UNIT 1

IPR-I

1) What is IP? Explain the laws relating to those properties in India?

INTRODUCTION
Intellectual property (IP) refers to the creations of the human mind that have or
could potentially have a commercial value. These creations can take many forms
and can serve as an intangible yet financially viable asset for their owners,
individuals and businesses alike. To provide legal protection to these creations,
we have various IP laws in India, which allow the owners to control how their
intellectual properties could be used, who could access it, and how it can be
monetized. This legal protection can come in a lot of ways, depending upon the
type of intellectual property involved.
India has laws covering various areas of intellectual property as enumerated
herein below:

 Trade Marks
 Patents
 Copyrights and Related Rights
 Industrial Designs
 Geographical Indications
 Layout Designs of Integrated Circuits
 Plant Varieties
 Information Technology and Cyber crimes
 Data Protection

Broadly, the following acts deal with the protection of intellectual property:

1. Trade Marks Act, 1999

2. The Patents Act, 1970 (as amended in 2005)
3. The Copyright Act, 1957
4. The Designs Act, 2000
5. The Geographical Indications of Goods (Registration and Protection) Act,
1999
6. The Semiconductor Integrated Circuits Layout Design Act, 2000
7. The Protection of Plant Varieties and Farmers' Right Act, 200

The Trade Marks Act, 1999 (“Trademarks Act”)

The Trade Marks Act, under section 2(zb) defines a ‘trade mark’ as ‘a mark
capable of being represented graphically and which is capable of distinguishing
the goods or services of one person from those of others and may include shape

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of goods, their packaging and combination of colours…’. In simpler words, a
trademark provides protection for symbols, colours, shapes, words, etc.
representing and relating to a good or a service.

Interestingly, a trademark application need not be filed in respect of marks which

are in use (but can also be filed in respect of marks which are intended to be used
in the future). The primary requirements for registration of a trademark includes
that it should consist of a mark capable of distinguishing the goods/services from
those of others and that it is capable of graphical representation.

The Trade Marks Act provides for absolute grounds of refusal of registration such
as –

 the mark not having a distinctive character;

 a mark being deceptive and confusing to the public;
 if a mark is hurtful to religious sentiments;
 the mark is offensive, scandalous, or obscure, etc. In addition to the
absolute grounds of refusal, the statute also provides for relative grounds
of refusal of registration (viz. similarity with pre-existing marks).

Further, India is a signatory to the Madrid Protocol under which a trademark can
be applied for and registered internationally. However, the prerequisite for filing
and registering an international application (under the Madrid Protocol) in a
foreign jurisdiction is that the mark needs to be first filed in India.

A protection afforded from a trademark registration is imperative as it protects the

brand name, logo, sound, shape, etc., and distinctively identifies the
goods/services to the brand bringing uniqueness to the mark. Also, the validity of
a trademark registration is for an initial period of 10 (ten) years which can
renewed perpetually for successive period of 10 years (subject to timely filing of
renewal applications).

The Patents Act, 1970 (“Patents Act”)

A ‘Patent’ is an intellectual property right which protects any new invention. It is
an exclusive right that protects the rights of the inventor and prevents other
people to unauthorizedly use and misappropriate the registered patent.
A patent is granted for a term of 20 (twenty) years from the date of filling of the
application. It is important to note that patent for a new invention is registered
only if the invention is ‘novel’ and ‘original’ i.e. it has not been introduced in the
public domain in India or anywhere in the world; is ‘capable of industrial
application’ which refers to the ability of the invention to be used in an industry;
and is an invention that requires to employ a process of ‘inventive steps’, which is
defined as ‘a feature of an invention that involves technical advance as compared

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to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art’, under the Patents
Act.
The Patents Act bestows each inventor, whose patent has been registered, with
certain rights, namely:

 with respect to a patent for a product, the right to prevent third parties
form using, selling, making, importing, etc. the product without prior
consent; and
 with respect to a process for which a patent is obtained, the right to
prevent third parties from using, selling, offering, etc. a product obtained
from that process, without the prior consent of the original inventor.

Further, India is a signatory to the Patent Cooperation Treaty (PCT) which

permits an applicant to file an application for registration of an international
patent. Upon filing such application, an inventor can obtain patent protection in
multiple countries (members of PCT), simultaneously.
The Copyrights Act, 1957 (“Copyright Act”)
Copyright protects the expression of an idea rather than the idea itself. Under
section 13 of the Copyright Act, a protection under copyright can be obtained for
‘original literary, dramatic, musical and artistic works; cinematograph films; and
sound recording’. Interestingly, a copyright protection can also be obtained for
computer programmes. A copyright is an ‘exclusive right’ that is granted to a
person to do or authorize to carry out certain activities with regards the
copyrighted work. For eg: in case of a literary, dramatic or musical work, the
owner (or any person authorized by the owner) is permitted to perform the work;
make translation(s) of such work; make adaptations of the work, etc.
The Copyright Act, under section 17, clearly states that the author of the original
work (for which protection under copyright has been obtained) shall be the first
owner of the work. Further, the owner has the right to license the copyright of
their work to third-parties through a written agreement.
In case of published literary works, dramatical works and artistic works,
copyright protection shall be provided to such works for a term of 60 (sixty) years
in addition to the life of the author.
Incidental to the protection awarded under a copyright, the Copyright Act, also
confers certain special rights on the author, under section 57. An author/ owner of
the copyright work, even after assigning the work to another person (wholly or
partially), has the right to ‘claim authorship of the work’ and the right to ‘claim
damages’ with respect to any ‘distortion, mutilation or modification’ of the
author’s original work, in the event such distortion or any other act is damaging
to the author’s reputation.

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The Design Act, 2000 (“Design Act”)
A ‘design’ under the Designs Act [section 2(d)] means and includes ‘only the
features of shape, configuration, pattern, ornaments or composition of lines or
colours, applied to any article whether in two dimensional or three dimensional or
in both forms, by any industrial process or means, whether manual, mechanical or
chemical, separate or combined, which in the finished article appeal to an are
judged solely by the eye’.
An application for registration of an industrial design is to be made to the
Controller- General of Patents, Designs and Trade Marks. However, a design
shall only be considered for registration if – (a) it is novel and an original
innovation i.e., it has not been produced before or reproduced by anyone; (b) it
has not been disclosed to the public anywhere in India or outside the jurisdiction
of India; and (c) it can be easily distinguished from other known designs.
Furthermore, once a design is registered, the registered proprietor is afforded
protection for an initial period of 10 (ten) years, which is extendable (upon filing
an application for extension) for a further period of 5 (five) years.
The Geographical Indications of Goods (Registration and Protection) Act,
1999 (“GI Act”)
Many goods in India are widely popular owing to their place of origin. For
instance, ‘Darjeeling tea’ is unique and popular owing to many factors including
but not limited to its origin, the skill set of the tea farmers of Darjeeling and the
weather prevailing in that area. Other such examples of products which have a
bearing of the place of origin (or factors specific to the place of origin includes
Banarsi Saree; Basmati Rice, etc).
A ‘Geographical Indication’ is defined as ‘an indication which identifies such
goods as agricultural goods, natural goods or manufactured goods as originating,
or manufactured in the territory of country, or a region or locality in that territory,
where a given quality, reputation or other characteristic of such goods is
essentially attributable to its geographical origin and in case where such goods are
manufactured goods one of the activities of either the production or of processing
or preparation of the goods concerned takes place in such territory, region or
locality as the case may be’. The GI Act covers only goods such as agricultural
goods, food stuff, handicraft goods, manufactured goods, and natural goods.
An application for registering a good under the GI Act requires a statement
explaining how the geographical indication affects to the origin of the good in
terms of the quality, characteristics, and reputation of the good; the class of
goods; particulars with regards the appearance of the geographical indication and
the map of the territory/area/country where the good has originated.

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A registered geographical indication is awarded protection for a term of ten (10)
years with the option of renewing and extending such protection for further
tenures of ten (10) years from the date of expiration of the original registration.

The Semiconductor Integrated Circuits Layout- Design Act, 2000 (“SICLD

Act”)
A ‘semiconductor integrated circuit’ is defined as ‘a product having transistors
and other circuitry elements which are inseparably formed on a semiconductor
material or an insulating material or inside the semiconductor material and
designed to perform an electronic circuitry function’.
Under the SICLD Act, all layout-designs capable of being registered are required
to be original; commercially unexploited anywhere in India and in any
convention countries; inherently distinctive and inherently distinguishable from
other registered layout- designs. An application for registration of design layouts
has to be in writing and is required to be filed before the Registrar in the
Semiconductor Integrated Circuits Layout-Design Registry present in the
territorial limits of the principal place of business of the applicant.
Further, the protection afforded to registered layout-designs is for a period of 10
(ten) years.
The Protection of Plant Varieties and Farmer’s Rights Act, 2001 (“Plant
Varieties Act”)
The objective of the Protection of Plant Varieties and Farmer’s Right Act, 2007,
is to recognize rights of Indian farmers and to provide protection to plant varieties
in order to encourage the growth and development of more plant varieties.
In 1994, India became a member to the Trade Related Aspect of Intellectual
Property Rights Agreement (TRIPS) under which all members are required to
accommodate and provide for the protection of plant varieties [Article 27(3)(b) of
TRIPS]. All plant varieties that have been registered and awarded protection are
entered and recorded into the National Register of Plant Varieties.
The Plant Varieties Act permits any breeder, farmer and any person as authorized,
to apply for registration of a new plant variety. A new plant variety is registrable
if it satisfies the conditions of ‘novelty, distinctiveness, uniformity and stability’.
To elaborate, the condition of novelty requires that at the date of filing the
application (for protection), the plant variety must not be sold. Further,
distinctiveness encompasses the requirement of having at least one distinguishing
factor from all other existing and protected plant varieties. The requirement of
uniformity means that all essential characteristics of the plant variety must be
uniform. Lastly, the plant variety being registered for is required to be ‘stable’,
meaning that the essential characteristics of the plant variety must remain
unchanged after repeated propagation of such plant variety.

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The validity of registration for the protection of a plant variety is for a period of
nine (9) years in the case of trees and vines, and for a period of six (6) years in the
case of crops, with the option of renewal of such registrations.
CONCLUSION
The role and importance of the intellectual property protection has been formed in
the Trade-Related Intellectual Property Systems (TRIPS) Agreement, with the
establishment of the World Trade Organization (WTO). At the end of the
Uruguay Round of the General Agreement on Tariffs and Trade (GATT) treaty in
1994, it was negotiated.
Intellectual property (IP) laws are designed to protect the rights of creators and
innovators over their creations and inventions. The laws governing IP provide a
framework to safeguard the economic and moral rights of creators and encourage
innovation, creativity, and economic growth. In India, IP laws cover a wide range
of rights, including patents, trademarks, copyrights, and trade secrets.

2) Define the term patent. Explain non patentable inventions?

INTRODUCTION
According to Section 2(1)(m), "Patent" means a patent for any invention granted
under the Patents Act, 1970. According to the Patent Act (of India), those that
fall under the category of “Inventions” can be patented, as defined in Section 2
(j) of the Act which involves anything that is novel, capable of industrial
application, and is not frivolous (subject-matters eligible for patentability).
However, those that cannot satisfy such conditions (or restricts the scope of
subject matters eligible for patentability) are non-patentable as mentioned
in Section 3 and Section 4 of the Act.

As per Indian Patent Act, all inventions should fall under patentable criteria for
patenting process. The patentable criteria are “Novelty”, “Inventive step” and
“Industrial Application”

SECTION 3 OF PATENTS ACT

Section 3 (a) “An invention which is frivolous or which claims anything

obviously contrary to well established natural laws”

3(a) reveals that any invention which seems frivolous which means lacking real
purpose or importance or which becomes contrary to well-designed natural laws.
For example:

 A machine appearing to give rise to persistent motion

 A machine claiming for giving the output without taking any input

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  A machine claiming 100% efficiency

Section 3 (b) “An invention the primary or intended use or commercial

exploitation of which could be contrary to public order or morality or which
causes serious prejudice to human, animal or plant life or health or to the
environment”

Few examples explaining section 3(b) may include the following:

 Any machine used for performing theft or burglary

 Any device or machinery apparatus which assist in counterfeiting of
currency notes.
 Gambling device/machine/ apparatus related inventions
 Inventions related to any machine/apparatus or article, the use of which
may cause serious prejudice to mankind, animals or animals
 Adulteration of food products or pesticides related inventions
 An invention related to cloning of humans
 Any invention related to device for house-breaking

Section 3(c) “The mere discovery of a scientific principle or the formulation of

an abstract theory or discovery of any living thing or non-living substances
occurring in nature”

Discovery means “an action or process of discovering or being discovered” – this

is discovery of something which was existing previously in nature & someone has
simply found it. Few examples explaining section 3(c) may include the following:

 An invention claiming “discovery of scientific principle” is not considered

to be an invention, hence non-patentable.
 An invention based on “scientific theory” is non-patentable as these
theories may not considered to be inventions, it does not matter how
insightful is the theory. However, any practical implication or application
depicting such theory, which uses the abstract theory may be patentable.
 Acquiring a new substance or micro-organism which was occurring freely
in nature is a discovery and can never be called as an invention.

