Intellectual Property rights

Unit 4 IPR

Dr Kaushik Rajaram
“The test of an innovation,
after all, lies not in its novelty,
its scientific content or its
cleverness. It lies in its success
in the market place”
Peter F. Drucker
Syllabus
• Introduction to IPR: IPR, forms of IPR and
Intellectual property protection. Concept of
• property with respect to intellectual creativity,
Tangible and Intangible property. WTO: agency
• controlling trade among nations, WTO with
reference to biotechnological affairs, Trade
Related aspects of Ips (TRIPs). WIPO,
• European Patent Office(WPO).
Introduction to IPR
any original creation of the human intellect such as
creations of the mind:
Inventions,
Literary
Artistic works
Symbols
Names
Images
Designs used in commerce.
5
Significance of IPR

ØProvide incentive to the individual for new creations.

ØProviding due recognition to the creators and inventors.

ØEnsuring material reward for intellectual property.

ØEnsuring the availability of the genuine and original

products
 Importance of IPR

ØCreativity and innovation are the new drivers of the world economy.

ØDetermine the nations well being and further as to how it is

developing

ØIs a dynamic tool for wealth creation providing an incentive for

enterprises and individuals to create and innovate; and provide a

stable environment for domestic and foreign investment

ØIt is important for the knowledge based economy.

Types of Intellectual Property Rights

We come across the numerous things created, invented, discovered

and produced by some human mind.

It classified in two categories

a. Industrial Property rights

patents, trade marks, industrial designs, and geographic
indication of source
b. Copyright and related rights
articles, news-paper items, novels, story books, poetry books,
drawings, photographs, paintings, architectural design,
dance, music
 What is a Patent ?
It’s a contract between the inventor and the government

It is a right providing the inventor and/or the applicant to

prevent others from possessing, using, selling, manufacturing
and importing the patented invention or offering to do any of
these things within a definite geographical area and within a
time period.

Right to exclude others from using your invention.

Owner has a qualified right to use the invention
After a patent expires, it cannot be renewed; anyone may
then use the patented invention without the inventor ’s
permission
What is a Patent ?
Ø A conditional grant
Ø Balance of Rights and Obligations
Ø Subject to other laws of land
Ø Granted to owner of invention/assignee
(Recent judgments of HC and SC takes note of third party
interests in granting / refusing injunctions)
 Types of patents:

Utility patents
cover the useful or working features of an invention and are divided
into three categories
(a) mechanical; (b) chemical; and (c) electrical.

Ølonger expiration date

Ø a process (or act or series of steps performed on a subject which
transforms it);
Ø a machine (a structure which has moving parts);
Ø a manufacture (a tangible object made by man other than a
machine or composition of matter, such as a screwdriver)
Øa composition of matter (uniting two or more ingredients either
chemically or physically to produce a new compound
 Types of patents:
Design patents
Øcover the physical appearance or ornamental design of an
article of manufacture.

Øoffers less protection than a utility patent

Øonly the appearance of an article is covered, not the manner

of its manufacture or functioning.

Plant Patents
Øcover certain new and distinct, invented or discovered asexually
reproduced plants.
Ø exclude others from making, using, offering to sell, selling or
importing the plant for up to twenty years
What can be patented
Granted for any invention concerned with the functional and
technical aspects of products and processes. To qualify for
patent protection the invention must fulfill the so-called
conditions of patentability:

As per the patent act 1970

ØNovelty Must be New,
Must DISTINGUISH from “State of the Art”
ØInventive step (non-obviousness)
ØIndustrial Applicability (utility)
ØPatentable subject matter
Prior art
What is Prior Art?

Information that is available prior to the effective date of a patent application.

The effective date is typically the filing date of the patent application. Prior Art
includes any public document, for example published patents, technical
publications such as journal articles, conference papers, websites, available
products, marketing information

Importance of Prior Art searches

A Prior Art search relates to an organized review of prior art material available
from public sources and may be provided in the form of Patentability
searches
Patent examination searches
Validity searches
State-of-the-art searches
Prior Art searches may also be used to determine the value of a potential
investment
Importance of Prior Art searches
A patentability search prior to filing a patent:
May speed up the prosecution of a patent, as the claims
may be configured to take into account the prior art

May reduce overall costs by saving time, as potential

future hurdles may be avoided

May indicate where research and development

investments should be allocated if an unexplored field is
discovered
May indicate existing technology which could be
problematic from an infringement perspective. Take note
that an infringement analysis is a different type of search.
A patent examination search during the prosecution of a patent:
Done by an examiner to determine if the patent application may
be granted
Allows the examiner to comment on the novelty and
inventiveness of the patent application

A patent validity search after granting of a patent:

May be done by a party who wants to contest the validity of a
patent, or by a party who wishes to defend their patent
May indicate that a patent is valid, or that it was incorrectly
granted and should be revoked or could be saved by amendment
A state-of-the-art search:
May be done by a party wishing to assess a particular field before
venturing thereto
Can lay out a path for a party to design around existing technology
Indicates what art exists, and provides an opportunity to develop
around it

Before searching:
You must understand the invention before you start to search
If you do not fully understand the invention, you may think
non-relevant results to be relevant
If you do not fully understand the invention, you may base
your opinion of the invention on incorrect information
Patentability of an invention is determined with reference to
the claims Interpret the claims in light of the specification
Searching is not easy
The correct result is very seldom, if ever, immediately found
Many iterations may be required to obtain a suitable result
Searching is an art that is learned over time

