Ans 1.

Criteria for granting Patent in India:

In India there are 3 tests to determine the patentability of an invention.

TEST ONE: Novelty

An invention must be novel and distinct from any existing inventions or products. As defined under
Section 2(1) of the Patents (Amendment) Act, 2005, a ‘new invention’ is one that has not been previously
disclosed or entered the public domain. There should be no prior publication of the invention. However,
mere discoveries are not considered inventions. The two key criteria for granting patents—novelty and
utility—were emphasized in the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries
(1979). Furthermore, in Gopal Glass Works Ltd. v. Assistant Controller of Patents (2005), it was clarified
that for an invention to be patentable, it must not only be new but also original. Novelty alone is
insufficient; the invention must demonstrate sufficient originality as well.

TEST TWO: Non - Obviousness

The Indian Patents Act, 1970, defines an invention in Section 2(1)(j) as a product or process that
demonstrates an inventive step and has industrial applicability. This definition emphasizes two key
criteria: novelty and industrial practicality.

Section 2(1)(ja) further clarifies the concept of an "inventive step," which was notably established in the
Indian legal context through the landmark case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal
Industries (1979). This case also outlined four crucial tests to determine obviousness:

 Prior Art Identification: A person skilled in the relevant field should be able to identify the
inventive step within existing knowledge or prior art.
 Differentiation: The skilled person must be capable of distinguishing the invention from the
existing subject matter.
 Critical Evaluation: A thorough examination of the differences between the invention and prior
art is essential.
 Degree of Inventiveness: The invention must exhibit a significant degree of ingenuity and not be
an obvious modification of existing knowledge.
 Essentially, an invention must be both novel and non-obvious to a person skilled in the art,
ensuring that it represents a genuine advancement in the field.

TEST THREE: Usefulness or Utility

Beyond novelty and non-obviousness, a crucial requirement for patent eligibility in India is the
invention's practical utility and industrial applicability. This means the invention must have a real-world
use and be capable of being produced or employed in an industrial setting.

This principle was emphasized in Cipla Ltd. v. F Hoffmann-La Roche Ltd. (2015), where the court
highlighted that an invention must have commercial viability to be considered patentable.

Here are some of the exceptions:

 Creations that harm public order, morals, health, or the environment, or are deemed trivial.
 Scientific discoveries that do not qualify as inventions.
  Mere variations or alternatives of known substances.
 Agricultural or horticultural methods and processes.
 Methods for medical diagnosis, treatment, or surgery for humans or animals.
 Living organisms, except microorganisms.
 Software code, mathematical methods, business practices, and algorithms.
 Creative works protected by copyright, such as music, literature, and art.
 Game-playing methods, mental processes, or systems for organizing thoughts.
 Methods for displaying or conveying information.
 Integrated circuit layout designs.
 Traditional knowledge or wisdom passed through generations.

Ans 2.

The Patent Cooperation Treaty (PCT) facilitates international patent protection by allowing inventors to
file a single "international" patent application, which simultaneously seeks patent protection in multiple
countries, significantly streamlining the process and reducing costs compared to filing separate
applications in each jurisdiction individually; essentially acting as a centralized system for managing
international patent applications across various contracting states.

Key aspects of the PCT's role in facilitating international patent protection:

1. Simplified filing process:

By submitting one application, inventors can seek protection in a large number of countries with
a single set of paperwork, saving time and effort.

2. Cost-effective approach:

Filing a PCT application initially incurs lower costs compared to filing multiple national
applications simultaneously, allowing inventors to strategically decide which markets to pursue
further based on an international search report.

3. International search report:

The PCT system provides an international search report which analyzes the novelty and inventive
step of the invention, giving valuable insights into the potential patentability of the technology
across different jurisdictions.

4. Delayed national phase entry:

Applicants can delay entering the national phase (filing separate applications in individual
countries) for a certain period, allowing time to assess market potential and further develop the
invention before committing to significant costs.
 5. Standardized procedures:

The PCT system uses standardized procedures and forms, simplifying the application process and
ensuring consistency across participating countries.

Ans 3.

Key features of the Trademark Act, 1999 regarding registration and grounds for refusal:

 Distinctiveness is key:

A trademark must be inherently distinctive to be registered, meaning it should clearly differentiate the
goods or services of one company from another; if a mark is considered too generic or descriptive, it
cannot be registered.

 Absolute grounds for refusal (Section 9):

 Lack of distinctive character: If a mark is devoid of any unique features and cannot
distinguish the product from others, it will be refused registration.
 Descriptive marks: Marks that directly describe the nature, quality, or geographic origin
of goods cannot be registered.
 Deceptive marks: Trademarks that are likely to mislead consumers about the source or
characteristics of the goods are not allowed.
 Scandalous or offensive marks: Marks that are considered offensive or hurt religious
sentiments are prohibited.
 Marks prohibited under other laws: Trademarks that violate other laws, such as the
Emblems and Names (Prevention of Improper Use) Act, 1950, cannot be registered.
 Relative grounds for refusal (Section 11):
 Similarity to existing trademarks: If a proposed trademark is too similar to an already
registered mark, and there is a likelihood of consumer confusion, it will be refused
registration.
 Consideration of goods and services: When evaluating similarity, the nature of goods
and services associated with the trademarks is taken into account.

Application process:

The Trade Marks Act of 1999 governs the registration of trademarks in India, providing legal
protection for distinctive signs associated with goods or services. The registration process
involves several key steps:
 1. Trademark Search: Before applying, conduct a comprehensive search to ensure your
proposed trademark is unique and not similar to existing registered trademarks. This step
helps avoid potential conflicts and objections during the registration process.
2. Filing the Application: Submit Form TM-A, either online or at the appropriate Trade
Marks Registry office, along with the required documents and fees. The application
should include details such as the applicant's name and address, a description of the
goods or services, and a clear representation of the trademark.
3. Examination: The Registrar examines the application to verify compliance with legal
requirements and to identify any conflicts with existing trademarks. If objections are
raised, an examination report is issued, and the applicant must respond within the
stipulated time frame to address the concerns.
4. Publication: Once accepted, the trademark is published in the Trade Marks Journal,
allowing the public to view it and raise any objections within a three-month period
(extendable by one month). This transparency ensures that any potential conflicts are
addressed before registration.
5. Opposition (if any): If opposition is filed by a third party, the applicant must respond
with a counter-statement. Both parties present evidence supporting their claims, and the
Registrar makes a decision based on the merits of the case.
6. Registration and Certification: If no opposition is filed, or if the opposition is resolved
in favor of the applicant, the trademark proceeds to registration. A registration certificate
is then issued, granting the owner exclusive rights to use the trademark concerning the
specified goods or services.

Ans 4.

The Madrid System, administered by the World Intellectual Property Organization (WIPO), is an
international mechanism that enables trademark owners to seek protection for their marks in
multiple countries through a single application. As of February 2023, the system encompasses
114 members, covering 130 countries, representing over 80% of world trade.

Benefits of the Madrid System:

 Convenience: Trademark owners can file a single international application in one

language and pay one set of fees in one currency to apply for protection in multiple
territories simultaneously. This centralized process simplifies the management of
international trademark portfolios.
 Cost-Effectiveness: The system reduces expenses by eliminating the need to file separate
applications in each country, thereby saving on translation costs and legal representation
fees in multiple jurisdictions.
 Flexibility: Trademark owners can expand their trademark protection to new markets by
designating additional member countries as their business grows, using the existing
international registration.
  Simplified Management: The Madrid System allows for centralized management of
trademarks, making it easier to renew registrations and record changes to the holder's
information across all designated countries through a single procedural step.

Ans 5.