 Inventions related to any machine/apparatus or article, the use of which

may cause serious prejudice to mankind, animals or animals
 Adulteration of food products or pesticides related inventions
 An invention related to cloning of humans
 Any invention related to device for house-breaking

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Section 3 (d) “The mere discovery of a new form of a known substance which
does not result in the enhancement of the known efficacy of that substance or
the mere discovery of any new property or new use for a known substance or of
the mere use of a known process, machine or apparatus unless such known
process results in a new product or employs at least one new reactant.
Explanation. -For the purposes of this clause, salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance shall be considered to
be the same substance, unless they differ significantly in properties with regard
to efficacy”

Section 3(d) clarifies that salts, esters, ethers, polymorphs, metabolites, pure
form, particle size, isomers, mixtures of isomers, complexes, combinations and
other derivatives of known substances may be considered as to be the same
substance and can be patentable only if they differ significantly in properties with
regard to efficacy. According to section 3 (d), following are not inventions and
non-patentable:

 Mere discovery of a new form of a known substance which does not result
in the enhancement of the known efficacy of that substance.
 Mere discovery of any new property of a known substance
 Mere discovery of new use for a known substance
 Mere discovery of use of a known process, machine or apparatus unless
such known process results in a new product or employs at least one new
reactant.

Section 3 (e) “A substance obtained by a mere admixture resulting only in the

aggregation of the properties of the components thereof or a process for
producing such substance”

An ad-mixture resulting in synergistic properties is not considered as mere

admixture. Hence, substances like soap, detergent, lubricants, may be considered
as patentable.

Section 3 (f) “The mere arrangement or re-arrangement or duplication of

known devices each functioning independently of one another in a known way”

An invention claiming a mere re-assembly of known devices in which each

device will act independently is not eligible for being patentable. For example,

 A flour mill made with sieving means

 A fan integrated with light and claiming an invention for providing air
flow and light.

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  An apparatus for giving rise to metallic bellows, the hydraulic machine
and the roll forming machine claiming to act as separate machines
functioning independently of each other

These above concepts are not patentable, since there is mere arrangement and
rearrangement of the parts of assembly without having any working
interrelationship between them and every part of assembly is working
independently of each other.

Section 3 (h) “A method of agriculture or horticulture”

Few of examples where the subject matter is excluded from patentability under
this provision are:

 Plant manufacturing method , Green house effect (modification too)

 Improved soil generation method, the method is soil treatment from the
soil with nematodes
 A method of generating mushrooms
 A method of algae cultivation
 Weeds removal methods

Section 3 (i) “Any process for the medicinal, surgical, curative,

prophylactic, diagnostic, therapeutic] or other treatment of human beings or
any process for a similar treatment of animals to render them free of disease or
to increase their economic value or that of their products”

Few examples explaining section 3(i) may include the following:

 Medicinal methods: Administering medicines process orally

 Surgical methods: Cataract operation
 Curative methods: Cleaning plaque process
 Prophylactic methods: Vaccination method
 Diagnostic methods: X-ray, Blood diagnostic process
 Any method of treatment of animal to render them free of disease or to
increase their economic value or that of their products. For example, a
sheep treatment method for increasing wool yield
 Cosmetic surgery/ methods

Section 3 (j) “Plants and animals in whole or any part thereof other than
micro-organisms but including seeds, varieties and species and essentially
biological processes for production or propagation of plants and animals”

The following subject matters but not limited to are excluded under section 3(j):

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  Plants as whole or in part of plants
 Animals as whole or any part of animal
 Seeds
 Plants and animals varieties/ species
 Biological process(es) for production or propagation of plants and
animals.

However, Microorganisms, other than the ones discovered from the nature, may
be patentable.

Section 3 (k) “A mathematical or business method or a computer programme

per se or algorithms”

Under section 3(k), a mathematical methods, business methods, computer

programmes per se and algorithms are not considered as patentable subject
matter.

Section 3 (l) “A literary, dramatic, musical or artistic work or any other

aesthetic creation whatsoever including cinematographic works and television
productions”

Following type of work comes under the domain of Copyright Act, 1957, hence
not-patentable

 Literary works
 Computer programs
 Music/ Sound recordings
 Paintings, Drawings, Architecture, Photographic works etc.

Section 3 (m) “A mere scheme or rule or method of performing mental act or

method of playing game”

Mere scheme or rule or method of performing mental acts or method of playing

games, are not patentable because these simply comes from human mind. For
example:

 Method for playing chess

 Teaching method.
 Any method for learning

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Section 3 (n) “A presentation of information”

Presentation modes like presentation methods by using Audio Visual Aids are not
considered to be invention, hence non-patentable. For example: railway time
tables and 100 years of calendar etc.

Section 3 (o) “Topography of integrated circuits”

As there is another branch of Intellectual Property Rights i.e. Semiconductor IC

Lay Out Design Act, 2000, therefore all inventions related to IC circuit designs
are not patentable. The applicant is such matters should file IC circuit designs as
per IC Design Act 2000. For example, 3D configuration of the IC circuits being
used in microchips and semiconductor chips are not patentable.

Section 3 (p) “An invention which in effect, is traditional knowledge or which

is an aggregation or duplication of known properties of traditionally known
component or components”

Traditional knowledge means knowledge which was already existing (in prior
art). This knowledge was with public from a long/ ancient/ historical and passed
from generation to generation. For example, Usage of Turmeric / Haldi as
antiseptic i.e. for wound healing. Another example is Neem being used for
pesticidal or insecticidal [Link] Patent examiner may conduct
investigation by using TKDL i.e. Traditional Knowledge Digital Library which is
an excellent database for checking traditional knowledge and other similar
resources/database which help applicant to take a decision about whether the
claimed subject invention comes under Section 3(p) or not.

ATOMIC ENERGY

Section 4 Patent Act states invention related to atomic energy is not patentable.
Under section 4 patent cannot be granted to any invention in relation to atomic
energy that falls in section 20(1) of the Atomic Energy Act, 1962.

CASE LAWS

1) Novartis v/s Union of India

In this case, Novartis questioned the rejection of its patent application by IPAB
for a kind of crystalline forming of Imatinib mesylate. The SC rejected the
application on the ground that the said drug was not superior therapeutic as
compared to the know substance. Merely making minute changes in the original
drug does not amount to inventive steps. The supreme court held that “a mere
discovery of an existing drug would not amount to invention”

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 2) Turmeric case – the United States granted a patent on turmeric to
the University of Mississippi medical center for wound healing
properties. Exclusive rights were granted to sell and distribute. The
Indian Council for Scientific and Industrial Research (CSIR)
objected to this patent that was granted and submitted evidence
and relevant documents, text in Sanskrit, and other languages
regarding the use of turmeric to USPTO, they had to revoke the
patent which was granted.

In India, turmeric is commonly used as an antiseptic agent for wounds, colds, and
day-to-day cooking.

3) Diamond vs. Chakraborthy, 447 u.s. 303 (1980)

On 17 March 1980, the United States Supreme Court confirmed the decision of the
Court of Customs and Patent Appeals to grant a patent for a bacterium capable of
breaking down crude oil (Pseudomonas putida). The Supreme Court therewith
established that whether or not an invention is a living thing is irrelevant to the
question of its patentability. This is a landmark case because the Supreme Court
agreed and held on June 16, 1980, that a live, human-made micro-organism is
patentable subject-matter under 35 U.S. Code §101 and that the respondent’s
micro-organism constitutes a “manufacture” or “composition of matter” within
that statute.

4) In the court case Glochem Industries Ltd. v. Cadila Healthcare Ltd.

The Bombay High Court ruled that all fields, including pharmacology, are
covered by Section 3(d). A further finding made by the court was that “the
standard to evaluate whether the discovery is an invention or not? It is the
responsibility of the patent applicant to demonstrate that the discovery has
improved the original substance’s known therapeutic efficacy, and if the
discovery is simply a derivative of an existing substance, it must be demonstrated
that the properties of the derivatives have materially different efficacy. Therefore,
according to this subsection, the mere finding of a novel form of a substance that
does not increase the substance’s existing efficacy will not be considered to
constitute an innovation.

CONCLUSION

India is a nation that has realized the significance of robust patent systems for the
development of industry and commerce to bring it up to par with the modern
world. There has been an increase in patent filing since the Indian Patent Act was
passed. The definition of innovation is determined by Sections 3 and 4 of this
Act, which list inventions that cannot be patented. Patents are only issued for

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brand-new, practical inventions. Protecting their intellectual property is very
interesting to innovators and inventors.

3) Explain the procedure for applying on granting of

patents?

INTRODUCTION

A patent is a legal document that is granted by the government of the state or the
country, depending on the national rules. It gives an inventor of a particular thing,
the exclusive right to make, use and sell his or her creation for a specified period
of time.
STEPS FOR APPLICATION OF PATENT FILING IN INDIA
Step 1: Patent Search
Patent Search is the first step of Patent Filing procedure in India and is conducted
worldwide to determine the novelty of an invention. Generally, it is considered
safe to do patent searches before patent application filing. If an invention is found
in prior arts or closely resembling prior arts, then the novelty of that invention can
be challenged by the Indian Patent Office and the application can be objected to.
Therefore, it is important to perform prior patent searches to assess the chances of
your patent getting approved by the Patent Office.
Step 2: Drafting Patent Specification
After conducting thorough searches worldwide, the specification of the
invention is written in a techno-legal language with or without the inventor’s
claims. Without claims is the provisional specification and with claims is the
complete specification. The specification outlines the field of invention, detailed
description of the invention with working examples, and the best method to use
the invention so that when it comes to the knowledge of a person skilled in the
art, it can be easily used. Legal protection to the patent is granted when the
specification is drafted with the inventor’s claim and is complete.
Step 3: Patent Application Filing
After drafting the Patent Specification, you can begin the procedure for Filing
Patent Application in India. As we discussed earlier, patent applications can be
provisional or complete, based on the specifications drafted. The drafted
provisional or complete specification is filed in Form-2 while Patent Application
form is filed in Form 1 as prescribed by the Indian Patent Act. If a provisional
patent specification is filed, then within 12 months of its filing, a complete
specification has to be filed with the inventor’s claims.
Step 4: Patent Publication for Public Opposition
Once the patent application process is complete, then after the expiry of 18
months from the date of patent filing or date of priority whichever is earlier, the

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patent is published in an official journal and is open for public viewing and
inspection. This provides an opportunity to the general public to raise an
objection to the patent on valid grounds.
Step 5: Requesting Patent Examination
The patent application is examined only when a request for examination has been
filed. The request for examination has to be filed within 48 months of the patent
filing date or date of the priority. The patent examiner examines a patent
application and issues an examination report. The examination report contains a
series of objections raised by an examiner. The response to an examination report
has to be filed within 12 months of the issuance of the examination report. If
needed, the examiner can call the applicant or his agent for a show cause hearing
to resolve the objections. That’s why this phase is also called patent prosecution.
Step 6: Grant of a Patent
After all objections to the examination report have been replied to and the
examiner is satisfied with the reply of the applicant, the application is put in order
for grant of Patent Registration. This marks the end of the procedure for
registration of Patent. On the other hand, if the examiner is not satisfied with the
reply and arguments of the applicant, then he/she can reject the patent application.
In this case, the applicant will again have to repeat the entire patent procedure in
India again to get patent protection.
CONCLUSION
Step by step patent process is crucial for safeguarding intellectual property rights
of inventors in India. From conducting patent searches, assessing patent’s novelty,
to drafting and filing the patent application form, each stage plays a pivotal role
in the overall procedure of patent registration in India. The subsequent
examination and prosecution phase involves addressing objections raised by the
examiner and are also crucial aspects of the patent registration procedure.
Furthermore, patent publication after the filing of patent application allows for
public scrutiny and raises the possibility of objections to the patent.