How to search:
Search for defining concepts of the core of the invention
Identify the essential features of the invention
Think of different embodiments of the invention, other than
those described therein
Keyword searches:
Words used to describe the invention Example: “Solar water
heater”
Alter, change or add keywords if relevant results are not found:
“Solar geyser”
“Solar energy hot water heater” “Solar energy geyser
How to search:
When a relevant prior art document has been identified, look at
the prior art documents that was cited against it during its
prosecution, and at patent applications against which it was cited:
This may provide a significant number of prior art documents that
may be equally or more relevant

Remember than an entire patent specification is important for

patentability searches, not only the claims Everything that is
published is Prior Art
Patents and/or patent application may be published later, but
with an earlier priority date, and may be prior art although not yet
available
You can search for a specific inventor, or for a specific applicant

Where to search: National or international databases Free

access typically provided, as patents and patent applications are
Where to search:
Google Patents – [Link]/patents
A good place to start a search
Intelligent search algorithms provide relevant results
It typically takes 2 to 3 months for published patent applications to
appear, so some Prior Art may not be available
Originally only included US prior art, but other databases has been
added to some extent
Does not cover as many jurisdictions as others Limited field
combination possibilities Provides links to other major search
platform
Espacenet - [Link]
Database of published patents and patent application managed by
the European Patent Office Search algorithm not as intelligent
Includes Prior Art from most jurisdictions “Advanced” and “Simple”
search options Claims to provide access to over 90 million Prior Art
documents Many foreign language Prior Art documents with
machine-translated information
Where to search: WIPO -
[Link]/search/en/[Link] Database managed
by the World Intellectual Property Organisation Includes Prior
Art from most jurisdictions “Advanced” and “Simple” search
options Claims to provide access to over 49 million Prior Art
documents

USPTO - [Link]/netahtml/PTO/[Link]
Database managed by the United States Patent and Trademark
Office Only covers US patents and patent applications
Initially relatively complex to use, especially advanced searches
Example of search Light bulb fitting that can take both types of light bulbs Google
patents: “Light bulb fitting that can take both types of light bulbs” Result that appears
relevant - WO2005104304A1 Actually relates to a light bulb fitting which attaches to a
base via a magnet. It merely mentions that any type fitting may be provided with a
secondary bulb fitting, which attaches to the base via a magnet.

Example of search Light bulb fitting that can take both types of light bulbs Google
patents: “light bulb screw bayonet fitting” Third result - WO2008142624 Universal
lamp holder defining a cavity shaped to receive either a screw cap or a bayonet cap of a
lamp. At bottom of page, see “patent citations” List provided with other, older prior
art documents cited in relation to WO2008142624

While searching: Keep track of your search strategy Store your strategy for later
reference if further searching is necessary Report your search strategy to client as part of
your results if applicable If they can pick up a missed search term or keyword from your
strategy, they can instruct you to perform further searches As many searches may not
yield the required results, it may help your client to understand the time spent on the search
What not patentable

ØPrinted matter (e.g., business forms).

Ø Something naturally occurring in nature.
Ø A method of doing business.
Ø Scientific principles.
Ø A chemical compound having no utility.
What is not Patentable
(a) Frivolous, Contrary To Natural Laws
(b) Contrary To Public Order Or Morality, Prejudice
To Human, Animal Or Plant Life Or Health Or To
The Environment;
(c) Mere Discovery Of Scientific Principle,
Abstract Theory, Living Thing Or Non- living
Substances
(d) Mere Discovery Of New Form, New Property,
New Use Of A Known Process, Machine Or Apparatus
(EFFICACY)
 PATENTS ACT, 1970
What is not Patentable
Ø Mere Admixture (SYNERGY)
Ø Mere Arrangement, Re-arrangement,
Duplication of known devices.
Ø Omitted (Testing Methods)
ØMethod Of Agriculture Or Horticulture;
Ø Method Of Treatment.
Ø Plants, Animals, Including Seeds Varieties,
Species, Biological Processes.
Ø Exception: Microorganisms
What is not Patentable

ØMathematical Or Business Method Or A

Computer Program
ØAlgorithms;
Ø Literary, Dramatic, Musical Or Artistic
ØWork, Other Aesthetic Work
Ø Mere Scheme, Rule, Method Of
ØPerforming Mental Act, Playing Game;
Ø A Presentation Of Information;
ØTopography Of Integrated Circuits;
Ø Traditional Knowledge
When the patent should be filed ?

An inventor loses his or her right to patent their invention if

they fail to file a patent application within one year from the
first public (and non-experimental) use of the invention;

the first sale or offer for public sale of the invention

the first printed publication of the invention.

a patent was granted to the first to invent, not the first to file

a patent application*
Who Constitutes an Inventorship in a join venture

Invention by their aggregate efforts and contribution in a tangible

format.

Or by

According to their agreement if any.

Obtaining a patent

Application should be filled with the following at patent office

(1)drawings showing various views of the invention;

(2) a specification describing the invention in detail, including
statements as to what the inventor believes is new and
patentable
(3) one or more claims which define the subject matter of the
invention.

