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MODULE 3
Introduction to Intellectual Property: Role of IP in the Economic and Cultural
Development of the Society, IP Governance, IP as a Global Indicator of Innovation,
Origin of IP History of IP in India. Major Amendments in IP Laws and Acts in India.
Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent
an Invention. Rights Associated with Patents. Enforcement of Patent Rights.
Inventions Eligible for Patenting. Non-Patentable Matters. Patent Infringements.
Avoid Public Disclosure of an Invention before Patenting.
Process of Patenting: Prior Art Search. Choice of Application to be filed. Patent
Application Forms. Jurisdiction of Filing Patent Application. Publication. Pre-grant
Opposition. Examination. Grant of a Patent. Validity of Patent Protection. Post-grant
Opposition. Commercialization of a Patent. Need for a Patent Attorney/Agent. Can
a Worldwide Patent be obtained? Do I Need First to File a Patent in India? Patent
Related Forms. Fee Structure. Types of Patent Applications. Commonly Used Terms
in Patenting. National Bodies Dealing with Patent Affairs. Utility Models.
Introduction
Intellectual Property (IP) is a special category of property created by human
intellect (mind) in the fields of arts, literature, science, trade, etc. Since IP is a
novel creation of the mind, it is intangible (i.e. invisible and indivisible) in nature
and differs from the tangible property, such as land, house, gold and car etc.
Intellectual Property Rights (IPR) are the privileges accorded to the
creator/inventor (of IP) in conformance with the laws. These rights are given to the
creator/inventor in exchange for revealing the process of creation/invention in the
public domain. The inventor is conferred with special rights to use, sell, distribute,
offering for sale and restricting others from using invention without his prior
permission.
Broadly, IP comprises of two branches i.e.
Copyrights and Related Rights: Refers to the creative expressions in the fields of
literature and art, such as books, publications, architecture, music, wood/stone
carvings, pictures, portrays, sculptures, films and computer-based
software's/databases.
Industrial Property Rights: Refers to the Patents, Trademarks, Trade Services,
Industrial Designs and Geographical Indications.

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Role of IP in the Economic and Cultural Development of the Society
The economic and social development of a society is largely dependent on creativity.
The protection provided by the IPR to the creators/innovators is in fact an act of
incentivization for encouraging them to create more and motivates others to create
new and novel things.
However, if IPR is practiced rigidly, it may have a negative impact on the
progress of society. For example: Trade-Related Aspects of Intellectual Property
Rights (TRIPS). TRIPS Agreement has affected the farming community as they are
unable to store seeds for the next crop. Multinational companies regulate the price
of seeds, which is generally beyond the reach of a majority of the farmers.
To avoid the negative impact of IPR, certain laws, have been enacted to
maintain a balance between the interests of creators/inventors & community. For
example: Protection of Plant Varieties and Farmers Rights (PVP&FR) Act, 2001.
PVP & FR provides privileges, such as:
• ‘Rights on seeds’ provides rights to the farmers to save seeds, use seeds and
share, exchange or sell seeds to other farmers and
• ‘Right to protection against accusations of infringement’ protects the farmers from
infringement and other legal accusation levied upon them due to his legal
ignorance in using other‘s plant varieties.
A patent can be revoked in favor of compulsory licensing by the government
during an emergency or a natural calamity. If an invention is not in the interest of
society, it is not registered by the government for grant of any rights associated with
IP. For example, cloning of human embryos is banned for IP protection.
India is enriched with massive biodiversity and genetic resources and their use
is embodied Traditional Knowledge (TK). However, the use of such knowledge and
resources are not limited to local contexts as many innovations relate to and draw
on them. The main issue of concern is to protect TK and genetic resources, which
are rapidly coming under the governance of sometimes conflicting IPR policies.
To derive maximum benefit from them, the establishment of adequate legal
infrastructure and enforcement is required. With initiatives like “Make in India”,
“Atmanirbhar Bharat” and supporting local homegrown brands, and easy as well
as accessible approach to patents and trademarks registration, it is possible to reap
the benefits of our resources.