4) State the economic and labour justification for the protection of IPR
INTRODUCTION
Intellectual Property Rights (IPR) serve as a crucial legal framework to protect the creations
of the human mind, fostering innovation, creativity, and economic growth. These rights
encompass various forms, such as patents, trademarks, copyrights, and more. The economic
and labor justifications for protecting IPR are significant in sustaining a conducive
environment for innovation, investment, and fair competition.
ECONOMIC JUSTIFICATION
1. Encouraging Innovation and Creativity:

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IPR protection serves as a powerful catalyst for fostering innovation and creativity. The
exclusivity granted to creators and inventors through patents, trademarks, and copyrights
incentivizes them to invest time, resources, and effort into research and development. This
exclusivity acts as a form of reward, ensuring that innovators can reap the benefits of their
intellectual labor.
In a climate where intellectual property is safeguarded, individuals and businesses are more
likely to explore novel ideas and take risks in developing groundbreaking technologies,
products, and services. Knowing that their innovations are protected from unauthorized use or
replication, creators feel secure in their ability to capitalize on their inventions. This sense of
security, in turn, nurtures a culture of innovation where continuous exploration and
experimentation become essential components of economic and technological progress.
The availability of IPR protection also encourages entrepreneurs to venture into uncharted
territories, knowing that their innovative ideas can be shielded from imitation. This dynamic
environment fosters a healthy competition where businesses strive to outdo each other
through advancements, pushing the boundaries of what is possible and driving sustained
innovation across various industries.
2. Attracting Investments:
Investors play a pivotal role in fuelling the growth of innovative industries, and IPR
protection significantly influences their investment decisions. The assurance of protection for
intellectual assets provides a level of security that investors seek when considering funding
projects and ventures.
Industries heavily reliant on intellectual assets, such as technology, pharmaceuticals, and
entertainment, often require substantial financial backing for research, development, and
market entry. Investors are more likely to commit funds to these ventures when they are
confident that the intellectual property generated will be safeguarded against infringement.
This assurance not only protects the investors' interests but also ensures a return on their
investment by enabling companies to commercialize and monetize their innovations.
The link between IPR protection and attracting investments is particularly evident in
industries where the value of intellectual property is substantial. The presence of robust legal
frameworks for protecting patents, trademarks, and copyrights creates a favorable
environment that encourages capital flow, driving economic growth and technological
advancement.
3. Market Competition and Consumer Welfare:
IPR protection plays a vital role in promoting healthy market competition, ensuring that
creators have the confidence to bring their products and services to market without fear of
unfair exploitation. This, in turn, benefits consumers by fostering a diverse marketplace with
high-quality offerings.
When creators know that their innovations are protected, they are more likely to invest in
bringing their products to market. This investment might include efforts to enhance product

15
quality, develop new features, or improve existing technologies. As a result, consumers have
access to a variety of innovative and high-quality products and services, creating a
competitive landscape that drives continuous improvement.
IPR protection prevents competitors from copying or imitating successful products without
proper authorization. This protection encourages companies to differentiate themselves
through innovation and unique value propositions, contributing to a vibrant marketplace with
a wide range of choices for consumers.
4. Technology Transfer and Licensing:
IPR protection facilitates the transfer of technology and knowledge through licensing
agreements, a process that can be mutually beneficial for companies and industries.
Companies are more willing to share their technological advancements when they have legal
mechanisms in place to protect their intellectual investments.
Licensing agreements allow companies to monetize their intellectual property by granting
others the right to use, manufacture, or sell their patented inventions, copyrighted works, or
trademarked products. This process of technology transfer can lead to the widespread
adoption of innovations, benefiting both the licensor and the licensee.
For example, in the pharmaceutical industry, licensing agreements may enable the production
of generic versions of patented drugs after the expiration of the patent, increasing access to
essential medications. In technology sectors, licensing agreements can lead to the integration
of innovative features into a variety of products, promoting technological diffusion.
Overall, IPR protection encourages collaboration and the sharing of knowledge, contributing
to the collective advancement of industries and fostering a climate where technological
progress is not only protected but also disseminated for broader societal benefits.
Relevant Sections and Case Laws:
Section 3 of the Patents Act, 1970:
This section defines what constitutes a patentable invention in India. It excludes various types
of discoveries and inventions, including:
 Scientific principles and discoveries: Laws of nature, mathematical equations, natural
substances.
 Frivolous inventions: Lacking utility or practical application.
 Inventions harmful to public order or morality: Weapons of mass destruction, harmful
substances, etc.
By setting these boundaries, the Act balances the protection of innovation with public interest
and ethical considerations. It ensures that patents incentivize inventions with practical
usefulness and avoid promoting harmful technologies.
[Link] Pont de Nemours and Company v. Union of India (2001):

16
This case dealt with the controversial issue of patentability of microorganisms in India. The
court ruled that microorganisms, like other inventions, could be patented if they were new,
inventive, and had industrial application. However, it placed specific conditions on such
patents to ensure access to affordable medicines and promote public health.
This case illustrates the complex balance between protecting innovation in biotechnology and
safeguarding public health. It showcases how IPR laws can adapt to emerging technologies
while considering societal concerns.
LABOR JUSTIFICATION
1. Rewarding Intellectual Labor:
Intellectual Property Rights (IPR) play a crucial role in recognizing and rewarding the efforts
of creators and inventors, ensuring that their intellectual labor is duly acknowledged and
compensated. This recognition is a fundamental aspect of fair compensation for the time,
resources, and creativity invested in developing innovative ideas, products, or services.
Through mechanisms such as patents, trademarks, and copyrights, IPR provides creators with
exclusive rights to their intellectual creations. This exclusivity allows them to control the use,
reproduction, and distribution of their work, creating a foundation for fair compensation. By
granting creators the ability to monetize their intellectual property, IPR fosters an
environment where individuals are motivated to engage in creative and innovative endeavors,
knowing that their efforts will be financially rewarded.
The acknowledgment and protection of intellectual labor also contribute to the overall
cultural and economic value placed on innovation. As society recognizes and values the
contributions of creators, it creates a positive feedback loop, encouraging individuals to
dedicate their skills and talents to furthering technological, artistic, and scientific
advancements.
2. Job Creation:
Industries heavily reliant on intellectual property, such as software development,
pharmaceuticals, and design, are significant contributors to job creation. The protection of
IPR plays a pivotal role in fostering the growth of these industries, leading to increased
employment opportunities.
Innovation-driven sectors require a skilled and specialized workforce to develop, implement,
and manage intellectual property assets. The assurance of IPR protection attracts talent to
these industries, creating a demand for professionals with expertise in areas such as research
and development, patent law, intellectual property management, and creative design.
Moreover, the expansion of industries supported by robust IPR frameworks leads to the
creation of ancillary roles and support functions, further contributing to job creation. The
ripple effect of job opportunities extends beyond the core sectors, positively impacting the
broader economy.

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3. Enhancing Employee Value:
IPR protection enhances the value of intellectual capital within organizations, especially in
innovation-driven sectors. Employees in these sectors find greater job security and increased
opportunities for career growth, knowing that their contributions are legally safeguarded.
Employees engaged in research, development, and creative roles are vital contributors to a
company's intellectual property portfolio. IPR protection ensures that their innovative ideas,
designs, or inventions are recognized and valued by the organization. This recognition, in
turn, leads to a more motivated and engaged workforce.
Knowing that their intellectual contributions are protected, employees are more likely to
invest time and effort into developing innovative solutions. This dedication contributes not
only to the success of the organization but also to the professional development and job
satisfaction of individual employees.
4. Balancing Employer-Employee Relationships:
IPR laws provide a clear framework for establishing fair agreements between employers and
employees regarding the ownership of intellectual creations. This clarity is essential in
maintaining a balanced and respectful relationship in the workplace.
Clear and transparent agreements regarding intellectual property rights help prevent disputes
between employers and employees. Employees understand their rights and responsibilities
concerning the creations developed during their employment, fostering a collaborative and
mutually beneficial work environment.
Additionally, IPR protection ensures that employees are appropriately acknowledged and
compensated for their contributions, establishing a foundation of trust between employers and
employees. This trust is crucial for attracting and retaining talent in competitive industries
where innovation is a key driver of success.
In summary, the role of IPR in rewarding intellectual labor, fostering job creation, enhancing
employee value, and balancing employer-employee relationships underscores its significance
in shaping a dynamic and innovation-driven workforce and economy.

Relevant Sections and Case Laws:

Section 39 of the Patents Act:
This section mandates that inventors be named as such on any patent granted for their
invention. This seemingly simple provision carries significant weight. It ensures inventors
receive due recognition for their creativity and expertise, fostering a sense of ownership and
pride in their work. This recognition can act as a powerful motivator, driving further
innovation and incentivizing individuals to pursue inventive solutions. Moreover, naming
inventors fosters transparency and accountability within the research and development
ecosystem.

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Case Law: Council of Scientific & Industrial Research v. Zaheer Ahmed (2018):
This case dealt with the specific rights of inventors working in research institutions, like
CSIR in this instance. The court ruled that even though such institutions may hold the legal
patent rights, individual inventors within the institution must still be named and
acknowledged for their contributions. This ensures that individual researchers don't get lost in
the institutional framework and their efforts are duly recognized. This fosters a culture of
innovation within research institutions by empowering and motivating individual researchers.
CONCLUSION
In conclusion, the economic and labor justifications for protecting IPR are integral to
fostering a thriving and innovative society. By providing legal mechanisms to safeguard
intellectual creations, IPR not only stimulates economic growth but also ensures that the
fruits of intellectual labor are justly rewarded. In India, as in many other countries, the
diverse range of IP laws plays a pivotal role in creating an environment where creativity and
innovation can flourish, contributing to national development and global progress.

5) Examine the Concept of IPR and the Historical Background of the Development of
IPR.
INTRODUCTION
Intellectual Property Rights (IPR) represent a legal framework designed to safeguard the
diverse creations of the human mind, ranging from tangible inventions and industrial designs
to intangible literary works, artistic creations, and trademarks. IPR grants exclusive rights to
creators, allowing them control over the use, reproduction, and distribution of their
intellectual contributions, thereby ensuring recognition and economic benefits for their
inventive efforts.
Historical Background of IPR in India
Pre-Colonial Era:
In the Pre-Colonial Era, India demonstrated a rich legacy of recognizing and protecting
knowledge and innovation. Ancient Indian legal texts, notably Kautilya's Arthashastra, served
as early repositories of legal wisdom. Within these texts, there was a clear acknowledgment
of the importance of knowledge as a valuable asset. Guilds, which functioned as organized
associations of skilled artisans and traders, played a pivotal role in safeguarding trade secrets
and preserving traditional practices. The guilds not only facilitated the exchange of
knowledge within their communities but also enforced measures to protect the sanctity of
their crafts, thus contributing to the early foundations of intellectual property principles.
Colonial Era:
The Colonial Era marked a significant shift in India's approach to intellectual property, driven
by the imposition of British-style laws primarily aimed at safeguarding British interests. The
19th century saw the introduction of key enactments such as the Patents Act of 1856 and the

19
Copyrights Act of 1875. These early legislative interventions were tailored to serve the
economic and industrial interests of the colonial rulers, offering protection to British
inventors and authors. The focus was on establishing legal mechanisms that would ensure the
exclusivity of British innovations and creative works within the Indian subcontinent.
Post-Independence:
With India gaining independence, a nuanced approach toward intellectual property emerged,
reflecting a delicate balance between protecting innovation and ensuring broader societal
interests. The Patents Act of 1970, a landmark piece of legislation, exemplified this approach
by restricting the patentability of certain inventions, particularly those related to essential
sectors like food and pharmaceuticals. The intent was to prevent the monopolization of
crucial technologies and medicines, thereby fostering accessibility and affordability for the
Indian populace. This post-independence period laid the groundwork for an Indian
intellectual property regime that was attuned to the nation's developmental needs.
Liberalization and Globalization:
The latter part of the 20th century witnessed a transformative phase in India's economic and
legal landscape, marked by liberalization and globalization. In the 1990s, India embraced a
more globalized perspective, aligning its intellectual property regime with international
standards, particularly under the Trade-Related Aspects of Intellectual Property Rights
(TRIPS) agreement of the World Trade Organization (WTO). This transformative shift
involved expanding patent protection to align with global norms and introducing
comprehensive laws for trademarks, geographical indications, and industrial designs. The
objective was to enhance India's integration into the global economy, attract foreign
investments, and foster innovation across diverse sectors. This period marked a significant
evolution in India's intellectual property framework, positioning the nation as a participant in
the global knowledge economy.
Current IPR Landscape in India
Key Legislation:
India's intellectual property framework is anchored by several key legislations that
encompass diverse aspects of intellectual property protection.
1. The Patents Act, 1970: This legislation governs the grant and protection of patents in
India, defining the criteria for patentability and outlining the rights conferred to patent
holders. It plays a pivotal role in fostering innovation by providing inventors with
exclusive rights over their inventions for a specified duration.
2. The Copyright Act, 1957: This Act safeguards the rights of creators of literary,
artistic, and musical works, as well as cinematographic films and sound recordings. It
establishes the framework for copyright protection, ensuring that creators enjoy
exclusive rights over their creations while promoting the growth of cultural and
creative industries.