Then it will be examined in the Patent Office by a patent examiner

who is knowledgeable in the particular technology of the
invention. The examiner will conduct his or her own search of the
prior art. The process can take 18-24 months.
 Inventive Step
Section 2 (1):
"inventive step" means a feature of an invention
that involves technical advance as compared to
the existing knowledge or having economic
significance or both and that makes the invention
not obvious to a person skilled in the art.
 Indian Patents Act & Rules as
amended up-to-date have many
features which are currently being
adopted / adapted globally
Ø Ex: Sec 3(d) - Enhanced Efficacy essential for
inventiveness in new forms of already known
pharma substances. (Gleevec Case)
Ø Ex: Sec 3(e) - Synergy required in mere combinations.
(Decision of the Controller in application No.
IN/PCT/2002/00020/DEL)
Ø Ex: Sec 3(f) – Mere arrangement or rearrangement
(KSR v Teleflex)
Ø Ex: Sec 3(d) – Business Method, per se. (In Re Bilski)
 Patentability Filter
 Prior use/ prior publication/ prior disclosure
 Industrial applicability
 Novelty
 Non-obviousness- inventiveness
 Sec. 3- Not patentable
 Written description / enablement
requirements
 Application/ specification/ claims
 Patent prosecution
 Maintenance / Defense after grant
 PATENT GRANT PROCEDURE
Filing of patent application Prior art search

Early Publication Publication after 18 months

Request for examination

Pre Grant Opposition /
Representation by any person.

Examination: Grant or Refusal

Publication of Grant of patent

Post Grant Opposition to grant of patent

(Constitution of Opposition Board)

Decision By Controller
 INDIAN PATENT OFFICE PROCEDURES

v Inventor & Consumer friendly. (Balance of Rights & Obligations).

v Research & Regulatory Exemption during Patent Life (Sec 47(3),

Sec. 107A(a)).
v Four Patent Offices in four regions (Unique to India).
v IAS - Senior Techno-legal officer appointed as CG.

v Patent Office procedures revamped, revitalized, digitalized and

made transparent.

v Out of box solutions being implemented to expedite office actions.

v India becoming ISA / IPEA.
• Process Patent – Largely used to defend against
Sec. 104A (reversal of burden of Proof)

• Composition (FDC) Patents – India has the best experience

globally; NDDS substantially
(Fixed Dose Combination) driven by DPCO / NPPA
comparisons.

• Herbal Patents –
High Potential; negatively impacted by
(Natural product impractical NBA (CBD - BA)
based) (Benefit Sharing)

• Plant Varieties – High Potential (PVPFA).

NCE/NME Drug Discovery Patents

 TRIPS PLUS –
TOUGHER PATENTABILITY
(Balance against unfair monopoly)
1. Inventive Step & Sec 3

2. Pre & Post grant opposition

3. Revocation through IPAB

4. Counter-claim for revocation in an infringement suit.

 OBLIGATION/EXEMPTIONS
RIGHTS ØDisclosure of the invention
Ø Exclusive right to make, use, ØExemption for research,
sell or import the patented experimentation, imparting
invention. instructions to pupils.
Ø Exclude others from ØUse of Inventions for Government’s
unauthorized use of the own purposes or for public services.
patented invention. ØAcquisition of Inventions by Central
Ø Grant licenses, Assign rights or Government.
enter into agreements. ØCompulsory License / 3rd Party use.
Ø To sue others for infringement. ØProhibit or Restriction of
Ø To surrender patent rights. publication of patent information
considered relevant for defense
purposes.
CBD
CONVENTION ON BIODIVERSITY

TRADITIONAL KNOWLEDGE
UPOV
Plant Varieties Protection Act (Art 27.3b)

Data Exclusivity (Art 39.3)

 DESIGNS
Ø Indian Designs Act, 2000 & Rule, 2001 (amended
upto 2008).
Ø To promote and protect the design element of
industrial production.
Ø Aimed to enact a detailed classification of design to
conform to the international system and
Ø To take care of the proliferation of design related
activities in various fields.
 INDUSTRIAL DESIGNS
Ø Must appeal to the eye
TRIPS
Part – II, Ø Ornamental or Aesthetic aspect of an
article.
Sec.4
Art. 25 & 26 Ø 3-D or 2-D features such as shape or
surface, patterns, lines or color.
Ø Industrial designs are applied to products
of industry and handicraft, technical and
medical instruments, watches, jewelry,
house wares, electrical appliances, luxury
items, vehicles, architectural structures,
textile designs.
Ø Does not protect any technical features of
the article to which it is applied to.
Double Syringe
 DESIGN PATENT
Title: A Dispensing Device for Bioassay Method
1. Design No. 196748 dated 12th August 2004

2. Design No. 196749 dated 12th August 2004

Patentees – Khale Sangeeta Shailesh and
Khale Ashok Shamrao
 Copy right
• Copyright is a legal term describing rights given to creators
for their literary and artistic works
• is a protection from unauthorized copying or performance
given to the authors of original works of authorship.

three statutory categories:

(a) literary works (including computer programs)
(b) pictorial, graphic and sculptural works
(c) motion pictures and other audiovisual works.
Copyrightable subject matter

Expressed materials

Printed books
songs, including the musical composition, the lyrics and
recorded performance movies (but not their titles) books
(but not their titles)
Games
photographs
patterns on fabrics
labels on products.
 Original Works of Authorship
• product of original, creative
• Need not to be novel
• any computer software program that is more
than a few instructions in length with some
creativeness
 IPR And Copyright
Quoting Medical References from Journals and Books

Ø Avoid verbatim reproduction - Likely to cause

Copyright violations.
Ø Always acknowledge / obtain prior permission.
Ø Abstract / Summary may be written in one’s own
language / quote the source.

Copyright violations could lead to

criminal/civil suits
Could lead to imprisonment too !
 What can not be copyrighted
• Unrecorded form of expression (speeches, performances)
• Titles of books or magazines
• Names, short phrases, slogans, colorings or mere listings
of ingredients or contents
• Ideas, themes, procedures, methods of operation,
systems, processes, concepts.
• principles or discoveries
• common property and containing no original authorship
(standard calendars, tape measures, telephone
directories, report forms, order forms, tables taken from
public documents)
 In case of Computer Programs
• Source code, Object code and microcode recorded on tape
disks, roms, USBs, CDs

• Written instructional materials, books used for software

programming
 COPYRIGHT - EXTENSION
IT Revolution !
Recordings
Broadcastings
Audio visual works
Computer programs
Digital databases
Internet/web
Cable and Satellite T.V.