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IP Governance
Every nation has dedicated agencies for laying out the guidelines, implementation
and enforcement of IP related matters. In India, the governance of all categories of
IP, except the Plant Variety and Farmers Rights Act, is carried out by the
Department for Promotion of Industry & Internal Trade (DPIIT) under the aegis
of Ministry of Commerce and Industry, GoI. Other government dedicated
organizations/departments to promote patent-ecosystem (patent awareness, patent
filing and patent commercialization) in India are: Technology Information
Forecasting and Assessment Council (TIFAC), National Research Development
Corporation (NRDC) Cell for IPR Promotion and Management (CIPAM), etc.
In order to create a hassle-free exchange of IP related activities amongst all the
nations, United Nations (UN) has established an organization called the World
Intellectual Property Organization (WIPO). This agency is at the forefront of
imparting knowledge about IP and governs international filing and registration of IP
through various Conventions and Treaties like Paris Conventions, Patent
Cooperation Treaty (PCT), Rome Convention, Berne Convention, etc.
IP as a Global Indicator of Innovation
IP, especially patents, is considered as one of the important cogs in assessing the
innovation index of a nation. The global ranking organizations always have IP or a
subset of IP as one of the parameters for understanding and grading the Science,
Technology and Innovation (STI) ecosystem of a nation. For example, the Scimago
(publically available online portal which ranks journals and countries based on the
data taken from Scopus) 2020 report ranked India at 4th position in the parameter
of a number of “Research Publications”, and 50th position in the parameter of
“Intellectual Property Rights”. The global ranking can be improved by sensitizing
the teaching and scientific communities about the importance of IP and creating
infrastructure for the same in the institutes of higher learning.
History of IP in India
1. Patents
The first patent related legislation in India was Act VI of 1856, adapted from the
British Patent Law of 1852. The objective was to encourage the inventions of new
and useful manufactures. The rights conferred to the inventor were termed as
“Exclusive Privileges”. In 1859, certain amendments were made to the Act, such as:

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➢ Grant of exclusive privileges to useful inventions.
➢ Increase of priority time from 6 months to 12 months.
➢ Exclusion of importers from the definition of the inventor.
The Indian Patents and Designs Act, 1911 (Act II of 1911)
The Amendments of this act are:
➢ Use of invention by the government.
➢ Patent of Addition.
➢ Enhancing the term of the patent from 14 years to 16 years.
➢ Filing of “Provisional Application and submission of Complete Application”
within 9 months from the date of filing the application.
The Patents Act 1970
The second amendment to the 1970 Act was made through the Patents
(Amendment) Act, 2002. The major amendments were:
➢ The protection term of 20 years for all inventions from the date of filing.
➢ Scope of non-patentable inventions including Traditional Knowledge
expanded.
➢ Disclosure of source and geographical origin of biological material made
compulsory.
➢ Provisions concerning convention countries simplified.
➢ Establishment of Appellate Board.
➢ Compulsory license provisions strengthened.
➢ Simplification of procedures.
➢ Harmonization with Patent Cooperation Treaty (PCT) provisions.
Further Amendment: The highlight of the Patents (Amendments) Act 2005 were:
➢ Product patent for inventions in all fields of technology.
➢ New forms of known substances excluded to prevent ever greening of patent.
➢ Rationalization of the opposition procedure.
➢ Introduction of pre-grant opposition by representation.
➢ Introduction of post-grant opposition.
➢ Compulsory license for export purposes.
➢ Compulsory license for manufacture.
➢ Extension of grace period from 6 months to 12 months for filing a patent, if
published in government exhibition.

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2. Copyrights and Related Rights
The evolution of copyrights law in India occurred in three phases. First, two phases
were enacted during the British Raj. In the first phase, the concept of copyrights
was introduced in 1847 through an enactment during the East India Company‘s
regime. The term of copyrights was for the lifetime of the author plus seven years
after death.
In the second phase Indian legislature, under the British Raj, enacted the
Copyright Act of 1914 based on the Imperial Copyright Act (1911) of the UK. An Act
for criminal sanction for an infringement was introduced.
In third phase, The Copyright Act 1957 was enacted, superseding the Indian
Copyright Act, 1914. The 1957 Act has been amended six times (1983, 1984, 1992,
1994 and 1999, 2012), to comply with WIPO Copyright Treaty (WCT), 1996 and
WIPO Performances and Phonograms Treaty (WPPT), 1996.
Most of the amendments in copyright laws were in the digital environment,
such as:
➢ Penalties for circumvention of technological protection measures;
➢ Rights of management information;
➢ Liability of internet service provider;
➢ Introduction of statutory licenses for the broadcasting organizations;
➢ Ensuring the right to receive royalties for authors and music composers;
➢ Exclusive economic and moral rights to performers;
➢ Equal membership rights in copyrights societies for authors & other owners;
➢ Exception of copyrights for physically disabled to access any works.
3. Trademarks
The first statutory law related to Trademarks (TM) in India was the Trade Marks Act,
1940. It was followed by the incorporation of provisions of TM stated in the Indian
Penal Code, Criminal Procedure Code and the Sea Customs Act. Further, Trade
Marks Act, 1940 was rechristened as Trade and Merchandise Marks Act, 1958 and
later this Act was repealed by the Trade Marks Act, 1999
4. Geographical Indications
India enacted the Geographical Indications of Goods (Registration and Protection)
Act, 1999, with effect from 15th September 2003. Geographical Indicators have been
defined under Article 22 (1) of the WTO Agreement on TRIPS.