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 3. The Trademarks Act, 1999: Focused on protecting distinctive marks that identify
goods or services, this legislation provides a comprehensive framework for the
registration and enforcement of trademarks. It plays a crucial role in building brand
identity and preventing the unauthorized use of trademarks, thereby fostering fair
competition.
4. The Designs Act, 2000: This Act regulates the registration and protection of
industrial designs, ensuring that the unique aesthetic aspects of products are
safeguarded. It encourages creativity in industrial design while preventing the
unauthorized replication of distinctive designs.
5. The Geographical Indications of Goods (Registration and Protection) Act, 1999:
Geographical indications (GIs) identify goods as originating from a particular region
and possessing qualities, reputation, or characteristics unique to that region. This Act
provides legal protection to GIs, preserving the cultural and traditional aspects
associated with specific geographical origins.

Enforcement Challenges:
Despite the existence of a comprehensive legal framework, effective enforcement faces
persistent challenges.
1. Lack of Awareness: A significant challenge lies in the lack of awareness among
stakeholders, including rights holders, law enforcement agencies, and the general
public. Many individuals and businesses may not fully comprehend the intricacies of
intellectual property rights, leading to inadvertent infringements and difficulties in
enforcement.
2. Resource Constraints: Law enforcement agencies may face resource constraints,
both in terms of manpower and technological capabilities. This can hinder their ability
to proactively enforce intellectual property rights, investigate infringements, and
engage in effective litigation.
3. Complex Litigation Processes: Legal procedures related to intellectual property
enforcement can be intricate and time-consuming. Complex litigation processes,
coupled with a backlog of cases, may deter rights holders from pursuing legal action,
delaying justice and diminishing the deterrent effect of the legal system.
Balancing Interests:
India actively engages in the delicate task of balancing innovation incentives with public
health interests.
1. Compulsory Licensing (Patents Act): Provisions such as compulsory licensing
within the Patents Act exemplify this delicate balance. These provisions allow the
government to authorize the production of generic versions of patented medicines

21
 under specific circumstances, addressing concerns related to affordability and
accessibility of essential medicines.
Traditional Knowledge Protection:
Efforts are underway to protect India's rich traditional knowledge heritage.
1. Traditional Knowledge Digital Library (TKDL): The TKDL is a significant
initiative aimed at documenting and digitizing traditional knowledge, preventing its
misappropriation. By creating a digital repository, India seeks to protect its traditional
knowledge from exploitation and ensure that it remains within the public domain.
2. Geographical Indications Framework: This framework safeguards traditional
knowledge associated with specific geographical regions, preventing unauthorized use
and providing legal recognition to products linked to their places of origin.
Significance of IPR in India
Economic Growth:
A robust Intellectual Property Rights (IPR) regime acts as a catalyst for economic growth by
creating a conducive environment for research and development (R&D), attracting
investments, and fostering innovation-driven industries. The protection of intellectual
property provides a framework that incentivizes businesses and individuals to invest in the
creation of new technologies, products, and services. As innovators secure exclusive rights to
their creations, they are more likely to embark on high-risk R&D ventures, driving
technological advancements and contributing to the overall economic progress of the nation.
Additionally, a flourishing IPR ecosystem attracts foreign direct investment, stimulating
economic growth by positioning the country as a hub for innovation and intellectual capital.
Job Creation:
IPR-intensive sectors, particularly in pharmaceuticals and information technology (IT), play a
pivotal role in generating employment opportunities. The protection of intellectual property
encourages companies in these sectors to invest in human capital, hiring skilled professionals
and fostering a workforce equipped with specialized knowledge. Research and development
activities, which are central to these sectors, create jobs for scientists, researchers, engineers,
and other technical experts. Furthermore, the growth of innovative industries supported by
strong IPR frameworks results in the expansion of ancillary services, generating employment
across a spectrum of functions, from legal and regulatory affairs to marketing and sales.
Technological Advancement:
Protection of intellectual property rights serves as a catalyst for technological advancement
by encouraging knowledge sharing and facilitating technology transfer. The assurance of
exclusive rights incentivizes innovators to disclose their inventions and share technical
knowledge with the public. This knowledge-sharing dynamic accelerates the dissemination of
cutting-edge technologies, allowing other researchers, businesses, and industries to build
upon existing innovations. Moreover, the protection afforded by IPR facilitates collaborations

22
and licensing agreements, enabling the transfer of technology between entities. As a result,
the overall pace of technological progress is heightened, contributing to a dynamic and
innovative ecosystem.
Brand Protection:
Trademarks and geographical indications within the ambit of intellectual property serve as
crucial tools for safeguarding the reputation and authenticity of Indian products in the global
marketplace. Trademarks establish a distinct identity for products, services, and businesses,
fostering consumer trust and loyalty. They protect against unauthorized use or imitation,
preserving the uniqueness and quality associated with Indian brands. Geographical
indications, on the other hand, assure consumers of the specific geographical origin and
qualities of certain products, promoting the cultural and regional diversity of India. The
protection of brands through intellectual property mechanisms not only enhances market
competitiveness but also contributes to the positive image of Indian products on the global
stage, thereby fostering international trade and economic growth.

Challenges and Future Directions

Raising Awareness:
Effective utilization and protection of intellectual property necessitate comprehensive
education and heightened awareness across various stakeholders, including creators,
businesses, and the public.
Creators: Initiatives should be undertaken to educate creators about the value of intellectual
property rights, emphasizing how these rights can safeguard their innovations and foster a
conducive environment for creativity. Workshops, seminars, and educational campaigns can
provide insights into the intricacies of copyright, patents, trademarks, and other intellectual
property avenues.
Businesses: Enterprises must be informed about the strategic advantages of building and
protecting their intellectual property portfolios. Awareness programs can highlight the role of
intellectual property in enhancing market competitiveness, attracting investments, and
fostering long-term sustainability. Businesses should also be educated on legal avenues for
enforcing and defending their intellectual property rights.
Public: Raising awareness among the general public is equally crucial. Educating consumers
about the importance of respecting intellectual property rights can help reduce instances of
infringement and counterfeiting. Public awareness campaigns can clarify the ethical and legal
implications of using intellectual property without proper authorization.

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Strengthening Enforcement:
The effectiveness of intellectual property protection relies on robust enforcement
mechanisms. Strengthening enforcement involves building capacity and streamlining
procedures to deter infringement and ensure compliance.
Building Capacity: This entails investing in the training of law enforcement agencies, legal
professionals, and judicial authorities in matters related to intellectual property. Specialized
intellectual property units within law enforcement agencies can enhance expertise in
investigating and prosecuting intellectual property crimes. Training programs, workshops,
and collaboration with international enforcement agencies can contribute to building a skilled
workforce.
Streamlining Procedures: Simplifying legal procedures and ensuring swift adjudication of
intellectual property cases are essential. Courts specialized in handling intellectual property
disputes can expedite legal processes. Implementing technologies such as e-filing systems
and digital evidence management can streamline the overall enforcement process, making it
more efficient and accessible.
Balancing Innovation and Access:
Achieving a delicate equilibrium between safeguarding intellectual property and ensuring
public health access to essential medicines remains a formidable challenge.
Intellectual Property Protection: Strengthening intellectual property protection fosters
innovation by incentivizing research and development in the pharmaceutical and
biotechnology sectors. Encouraging inventors through a robust patent system allows for the
creation of breakthrough medicines and technologies.
Ensuring Access: At the same time, measures must be in place to ensure access to essential
medicines, especially in the context of public health. This involves mechanisms like
compulsory licensing, which allows the production of generic versions of patented drugs in
specific circumstances, balancing the interests of intellectual property owners with the
broader public health objectives.
Protecting Traditional Knowledge:
Preserving and protecting India's extensive repository of traditional knowledge from
misappropriation requires sustained and focused efforts.
Documentation: Initiatives should be undertaken to systematically document and catalog
traditional knowledge, ensuring that it is recorded and recognized. Digital databases, such as
the Traditional Knowledge Digital Library, play a crucial role in archiving this wealth of
information.
Registration: Traditional knowledge holders should be encouraged to register their
knowledge through formal registration processes. This not only provides legal recognition but
also acts as a deterrent against unauthorized use.

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Protection Measures: Legal frameworks, including the Geographical Indications Act, can be
strengthened to provide specific protection for traditional knowledge. This involves setting
clear guidelines for the commercial use of traditional knowledge and implementing measures
to prevent misappropriation.
Community Involvement: Engaging local communities and traditional knowledge holders in
the protection process ensures that their perspectives are considered. This involves creating
awareness, providing legal support, and actively involving these communities in decision-
making processes.
CONCLUSION:
The evolution of the concept of IPR in India, from a colonial tool to a vital element of
economic and technological development, is evident. Despite challenges in enforcement and
accessibility, India's commitment to a robust IPR regime holds promise for fostering
innovation, promoting local industries, and protecting its unique intellectual heritage. By
effectively addressing these challenges and adapting to the evolving global landscape, India
can leverage IPR to secure a thriving and knowledge-based future.

6) Examine the importance and types of specification under the patent law algorithm
legal requisites for its submission.
INTRODUCTION
In the realm of Indian patent law, the specification reigns supreme as the cornerstone
document defining an invention's essence and securing its legal protection. Algorithms, as
intricate sequences of steps guiding technology's dance, require a particularly meticulous
approach to specification drafting. So, let's delve deeper into the importance, types, and legal
requisites for algorithm-related specifications in the Indian context.
Why Does the Specification Matter So Much?
Imagine the specification as a detailed road map, guiding others to understand and replicate
your invention. In India, a well-crafted specification serves several crucial functions:
Demarcating the Invention's Territory:
A meticulously crafted patent specification serves as the cartographer of your invention's
intellectual territory, employing precise and comprehensive descriptions to draw clear and
unequivocal boundaries for the exclusive rights granted by the patent. This demarcation is
vital in preventing potential infringements by competitors, as it establishes a well-defined
path that others cannot traverse without violating the exclusive rights conferred by the patent.
In essence, the specification acts as a legal blueprint, guiding not only the patent holder but
also potential competitors on the permissible boundaries of innovation within a specific
technological landscape.