Copyright Amendment Bill, 2010

Amitabh Bachchan to copyright his voice!

 Idea vs. Expression of the Idea
• Copyright protects only the expression of an
idea, not the idea itself.
• Ideas should be patented with the results
proving that works
• patentable invention or a trade secret can not
be
 Revised Works
• Derivative computer programs
• Augmented, modified works of previously
copyrighted can go for new copyright
 Rights of a Copyright Owner
• to reproduce the copyrighted work
• to prepare new versions (or derivative works) based
upon the copyrighted work
• to publicly distribute copies of the copyrighted work;
• to perform the copyrighted work publicly in the case
of literary, musical, dramatic and choreographic
pantomimes, motion pictures and other audio visual
works
• to display the work publicly. Under this right, an artist
can control the manner in which a gallery, museum or
individual displays their work.
 Violations of copyright
• copyright infringement with resultant
injunctive relief, damages and possibly
attorney’s fees, may be jail term

“Copyright” / “All rights reserved”

“Do not use, reprint, reproduce or distribute
without prior permission”
 Who can claim the copyright
• Only the author or those deriving rights
through the author can claim copyright.
• Co-authors own co-ownership
• In case of hired employees, the employer has
the copyright ownership unless written
agreement given for co-ownership
What is a trademark (TM)?
It is a sign, or a combination of signs, used in the trade to identify
and distinguish the goods or services of one enterprise from those
of another.

A trademark owner is granted exclusive rights to use the mark in

relation to the good or services with respect to which it is
registered and to prevent others from using a substantially
identical or deceptively similar mark in relation to the goods or
services registered by the mark.

Words, letters, numerals, pictures, shapes and colours, as well as

any combination of the above.

It is now allowed for the registration of less traditional forms of

trademark, such as three-dimensional signs (like the Coca-Cola
bottle), audible signs (sounds, Nokia jingle), or olfactory signs
(smells, such as perfumes)
 TRADEMARKS

TRIPS Word Mark

Part – II, Sec.2
Device Marks
Art. 15 to 21
(Signs, Symbols, Logos)
Collective Marks
Certification Marks
Service Marks
 Trademarks
• An identification or symbol used in the trade
• Distinguish from other makers of similar goods
Ex: KODAK,IBM
Logo quiz
 TRADEMARKS
Ø Must be graphically represented
Ø Must be distinctive / distinguishable
Ø Must not be descriptive
Ø Must not be deceptively similar to known /
well-known marks /Generics

Avoid –
Geographical Indications / Deities
National Leaders / Heroes / Symbols / Laudatory
words
 RECENT TRADEMARK CASE
4th May, 2010
Application seeking use of Gandhiji’s image on
Montblanc pens rejected

Solicitor general Gopal

Subramaniam assured the Bench
headed by Chief Justice K G
Balakrishnan that the Centre has
refused permission to Mont Blanc
for use Gandhi's image on their pens
on the ground that use of word or
picture of Mahatma Gandhi being
a national emblem cannot be used
for commercial purpose.
 Trade Secrets(Knowhow)
• Is the private proprietary information that benefits the owner such as
formula, practice, process, design, instrument, pattern, commercial
method
• It may be any type from process to product yield
Ex: CocaCola for its formula

In biotechnology:
Hybridization conditions
cell lines
processing
designing
consumer’s list
sales methods, distribution methods, consumer profiles, advertising
strategies, lists of suppliers and clients, and manufacturing processes.
 Trade Secrets (Knowhow)
• Unauthourized users punished by the court
Payment of a royalty to the owner
damages
court costs, and reasonable attorneys' fees
Geographical indications in IPR
What is a geographical indication?
• A product’s quality, reputation or other characteristics can be determined by
where it comes from. Geographical indications are place names (in some
countries also words associated with a place) used to identify products that
come from these places and have these characteristics
• As a member of the World Trade Organisation, India brought into effect the
Geographical Indication of Goods Act in 1999
• A geographical indication (GI) is a sign used on products that have a specific
geographical origin and possess qualities or a reputation that are due to that
origin.
• TRIPS defines GI as any indication that identifies a product as originating from a
particular place, where a given quality, reputation or other characteristics of
the product are essentially attributable to its geographical origin.
• In order to function as a GI, a sign must identify a product as originating in a
given place.
• In addition, the qualities, characteristics or reputation of the product should
be essentially due to the place of origin.
 GI
• Since the qualities depend on the geographical place of
production, there is a clear link between the product and
its original place of production.
• Also a geographical indication (GI) gives exclusive right to a
region (town, province or country) to use a name for a
product with certain characteristics that corresponds to their
specific location.
• The Geographical Indications of Goods (Registration and
Protection) Act, 1999 protect the GI’s in India. Registration of
GI is not compulsory in India. If registered, it will afford better
legal protection to facilitate an action for infringement.
S.N State Products of GI
o
1 Kerala Aranmula Kannadi, Palakkadan Matta Rice, Balaramapuram Saris and Fine Cotton
Fabrics
2 Tamil Nadu Kancheepuram Silk, Coimbatore Wet Grinder, Thanjavur Paintings, Temple Jewellery
of Nagercoil, Madurai malli
3 Puducherry Villianur Terracotta Works
4 Andhra ochampalli Ikat, Kondapalli Bommallu, Tirupathi Laddu
Pradesh
5 Karnataka Channapatna Toys & Dolls, Mysore Sandal Soap, Mysore Jasmine
6 Jammu and Pashmina, Hand-Knotted Carpet, Papier Mache, Walnut Wood Carving
Kashmir
8
7 Bihar
West Bengal Madhubani Paintings,
Darjeeling Tea, Bhagalpur
Santiniketan, Silk,Goods,
Leather Sikki Grass Work of
Khirsapati Bihar
(Himsagar), Mango
9 Rajasthan Blue Pottery of Jaipur, Kathputlis, Sanganeri Hand-Block Printing
10 Telangana Silver Filigree of Karimnagar, Hyderabad Haleem, Narayanpet, Handloom Sarees