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5. Trade Secrets
Although India has no specific Trade Secrets Laws, Indian courts have upheld Trade
Secrets protection under various statutes, including contract law, Copyright law,
the principles of equity and the common law action of breach of confidence.
6. Semiconductor Integrated Circuits and Layout Designs
The rapid and tremendous scientific advancements in the field of IT resulted in the
creation of a new class of IP called the Layout-Design of the Semiconductor
Integrated Circuits. Various organizations, including WTO and TRIPS Agreement
laid down rules and regulations regarding the protection of Semiconductor
Integrated Circuits and Layout Designs (SICLD). India being a member of the WTO
also passed an Act called the SICLD Act, 2000.
7. Plant Varieties
To include all kinds of biological materials under the ambit of patent laws, a decision
to enact a new sui generis law under the International Convention for the Protection
of New Varieties of Plants (UPOV, 1978) and UPOV, 1991 was taken. India adopted
the Protection of Plant Varieties and Farmers Rights (PVP&FR) Act, 2001, as a sui
generis regime protecting not only new plant varieties but also farmer’s rights.
8. Traditional Knowledge (TK)
It is the ancient and indigenous knowledge held by any community or a group of
people. TK was verbally passed on to future generations. TK covers a wide area,
such as the use of plants or their extracts for medical treatments, a traditional form
of dance, particular techniques used for hunting, craft knowledge/skills and so on.
The Government of India has created a digital library termed as Traditional
Knowledge Digital Library (TKDL) as a repository of 250,000 formulations of various
systems of Indian medicine.
9. Industrial Designs
A design is a creation of the human mind, which is appealing to the eyes and attracts
the attention of the viewers. The Act of British Patents and Designs Act in 1907,
became the basis for the Indian Patents and Designs Act, 1911.
In 1970, a separate Act was enacted for the patent, i.e. the Patent Act, 1970.
The Indian Patents and Designs Act, 1911, remained in force for designs only.
Finally, in the year 2000, a dedicated Act for the ID was passed, which came into
force in 2001.

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10. Biodiversity Conservation
Biodiversity is an inseparable part of human livelihood. In 1988, the “National
Forest Policy” was passed, which brought revolutionary changes in the conservation
and management of biodiversity. Acts & policies in force to protect the environment
and biodiversity in India include:
➢ Mining and Mineral Development Regulation Act, 1957;
➢ Water (prevention and control of pollution) Act, 1974;
➢ Forest Conservation Act, 1980;
➢ Biological Diversity Act, 2002;
➢ Scheduled Tribes and other Traditional Forest Dwellers Act, 2006;
➢ National Biodiversity Action Plan, 2009;
➢ National Environment Policy, 2006 and a few more.
Patents
A patent is an exclusive right granted for an innovation that generally provides a
new way of doing something or offers a new technical solution to a problem. The
exclusive right legally protects the invention from being copied or reproduced by
others.
NOTE: Invention is the creation of a new idea or concept and Innovation is the
process of translating an invention into commercial entity or widespread use.
Conditions for Obtaining a Patent Protection
The set criterion which must be fulfilled for a product or a process to qualify for the
grant of a patent are:
1. Novelty - Not part of ‘State of the Art’.
The innovation claimed in the patent application is new and not known to anybody
in the world. In other words, the innovation is: a) not in the knowledge of the public,
b) not published anywhere through any means of publication and
c) not be claimed in any other specification by any other applicant.
2. Inventive step - Not obvious to the person (s) skilled in the art.
The innovation is: a) a technical advancement over the existing knowledge,
b) possesses economic significance and,
c) not obvious to a person skilled in the concerned subject.
3. Capable of industrial application - For the benefit of society.
The invention is capable of being made or used in any industry.

