INTELLECTUAL PROPERTY RIGHTS INTRODUCTORY

Intellectual Property is the creation of human mind, human intellect and

hence called "intellectual property". Intellectual Property, although a
hidden property, is an important means of accumulating tangible wealth.
Intellectual Properties and intangible assets jointly form the most
important driving force of the world economy. That is why, multinational
companies and international corporations have invested enormous
amount for the enrichment of their intellectual property. The intellectual
properties have different kinds of dangers. If a tangible property can be
stolen, an intellectual property has the fear of being pirated. Piracy or
illegal copying is the most serious concern of the intellectual property
protection because it gives a jolt to the originality of the intellectual
product and its creator. The intellectual property is usually divided into
two branches:-

1. Industrial property- The industrial properties are Patents,

Trademarks, Industrial designs, Layout design and Geographical
indications etc.
2. Copyrights and neighboring rights- the copyright and neighboring
rights are Writings, Musical Works, Dramatic works, Audio-visual
works, Paintings and drawings, Sculptures, Photographic Works,
Architectural works, sound recordings, Performance of musicians,
actors & singers, and broadcasts etc.

Copyright, trademarks, designs and patents are intangible personal

properties whereas land, buildings are tangible immovable properties.
Intellectual property is property in legal sense; it is something that can be
owned and dealt with. The rights of intellectual property are created and
protected by statutes. An invention may relate to a new product or an
improvement of an existing product or a new process of manufacturing of
existing or new product. These immaterial products arise out of human
brain and they must be treated as valuable as his lands or goods.

PARIS CONVENTION, 1883

It covers all forms industrial property, such as patents, trademarks,

industrial designs, utility models, geographical indications, service marks,
trade names, and the prevention of unfair competition. It was created with
two goals, to prevent the unforeseen loss of patent protection and to
some extent harmonize the various patent laws of the various countries.
The substantive provisions of the Paris Convention can be divided into 3
categories:-

1. National treatment: it provides that as regards to the protection

of industrial property, each contracting state must grant the same
 protection to nationals of other contracting states that it grants to
its own nationals. Nationals of non-contracting states are also
entitled to national treatment if they are domiciled or have real or
effective industrial or commercial establishment in a contracting
state.
2. Priority rights: this right gives the holder the ability to file an
application for protection in any other contracting state within a
certain amount of time of 6 months for industrial designs and
trademarks and 12 months for patents and utility models. These
applications will have priority over applications filed by others
during the said period of time for the same invention, model or
marks.
3. Common rules: these are as under:-
(1) Patents: Patents issued for the same invention in
different Contracting States are independent of one another. A
patent cannot be refused, cancelled, or terminated in any
Contracting State on the grounds that it has already been so
in another Contracting State, and the granting of a patent in
one Contracting State does not obligate other Contracting
States to do the same.
(2) Marks: the filing and registration requirements for
marks are governed by local law in each contracting state and
are not governed by Paris convention.
(3) Registration: a trademark’s registration is one
contracting state is unrelated to any potential registration in
other nation, including place of origin.
(4) Industrial designs: each contracting state is required
to preserve industrial designs, and protection cannot be
revoked because products containing the designs were not
produced there.
(5) Trade names: trade names must be protected in every
contracting state without being required to file or register the
name.
(6) An indication of source: each contracting state
required to take action to prevent the misrepresentations
regarding the origin of commodities or the identity of their
producer, maker, or trader.
(7) Unfair competition: each contracting state shall offer
adequate safeguards against unfair competition.

BERNE CONVENION, 1886

The Berne Convention, like the Paris Convention, was based on the idea of
national treatment and stipulated a set of basic rights that all nations had
to uphold. The Berne convention covers the rights of authors as well as
the preservation of works. The principles enshrined in Berne convention
are:-

 Principle of national treatment: treatment is no less favorable

than that provided to people belonging to other countries as people
of one’s own country.
 Principle of automatic protection: the principle of automatic
protection provides unconditional protection which does not require
any compliance or formalities in all member countries.
 Principle of independence of protection: this principle provides
for intellectual property rights protection, specifically for copyright
protection to be affordable irrespective of whether the protection is
given in the country of origin or not.
 Principle of minimum standard protection: this principle
concerns original works and rights to be protected.
 Principle of moral rights of authors: the convention also
establishes the rights pertaining to morals. The moral rights include
the right to claim authorship of a work as well as right to object to
any alteration of the work, mutilation, deformation, or modification.
It also contains the right against derogatory actions that would be
detrimental to the honor or reputation of the author.