India has a total of 300+ GI products

 What rights GI Provide
• A GI right enables those who have the right to use the indication to
prevent its use by a third party whose product does not conform to
the applicable standards.
• For example, in the jurisdictions in which the Darjeeling
geographical indication is protected, producers of Darjeeling tea can
exclude use of the term “Darjeeling” for tea not grown in their tea
gardens or not produced according to the standards set out in the
code of practice for the geographical indication.
• However, a protected geographical indication does not enable the
holder to prevent someone from making a product using the same
techniques as those set out in the standards for that indication.
• Protection for a geographical indication is usually obtained by
acquiring a right over the sign that constitutes the indication.
 Products claimed under GI
Geographical indications are typically used for
• agricultural products
• foodstuffs
• wine and spirit drinks
• handicrafts
• industrial products
given its commercial potential, legal protection of GI assumes
enormous significance. Without suitable legal protection, the
competitors who do not have any legitimate rights on the GI might ride
free on its reputation.
Such unfair business practices result in loss of revenue for the genuine
right-holders of the GI and also misleads consumers. Moreover, such
practices may eventually hamper the goodwill and reputation
associated with the GI.
 How GI can protected
• There are three main ways to protect a GI
• Article 22 which defines a standard level of protection. This says
geographical indications have to be protected in order to avoid
misleading the public and to prevent unfair competition.
• Article 23 provides a higher or enhanced level of protection for
geographical indications for wines and spirits: subject to a number
of exceptions, they have to be protected even if misuse would not
cause the public to be misled.
• Sui generis (in Latin - of its own kind) systems (i.e. special regimes
of protection);
• using collective or certification mark
• methods focusing on business practices, including administrative
product approval schemes.
 Exceptions
• Article 24: In some cases, geographical
indications do not have to be protected or the
protection can be limited.
• Among the exceptions that the agreement allows
are: when a name has become the common (or
“generic”) term (for example, “cheddar” now
refers to a particular type of cheese not
necessarily made in Cheddar, in the UK), and
when a term has already been registered as a
trademark.
 GI tags on products from other
countries
• Scotch Whisky-Scotland
Champagne Cognac -France
Prosciutto di Parma (cheese),Parmigiano-
Reggiano (cheese),Prosecco (Wine)-ITALY
Porto (Wine),Douro (Wine)-Portugal
Napa Valley (Wine)-US
Tequila Pisco (brandy)-Peru
 Novelty in IPR
• An invention must be novel (new), useful, and non-obvious
in order to be granted a patent.
• The invention can't be prior art, which includes anything
found in printed media or described in a patent application.
If the invention is deemed prior art, the submitted patent
cannot be protected.
• In the U.S. (a "relative novelty" country), there is a grace
period of up to one year from the original date of public
disclosure. That means even after you publish or begin
selling your invention, you have one year to file for a patent.
• If filing for a patent, this one-year period is not part of the
novelty consideration, and novel status still applies.
 Novelty
• If you plan to file in other countries, keep your idea under wraps. In
most European and Asian countries ("absolute novelty" countries),
there is no grace period.
• However, European countries do have an exception that allows you
to receive a patent if the public disclosure was made without your
consent.
• In that case, you have a grace period of six months in which to file.
• Japan is also an absolute novelty country, but an exception has
recently been added to patent law.
• This allows you to file a patent application within six months of an
invention being published in printed form or through any form of
electronic communication.
•
Why Is Novelty Important to a Patent?

• Because a patent gives a person the legal right to an

invention, patent protection is necessary for an inventor.
• Without patent protection, competitors can take the idea and
make it their own. When this happens, there's no legal action an
inventor can take.
• To maintain a novel status and not fall under prior art, an idea
must:
• Not be shown to any third party, including friends and family.
• Remain out of media, including journals, magazines, websites, etc.
• Not be considered common knowledge to experts in the field.
• Not have gone on sale prior to the patent filing.
• Not have been built by a person that abandoned or concealed the
idea.
• There are still some loopholes when meeting the novelty
standard, and each case is reviewed by the U.S. / countries
Patent Office.
• Before applying for a patent, find out if there's prior art
similar to your invention. If so, be prepared to explain how
your invention is new and different enough for a patent.
• may also consider a provisional patent, which is a quick and
fairly inexpensive way to start the patent process, making it
easier for the inventor to file ahead of competitors.
• As a general rule, inventors should always submit their idea
as soon as possible, so their patent will not be dismissed
based on novelty.
 Obviousness in Deciding Novelty
• Closely related to the novelty is obviousness. To receive a patent, an
invention cannot be obvious to either a professional in the industry or
non-experts.
• Obviousness isn't always easily figured, and many inventors
unknowingly void their idea.
• Printed hints and suggestions that allow others to easily reach the
same idea can make the invention obvious.
• For instance, an article may explain a specific problem and propose,
in general terms, a solution. If your invention fits that description, it
will be considered obvious — especially if the publication is one that
others in your field are likely to read.
• Your case is stronger if your invention combines ideas from multiple
publications. However, a patent application may still be rejected if the
various sources reference one another or are obviously linked in
some way.
• Foreign patents are also part the prior art and obvious
considerations. In one particular case, a surgical company took
many of the ideas of a Japanese bipolar surgical instrument and
made their own product.
• Because of the similarities to the original idea, the patent was
voided. Further reviews and legal action did not change the ruling.
• To make matters more difficult, an invention can be both obvious
and novel.
• One example cites an inventor who described a system for cleaning
the manure from a barn without manual labor using a water tank,
flushing system, and sloping floor.
• While the idea had never been patented, the Supreme Court ruled
that a water tank and sloping floor were obvious inventions, and
the patent application was rejected.
 Usefulness and Novelty