25
Facilitating Examination with Clarity:
In the realm of Indian patent examination, the specification assumes a pivotal role as the
primary guide for examiners assessing the novelty, non-obviousness, and industrial
applicability of the invention. A robust document, characterized by clarity and precision,
streamlines the examination process, allowing patent examiners to navigate the intricacies of
the invention effortlessly. The specification acts as a roadmap for examiners, guiding them
through the technical intricacies of the invention and providing the necessary context for
evaluating its uniqueness and inventive step. A well-constructed specification, therefore, acts
as a facilitator for a seamless examination journey, enhancing the chances of successful
patent approval.
Empowering the Public and Peers:
Transparency is a hallmark of an effective patent specification, and this quality extends
beyond the legal realm. A transparent and informative specification serves as an educational
resource, empowering the public and competitors alike with a comprehensive understanding
of your invention's inner workings. By offering a detailed insight into the technical aspects,
functionalities, and innovative features, the specification fosters an environment of fair
competition. Competitors, informed by the specification, can navigate the existing
technological landscape more effectively, reducing the likelihood of inadvertent infringement.
Moreover, by contributing to the collective knowledge pool, the specification promotes a
culture of innovation and collaboration within the industry.
Unlocking Commercialization Doors:
In the vibrant landscape of India's innovation ecosystem, a well-written specification emerges
as a key that unlocks doors to commercialization opportunities. Beyond its legal functions,
the specification serves as a persuasive tool for attracting investors and enticing potential
licensing partners. By providing a clear and detailed exposition of your invention's potential
applications, commercial viability, and unique features, the specification instills confidence in
prospective stakeholders. Investors and licensing partners, armed with a thorough
understanding of the invention's merits, are more likely to engage in fruitful collaborations.
Consequently, a well-constructed specification not only secures legal protection but also
becomes a driving force behind successful commercialization, facilitating market penetration
and ensuring the innovation's tangible impact on the industry.
Navigating the Types of Specifications
In the intricate landscape of Indian patent law, innovators must adeptly navigate two distinct
paths for specification submission, each offering a unique trajectory in the patent application
process.
1. Provisional Specification:
Considered the preliminary cornerstone of the patent application journey, the provisional
specification serves as a strategic placeholder. Its primary function is to establish a priority
date for the invention while affording inventors the flexibility to refine and develop intricate

26
technical details. In essence, the provisional specification requires a concise yet
comprehensive description that encapsulates the essence of the invention. Unlike its complete
counterpart, the provisional specification allows inventors to defer the inclusion of exhaustive
technical details, offering a provisional shield for the initial concept. This flexibility is
particularly advantageous as it grants inventors the essential priority date, marking the
inception of their patent protection journey.
2. Complete Specification:
The complete specification stands as the zenith of the patent documentation pyramid,
representing the detailed blueprint that unveils every facet of the invention. This
comprehensive document delves into the intricate technical features, leaving no stone
unturned in its quest to provide a profound understanding of the invention. A well-crafted
complete specification goes beyond mere description; it formulates clear and precise claims
that meticulously define the scope of protection sought by the inventor. To enhance
comprehension, illustrative drawings and working examples may be incorporated, offering a
visual and practical dimension to the technical narrative. Notably, it is the complete
specification that undergoes the rigorous examination process, becoming the focal point for
patent examiners in their assessment of novelty, inventive step, and industrial applicability.
Key Considerations for Provisional and Complete Specifications:
While the provisional specification offers a pragmatic approach to secure an early priority
date, it is essential for inventors to recognize its transitory nature. To progress towards the
ultimate goal of patent grant, the provisional specification must evolve into a comprehensive
and detailed complete specification.
The complete specification, being the linchpin of the examination process, demands
meticulous attention to detail. Clear and precise claims, supported by comprehensive
technical features and, when necessary, illustrative elements, ensure a robust document that
withstands the scrutiny of patent examiners.
In summary, the strategic interplay between provisional and complete specifications is a
nuanced dance in the patent application journey. It requires foresight to leverage the
provisional specification's provisional protection while diligently transitioning towards the
comprehensive completeness demanded by the examination process.
Specifying the Unseen: Demystifying Algorithms in Indian Specifications
In the realm of Indian patent law, the specifications for algorithms require a delicate balance
between clarity and complexity, demanding adherence to specific standards to ensure a robust
and comprehensive document.
1. Crystal Clear Explanations:
The hallmark of a well-crafted algorithm specification lies in its ability to articulate the logic
and flow of the algorithm with exceptional lucidity. This clarity is not just a preference but a
stringent requirement imposed by Indian patent law. The language used must be accessible to
skilled individuals in the relevant field, leaving no room for ambiguity or confusion. Each

27
step of the algorithm's journey, each decision point, and every variable must be articulated
with precision to ensure that the intricacies of the algorithm are comprehensible to those well-
versed in the art.
2. Striking the Right Balance of Detail:
The level of detail incorporated into the algorithm specification is a nuanced decision,
contingent upon the complexity of the algorithm in question. While intricate algorithms may
necessitate in-depth explanations to capture their multifaceted nature, simpler algorithms may
require less elaboration. Striking the right balance is paramount—sufficient detail to ensure
optimal clarity without burdening the reader with unnecessary intricacies. This tailored
approach ensures that the specification caters to the specific needs of the algorithm, offering a
comprehensive yet digestible portrayal.
3. Mathematical Precision:
For algorithms that communicate through equations and formulas, mathematical precision is
non-negotiable. The specification must present these mathematical elements with meticulous
accuracy, leaving no room for misinterpretation. Explaining the role of each equation and its
significance in the overall algorithmic process is crucial. In the context of Indian patent law,
the emphasis on accuracy extends to the mathematical language used, ensuring that skilled
practitioners can decipher the algorithm's intricacies without ambiguity.
4. Pseudocode's Guiding Hand:
The use of pseudocode—a human-readable representation of the algorithm—can be a
valuable tool in illustrating its logic and flow. This supplementary element aids in enhancing
the comprehensibility of the specification, providing a bridge between the conceptual
understanding and the actual code. However, maintaining consistency between the
pseudocode and the code used in practice is imperative. The pseudocode serves as a guiding
hand, offering a clear and accessible depiction of the algorithm's functionality.
5. When Code Speaks Volumes:
In certain scenarios, revealing the actual source code might be deemed necessary for a
complete understanding of the algorithm. However, caution is paramount. While transparency
is encouraged, confidential aspects of the code should be appropriately shielded. Striking the
right balance between transparency and protection ensures that the intricacies of the
algorithm are fully exposed without compromising sensitive elements.
In essence, the dance between clarity and complexity in algorithm specifications under Indian
patent law requires a nuanced and meticulous approach. It necessitates a comprehensive yet
accessible portrayal of the algorithm, ensuring that skilled practitioners can unravel its
intricacies with clarity and precision.

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Crossing the Legal Threshold: Requisites for Submission in India
Securing patent protection for your algorithm in India requires navigating a meticulous legal
landscape. Let's dive deeper into the five essential legal requirements you mentioned,
dissecting them through relevant sections of the Patents Act, 1970:
1. Compliance with the Patents Act, 1970:
This foundational document dictates everything related to patent grants, infringement, and
related legal procedures in India. Here are some key sections to keep in mind:
 Section 2(1)(j): Defines “invention” as “any new and inventive
process, machine, article or product or any new and inventive improvement of any of
these.” This section sets the broad eligibility criteria for patentability.
 Section 3: Lists specific inventions excluded from patentability, including
“mathematical or business method or a computer program per se or algorithms.”
However, Section 3(k) does not preclude patents for inventions involving algorithms
if they produce a "technical effect."
 Section 13: Explains the disclosure requirements for patent
applications, encompassing "such clear and concise description and illustrations as are
necessary for enabling the person skilled in the art to carry out the invention." This
section directly relates to the "Enabling the Skilled Artisan" requirement.
 Section 29: Deals with claims, which define the scope of protection sought. This
section emphasizes the need for "clear and unambiguous" claims.
Familiarizing yourself with these sections and others relevant to your specific invention
ensures your specification aligns with the legal framework and maximizes your chances of
patent grant.
2. Enabling the Skilled Artisan:
As per Section 13, your specification must empower a skilled person in your field to replicate
your invention without significant experimentation. This essentially translates to:
 Detailed Description: Break down your algorithm into clear, step-by-step
instructions, outlining the logic, inputs, outputs, and expected outcomes.
 Precise Terminology: Use clear and consistent technical terms familiar to
professionals in your field. Avoid ambiguity and jargon.
 Flowcharts and Diagrams: Consider utilizing visual aids like flowcharts and diagrams
to illustrate the algorithm's flow and execution.
 Pseudocode/Source Code: In complex cases, providing relevant pseudocode or even
portions of the actual source code might be necessary for complete understanding.
Remember, the goal is to equip a skilled professional, not a novice, with the knowledge to
replicate your invention effectively.

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3. Best Mode Disclosure:
Section 8 mandates disclosing the "best mode of carrying out the invention known to the
inventor at the time of filing.” This essentially requires you to:
 Describe the most effective method known to you for implementing your
algorithm, including any specific hardware or software configurations.
 If you know of alternative methods, acknowledge them but clearly identify your
preferred (best) mode.
 Honesty and transparency in disclosing the best mode strengthens your patent claim
and fosters trust in the patenting process.
4. Sharp and Defined Claims:
Section 29 emphasizes the importance of clear and unambiguous claims that define the
specific scope of protection you seek. Here's how to achieve clarity and avoid pitfalls:
 Draft claims precisely, focusing on the specific technical features and novel aspects of
your algorithm.
 Avoid broad or vague language that could encompass existing technologies or
infringe upon unrelated inventions.
 Use claim-drafting techniques like preamble clauses and functional limitations to
refine the scope of protection.
 Seek guidance from a skilled patent attorney to ensure your claims are legally sound
and accurately reflect your invention.
5. Drawing the Lines: The Visual Advantage:
While not explicitly mentioned in the Patents Act, drawings can be powerful tools for
enhancing understanding and clarity. Consider utilizing them when:
 Visual elements can simplify complex algorithmic processes or interactions.
 Flowcharts and diagrams effectively illustrate the algorithm's execution and data flow.
 Schematic representations depict hardware or software configurations relevant to the
algorithm's implementation.
CASE LAWS
Enabling the Skilled Artisan:
 Case: M/s. National Research Development Corporation v. M/s. Vimta Labs Ltd. &
Ors. (2004)
 Why it matters: This case emphasized the "enablement" requirement. The court ruled
that while the invention (a process for preparing an anti-tuberculosis drug) was novel,
the specification lacked sufficient details for a skilled person to replicate it

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 consistently. This case serves as a stark reminder that clarity and completeness are
crucial in enabling practitioners to execute the invention without undue
experimentation.
Definiteness of Claims:
 Case: Baxter Healthcare Corporation v. Uflex Ltd. (2012)
 Why it matters: This case focused on the importance of clear and unambiguous
claims. The court deemed the patent for a blood collection bag invalid due to vague
claim language that could encompass a wide range of existing technologies. This case
underscores the need for precise claims that accurately define the scope of protection
sought.
Best Mode Disclosure:
 Case: Tata Engineering & Locomotive Co. Ltd. v. Cimmco Birla Ltd. (2001)
 Why it matters: This case highlights the best mode disclosure requirement. The court
ruled that failure to disclose the best mode known to the inventor at the time of filing
could lead to patent invalidity. This case emphasizes the importance of transparency
and ensuring the specification reflects the most effective way of practicing the
invention.
Algorithm-Specific Considerations:
 Case: Hoffmann-La Roche AG v. Glenmark Pharmaceuticals Ltd. & Anr. (2016)
 Why it matters: This case specifically dealt with algorithm-related patents. The court
upheld the patent for a method of identifying drug candidates, recognizing the
importance of clarity and completeness in describing the algorithm's steps and logic.
This case provides valuable guidance for drafting robust specifications for algorithmic
inventions in India.
CONCLUSION
The importance of specifications in the realm of Indian patent law, particularly for
algorithms, is a nuanced and multifaceted journey. Serving as the cornerstone document, a
well-crafted specification demarcates the exclusive territory of an invention, guiding
inventors and competitors within permissible boundaries. Beyond its legal function, the
specification facilitates patent examination, empowering examiners to navigate the
complexities of the invention, enhancing the chances of successful patent approval.
Transparency and informativeness characterize an effective specification, contributing to fair
competition and innovation by educating the public and competitors. In the vibrant Indian
innovation landscape, a meticulously written specification transcends legal protection,
becoming a key to unlock commercialization opportunities by showcasing an invention's
potential applications, commercial viability, and unique features. The interplay between
provisional and complete specifications involves strategic navigation, leveraging the former's
flexibility and transitioning diligently towards the latter's comprehensiveness. The legal

31
requisites for algorithm submissions, dissected through sections of the Patents Act, guide
inventors, ensuring alignment with the legal framework for optimal patent grant possibilities.
Key considerations, such as enabling the skilled artisan, best mode disclosure, clear claims,
and the visual advantage of drawings, deepen the understanding of the nuanced relationship
between legal requirements and specification drafting. Insightful case laws underscore the
paramount importance of clarity, completeness, and precision in specifications. In conclusion,
a well-constructed specification is not merely a legal document but the storyteller, protector,
and harbinger of innovation in the evolving tapestry of Indian intellectual property.