WIPO (WORLD INTELLECTUAL PROPERTY ORGANIZATION)

The World Intellectual Property Organization is an agency of the United

Nations that specializes in the promotion and protection of intellectual
property rights throughout the world. It was established in 1967, with its
headquarters in Geneva, Switzerland. It carries or mandates foster
innovation economic development and creativity by providing a
framework for the protection of intellectual property globally. The two
main goals of the WIPO are:-

 To encourage the protection of intellectual property around the

world;
 To ensure administrative cooperation between the intellectual
properties associations.

WIPO engages in a number of activities to achieve these goals, such as:

 Normative activities, which encompasses the formation of

international treaties to create norms and standards for the
protection and enforcement of IPR.
 Programs and activities involving legal and technical assistance to
states in the area of IPR.
 International classification and standardization activities.
  Trademark and industrial design registration, as well as filing and
registration services relating to foreign applications for patents on
inventions.

Any country that satisfies the following requirements is eligible to join the
WIPO:-

 Must be a member of UN, any of the specialized agency associated

with the UN, or the international atomic energy agency.
 Must be a part of the statute of the international court of justice.
 Must have received an invitation from the general assembly.

TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS

(TRIPS)

International organizational structures developed together with the

signing of intellectual property treaties. International bureaux were
established as a result of the Paris and Berne Conventions, and they
united to become the United International Bureaux for the Protection of
Intellectual Property in 1893. A new organization, the World Intellectual
Property Organization, replaced it in 1967. Intellectual property was
added as a negotiating topic at the Ministerial Meeting in Punta del Este in
September 1986, the meeting launched the Uruguay round of trade
negotiations under the General Tariff and trade agreement (GATT), which
came to an end in Marrakech. The WTO agreement including TRIPS
agreement was concluded. The TRIPS Agreement is a comprehensive and
in-depth agreement with 73 Articles broken down into 7 Parts.

Key Provisions:-

 TRIPS requires member states to provide strong protection for

intellectual property rights.
 It seeks to provide copyright rights, covering authors and other
copyright holders, as well as holders of related rights.
 It provides for geographical indications, industrial designs,
integrated circuit layout designs, patents, new plant varieties,
trademarks, trade name and undisclosed or confidential information.
 It also specifies enforcement procedures, remedies and dispute
resolution procedures.
 It also has a most favored nation clause.

COPYRIGHT

EVOLUTION OF COPYRIGHT LAW IN UK

The history began to emerge with the invention of printing machine which
made it possible to duplicate literary works. The invention reached
England and then the monarch King Richard III banned the imports of
manuscripts and books. As a result authors in England started printing, in
1529 King Henry made the printing business a monopoly of the crown. It
was that time people started printing and making copies, thus stationer’s
guild constituted into a company, they have provided the royal charter
and had exclusive rights to publish the work.

Licensing Act: the first act was passed in 1661 where the members of
stationary company has the right to publish, this right was later known as
“copyright”. In 1662 the act gave power to the company to take action
against the infringement of their right. However, with the remove of ban
on unlicensed printing many independent printers entered the market and
there was no distinguish between the mechanical and intellectual piracy
thus, the act was repealed.

Statute of Anne: this was known as the world’s first copyright law. The
purpose of the law was to promote learning and give author the protection
against piracy.

The Copyright Act, 1911: the 1911 act consolidated all the acts into
one and implemented the Berne Convention. Included features such as-
extension of term to 50 years, no need for prior registry in stationers,
protection of unpublished work, suit of infringement, all form of arts,
literature, painting, music, etc. were included.

EVOLUTION OF COPYRIGHT LAW IN INDIA

Pre-Independence Copyright law in India: The Copyright Law of India

was enacted by the British colony and like most of the acts of that time; it
was an imitation of the English law. The first copyright act of India was
enacted in 1847, during the regime of East India Company. As per the act,
the term of copyright was either, for the lifetime of author plus 7 years or
42 years. The government had the power to grant the publishing license
after the death of the author if the owner of the copyright refused
permission. All suits and infringement related to copyright came under the
jurisdiction of the highest local civil court. The act was replaced by the
copyright act of 1914.

The act of 1914 was the first 'modern' copyright law of India and a
replica of 1911 act of England. It was the first law to include all works of
art and literature under the ambit of copyright. It was a replica of the
English law of 1911.