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To Patent or Not to Patent an Invention
Once an invention has been developed, the inventor has to decide whether to exploit
the invention for personal benefits as provided by the statutory laws of the country
or put it in the public domain. Most of the inventor prefers the former option. Only
a minor of inventions are placed in the public domain without claiming any benefits.
In the latter case, anybody can exploit the innovation for commercial or societal
benefit without paying any money to the inventor.
If the owner of an invention wishes to seek monetary gains, he can choose
from either of the two options, i.e. Patenting or Trade Secret.
If the inventor is absolutely sure of maintaining the secrecy of invention for a
very long period (100 years or more) and the probability of reverse engineering of
the technology is nil or very low, then the “Trade Secret” category is preferred.
If the invention has a short life span or can be kept secret only for a small
period of time (couple of years or so) or the probability of reverse engineering is high
once the invention is in the public domain, then the “Patent” category is preferred.
Rights Associated with Patents
As per the Court of Law, a patent owner has the right to decide who may or may not
use the patented invention. The patent protection provided by the law states that
the invention cannot be commercially made, used, distributed, imported, or sold by
others without the patent owner's consent. The patent owner may permit other
parties to use the invention on mutually agreed terms. The patent holder may
choose to sue the infringing party to stop illegal use of the patent and also ask for
compensation for the unauthorized use.
Enforcement of Patent Rights
Enforcement is the process of ensuring compliance with laws, regulations, rules,
standards and social norms. Patent rights are usually enforced by the judicial
courts. The Court of Law has the authority to stop patent infringement. However,
the main responsibility for monitoring, identifying and taking action against
infringers of a patent lies with the patent owner.
Inventions Eligible for Patenting
Patents may be granted for inventions/technologies in any field, ranging from a
paper clip or ballpoint pen to a nanotechnology chip or a Harvard mouse (mouse
with cancer genes).

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It is a general belief that patents are awarded only to major scientific
breakthroughs. But, it is not true. In fact, the majority of patents are granted to
inventions displaying an improvement over the existing invention. For example,
many patents can be awarded to a single molecule e.g. penicillin’s (an antibiotic that
kills microbes) and its derivatives.
Non-Patentable Matters
In the ‗Patent Act, 1970, there are some exclusions (product and processes) that
cannot be patented, such as:
1. Invention contrary to public morality - a method for human cloning, a method
for gambling.
2. Mere discovery - finding a new micro-organism occurring freely in nature, laws
of gravity.
3. Mere discovery of a new form of a known substance - use of aspirin for heart
treatment. Aspirin was patented for reducing fever and mild pains.
4. Frivolous invention - dough supplemented with herbs, merely changing the
taste of the dough, 100 years calendar, bus timetable.
5. Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached
to a bucket.
6. Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 -
inventions relating to compounds of Uranium, Beryllium, Thorium, Radium,
Graphite, Lithium & more as notified by the Central Government from time to time.
7. Literary, dramatic, musical, artistic work - books, sculptures, drawings,
paintings, computer programmes, mathematical calculations, online chatting
method, method of teaching, method of learning a language as they are the subject
matter of Copyright Act. 1957.
8. Topography of integrated circuits - protection of layout designs of integrated
circuits is provided separately under the Semiconductor Integrated Circuit Layout
Designs Act, 2000.
9. Plants and animals - plants and animals in whole or any part including seeds,
varieties & species and biological processes for the production or propagation of
plants and animals are excluded from the scope of protection under patents.
10. Traditional knowledge - an invention which in effect is traditional knowledge
or which is an aggregation or duplication of known properties.