7) Factors responsible for the growth of patent law

INTRODUCTION
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 modern terms, the patent is usually referred to as the right granted to an
inventor for his Invention of any new, useful, non-obvious process, machine, article of
manufacture, or composition of matter. The word “patent” is referred from a Latin term
“parterre” which means “to lay open,” i.e. to make available for public inspection. There are
three basic tests for any invention to be patentable:
Firstly, the invention must be novel, meaning thereby that the Invention must not be in
existence.
Secondly, 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.
Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the
Invention must not be solely used in any illegal work and is useful to the world in a bonafide
manner.
Meaning of patent
Under the Indian patent law, a patent can be obtained only for an invention which is new and
useful. The invention must relate to the machine, article or substance produced by a
manufacturer, or the process of manufacture of an article. A patent may also be obtained for
innovation of an article or of a process of manufacture. In respect to medicine or drug and
certain classes of chemicals, no patent is granted for the substance itself even if it is new, but
the process of manufacturing and substance is patentable. The application for a patent must
be true and the first inventor or the person who has derived title from him, the right to apply
for a patent being assignable.

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History of Patent
The first step of the patent in India was Act VI of 1856. The main objective of the legislation
was to encourage the respective inventions of new and useful manufactures and to induce
inventors to reveal their inventions and make available for public. The Act was repealed by
Act IX of 1857 as it had been enacted without the approval of the British Crown. Fresh
legislation was enacted for granting ‘exclusive privileges’ was introduced in 1859 as Act XV
of 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 Act
was then amended in 1872, 1883 and [Link] Indian Patent and Design Act, 1911 repealed
all previous acts. The Patents Act 1970, along with the Patent Rules 1972, came into force on
20 April 1972, replacing the Indian Patent and Design Act 1911. Again 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. Provisions
related to pre-grant and anti-post protests have also been introduced.
Factors for the growth of patent
1. Globalization and Trade Agreements: India’s participation in international trade
agreements, including the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS), has necessitated the strengthening of its patent laws to align with global
standards.
2. Economic Development: To foster economic growth, India has recognized the role of
innovation and intellectual property protection. Robust patent laws are seen as essential for
attracting foreign investment and promoting domestic innovation.
3. Technological Advancements: The rapid pace of technological advancements globally has
prompted the need for stronger patent protection to encourage innovation and ensure that
inventors are rewarded for their contributions.
4. International Pressure: India’s commitment to international agreements and pressure from
the global community have influenced the country to enhance its intellectual property regime,
including patent laws.
5. Increasing Innovation Ecosystem: The growth of a vibrant innovation ecosystem in India,
including research and development activities, has heightened the importance of effective
patent protection to encourage inventors and researcher
6. Awareness and Education: Increasing awareness among businesses, researchers, and the
public about the value of patents has contributed to a greater demand for and understanding
of patent protection.

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7. Government Initiatives: Various government initiatives, such as the National Intellectual
Property Rights (IPR) Policy, have been implemented to strengthen the overall intellectual
property framework, including patents.
8. Litigation and Precedents: Legal precedents and court decisions have played a role in
shaping and interpreting patent laws, providing clarity and guidance for businesses and
inventors.
These factors collectively contribute to the growth and evolution of patent law in India,
reflecting the country’s recognition of the pivotal role intellectual property plays in fostering
innovation and economic development.
CONCLUSION
Patents can provide great value and increased returns to individuals and companies on the
investment made in developing new technology. Patenting should be done with an intelligent
strategy that aligns business interests to implement the technology with a wide range of
options in the search for how, where and when to patent. As an example, with a focus on
international considerations and regulations in specific countries, it is possible for a company
to achieve significant savings and improve the rights gained using patents.

8) Dr. Kumar an orthopaedic surgeon invents a new process of surgery of limbs wishes
to claim patent for his method and approaches you for obtaining patent. Give your
advice.
Yes, from this illustration it's possible for an orthopaedic surgeon or any individual to apply
for a patent for inventing a new surgical process. Patents are granted for novel, non-obvious
inventions, and the process involves submitting a detailed application to the relevant patent
office, demonstrating the uniqueness and usefulness of the invention. Only if an innovation
complies with the criteria for patentability it will be eligible for a patent grant in India. The
innovation must meet all of the conditions that evaluate its suitability for a patent grant from
various angles to be considered patentable. Compared to other standards, some of them are
easier to meet, but all of them are equally crucial for determining patentability. The following
are the three requisites for patentability criteria:
• Novelty: Only if a product or method is both innovative and inventive, will it be regarded as
an invention under the Patents Act. Simply said, novelty refers to anything being new
compared to what it was on the priority date of the patent application. If an innovation
departs from the “prior art,” which is what already exists, it will be seen as unique. Previous
art references are never pooled for novelty analysis; rather, novelty is always evaluated in
light of a particular prior art reference at a time. However, a prior art citation may be
interpreted to include general knowledge of the art that isn’t stated explicitly in the reference.
Novelty is included in many sections relating to inspection, anticipation, objection, and
revocation but is not defined by the Patents Act.

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• Inventive step : Of all the criteria for patentability, the inventive step criterion is the most
ambiguous and difficult to define. The Indian Patents Act offers nonobviousness and
technical advancement or economic relevance as two criteria for evaluating inventive steps.
The Patents Act defines inventive steps in Section 2(ja). The inventor must make a creative
contribution to the invention. It needs to be something that a skilled craftsperson wouldn’t
anticipate. when an innovator creates a device to address a technological issue. A different
expert in the same sector offers the same solution by drawing on his knowledge or absorbing
instruction. The inventor’s technological solution won’t be regarded as original in that
situation because it was just a suggestion or motive. The Supreme Court defined the term
“inventive step” in the Biswanath Prasad Radhey Shyam case in 1978, and it is being used for
inventive step analysis today.
• Industrial application : According to Section 2(ac) of the Patents Act, “the creation is a
patent of being used or created in a sector.” It implies that a product must be useful to be
patentable because the invention cannot exist in a vacuum and must apply to all fields. A
product will be deemed to be industrially applicable if it can be produced consistently and has
at least one application in a given industry. For a procedure to meet this condition, the
industry must be able to employ it. Users that are uncertain, hazy, future, or non-specific are
not regarded as legitimate users. The same is true when a product or procedure is used in a
minimal or untrustworthy way.

9) Which act constitutes infringement of patents? Explain the remedies available for
infringement?
INTRODUCTION
Patent is a type of intellectual property granted by the patent authority to the inventor for a
limited period of time for exercising monopoly over his specific innovation. A patent is
considered to be an exclusive monopoly right as it excludes others from using, selling,
distributing the invention of innovators. Patent Infringement is illegal as it violates the
exclusive right of the patent holder.
What is Patent Infringement and what act constitutes of it?
Patent infringement occurs when someone makes, uses, sells, or imports a patented invention
without the permission of the patent owner. This can include manufacturing a product that
utilizes the patented invention, selling or importing a product that incorporates the invention,
or using the invention in a process. In order for an infringement to occur, the accused product
or process must be identical or substantially similar to the claims of the patent in question.
The Indian Patent Act, 1970 provides several remedies to address patent infringement,
including injunctions, damages, and seizure, forfeiture or destruction.
Remedies for Infringement of Patents
Section 108(1) of the Patents Act provides for the remedies to the plaintiff in case his patent
rights have been infringed. In any suit for infringement, the court may grant reliefs such as

35
injunction and at the option of plaintiff, either damages or an account of profits. These
remedies are not cumulative but alternative.
In addition, the court may also order that the goods which are found to be infringing and
materials and implement, the predominant use of which is in the creation of infringing goods
shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation.
1. Injunction: It is a preventive civil remedy. It is of two kinds:

2. Temporary/ interlocutory injunction: It is limited to a specific period or till the time

the case is finally decided on merit. Relief by way of interlocutory injunction is
granted to mitigate the risk of injustice to the plaintiff during the period before the
uncertainty could be resolved. Its object is to protect the plaintiff against injury by
violation of his right for which he could not be adequately compensated in damages
recoverable in the action if the uncertainty were resolved in his favor at the trial. An
interlocutory injunction is invoked by the court at the initial stages of the suit filed by
the plaintiff. This is passed in order to prevent the defendant from getting further
profits by using other patented products. In order to invoke a temporary injunction, it
is important for the patentee to prove that the patent is valid by all terms and has been
infringed by the defendant. Also, the subsequent infringement of his patent rights has
caused irreparable loss to him.

3. Permanent injunction: A permanent injunction is invoked when the case is finally

decided by the court on merit. The interim injunction is transferred to a permanent
injunction if the defendant is found guilty of patent infringement rights and the
decision is on the side of plaintiff. But if the defendant is absolved from the liability
and proved to be innocent, then the interim injunction stands dissolved and is not
converted into a permanent injunction. It is limited to the duration of the patent.

EX parte interim injunction:

Following guidelines may be taken into consideration by the trial courts before granting ex
parte ad interim injunction:
1. Where the plaintiff and the defendant are residing outside the state and their
information like identity, address, etc. are easily known.

2. Where sales of the infringed products are not on a commercial scale.

3. Where the interim injunction is going to result in the closure operation/ business of
the defendant.

4. The trial court should carefully scrutinize the certificates, infringing marks, etc. in
case of patent/ trade mark disputes.

5. No ex parte interim injunction can be granted if no evidence of infringement has been

produced by the plaintiff.

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  Damages or account of profits: The owner of a patent is entitled to either damages
or an account of profits. He may either obtain damages in respect of losses caused by
infringing activities of the defendant or an account of profits obtained by the infringer
– but he cannot seek both. When drafting particulars of claim, the claimant will
generally request these remedies as the alternative. It will be granted in addition to the
remedy of injunction.

Where plaintiff chooses the remedy of account of profits, he will be entitled to claim only that
profit which was enjoyed by the defendant by using the plaintiff’s invention. It is
unreasonable to give the profits of patentee which were not earned by the use of his
invention.
In Ravi Raj Gupta v. Acme Glass Mosaic Industries, the court held that the patent sought to
be enforced and alleged to have been infringed by the defendant was not an invention within
the meaning of Section 2(j) of the Patents Act, 1970. Therefore, the plaintiff was not entitled
to the grant of an ad interim injunction as prayed for. However, to protect the interest of the
plaintiff in the event of his ultimately succeeding in the suit, the defendant was directed to
maintain a complete, true and accurate account of the manufacture and sale of the tiles.
 Seizure or forfeiture of infringing goods: Apart from other reliefs which a court
may grant, the court may also order that the goods which are found to be infringing
and materials which are predominantly used in the creation of infringing goods shall
be seized, forfeited or destroyed, as the court deems fit under the circumstances of the
case without payment of any compensation.

CONCLUSION
In conclusion, patent infringement refers to the unauthorised use or manufacture of a patented
invention without the consent of the patent owner. The Indian Patent Act, 1970 provides
several remedies to address patent infringement, including injunctions, damages, and seizure,
forfeiture or destruction. However, the enforcement of these remedies remains a challenge
due to the complexity of the Indian legal system and the length of time it takes to resolve a
patent dispute. To protect their patented inventions, businesses in India must be proactive in
monitoring for infringement and pursuing appropriate legal action when necessary.
Additionally, it is important for businesses to have a thorough understanding of the Indian
patent law and the remedies available to them in case of infringement.

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SHORT ANSWERS

1) Rights of a Patentee

One of the most significant types of intellectual property is the patent. A patent’s term is
normally 20 years from the application’s priority date. When a product or technique is
protected by a patent, the patentee has the legal right to bar others from creating it, using it,
selling it, offering it for sale, or even importing it into the relevant territory. There are several
rights of patentee when their innovation is patented as per the Patent Act of 1970 such as
Right to Use and Enjoy Patent, Right to Exploit the Patent, Right to Grant or Assign
Licenses, Right to Surrender the Patent, Right before Selling, etc.. In order to enforce his
rights, an inventor will have to file an application for the grant of a patent to his invention.
After the completion of formal considerations and processes, the exclusive rights will be
granted to the inventor.
A patent grant in India gives the patentee the only right to use the patented invention, make
the invention, or use the patented technique associated with the invention. The Patent Act of
1970 outlines certain rights and responsibilities of patent holders.