Post-Independence Copyright law in India: The Copyright Act of 1957

came into force in January, 1958 replacing the 1911 act. The act besides
amending the copyright law also introduced milestone changes such as
provisions for setting up copyright office under the control of Registrar of
copyright for registration of books and other works of art. It also
established a copyright board to deal with the disputes relating to
copyright.

ABOUT COPYRIGHT

Meaning of copyright- it means to protect, promote and enrich the

cultural heritage of country. It protects the creativity and originality of the
creator whereby the creator is remunerated orally or monetarily. The
copyright act 1957 entitles the creator to do or authorize to do certain
acts with respect to his work. It protects literary, dramatic, musical,
artistic, films and sound creations and works. As per section 13, original
artistic, musical, dramatic and literary works as well as sound recording
and cinematograph films are protected within the act. The act is subjected
to the following works:-
 Original literary work- product of human mind which may consist of
series of verbal or number statement, capable of being expressed in
writing or which has arrived by exercising of skills, creativity, or
judgement. It also includes computer programming and databases.
 Original dramatic work- any piece for recitation, choreographic work
or entertainment shows, acting forms in wiring, scenic arrangement.
 Original musical work- work contains music and graphical notion but
does not include words or any action intended to be sung, spoken or
performed.
 Original artistic work- includes any painting, sculpture, drawing, etc.
it should be original.
 Cinematographic films- includes any work of visual recording and
sound recording accompanying visuals and expression or any work
produced by process of video films.
 Sound recording- any form of sound produced regardless of the
medium on which such recording was made.
Characteristics features of copyright:

 Original- To have copyright, work must be original. This means

literary, dramatic, musical, artistic, cinematographic film and sound
recordings must be created by the author’s intellect by employing
his skill, judgment, labor, time or capital and they must not be
copied.
 Expression in some form- Copyright protection is given only when
the created work is expressed or fixed in manual or electronic or in
some tangible form. A mere idea is not capable of protection under
copyright.
 Bundle of rights- The term copyright includes a number of rights.
The creator or author of the works will have a bundle of rights in his
 creation. Such as- right to issue copies, right to perform or
communicate in public, the right to make film, etc.

Nature of copyright: In nature, copyright is an incorporeal property. The

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

RIGHTS OF COPYRIGHT HOLDER

The act provides two types of rights: 1) economical rights; and 2) moral
rights;

Economical Rights (section 14): these are known as exclusive right of

the holder. These are different types based on work:

In case of original literary, musical and dramatic work: Right to reproduce,

to issue copies, to perform in public, to make cinematography or sound, to
make translation, to adaption and to do any other activity related to it.

In the case of computer program work: Right to do any act as mentioned

above and the right to sell, rent, offer for sale of such work.

In the case of artistic work: Right to produce, communicate, issue copies,

make recordings, films, adaptations and activities related to it.

In case of cinematograph: Right to sell, rent, offer for sale and right to
communicate.

In case of sound recording work: Right to communicate, to issue copies

and to sell, rent offer for sale.

Moral Rights (section 57): these are ethical rights to protect the work
of the creator these are of two types:-

 Right to paternity– which incorporates the right to assert the

authorship of the work, and the right to prevent others from
claiming authorship of his work; and
  Right to integrity- which incorporates right to restrain, or claim of
damages in respect of any distortion, modification, mutilation, or
any other act relates to the said work if such distortion,
multiplication or alternative act would be prejudiced to claimant
honour or name.

AUTHORSHIP AND OWNERSHIP IN COPYRIGHT

Section 17 of the act recognizes the author as the 1 st owner, the author of
a work shall be the 1st owner of copyright therein:

 In case of literary or dramatic composition- the author;

 In case of musical work- the musician;
 In the case of creative work apart from photography- the artist;
 In the case of photographic work- the artist;
 In case of cinematography or recording work- the producer;
 In case of any work generated by computer- the one who created.
However, this provision has following exceptions:
 In case of creation is made by the author underemployment of the
proprietor of any newspaper, magazine or any periodic- the said
proprietor.
 In the case where a photograph is taken, painting or portrait is
drawn, cinematograph is made for the valuable consideration of any
person- such person.
 In case of a work done in the course of the author’s employment
under the contract of service- such employer.
 In case of address or speech delivered on behalf of another person
in public- such person.
 In the case of government works- the government.
 In the case of work done under direction and control of public
undertaking- such public undertaking.
 In the case of work done in which provision of Section 41 apply-
concerned international organizations.
Assignment of Copyright: The owner of the copyright can generate
wealth not only by exploiting it but also by sharing it with others for
mutual benefit. This can be done by the way of assignment and licensing
of copyright. Only the owner of the copyright has the right to assign his
existing or future copyrighted work either wholly or partly and as a result
of such assignment the assignee becomes entitled to all the rights related
to copyright to the assigned work, and he shall be treated as the owner of
the copyright in respect of those rights. Mode of assignment of
agreement, as provided under section 19, condition essentials for valid
assignment:

1. It should be in wiring and signed;

 2. It should specify the kinds and rights assigned and duration; in case
the period is not mention then it will considered as 5 years and if
the territory is not mention then it will be considered as whole of
India.
3. It should specify the amount of royalty payable if required.

According to copyright act, the appellant board where the if the assignor
failed to make the exercise of the rights assigned to him, and such failure
is attributed to any act or omission of the assignor then the board may
order to revoke the assignment and it may also order for recovery of any
royalty.

According to copyright act, in case any person is entitled to inherit

manuscript of literary, dramatic or any kind of work and such work is not
published before the death of testator, then such person shall be treated
as owner for such work.

INFRINGEMENT AND REMEDIES

Civil Remedies: the section 55 of the act provides for the civil remedies:-

1. Interlocutory injunction- it means judicial process by which one

who is threatening to invade or has invaded the legal or equitable
rights of another is restrained from commencing or continuing such
act, or ordered to restore matter to its original position. For the
grant of this there should be prima facie case, balance of
convenience (court will determine which party suffers greater
harm), irreparable injury.
2. Mareva injunction- it is a type of injunction which restrains the
defendant from disposing of assets that may be required to satisfy
the plaintiff’s claim.
3. Anton piller order- this is passed to take possession of the
infringed document, copies and other relevant material of the
defendant, by the plaintiff. This is named after the case of Anton
Piller KG vs. Manufacturing Process Ltd., 1976. Wherein the plaintiff
Anton Piller, a German Manufacturer is successful in passing ex-
parte awards of restraining the use of his copyright products against
the defendant.
4. John deo’s order- this is an injunction order against unknown
person, who has allegedly committed some wrong, but whose
identities cannot entertain the plaintiff.

Pecuniary Remedies: there three pecuniary remedies provided- a) an

account of profits lets the owner seek the sum of profit made via unlawful
conduct; b) compensatory damages which let copyright owner seek
damages; c) conversational damages are assessed to the value of article.
Criminal Remedies: section 63 provides criminal remedies if anyone
found guilty of violating or aiding in violation of copyright will be
sentenced to 6 months of prison and fine of 50,000Rs. As per S. 63A
person who is guilty second time faces additional sentence of
imprisonment for 1 year and fine of 1,00,000Rs. As per S. 63B a person
who illegally copy software on computer faces a minimum of 7 day
sentence and fine of 50,000Rs.

TRADEMARK

Rationale for trademark protection for business

 Business are continues to look for ways to preserve their brand

image by registering trademark since they know if once registered,
their trademarks will endure as long as they renewed regularly.
 Trademark protection lowers customer search costs and identifies
the product’s point of origin, allowing them to reach a larger
consumer base. Some companies follow brand image and they may
get the goodwill of their business by registering and protecting the
trademark.
 Companies use trademark to hinder and thwart pirates and unfair
competition that harm the company’s goodwill. Trademark law
protects merchandising right thus prevent competitors from
manufacturing identical items and passing them off as original.

Rationale for trademark protection for consumer rights

 Trademark serves as a distinctive sing to assists consumer to easily

identify and distinguish products and services from one another.
Therefore, consumers can make informed choices.
 It protect consumer from counterfeit and imitation products
protecting from purchasing unsafe goods. Trademark often seen as
a quality assurance, thus it provides confidence in company’s
products.
 It convey valuable information about the product or service, such as
its origin, attributes or endorsements.
 It encourages competition among business as companies strive to
create unique and recognizable trademarks, they incentivized to
innovate and offer better productions or services.
 It provides consumers with legal recourse in case they encounter
issues with product or services.