• Another obstacle to satisfying the novelty portion of a

patent deals with usefulness.
• Very simply, this principle separates the practical from
the abstract or aesthetic.
• A perpetual motion machine, for instance, has no
practical use and is therefore ineligible for a patent.
• However, something that has useful results in any type
of industry, including farming, falls under a novel idea
and could be patentable.
• In other countries, usefulness is often described as
"industrial application."
 Anticipation and Novelty

• Anticipation (taking an idea one step beyond the

obvious) is another pitfall for potential patents.
• If an earlier invention is a pre-cursor to a more
recent idea and it's generally proven that the new
invention was the next step in product evolution,
it's not a novel idea.
• However, two separate ideas that are combined
to form a new product could be a novel idea,
making the invention patentable.
 The Supreme Court and Novelty
The Supreme Court has repeatedly stated that these ideas aren't novel or
useful, and as a result, aren't patentable:
• Abstract Ideas
• Products resulting from natural phenomena
• Laws of Nature

Anything falling under those three topics cannot receive a patent. However,
these four categories are patentable:

• Compositions of Matter
• Articles of Manufacture
• Processes
• Machines
• This list intentionally covers almost anything man-made. Where other
countries might disqualify an entire category of invention, such as
software, the broadness of U.S. patent law encourages innovation in
every field.
 Foreign and Domestic Novelty
Considerations
• As in the case study involving the Japanese surgical tool, it's
important to take note of both foreign and domestic novelty
considerations. Cases that destroy the novelty aspect include:
• If the idea or invention was described in any patent throughout the
world more than a year ago
• If the idea or invention was in print media anywhere in the world
over 12 months ago
• If the invention was for sale in the U.S. for over a year
• If the invention was in use in the U.S. for more than 12 months
• In the U.S., patents are granted on a first-come, first-serve basis. To
be granted a patent for an invention, you must be the first person to
apply for it.
 Common Mistakes

• Some inventors make terrible errors that end up

making their invention or idea unpatentable. To
avoid ruining a patent, inventors should:
• Never print, discuss, or show their idea or
invention without first filing a patent.
• Investigate prior art before filing their patent.
• Avoid abandoning an idea on the basis of prior
art (changing parts that aren't obvious may still
qualify the invention as novel).
 Steps to File novelty
• If you think your idea or invention is novel, filing a patent to protect your work is the
next step. First, you have to decide which type of patent your invention falls under:
• Utility
• Design
• Software
• Plant
• Then, choose the correct type of patent:
• Provisional Patent
• Non-Provisional Patent
• International Patent
• Before submitting your patent application, you may want to hire an attorney to
do the paperwork. The patent will then be reviewed by a patent office to
determine whether you will get a patent on your product.
• In USA If you need help with establishing novelty in your patent application, you
can post your question or concern on UpCounsel's marketplace.
• UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on
UpCounsel come from law schools such as Harvard Law and Yale Law and average
14 years of legal experience, including work with or on behalf of companies like
Google, Stripe, and Twilio.
Properties are of two types
Tangible property :

physically present

Building, land, house, cash, jewellery are few examples of tangible

properties which can be seen and felt physically

things that can be felt or touched

Ex: automobiles, furniture, jewelry, computers, machinery, art

objects, rugs, dishes, curtains, household appliances and tools
Intangible property:
not in any physical form
Intangible property exists only as an intellectual concept

valuable property that cannot be felt physically as it does not have a

physical form.

Intellectual property is one of the forms of intangible property which

commands a material value which can also be higher than the value
of a tangible asset or property

nonmaterial things such as copyrights, patents, computer software,

franchises, bank accounts, stocks, bonds, trademarks, brand names,
accounts receivable, customer lists, trade secrets or business
licenses.
Differences of Tangible and Intangible
properties
Trade in India
History of patent in India
History of copyright in India
ØEast India Company's regime introduced copyright laws in India
by 1847.

ØIt was under preparation even in UK by then

ØIn 1914, the then Indian legislature enacted a new Copyright Act
which merely extended most portions of the United Kingdom
Copyright Act of 1911 to India.