The following are the various patentee rights: –

● When a patent is granted for a product, the exclusive right to prohibit any third party from
offering, using, creating the product for sale, importing, or exporting the product within
the territory of India;
● Where the subject matter of the Patent is a process, the exclusive right to prevent any third
party, without patentee’s consent, from offering, using, making for sale, importing, or
exporting such products directly obtained from the process in the territory of India;
Furthermore, according to Section 48 of the Patent Act of 1970, the Patentee’s product must
not be such that it cannot be patented in India.
The elaborated Rights of Patentee in India are as follows: –
1. Right to Exploit the Patent: – The patent holder in India is granted the right to
manufacture, use, sell, and distribute the patented product. If the invention is a
manufacturing process, the patentee has the right to delegate the procedure to another
person authorised by the patentee. This right can be enforced by the patent holder’s agent.
2. Right to Assign and License: – As per Section 69(5) of the Patent Act 1970, the patent
holder is granted the right to assign or grant licences to third parties for the purpose of

38
 producing and distributing the patented products. When there are several patent owners for
a patented product, all patent owners must agree to issue the licence to a third party as a
group. Only after the administrator has properly approved the request, the licence is
deemed to be issued. The assignment or licence must thus be in written and filed with the
Patent Authority in order to be valid and legitimate.
3. Right to Surrender the Patent: – After seeking permission from the controller, the patent
owner has the right to surrender his patent. The controller then advertises this surrender in
accordance with the Indian Patents Act. Those interested in acquiring patent ownership
can then approach the controller. The controller investigates the claims of the parties and,
if necessary, surrenders ownership.
4. Right Before Sealing: – According to Section 24 of the Indian Patents Act, a patent is
sealed from the date of notification for acceptance to the date of notification of
acceptance. The patentees right begins when the notification of acceptance is presented. A
patent is protected from the date of the notification for approval to the date of the
notification’s adoption, in accordance with Section 24 of the Indian Patents Act. Following
the presentation of the notice for acceptance, the patentee’s entitlement is applicable.
5. Right to Sue For Infringement: – The Patentee has the right to sue for patent
infringement in District Court, which has jurisdiction to hear the case. When any of the
rights of the patent holder is violated, then it is termed as patent infringement. This is to
mean that if the patented invention is used, manufactured or sold for commercial purposes
by any person, then it will be accused of patent infringement. In case of violation of
patentee’s rights, the patentee can approach either the district court or a high court. If the
person is proven guilty of infringement, the courts will either grant permanent injunction
or damages or both.
6. Right to Use and Enjoy Patent: – The Patentee has the exclusive right to exercise, make,
use, convey, or offer the patented substance or article in India, as well as to practise or use
the process or techniques associated with the invention. Such rights may be exercised by
the Patentee himself/herself or by his/her licensees or agents.
7. Right to Apply for The Patent of Addition : – This provision is provided in Section 54 to
56 of the Indian Patents Act. This provision provides for the modifications in the existing
invention. In such a case, the patent holder is granted the right to the modified invention
after the notification of the acceptance comes out. Once the notification is presented, the
owner is provided with the same rights as provided to the previous patent.

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2)X has an invention relating to atomic energy and wants to obtain patent for it. Advice
him.

Inventions related to atomic energy are scrutinised for patentability under Section 4 of the
Patents Act, 1970.

According to Section 4 of the Patents Act, 1970, “inventions relating to atomic energy”
defined under Section 20 of the Atomic Energy Act (AE Act), 1962, are “not patentable”.

It is important to consider Section 20 of AE Act while analysing the impact of Section 4 on

inventions which are related to atomic energy. According to this section, patents are not
granted for those inventions which the Government of India (GoI) considers to be related to
the control, production, disposal or usage of atomic energy or prospecting, extraction,
mining, physical and chemical treatment, production, fabrication, canning or using any
prescribed substance or radioactive substance or the insuring of safety in atomic energy
operation. This act is meant to ensure safety in atomic energy operations in India.

3)A petitioner challenges Section 12 6 of the patents Act as unconstitutional on the

ground that it goes against Article 19(1)(g) of the Indian constitution as the said section
does not permit advocates to carry out patent practice. Decide

Section 126 states that: any person who is eligible for patent agent examination and later
qualifies the examination conducted by the Patent office was only considered as the patent
agent and was awarded with Indian patent registration number and he who is responsible for
all the patent related matters starting from filing to grant or to hearing of the patents in front
of the controller. From the Act we clearly observed that the two categories of individuals
currently act as patent agents. Firstly, those composed of advocates & secondly those who
possessed a degree in "science, engineering/ technology" and who had cleared a qualifying
exam. Earlier to this, the section was first amended in 2002 replaced the phrase "degree of
any university" with "degree in science, engineering or technology" in section 126(1)(c)(i)
Again in the year 2005, the Act was amended and section 67(a) of the Patent (Amendment)
Act, 2005 deleted section 126(1)(c)(i).

Further if this section is amended then advocates can become patent agents directly without
any additional requirements provided they meet the new requirements i.e. a degree in science,
engineering or technology.
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In chackolingham v controller of patents case, Mr. SP Chocaklingam, who is an advocate,
patent practitioner and the petitioner in this case, filed the writ petition in the year 2006
before the Madras High Court. The petitioner who was deemed ineligible by the Indian
Patent office to appear for the Patent agent examination in accordance with Section 126 of the
Patents Act. The petitioner challenged the 2005 amendment of the section 126 of the Indian
Patents Act, 1970. According to him the amendment is illegal, unconstitutional, ultra vires
and void.

The petitioner contended that, the amendment was unfair in nature of the fundamental right
guaranteed under Article 14, 19 (1) (g) and 21 of the Constitution of India and also not
beneficial to the interest of the common people of the country.

Secondly, the petitioner contended that such amendment prevents the knowledge oriented
advocates who are more qualified in drafting and preparing documents before the Controller
of Patent, rather than permitting only such qualified candidates holding degree in science,
engineering and who passed the Patent agent examination conducted by the respondent
(Indian Patent office) to act as patent agent. According to the petitioner, such amendments are
the violations of the profession of legal practitioners against the Advocates Act, 1961, within
the purview of Article 14 or as an reasonable restriction under fundamental rights guaranteed
under Article 19 (1) (g) of the Constitution of India. The petitioner argued that the advocates
who are well qualified in drafting related matter have to depend on the other professionals or
patents agent for drafting, filing and appearing before the Controller of Patents, hence, the
amendment is in violation of Article 21 of the Constitution of India.

In its judgement the court said that for all patent related matters, neglecting the
auspiciousness of the advocates and considering the certain group of peoples to act as agent
was considered to be unreasonable and against the interest of the general public of the
country. The court held that any advocate holding degree in engineering, science or
technology would be eligible for registering himself in the register of patent agent and to be
act as the patent agent who deals with all related matters such as drafting, filing and hearing
etc. for the patent in the country.

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 4) Surrender of patent

INTRODUCTION

Patents are the sole rights granted to inventors for their innovations, giving them the power to
oversee their use, production, and sale. They act as a form of trademark protection and
promote innovation by giving creators temporary hold over their creations. Similarly, patent
revocation and surrender are critical to the integrity of the patent system. When a patent is
found to have been improperly granted, it can be revoked or invalidated, whereas surrender
allows patent holders to voluntarily give up their rights.

Surrender of patent

Section 63 of the Patents Act, 1970 provides that the patentee may, at any time by giving
notice in the prescribed manner to the Controller, offer to surrender his patent. The official
fees for providing such an application through online mode is Rs. 1000 /- for natural persons
or start-ups or small entities or educational institutions and Rs. 5000 /- for others as
mentioned in the First Schedule of the Patents Rules, 2003. It is further provided in Section
63 that the Controller shall publish the offer for surrendering the patent in the prescribed
manner (in the Journal), and also notify every person other than the patentee whose name
appears in the register as having an interest in the patent.

If any person interested is aggrieved by the surrender offer, he may within three months from
the date of publication of the notice by the Controller, give notice of opposition to the
Controller in Form 14 in duplicate. The Controller shall provide an opportunity of being
heard to the patentee as well as the opponent and if the Controller is satisfied after the hearing
that the patent may properly be surrendered, he may accept the offer and, by order, revoke the
patent. An important provision while surrendering the patent is that there is no need for the
patentee to give the reason or motivation for the offer of the surrender.

CASE LAWS

In the case of M/S MYLAN LABORATORIES LTD. Vs ICOS Corporation, the IPAB held
that in the event of an offer of surrender of a patent by a patentee, the Controller has to follow
the procedure contemplated under section 63 of the Act. Therefore, as long as the surrender
proceedings are pending and unless and until the Controller accepts the offer of surrender the
impugned patent to be in existence and continued to be in the register. The IPAB further
provided the patent to be revoked using grounds under surrender and rejected revocation

42
proceedings under section 64. No costs were offered as brought out by the plaintiff in the
revocation proceedings under Section 64 and instead the IPAB ordered the patent to be
revoked within 6 weeks from the date of receipt of the order.

CONCLUSION

Surrendering the patent is a good statutory option available to the patentee to safeguard his
financial interest prior to making an offer for the surrender. Any payment made under the
patent prior to the date of the acceptance of the surrender application would not be put at risk
and surrendering the patent would not adversely affect the continuance of the revocation
proceedings in the court. However, the Controller may not proceed with the acceptance of the
application till the outcome of the revocation litigation. In case the patent is revoked, it would
mean that the patent would be deemed to have never existed and thus subjecting all the
financial agreements made earlier at risk.

7. Biotech Patent
What is a Patent?
A patent is a legal document that grants exclusive rights to an inventor to exclude others from
making, using, or selling an invention for a limited period of time, usually 20 years from the
date of filing the patent application. In the biotechnology industry, patents are used to protect
inventions related to biological processes, materials, and products.
What is Biotechnology?
Biotechnology (biotech) is the use of biological processes, organisms or systems to
manufacture products intended to improve the quality of human life or modernise industry.
These products contribute to sustainable development, public health and environmental
protection.
Classification of Biotech patents
Biotech patents can be classified as product patents and process patents.
Product patents:
These patents protect a specific product or composition of matter, such as a novel protein, a
new genetic sequence, or a pharmaceutical compound. Product patents are often used in the
pharmaceutical industry to protect the development of new drugs and therapies.
Process patents:
These patents protect a specific method or process for producing a product or composition of
matter. For example, a process patent may protect a specific method of producing a protein, a
genetically modified organism, or a medical device.

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Both product and process patents can be important for protecting biotech inventions, and
companies may choose to pursue both types of patents to fully protect their intellectual
property. However, it is important to note that obtaining a patent can be a complex and
expensive process, and not all inventions may be eligible for patent protection. It is
recommended to consult with a patent attorney or agent for guidance on patent eligibility and
the patent application process.

What Can Be Patented in Biotechnology?

A wide range of inventions can be patented in the biotechnology industry. These include
DNA sequences, proteins, genetic engineering techniques, pharmaceuticals, and diagnostic
methods and tools. However, not all biotechnology inventions are patentable. In order to be
granted a patent, an invention must be new, useful, and non-obvious.
Additionally, there are some restrictions on what can be patented in certain countries. For
example, some countries prohibit the patenting of human embryos or genetically modified
organisms.
Types of biotech patents:
There are several types of biotechnology patents, including:
Utility patents:
These are the most common type of patent and protect new and useful processes, machines,
articles of manufacture, and compositions of matter. In biotechnology, utility patents may be
granted for new DNA sequences, genetically modified organisms, and novel methods of
producing biological products.
Plant patents:
These patents protect new and distinct varieties of asexually reproduced plants. This type of
patent is particularly important in the agricultural biotechnology industry, where companies
develop new and improved crop varieties.
Design patents:
These patents protect the ornamental design or appearance of an invention, rather than its
functionality. In biotechnology, design patents may be granted for the unique shape or
configuration of a laboratory apparatus or medical device.
Gene patents:
These are controversial patents that grant exclusive rights to a specific gene sequence or
fragment. Some argue that gene patents stifle research and innovation, while others believe
they are necessary to incentivize investment in biotechnology research.
Diagnostic method patents:
These patents protect new and innovative methods of diagnosing medical conditions or
diseases. In biotechnology, diagnostic method patents may be granted for new assays or
diagnostic tools that detect specific genetic markers or biomolecules.