ABOUT TRADEMARK

Trade Marks are significant corporate assets, and while registration is not
required by law, it is recommended since unregistered trademarks receive
little protection. If another firm tries to use the same or a similar mark
after registration, there will be a suitable legal procedure to block it. A
trademark is valid for ten years and can be renewed indefinitely. the legal
definition of the mark as provided in Section 2(1)(m) of the Act is critical,
which states that a mark comprises a device, brand, heading, label, ticket,
name, signature, word, letter, numerical, form of products, packaging, or
combinations of colors or any combination thereof. Further in S. 2(1)(zb)
provides that such mark is capable of being represented graphically and
must have distinctive qualities either phonetically, structurally or
aesthetically.

REGISTERATION OF TRADEMARK UNDER THE ACT

Section 18 of the Act outlines the process for registering a trade mark.

1. The central government appoints a person to be known as controller

general of patents, designs, and trademarks who be registrar of
trademark. The Registrar has the authority to transfer or remove
cases by a written request with justification. All the specified details
must be included those of registered trade mark, must be recorded
at the main office.
2. Any person claiming the trade mark may submit an application in
writing to the Registrar in the appropriate way. A single registration
application can be submitted for many classifications of products or
services. Section 2 provides for the various fees which apply to each
kind of product. If the applicants desire to apply, they must do so
within the geographical limits of their primary place of business.
3. Registrar has the authority to accept, reject or make certain
adjustments and revisions subject to specific restrictions or limits.
4. General process of registration is:-
i) Trademark search: it involves a comprehensive investigation to
ascertain whether the proposed trademark is indeed unique and
distinct from any existing registered trademarks.
ii) Filing the application: this is done as per S. 18 of the act where
the application can be submitted online, along with
representation of trademark, specify goods or services and class
of goods or service and pay requisite fee.
iii) Examination and response: the registrar examine the application,
if there is any objection or issues with application the registrar
will issue an examination report. Under section 19 you must
report to the report within specific timeframe.
iv) Publication and opposition: after the examination it will be
published in the trademark journal. This process is crucial as it
 opens window for third parties to oppose your trademark
registration under section 21.
v) Registration: after the above process the trademark will be
registered and the owner will receive the registration certificate.
After registration trademark must be renewed every 10 years
from the date of registration.

INFRINGEMENT

Section 29 talks about the infringement of registered trademarks under

the Act. Infringement refers to the violation of someone’s rights. As a
result, trade mark infringement implies a breach of trade mark rights. The
following elements must be completed to categories trade mark
infringement as provided under Section 29 of the Act:

1) If the trademark is a copy of an existing trademark with minor

modifications or changes.
2) If the infringing trademark is printed or utilized in advertising.
3) If the infringing mark is employed in commerce.
4) If the mark utilized is sufficiently similar to registered mark a customer
is likely to be confused or misled with picking a product category.

Apart from this S. 103 provides for penalties for applying false trademark
which shall result in a penalty of not less than 6 months, but not more
than 3 years and fine of 50,000Rs. A person deemed to be filing
incorrectly:

1) If a trademark mark fabricated has occurred;

2) If a trademark has been wrongfully applied to products or services;
3) Makes, acquires or disposes any device with the intent to falsify a
trademark;
4) Falsely represents the name of the nation or location where the items
were manufactured, as well as name or address of the person
responsible.
5) Tamper with the origin indication.

Concept of Passing off: Section 27 of the Trade Marks Act, 1999

acknowledges the trade mark owner’s common law rights to pursue legal
action against anybody who misrepresents his goods or services. In Cadila
Healthcare Ltd v. Cadila Pharmaceuticals Ltd, (2001), the Supreme Court
of India defined “passing-off” as a type of unfair commercial competition
or unfair dealing in which one person, by deceit, seeks to get an economic
benefit from the reputation earned by the other in a particular trade or
company. A few key elements must be proven for a passing off action:

1) Misrepresentation;
2) The defendant must do the conduct in the course of business;
3) The plaintiff’s goods and services have been misrepresented to clients;
4) Such deception is intended to hard the plaintiff’s reputation or
company;
5) Such conduct creates genuine harm to plaintiff’s company or
reputation.

