application filed to obtain patents in different countries simultaneously

12. Phase based on a single International/PCT application
Application
The revocation means cancellation of the patent due to certain reasons, such
Patent as lack of patentability or wrongfully obtaining a patent
13.
Revocation

Once a patent has been ceased (e.g. due to non-payment of the fee) it can be
Restoration restored within a permitted period by paying the requisite fee
14.
of Patent
9 What is Patent Infringements? Explain two CO3 PO6 L2 8M
categories of Patent Infringements.
(PAGE NO 20,21)

2.1.7. Patent Infringements

Once the patent is granted to the applicant, he owns the right to use or exploit the invention in any
capacity. If anyone uses the invention without the prior permission of the owner, that act will be
considered an infringement of the invention. Infringements can be classified into two categories:

Direct Infringement - when a product is substantially close to any patented product or in a case
where the marketing or commercial use of the invention is carried out without the permission of the
owner of the invention.
Indirect Infringement - When some amount of deceit or accidental infringement happens without
any intention of infringement.
If such an unlawful act has been committed, the patentee holds the right to sue the infringer
through judicial intervention. Every country has certain laws to deal with such unlawful acts. Following
reliefs are made available to the patentee:

• Interlocutory/interim injunction.
• Damages or accounts of profits.
• Permanent injunction.
It is pertinent to mention that the Central government always holds the rights (Section 100 of the
Patent Act, 1970, Rule 32 of the Patent Rules, 2003) to use the invention in the case of national
emergency or other circumstances of extreme urgency after notifying the owner.

10 With a flow chart explain the major steps CO3 PO1,PO3 L6 10M
involved in the grant of a patent

OR
14 With a neat diagram Explain major steps CO3 PO1 L6 10M
involved in the grant of a patent.
(PAGE NO 21,22)

2.1.9. Process of Patenting

In India, the process of grant of a patent is a lengthy procedure that may take anywhere 3-4 years or
more. The major steps involved in this process are listed in figure 2.1.

Figure 2.1: Flow chart of major steps involved in the grant of a patent.
 Filing of Application with IPO
[Link]

Publishing

Examination

Grant of the Patent

[Link]. Prior Art Search - Before an inventor embarks upon the patent filing process, he has to ensure
that his invention is ‗novel‘ as per the criterion for the grant of a patent. For this, he has to check
whether or not his invention already exists in the public domain. For this, he needs to read patent
documents and Non-Patent Literature (NPL), scientific journals/reports/magazines, etc. The information
lying in the public domain in any form, either before the filing of the patent application or the priority
date of the patent application claiming the invention, is termed as Prior Art.

Conducting a prior art search before filing the patent has advantages as it averts infringement,
tracks research and development and provides access to detailed information on the invention. The
prior art search is carried out on the parameters such as novelty, patentability, state of the art,
infringement, validity and freedom to operate. The commonly used databases for prior art search fall in
two categories i.e. Patents Databases and NPL.

11 Design a flow chart for the process of filling CO3 PO1,PO3 L6 12M
a patent application.

OR
15 Elaborate the process of filing of patent CO3 PO1,PO3 L6 10M
application.

(PAGE NO 34)

Figure 2.4: Flowchart for the process of filing a patent application.

 Source: [Link] (slightly modified)

12 Explain the different types of patent CO3 PO1,PO6 L2 10M

applications.

(PAGE NO 39,40)

2.1.16. Types of Patent Applications

• Provisional Application - A patent application filed when the invention is not fully finalized and
some part of the invention is still under experimentation. Such type of application helps to obtain
the priority date for the invention.
• Ordinary Application - A patent application filed with complete specifications and claims but
without claiming any priority date.
• PCT Application - An international application filed in accordance with PCT. A single application can
be filed to seek patent protection and claim priority in all the member countries of PCT.
• Divisional Application - When an application claims more than one invention, the applicant on his
own or to meet the official objection on the ground of plurality may divide the application and file
two or more applications. This application divided out of the parent one is known as a Divisional
Application. The priority date for all the divisional applications will be the same as that of the main
(the Parent) Application (Ante-dating).
• Patent of Addition Application - When an invention is a slight modification of the earlier invention
for which the patentee has already applied for or has obtained a patent, the applicant can go for
‗Patent of Addition‘, if the modification in the invention is new. Benefit - There is no need to pay a
separate renewal fee for the ‗Patent of Addition‘, during the term of the main patent. It expires
along with the main patent.
• Convention Application - If a patent application has been filed in the Indian Patent Office, and the
applicant wishes to file the same invention in the one or more Convention countries (e.g. Paris
Convention) by claiming the same priority date on which application was filed in India, such an
 application is known as Convention Application. The applicant has to file Convention Application
within 12 months from the date of filing in India to claim the same priority date.
13 List paid and unpaid Patents Databases and CO3 PO6 L4 8M
Expain the Non-Patent Literature.

(PAGE NO 23)

Patents’ Databases
• Indian Patent Advanced Search System
(InPASS- [Link]
• Patentscope(WIPO- [Link]
• Espacenet(EU- [Link]
• USPTO(USA- [Link]
• Google Patents Advanced Search
• ([Link]
• Orbit Intelligence
([Link]
orbit-intelligence/).
• Derwent Innovation
([Link]
• PROQUEST
([Link]

Non-Patent Literature (NPL)

• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents, Encyclopedias, Journals (IEEE,
Research Gate,
Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s PubMed, Conference Proceedings,
Technical Reports, Public Conferences, etc.
• Industry/trade publications: Industry reviews and public disclosures (Social media, YouTube, Books,
Magazines,
Datasheets, Blueprints, etc.).
• Others: Newspapers, Websites, Technology blogs,
Researchers‘ websites, etc.
Although, majority of NPL data is available freely on the public forum, some of the journals are paid
and can be accessed after paying the subscription. Major Patent Offices such as the United States
Patent and Trademark Office's (USPTO), European Patent Office (EPO), Japan Patent Office (JPO), etc.
are maintaining inhouse NPL databases to make patents examination more effective.

14 With a neat diagram Explain major steps CO3 PO1 L6 10M

involved in the grant of a patent.
REFER QUESTION NUMBER 10
15 Elaborate the process of filing of patent CO3 PO1,PO3 L6 10M
application.
REFER QUESTION NUMBER 11