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Patent Infringements
Once the patent is granted to the applicant, he owns the right to use or exploit the
invention in any capacity. If anyone uses the invention without the prior permission
of the owner, that act will be considered an infringement of the invention.
Infringements can be classified into two categories:
1. Direct Infringement
When a product is substantially close to any patented product or in a case where
the marketing or commercial use of the invention is carried out without the
permission of the owner of the invention.
2. Indirect Infringement
When some amount of deceit or accidental infringement happens without any
intention of infringement. If such an unlawful act has been committed, the patentee
holds the right to sue the infringer through judicial intervention. Following reliefs
are made available to the patentee:
🠶 Interlocutory/interim injunction.
🠶 Damages or accounts of profits.
🠶 Permanent injunction.
NOTE: The Central government always holds the rights (Section 100 of the Patent
Act, 1970, Rule 32 of the Patent Rules, 2003) to use the invention in case of national
emergency or other circumstances of extreme urgency after notifying the owner.
Avoid Public Disclosure of an Invention before Patenting
Generally, an invention that has been either published or publicly displayed cannot
be patented, as the claimed invention will lose the “Novelty” criterion. However,
under certain circumstances, the Patents Act provides a grace period of 12 months
for filing a patent application from the date of its publication.
Sometimes, disclosure of an invention before filing a patent application is
unavoidable, e.g. selling your invention to a potential investor or a business partner
who would like to know complete details of the invention in order to judge its
commercial value. In such a case, it is advisable to sign a Non-Disclosure Agreement
(NDA) or any other confidential agreement to safeguards your interest.
Process of Patenting
In India, the process of grant of a patent is a lengthy procedure that may take 3-4
years or more. The major steps involved the process are listed in figure 2.1.

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Prior Art Search: Before an inventor embarks upon the patent filing process, he
has to ensure that his invention is “novel” as per the criterion for the grant of a
patent. For this, he has to check whether or not his invention already exists in the
public domain. For this, he needs to read patent documents and Non-Patent
Literature (NPL), scientific journals/reports/magazines, etc. The information lying
in the public domain in any form, either before the filing of the patent application
or the priority date of the patent application claiming the invention, is termed as
“Prior Art”.
Conducting a prior art search before filing the patent has advantages as it
averts infringement, tracks research & development and provides access to detailed
information on the invention.
The prior art search is carried out on the parameters such as novelty,
patentability, state of the art, infringement, validity and freedom to operate.
The commonly used databases for prior art search fall in two categories i.e.
Patents Databases and Non-Patent Literature (NPL)
Non-Patent Literature (NPL)
• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents,
Encyclopaedias, Journals (IEEE, Research Gate, Springer, Wiley Online Library,
etc.), Dissertations, NCBI‘s PubMed, Conference Proceedings, Technical Reports,
Public Conferences, etc.

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• Industry/trade publications: Industry reviews and public disclosures (Social
media, YouTube, Books, Magazines, Datasheets, Blueprints, etc.).
• Others: Newspapers, Websites, Technology blogs, Researchers websites, etc.
Although, majority of NPL data is available freely on the public forum, some of
the journals are paid and can be accessed after paying the subscription. Major
Patent Offices such as the United
States Patent and Trademark Office's (USPTO), European Patent Office (EPO), Japan
Patent Office (JPO), etc. are maintaining in-house NPL databases to make patents
examination more effective.

Choice of Application to be filed:

Once a decision has been made to patent the invention, the next step is, what kind
of application needs to be filed i.e. Provisional patent application or Complete (Final)
patent application. Generally, the provisional patent application is preferred for the
following reasons:
• It is cheaper, takes less time, and involves fewer formalities.
• Any improvements made in the invention after the filing of the provisional
application can be included in the final application. The provisional application
does not require complete specifications of the inventions. The application can
be filed even though some data is yet to be collected from pending experiments.
• A provisional application allows you to secure a priority date for patent applied.
However, it is mandatory to file the complete patent application within one year
of the filing of the provisional application; otherwise, the application stands rejected.