ØThe 1914 Act was continued with minor adaptations and

modifications till the 1957 Act was brought into force on 24th
January, 1958.
World Trade Organization (WTO)
ØIs the only global international organization dealing with the rules
of trade between nations.
ØIt is an organization for trade opening. It is a forum for
governments to negotiate trade agreements.
ØIt is a place for them to settle trade disputes.
Ø It operates a system of trade rules.
Ø Essentially, the WTO is a place where member governments try to
sort out the trade problems they face with each other.
ØThe goal is to help producers of goods and services, exporters, and
importers conduct their business.
Trade-Related Aspects of Intellectual Property
Rights (TRIPS)
ØIs an international legal agreement between all the member
nations of the WTO
ØTRIPs provide minimum standards in the form of common set of
rules for the protection of intellectual property globally under WTO
system.
ØThe TRIPs agreement gives set of provisions deals with domestic
procedures and remedies for the enforcement of intellectual
property rights.
ØMember countries have to prepare necessary national laws to
implement the TRIPs provisions.
ØTRIPs cover eight areas for IPRs legislation including patent,
copyright and geographical indications.
WIPO: World Intellectual Property Organization
Mission:
WIPO promotes innovation and creativity for the social, economic
and cultural development of all countries, through a balanced and
effective intellectual property system
It’s an UN agency and head quartered in Geneva, Swiss
Consisting 180 member states.

Main activities of WIPO are

(i) Ensuring the progressive development of international
intellectual property law;
(ii) Assistance to developing countries to build intellectual property
capacity at national and regional levels and encourage more
effective use of IP as a tool for economic development
(iii) services to industry and the private sector to facilitate the
process of obtaining intellectual property protection in multiple
countries.
Patent Cooperation Treaty (PCT) – The
International Patent System
ØIt assists applicants in seeking patent protection internationally
for their inventions

ØIt also helps patent Offices with their patent granting decisions,
and facilitates public access to a wealth of technical information
relating to those inventions.

ØBy filing one international patent application under the PCT,

applicants can simultaneously seek protection for an invention
in many countries (180 countries).
Four different categories

Filing a provisional patent application

Filing a complete patent application in your country
Filing a patent application in a foreign country
Filing a Patent Cooperation Treaty (PCT) application
Filing patent in India
The inventor, his assignee or legal representative of diseased
person (assigned) can only apply for patents at the HO of the
Indian Patent office/ branches in their jurisdiction

One application for one invention allowed

if group of inventions which are linked to each other by a single

inventive concept can be allowed

Specification and claims should be mentioned

Other related documents should be enclosed such as

declaration of inventorship
statement and undertaking
proof of right to make an application
the authorization of an agent
Patent filing options
can be defined as a process of submitting an application in a
patent office requesting grant of patent to your invention.

For other countries submit a patent application in their country

offices

By understanding the various Patent filing options, you can

construct a patent filing strategy based on your business
objectives and economic constraints.

most important factor in filing a patent application is preparing a

patent specification

Drafting a patent specification is a highly skilled job, which can be

only preformed by persons who have both technical as well as
patent law expertise.
Flow chart on Patent filing
Documents needed for patent filing

ØApplication form in duplicate (Form 1).

ØProvisional or complete specification in duplicate. If the provisional
specification is filed, it must be followed by the complete specification
within 12 months.(Form 2).
ØDrawing in duplicate (if necessary).
ØAbstract of the invention in duplicate.
ØInformation & undertaking listing the number, filing date & current
status of each foreign patent application in duplicate (Form 3).
Documents needed for patent filing

ØPriority document (if priority date is claimed) in convention

application, when directed by the Controller
ØDeclaration of inventor-ship where provisional specification is
followed by complete specification or in case of convention/PCT
national phase application (Form 5).
ØPower of attorney (if filed through Patent Agent).
ØFees (to be paid in cash/by cheque/by demand draft)
Timeline for patent application
Cost for filling a patent in India
Duration of Intellectual Property Rights
ØTerm of every patent will be 20 years from the date of filing
of patent application, irrespective of whether it is filed with
provisional or complete specification.

ØDate of patent is the date on which the application for

patent is filed.

ØTerm of every trademark registration is 10 years from the

date of making of the application which is deemed to be the
date of registration.

ØCopyright generally lasts for a period of sixty years.

Duration of Intellectual Property Rights

ØThe registration of a geographical indication is valid for a period

of 10 years.

ØThe duration of registration of Chip Layout Design is for a period

of 10 years counted from the date of filing an application for
registration or from the date of first commercial exploitation
anywhere in India or in any convention country or country
specified by Government of India whichever is earlier.

ØThe duration of protection of registered varieties is different for

different crops namely 18 years for trees and vines, 15 years for
other crops and extant varieties.
Initiatives of Government of India towards
protection of IPR

ØA Handbook o f C o py ri g ht L aw : to c re ate awa re ne s s to

stakeholders, enforcement agencies, professional users like the
researchers and public.

ØTrainings and workshops for the academicians, police, customs

and excise officers, industrial representatives

ØSpecial cells for copyright enforcement In all the states and union
territories
ØIntellectual property laws vary from jurisdiction to jurisdiction,
such that the acquisition, registration or enforcement of IP rights
must be pursued or obtained separately in each territory of interest.
 Foreign patents from India
• Different countries having regard to National Security
Considerations and with the intent of having a check on the defence
and atomic energy related inventions, have different restrictions in
place.
• While some countries make it mandatory to file Patent Applications
in their country before applying in any other country, some
countries require only prior permission before applying in other
countries.