The defendant’s motive is irrelevant in a passing-off once the plaintiff has

created a reputation no additional proof of defendant’s fraud intent is
necessary. The difference between action and passing off:

INFRINGEMENT ACTION PASSING OFF ACTION

It is a legal remedy It is a remedy under common law
The defendant must use the Defendant’s product do not have
infringing mark to be identical, they might be
related
Prove: infringing mark is identical Prove: it is not simply to show the
to or misleadingly similar to markings are same or similar. The
registered mark usage must be liable to mislead
There is no requirement that If must be demonstrated that
defendant’s use of mark harm the defendant’s use of mark is likely
plaintiff harm or impair the plaintiff

REMEDIES

Civil Remedies: trademark act lays down certain civil remedies they
are:-

1. Injunction or authoritative direction by the court of law is a common

civil remedy that can be provided with. The two kinds of injunction
that can be granted are perpetual and temporary injunction.
2. Damages can be claimed by the aggrieved party on grounds that
the exclusive right of using the trademark he owns has been ceased
and this subsequently has led to him or his enterprise suffering
losses.
3. Common for delivery or removal of the product that have been
infringed.
4. Section 135 of the Trade Marks Act, provides statutory identification
towards the Anton Piller Order which in turn prevents the defendant
from taking off assets from the court’s jurisdiction.

Criminal remedies: The following are laid down below:

1. Sections 103 of the Act lays down criminal remedy for the
contravention of the trademark of any individual or entity which lays
down a period of six months of imprisonment which can be
extended till a time frame of three years.
 2. Section 104 of the act talks about penalties, the section mentions a
fine of fifty thousand rupees which can be increased till an extent of
two lakhs.
3. An inflating version of punishment is laid down under Section 105 of
the same Act.
Administrative remedies: By opposing a mark that is similar to the
original mark, which can be carried out under Sections 9(1) or 11 of the
Trade Marks Act, 1999. A trademark opposition is always filed by a third
party, thereby opposing the existing trademark in the trademark journal
after the completion of its registration procedure. Another way of carrying
out administrative remedy is by correcting the trademark which is already
registered. This in a way eliminates confusion of trademarks.
PATENT