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8. Patent of addition

The provisions of patents of addition has been defined under Section 54 of The Patents
Act,1970
A patent is an exclusive right granted for an invention, which is a new product or a process
that involves an inventive step and is capable of industrial application. Therefore, to obtain a
patent, the subject matter of an invention must satisfy the patentability criteria which states
that the subject matter must be novel, must involve an inventive step (technical advancement
or contribution), and must be capable of industrial application.

Many times, the applicants and patentees may arrive at improvements or modifications to
overcome drawbacks of an invention either filed or granted (referred to as main invention).
Further, as a result of feedback from the market, improvements or modifications may
ordinarily take place. Also, it may be an ordinary process for the inventor or applicant to
make certain changes or amendments to come up with different modifications along with
time, as per the nature of the invention.

However, these improvements or modifications to the main invention may not necessarily
include any technical contribution in view of the disclosure made in the main invention. But
the modifications or improvements may include only novel features/ elements with respect to
the main invention. Therefore, these improvements or modifications fail to qualify the
patentability criteria for the grant of an independent patent.

In such scenarios, the Patent of Addition plays a crucial role in order to safeguard and protect
all that is added later and does not exist in the original patent. Sections 54, 55 and 56 of the
Indian Patents Act specifically deal with Patent of Addition.

Patent of Addition is an application made for a patent undergoing improvement or

modification of the invention described or disclosed in the main invention for which the
patentee has already applied for or has obtained a patent. The applicant or patentee must be
the same for the main invention and the improvement/ modification and according to the
provision it says that if the improvement/ modification involve an additional applicant, a
patent of addition may not be pursued.

Patent of Addition enables the applicants and patentees to apply for an improvement or
modifications made on the invention disclosed in the complete specification. The

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improvement must be more than a mere workshop improvement. The Patent of Addition
protects the novel, industrial applicability and non-inventive improvements or modifications
to an already filed or granted patent application.

Section 54 of the Act refers to an application being made for a modification/ improvement
and does not limit itself to any specific type of application. Section 7(1A) of the Act states
that an international application filed under the Patent Co-operation Treaty (PCT) shall be
deemed to be an application filed in India, if a corresponding application has been filed in
India. Under Section 138(4) of the Act, an international application filed under the PCT
designating India “shall have the effect of filing an application for a patent under Section 7
and 54. From the aforementioned, it is clear that a patent of addition can be filed in the form
of a domestic application or an international application which covers patent of addition as
well.

Section 55 of the Indian Patens Act states that the term of a patent of addition shall be equal
to that of the main application, and shall remain in force as long the main application is in
force, and expires along with that of the main application. This limitation in the term is
balanced by the fact that no separate renewal fee has to be paid for a patent of addition. In the
situation that the main application is revoked, the patent of addition may, upon request by the
patentee, become an independent patent for the remainder of the term and shall continue to
remain in force as an independent patent. The grant of a patent of addition cannot be refused
and it cannot be revoked or invalidated. The validity of a patent of addition cannot be claimed
on the ground that the invention is the subject of an independent patent.

Also, the provision of Patent of Addition under the Indian Patent System is more beneficial to
the applicant(s) than the Continuation-in-Part (hereinafter “CIP”) under the US patent system.
More particularly, a CIP is only filed when the main application is pending whereas Patent of
Addition can be filed any time during the term of the patent. Moreover, a separate annuity is
to be paid for maintenance of a CIP application, whereas there is no maintenance for a Patent
of Addition separately. The maintenance of Patent of Addition is required only when the
parent patent is revoked and the Patent of Addition stands as a separate and independent
patent.

9. Sealed non-patent.
The term "sealed non-patent" is not a defined legal term in India's intellectual property
regime. However, it can refer to two possible concepts:
1. Confidential Document Deposited with the Indian Patent Office:
Under Section 87 of the Patents Act, 1970, an inventor can deposit confidential technical
information with the Indian Patent Office (IPO). This document is kept sealed and remains
inaccessible to the public.

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This option is useful for inventions that are not yet ready for patent filing, but the inventor
wants to establish priority for the invention and prevent others from claiming it first.
The sealed document does not provide any legal protection against others using the
invention, but it can serve as evidence of priority in case of future disputes.
2. Trade Secret:
A trade secret is any information that gives a business a competitive advantage and is kept
confidential. It can include technical know-how, manufacturing
processes, recipes, formulas, customer lists, marketing strategies, etc.
Trade secrets are not formally registered or published but are protected by common law
against unauthorized use or disclosure.
In some cases, a document containing a trade secret might be sealed to emphasize its
confidentiality.
Key Points to Remember:
Sealed non-patents do not offer the same level of legal protection as granted patents.
The inventor needs to take proactive measures to maintain the confidentiality of the
information contained in the sealed document.
Misusing the sealed non-patent system for fraudulent purposes can attract legal
consequences.
It's important to consult with an intellectual property attorney for specific guidance and
advice on protecting your inventions or confidential information in India.
I hope this short note provides a helpful overview of "sealed non-patents" in India. Please let
me know if you have any further questions.

10. Procedures for granting and sealing of patents.

Requirements for Grant of Patent
A patent can be granted to an invention only if it fulfils the following requirements:
1. The Subject Matter Of The Invention
The first test to check whether an invention is patentable or not is the subject matter test.
Under the Patent Act[2], Section 3 lists out a few things which are not falling under the topic
‘inventions’ and section 4 lists out inventions which cannot be patentable.
For a work to be called an invention, it should not fall under any of the categories mentioned
under section 3. According to section 4, any inventions relating to atomic energy cannot be
patentable. Thus, any invention that doesn’t fall under the category of these two sections falls
under the patentable subject matter and thus can be patentable.

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 2. Novel
The second requirement for an invention to be patentable is the novelty or new invention. No
one can get a patent for an invention which is old and is already in use. Section 2(l) defines
what a new invention means. According to the section, an invention or technology applied for
patent shouldn’t have been used or published in any document in the country or any part of
the world before the date of filing of such patent.
If the invention is found to be in existence on the day of filing the application, then the
application shall be rejected on the ground that it has no novelty/newness.
3. Non-Obvious/Inventive Step
Inventions which are simple and easy or don’t have any inventive step, cannot be
patentable. “Inventive step” is defined under section 2(ja) as an invention which involves
technical advance when compared to the existing knowledge or which has economic
significance or both.
Any invention which has an inventive step and is not obvious to a person who has specialised
in such a field of art can be patentable. If the invention is so obvious that an ordinarily skilled
person can invent it, such an invention though it falls under the subject matter and has
novelty, cannot be patentable.
4. Useful/Industrial Application
Any invention, though falling under the subject matter, has novelty and is not obvious, cannot
be patentable if it is not useful (in case it is filed under the utility patent category). No one
can claim a patent for an invention which is not useful to anyone. An invention should be
capable of industrial exploitation for it to be considered useful for the grant of a patent.
Who Can Apply For a Patent
Section 6 of the Patent Act lists people who can apply for patents. An application for a patent
can be made by the following persons individually or jointly:
1. Anyone who is the true and first inventor of an invention
2. Anyone who is assigned by the true and first inventor and is given the right to make an
application;
3. Anyone who is a legal representative of a deceased person who is entitled to apply for such
an application.

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Procedure for Grant Of Patent
Any application made to the patent office should undergo various processes. The following
are the procedure involved in granting of Patent:

1. Filing
Any person who is the true and first inventor of an invention, or his assignee or his legal
representative (if deceased) can file an application to the patent office. Such applications
made to the patent office should be in the prescribed form.
When an application to the patent office is accompanied by a provisional specification, then
an application with complete specification should be submitted within 12 months from the
date of filing the initial application. If the complete specification isn’t provided within the
specified period, the application will be abandoned.
Suppose more than one application is filed by the same applicant and one is a modification of
another. In that case, the controller may consider that the whole invention is a single
invention and allow the applicant to file a complete specification of all the provisional
specifications.
Each application accompanied by provisional or complete specification should be
accompanied with the following contents:
i. The application should begin with a title which indicates the subject matter of the
invention.
ii. A drawing can be submitted along with the application. If the controller requests a
drawing, then it shall be mandatory to submit it as the controller may require. This
drawing can be treated as a specification of the invention.
iii. If the controller asks for a sample or model of anything that illustrates the
invention, then such a model or sample should be furnished to grant an
application.
iv. For a complete specification, the application should provide:
a. Full information and complete description of the invention’s operation or use.
It should also provide in detail, the method in which it operates;
b. The best way to perform the invention
c. A claim defining the scope of such invention; and
d. A technical explanation of the invention.

2. Publication Of Application
Any application made to the office of a patent shall not be made open to the public for the
period specified in the application. The applicant can ask the controller to publish his
application prior to the date specified in the application through an application in the
prescribed manner.
If an application contains a secrecy direction, then the said application shall not be published
until the applicants ask to publish it or until the specified period expires.

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The publication of the application will include the applicant’s name and address, the number
of applications, and the date of application.
From the date of publishing till the date of grant of the application, an applicant shall have all
the privileges as if the patent has been granted. However, he can’t institute any proceeding for
any infringement.

3. Request For Examination

After an application is filed, it cannot be examined until a request for examination is filed in
the prescribed manner by the applicant or by any other person having an interest in the
application. If a request for examination is not made within the prescribed time, then the
application shall be treated as if it has been withdrawn by the applicant.

4. Examination
Once an application for examination is made by the applicant or by any person having an
interest in it, the formal examination takes place. After the request for examination is made,
the controller shall ask the examiner to examine all the documents and produce a report of
whether the application has been made in accordance with all the requirements specified in
the Act and whether the invention is patentable or not.
The examiner who has been assigned with the examination process should produce a report
within the specified period to the controller.

5. Prior Art Search

The examiner who the controller has referred to examine the application and invention should
investigate whether the said invention is new or is already in existence. He has to check for
any prior publication of the invention made in the country or in any other country. Every
finding that he has made should be reported to the controller.

6. Amendment And Rejection Of Application

The controller may, if after receiving a report from the examiner finds out that the application
is not in accordance with the requirements of the Act, can reject the application (by giving an
opportunity to the applicant to be heard), or ask the applicant to amend the application.

7. Patent Opposition
Opposition to the patent office in respect of an invention can be filed either before a patent is
granted or after it has been granted.
Once an application has been published, the patent shall be granted within 12 months from
the date of filing the initial application. Any person can make an application of objection to

50
the patent office within these 12 months for any one of the reasons specified in sub-section
(1) of section 25 of the Patent Act. Such an opposition filed before the grant of a patent under
section 25(1) is known as pre-grant opposition.
A pre-grant opposition can be filed by any person on some of the following grounds:

1. The application belongs to someone else;

2. The said invention has already been published before the priority date elsewhere in
the country.
3. The invention is already in public use or is known to the public prior to the priority
date of that claim
4. The invention has no inventive step involved it and is so obvious for any person
specialised in that field;
5. The said invention doesn’t come under the meaning of invention or method which has
been specified in the Act.
An opposition filed after a patent has been granted under sub-section (2) of section 25, is
known as a post-grant opposition. The opposition to the patent should be filed within 12
months from the date of grant of patent.
8. Grant/Refusal Of Patent
After the publication of the application, if the application has complied with all the
requirements of the Act and no opposition/objection to the application has been claimed, a
Patent may be granted under Section 43 of the Act. If any opposition has been raised or the
application doesn’t comply with the Act’s requirements, the patent shall be refused or
cancelled (in case of post-grant opposition).

9. Renewal

Every patent should be renewed every year with a small amount of renewal fee. The patent
can be renewed for an extension of 20 years from the date of filing the application. After the
completion of 20 years, the license for invention expires and the invention becomes open for
public use.

10. Appeal

Any person who is affected by the decision of the controller or central board can approach the
appellate board established under section 83 of the Trade Mark Act, 1999 only for
decisions/order granted under section 15, 16, 17, 18, 19, 20, 25(4), 28, 51, 54, 57, 60, 61, 63,
66, 66, 69(3), 78, 84(1) to 84(5), 85, 88, 91, 92 and 94 of the Act. Every appeal should be
made within three months from the date of such a decision.

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Sealing of Patent
•Where the application for a patent along with complete specification has been accepted
either without opposition.
•after the opposition, a patent shall be granted if the applicant makes a request in the
prescribed manner for a grant of patent.
• The request has to be made within six months from the date of advertisement of the
acceptance of the complete specification.
• The patent so granted shall be sealed with the seal of the patent office and the date of
sealing of patent shall be entered in the register.

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