• While filing Patent application outside India for the invention

conceived by Indian resident, it is not compulsory to first file Patent
Application in India.
• However, it's important to note that if Patent Application is not to
be first filed in India, written permission is to be sought in form
25 from the Indian Patent Office.
 Foreign patents from India
• It's also important that mandate of seeking permission
for foreign filing remains there even after filing Indian
application for six weeks.
• Attention of the readers is also sought to the language
of the governing section (reproduced below) of the
Patent Act, 1970 which uses the word 'resident' and
not the citizen.
• Therefore if the invention has been conceived by
citizen/national of any country while he was residing in
India, section 39 has to be complied with before
applying for foreign Patent Applications
 Fee structures
• Official fee for form 25 is as follows:
• Natural person(s) and/ or Startup:
• E-filing- 1600
• Physical filing: 1750
• Small entity, alone or with natural person(s) and/ or Startup:
• E-filing- 4000
• Physical filing: 4400
• Others, alone or with natural person(s) and/ or Startup and/ or
small entity
• E-filing- 8000
• Physical filing: 8800
• Regarding timeline, Indian Patent Office has to dispose of such
request within 21 days of receipt of such request.
• However, this timeline changes for the inventions related to defence
or atomic energy, where the period of twenty-one days starts from
the date of receipt of consent from the Central Government
 Section 39.
• Residents not to apply for patents outside India without prior permission.

No person resident in India shall, except under the authority of a written permit
sought in the manner prescribed and granted by or on behalf of the Controller,
make or cause to be made any application outside India for the grant of a patent
for an invention unless—
• (a) an application for a patent for the same invention has been made in India,
not less than six weeks before the application outside India; and
• (b) either no direction has been given under sub-section (1) of section 35 in
relation to the application in India, or all such directions have been revoked.
• The Controller shall dispose of every such application within such period as
may be prescribed: Provided that if the invention is relevant for defence
purpose or atomic energy, the Controller shall not grant permit without the
prior consent of the Central Government.
• This section shall not apply in relation to an invention for which an
application for protection has first been filed in a country outside India by a
person resident outside India.
 Rule 71
• Permission for making patent application outside India
under section 39.—
• (1) The request for permission for making patent
application outside India shall be made in Form 25.
• (2) The Controller shall dispose of the request made
under sub-rule (1) within a period of twenty-one days
from the date of filing of such request:

Provided that in case of inventions relating to defence or

atomic energy, the period of twenty-one days shall be
counted from the date of receipt of consent from the
Central Government.
 Section 40:

• Liability for disobeying of section 35 or section 39

• Without bias to the provisions contained in Chapter XX,
if in respect of an application for a patent any person
breaches any direction as to secrecy given by the
Controller under section 35 or makes or causes to be
made an application for grant of a patent outside India
in contravention of section 39 the application for
patent under this Act shall be deemed to have been
abandoned and the patent granted, if any, shall be
liable to be revoked under section 64.
 Section 118
• breaching of secrecy provisions relating to
certain inventions.
• If any person fails to comply with any direction
given under section 35 or makes or causes to
be made an application for the grant of a
patent in contravention of section 39 he shall
be punishable with imprisonment for a' term
which may extend to two years, or with fine,
or with both.
Revocation/surrender of patents
Grounds for revocation of patents
Grounds for revocation of patents
 IN CASES RELATING TO ATOMIC
ENERGY. —
• 1) Where at any time after grant of a patent, the Central
Government is satisfied that a patent is for an invention
relating to atomic energy for which no patent can be
granted under sub-section (1) of section 20 of the Atomic
Energy Act, 1962 (33 of 1962), it may direct the Controller
to revoke the patent, and thereupon the Controller, after
giving notice, to the patentee and every other person
whose name has been entered in the register as having an
interest in the patent, and after giving them an opportunity
of being heard, may revoke the patent.
• (2)In any proceedings under sub-section (1), the Controller
may allow the patentee to amend the complete
specification in such manner as he considers necessary
instead of revoking the patent.
 REVOCATION OF PATENT IN
PUBLIC INTEREST

• Where the Central Government is of opinion

that a patent or the mode in which it is
exercised is mischievous to the State or
generally prejudicial to the public, it may, after
giving the patentee an opportunity to be heard,
make a declaration to that effect in the Official
Gazette and thereupon the patent shall be
deemed to be revoked.
 Patent Infringement
• There is no government “patent police” station where an infringement
complaint can be filed and the infringer brought to justice. Infringement is a
civil matter, and is adjudicated in a court of law.
• Infringement Defenses
• If it comes to that, i.e., an infringement lawsuit is filed, the alleged infringer
(the defendant) will certainly assert one or more defenses. (If the defendant
lacks at least some basis for defense, the matter will likely be settled out of
court, and never reach a judge or jury.)
• The common defenses against an infringement complaint are non-
infringement, invalidity, and unenforceability.
• In asserting these defenses, the basic arguments typically used are as
follows: infringement is not occurring, the patent is invalid because it does
not meet the statutory requirements for patentability, and the patent is
unenforceable due to inequitable conduct by a party involved in preparation
or prosecution of the patent application.
• Of course, there are many specific aspects in asserting these defenses; a
discussion of those is better left to a future column.
 The Patent Misuse Defense

• An additional affirmative defense is patent misuse. In arguing patent misuse, the

defendant must show that a patentee has broadened the scope or term of the
asserted patent in a manner that harms competition.
• Broadening the scope of a patent would be an act where the patentee asserts the
patent to extend beyond what it would otherwise cover.
• Broadening the term of the patent would include the patentee asserting
protection of the patent or demanding some other benefit beyond the expiration
date of the patent.
• More specifically, the following acts have been found by the courts to be patent
misuse by a patentee:
• Requiring a licensee of a patent to buy other products as a condition of obtaining
the license.
• Attempting to collect royalties on a patent license after the patent has expired.
• Demanding that a licensee pay a portion of revenue from the sale of products not
covered by the licensed patent, as well as from the sale of those products covered
by the patent.
• Filing a patent infringement lawsuit that is objectively baseless, i.e. a suit that
could not reasonably be expected to be successful on the merits.