A patent is an exclusive right granted by the Government to the inventor

to exclude others to use, make and sell an invention is a specific period of
time. A patent is also available for improvement in their previous
Invention. The main motto to enact patent law is to encourage inventors
to contribute more in their field by awarding them exclusive rights for
their inventions. In recent times it is referred to as right granted to an
inventor for his Invention of any new, useful, non-obvious process,
machine, article of manufacture, or composition of matter. There are
three basic tests for any invention to be patentable:
1. The invention must be novel, meaning thereby that the Invention
must not be in existence.
2. The Invention must be non-obvious, i.e. the Invention must be a
significant improvement to the previous one; mere change in
technology will not give the right of the patent to the inventor.
3. The invention must be useful in a bona fide manner, meaning
thereby that the Invention must not be solely used in any illegal
work and is useful to the world in a bona fide manner.
An invention considered as new if, on the date of filing the application,
any such invention is not known to the public in any form, i.e. oral,
writing, or any other form.
HISTORY OF PATENT
The first step of the patent in India was Act VI of 1856, but the act was
repealed in 1857 as it had been enacted without the approval of British
Crown. Fresh legislation was enacted for granting ‘exclusive privileges’
was introduced in 1859. This legislation undergoes specific modifications
of the previous legislation, namely, grant of exclusive privileges to useful
inventions only, an extension of priority period from 6 months to 12
months. The Act excluded importers from the definition of an inventor.
The Indian Patent and Design Act, 1911 repealed all previous acts. The
Patents Act 1970, along with the Patent Rules 1972, replacing the Indian
Patent and Design Act 1911. The Patent Act is basically based on the
recommendations of the report Justice Ann and the Ayyangar committed
headed by Rajagopala Iyengar. One of the recommendations was the
allowance of process patents related to drugs, drugs, food and chemicals.
The Patents Act, 1970 was amended by the Patents (Amendment) Act,
2005 regarding extending product patents in all areas of technology
including food, medicine, chemicals and microorganisms. Following the
amendment, provisions relating to exclusive marketing rights (EMR) have
been repealed, and a provision has been introduced to enable the grant of
compulsory licenses. It has also introduced prior publication and
anticipation.
PROCEDURE FOR OBTAINING A PATENT
In order for you to obtain a patent, you must send an application to the
Indian Patent Office (IPO), fill out some forms and pay a prescribed fee.
The following procedures detailed the process of applying for a patent:
1. Write down a detail explanation your invention: it include area
of invention, description of invention; how does it work and what it
does; advantages of invention and a copy of your laboratory record
should be attached.
2. Include sketches, diagrams, and drawings and also explain
the workings of your invention: The sketches and diagram
should explain the working principle of your invention with visual
illustrations.
3. Patentability search: After confirming whether your invention is
patentable, the next step is to check whether you meet the Indian
Patent Act criteria with respect to the Novelty, Non-obviousness,
industrial application and enabling.
4. Write your patent application: Ensure you write a professional
application. In case, you are not good at writing application letters,
you may contract this stage to a professional for a small fee.
5. Publication of your application: After drafting your patent
application, the application shall be published not later than 18
months of first filing. However, if you cannot wait until after the
18months expires, then you will have to make an early “patent
application publication” request with a token. Generally, it will take
at least a month for your patent application to be published after
payment. The publication will include the application number, date
of filing, title of invention, publication date, international patent
classification, name & address of applicant, name of the inventors.
6. Request for examination: Your patent application will be
examined once you make an examination request, Once the
controller receives your request for examination, he/she will assign
 a patent examiner to examine your application with respect to
patentable subject matter, novelty, non-obviousness, inventive step,
industrial application, enabling. He then will compile a report and
forward same to the controller.
7. Respond to objection: based on examination report, the issue of
object may rise. Once you are not satisfied with the report, you have
the right to raise an objection.
8. Clearing every objection: This is an opportunity for a patent
applicant to communicate with the Controller. Use this opportunity
to clear all objections.
9. Grant of patent: Once your patent application has been found to
have met all patentability criteria, the application would then be
granted. The patent approval would be published in a patent
journal.
PATENT COOPERATION TREATY (PCT) FILING PROCESS
The application are filed in two phases:
1. International Phase- This includes filing the international
application, conducting the international search, and, optionally,
requesting an international preliminary examination.
2. National Phase- After the international phase, the application
enters the national phase, where applicants must pay additional
fees for each country or region where they seek protection.
Fees under PCT- the PCT system involves several types of fees,
including:
 International filing fee- this is the fee for filing the international
application and is payable to WIPO.
 Search fee- this fee is for conducting the international search and
varies depending on the international searching authority (ISA)
chosen.
 Preliminary Examination fee- if an international preliminary
examination is requested, this fee is payable to the international
preliminary examining authority (IPEA).
 National phase fees- these fees vary by country and are payable
when entering the national phase in each jurisdiction.
PCT filing process:-
1. Preparation: draft the international application, ensuring it
complies with PCT requirements, including detailed descriptions,
claims, and drawings.
2. Filing: submit the international application to a Receiving office
(RO) in any member country to directly to WIPO.
3. International search: an ISA conducts a search for prior art and
issues a written opinion on the patentability of the invention.
 4. International publication: the WIPO publishes the application,
making it publicly accessible.
5. Optional preliminary examination: applicants may request an
examination to further assess the patentability of their invention.
6. National phase entry: after the international phase, the applicant
can enter the national phase in the countries where they seek
protection.
International Application: The international application can be filed
electronically or on paper with a Receiving Office (RO) or directly with
WIPO. The application must include a request, a description of the
invention, claims, drawings (if any), and an abstract.
Defects in International Applications: defects can be correct during
the international phase. The PCT permits corrections of obvious errors and
RO or ISA typically notifies applicants if corrections are necessary. The ISA
reviews the application prior to international search, it then issues
International search report and written opinion on potential patentability
of invention.
National Requirement and Publication: Each country or region where
protection is sought has its own national requirements, which must be
met during the national phase. This may include translations, specific
documentation, and additional fees. A crucial step in the process is when
WIPO publishes the international application after 18 months.
Preliminary Examination and their benefits: The international
preliminary examination is an optional procedure that allows applicants to
obtain a detailed examination of the potential patentability of their
invention before entering the national phase. This may provide valuable
insights.
ANTICIPATION OF INVENTION/ PRIOR PUBLICATION
The patents act does not defines anticipation. Section 13 and 29 to 33
provides provision in respect of anticipation. In general terms it means
‘expectation or a prediction’. In law anticipation means the prior
knowledge of invention by means of prior art or publication. It is disclosure
of invention either by invention himself or person authorized by him
before the patent is made. This could be by way of sale, prior publication
or public use. As per section 2 (1) of the act defines “new invention” as
any invention or technology which has not been anticipated by publication
in any document or used in the country or elsewhere in the world before
the date of filing of application with complete details i.e. the subject
matter has not fallen public domain.
For any invention to be patentable it must be different from all published
articles or techniques and marked products. The invention must not be
made available to the public when the filing of the application for a patent
takes place. When the invention is not novel it is said to be anticipated.
The Indian patent law provides a grace period for certain disclosures
made by the inventor or applicant before the filing date. This allows
inventors some freedom if they disclose their invention before filing for a
patent.
Testing of Anticipation: Testing for anticipation involves comparing the
claimed invention with prior art to determine if all elements of the claim
are disclosed in a single prior art reference. If the prior art contains
everything claimed in the patent application, the invention is considered
anticipated and not novel.
Exception of Anticipation: section 29 to 30 outlines specific situations
where an invention is not considered anticipated.
 Anticipation by previous communication to the government with
complete specification.
 If the invention is disclosed for private consumption of a peer group,
which is formed for the purpose of promotion of knowledge or
scholarship solely for the benefit of the member of society. A grace
period of 12 month from the date of publication to is given.
 If the invention was publicly worked solely for the purpose of
reasonable trial due to the inherent nature of the invention, and the
complete specification is filed within 12 months of such public
working.
 If the invention has been put to use and has been published after
the provisional application has been filed, then the complete
specification filed shall not be deemed to have been anticipated.
RIGHTS AND OBLIGATIONS OF PATENTEE
Rights of Patentee
1. Right to exploit patent: A patentee has the exclusive right to make
use, exercise, sell or distribute the patented article or substance in
India.
2. Right to grant license: The patentee has the discretion to transfer
rights or grant licenses or enter into some other arrangement for a
consideration.
3. Right to surrender: A patentee has the right to surrender his patent,
but before accepting the offer of surrender, a notice of surrender is
given to persons whose name is entered in the register as having an
interest in the patent and their objections, if any, considered.
4. Right to sue for infringement: The patentee has a right to institute
proceedings for infringement of the patent.
Obligations of Patentee
1. Government use of patents: A patented invention may be used or
even acquired by the Government, for its use only; it is to be
 understood that the Government may also restrict or prohibit the
usage of the patent under specific circumstances.
2. Compulsory licenses: If the patent is not worked satisfactorily to
meet the reasonable requirements of the public, at a reasonable
price, the Controller may grant compulsory licenses to any applicant
to work the patent.
3. Revocation of Patent: A patent may be revoked in cases where there
has been no work or unsatisfactory result to the demand of the
public in respect of the patented invention.
4. Invention for defense purposes: Such patents may be subject to
certain secrecy provisions, i.e. publication of the Invention may be
restricted or prohibited by directions of Controller.
5. Restored Patents: Once lapsed, a patent may be restored, provided
that few limitations are imposed on the right of the patentee.
Compulsory Licensing: Compulsory licensing is a measure which is
provided by the patent act. It ensure that the patentee do not misuse
their patent rights. Compulsory Licensing is given only for public health
and nutrition. Simply speaking, it is a license given to a 3rd party to
manufacture, use, or sell the product or use the process that provides a
new way of doing something which has been already granted patent
without the permission of the owner. This is done for the public health, or
in national emergency and health crisis. The condition which needs to be
fulfilled for grant of compulsory license is provided under section 84 and
92 of Patent Act.
1. Section 84: any person who is interested or already a holder of the
license under the patent can make a request to the controller for
grant of compulsory license on patent after three years from the
date of grant of that patent, on the following grounds:
i) That the reasonable requirements of the public with respect to
the patented invention have not been satisfied;
ii) That the patented invention is not available to the public at a
reasonably affordable price;
iii) That the patented invention is not worked in the territory of India.

2. Section 92: it provides for other grounds of compulsory license:

i) For exports, if the product is used for exporting to another
country then government can grant licenses but this is only in
exceptional circumstances.
ii) If there is national emergency, this is the case where the product
is needed on an urgent basis like in war or in health crisis.
PATENT INFRINGEMENT AND REMEDIES
Patent infringement is a violation which involves the unauthorized use,
production, sale, or offer of sale of the subject matter or Invention of
another’s patent. Patent infringement occurs directly or indirectly. Patent
infringement lawsuits can result in significantly higher losses than other
types of lawsuits. Some laws, such as the Patent Act, allow plaintiffs to
recover damages. Measures available in patent infringement litigation
may include monetary relief, equal relief and costs, and attorneys’ fees.
 Monetary Relief: Monetary relief in the form of compensatory
damages is available to prevent patent infringement a patent owner
may lost profits due to infringement, up to 3 times compensation
can be charged.
 Equitable Relief: Orders are issued by the court to prevent a person
from doing anything or Act. Injections are available in two forms
preliminary and permanent.
-Essentials of trademark?
-dilution of trademark?
-grounds for refusal of trademark registration?
-specification of Patent?