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Patent Application Forms: As per the Patent Act, 1970 and the Patents Rules,
2003, the application for the grant of patent is filed using Form-1 and Form-2.
The information sought in Form-1 is general in nature i.e. Title of Application,
Names of Applicant(s) and Inventor(s), Type of Application (Ordinary, Convention,
PCT-NP (PCT- National Phase), Divisional, Patent of Addition, etc.). Whereas Form-
2 seeks technical information and whether to file the provisional application or
complete the application.
For Provisional Application: only “Description of the Invention” and the “Abstract”
is to be furnished. For Complete Application: “Description of the Invention”,
“Abstract”, “Claims” and the manner in which invention has to be performed are
required.
The “Claims” of the patent are a very crucial part of the specifications because
they define the actual boundary of the invention. “Claims” specify what is actually
claimed by the invention and what is being sought to be protected. It clearly
describes what the patent does and does not cover. The Claims are usually
expressed as a declaration of technical particulars articulated in legal terms.
Claims can be classified into two types:
a) Independent Claims (stand-alone claim) and
b) Dependent Claims (dependent on independent claim).
The Claims must be drafted precisely and carefully in order to seek patent
protection and also to protect the invention against potential infringers.
Jurisdiction of Filing Patent Application
India has four offices for filing patent applications. The applications can be filed only
in one of the offices based on the applicant‘s residence or domicile or place of
business or origin of the invention. These are termed as jurisdictions to file patents.
1. Northern Region: Address: Intellectual Property Office Building, Plot No. 32,
Sector 14, Dwarka, New Delhi-110078. Email: delhi-patent@[Link]
2. Southern Region: Address: Patent Office Intellectual Property Building, G.S.T.
Road, Guindy, Chennai-600032. Email: chennaipatent@[Link]
3. Western Region: Address: Boudhik Sampada Bhawan, Antop Hill,S. M. Road,
Mumbai - 400 037. Email: mumbaipatent@[Link]
4. Rest of India: Address: Intellectual Property Office Building, CP-2 Sector V, Salt
Lake City, Kolkata-700091. Email: kolkatapatent@[Link]

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Publication: Once the patent application has been filed at the Regional Patent
Office, the patent application is kept secret for 18 months in the Patent Office. After
the expiry of 18 months (from the date of filing of the application or the priority
claimed date, whichever is earlier), the application is published in the Official
Journal of Patent Office: [Link]
The purpose of publishing the application is to inform the public about the
invention. The publication of an application is a mandatory step.
Pre-grant Opposition: If anybody has an objection to the invention claimed in the
patent application, he can challenge the application by approaching the Controller
of Patents within 6 months from the date of publication. It is termed as Pre-grant
Opposition. Depending on the outcome of the case, the patent application may be
rejected or recommended for the next step, i.e. patent examination.
Although the patent application is kept secret for 18 months, but under
special circumstances, this period can be reduced when the patentee/applicant
plans to sell or license the patent or seek an investor. For this, the applicant has to
fill a Form-9 and submit it to the Controller General.
Examination: Patent examination is a critical step in the process of grant of a
patent. All the important criteria (novel, inventive step, etc.) are scrutinized by the
professionals depending on the content of the invention. Usually, the examiner
raises certain queries/doubts which need to be addressed by the inventors. Once
the examiner is satisfied with the answers received from the inventors, the
application is recommended for the grant of a patent.
The applicant or his representative has to make a request for examination of
the patent by filing Form-18A and submitting the same within 48 months from the
date of filing of the application.
Grant of Patent: After fulfilling all the requirements for the grant of a patent,
including all objections/queries raised by the “Patent Examiner” and the public at
large, the patent is granted to the applicant. The granted patent is published in the
Official Journal of the Patent Office.
This journal is published every Friday and contains information related to
patent applications published under section (u/s) 11A, post-grant publication,
restoration of patent, notifications, list of non-working patents and public notices
issued by the Patent Office.

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

Validity of Patent Protection
The patent protection is granted to an applicant for a limited period, generally 20
years, starting from the date of filing of the application. Once a patent is granted for
an invention in India, the next vital step is to ensure that it is renewed annually by
paying Patent Renewal Fee as per Section 53, Rule 80 of the Indian Patents Act, till
the expiry of the patent grant period. Non-payment of Patent Renewal Fee might
results in cancellation of patent.
In some countries, patent protection may be extended beyond 20 years.
Because the patent owner may sometimes not be able to benefit from his right for a
considerable period after the grant of the patent.
Post-grant Opposition
Once the patent has been granted, it still can be challenged by anyone within one
year from the date of publication of the grant of the patent. It can be challenged
either via a Patent Office or in a Court of Law. These bodies may invalidate or revoke
a patent upon a successful challenge by the interested party on the grounds
mentioned below:

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🠶 The applicant wrongfully obtained the invention or any part of the invention.
🠶 The invention claimed has been published before the priority date.
🠶 The invention claimed was publicly known/used before the priority date.
🠶 The invention claimed is obvious and does not involve an inventive step.
🠶 The subject of claim is not patentable as per Chapter II of Patent Act, 1970.
🠶 The details/specifications of the invention do not sufficiently and clearly
describe the invention.
Commercialization of a Patent
The patent owner may grant permission to an individual/organization/industry to
make, use, & sell his patented invention. This takes place according to agreed terms
and conditions between the involving parties. A patent owner may grant a license to
a third party for the reasons mentioned below:
🠶 The patent owner has a decent job e.g. university professor and has no desireor
aptitude to exploit the patent on his own.
🠶 The patent owner may not have the necessary manufacturing facilities.
🠶 The manufacturing facility is not able to meet the market demand.
🠶 The patent owner wishes to concentrate on one geographic market; for other
geographical markets, he may choose to license the patent rights.
Although, the validity of the granted patent is for 20 years, the patentee is
required to furnish information (Form-27), on an annual basis relating to the
commercialization/selling of patent. It is called as “Working/Licensing of Patent”.
The licensing of a patent can be exclusive or non-exclusive. In an Exclusive
Licence, the patent is sold to only one individual/organization for a fixed time period.
During this time period, no other person or entity can exploit the relevant IP except
the named licensee. In Non-Exclusive Licence, a patentee can sell his patent rights
to as many individuals/parties as he likes.
If the patentee is not able to commercialize his patent within three years from
the date of grant of a patent, any person may submit an application to the Controller
of Patents for grant of Compulsory Licensing, subject to following conditions:
🠶 Reasonable requirements of the public concerning the patented invention
have not been satisfied.
🠶 The patented invention is not available to the public at a reasonable price.
🠶 The patented invention is not worked in the territory of India.

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Need for a Patent Attorney/Agent
In general, applicants can prepare their patent applications and file them without
assistance from a patent attorney. However, given the complexity of patent
documents, it is advisable to seek legal assistance from a patent attorney/agent
when drafting a patent application. Furthermore, the legislation of many countries
requires that an applicant, whose ordinary residence or principal place of business
is outside the country, be represented by an attorney or agent qualified in the
country (which means an agent or attorney who resides & practices in that country).
Can a Worldwide Patent be obtained?
There is no such term as “Universal Patent” or “World Patent” or “International
Patent” as the patent rights are territorial. An application for a patent must be filed
with a Patent Office of the country in which one wishes to seek patent protection.
Unfortunately, this option becomes laborious, cumbersome, time consuming and
expensive if one wishes to file a patent application in many countries. To ease out
this issue, many Regional Offices have been established which receive patent
applications on behalf of a group of nations. For e.g. European Patent Office and
African Regional Intellectual Property Organization.
A single application is sufficient to cover many nations that are members of a
particular regional office/organization. However, if one wishes to seek patent
protection in several countries worldwide, it is preferred to file an international
patent under the Patent Cooperation Treaty (PCT). The only condition is that the
applicant‘s country should be a member of PCT. India, along with over 190 nations,
is a member of PCT.
Do I Need First to File a Patent in India?
Yes, in general, Indian residents are required to file the patent application first in
India. Subsequently, they may file for patent protection in other countries. But for
this, prior approval is needed from the Patent [Link], this approval can be
waived off under the following circumstances:
🠶 The applicant is not an Indian resident.
🠶 If 6 weeks have expired since the patent application was filed in India byan
Indian resident.
🠶 If two or more inventors are working on an invention in a foreign country a
n
done
of the inventors is an Indian resident. The invention does not have a

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potential market in India and hence does not wish to file the patent in India.
In such a scenario, the Indian resident has to seek Foreign Filing Permission
(FFP) from an Indian Patent Office.
🠶 In case of international collaboration, if one part of the invention originated in
India and the inventor is an Indian resident, he has to seek permission to
file the patent outside India.
🠶 If the invention is related to defense or atomic energy or utility model, the
inventor/s needs to seek permission from the Indian Patent Office
because inventions related to these domains are not the subject matter of
patentability in India.
Patent Related Forms
There are over 30 patent-related forms. Some of them are mentioned below:

Fee Structure
As per the patent Act, 1970 and The Patents Rules (1972), the requisite fee has been
specified based on the type of form/s to be submitted to the Office (Table 2.3).
Electronically filed applications are 10% cheaper than physical filing.

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Types of Patent Applications

1. Provisional Application: A patent application filed when the invention is not
fully finalized and some part of the invention is still under experimentation. Such
type of application helps to obtain the priority date for the invention.
2. Ordinary Application: A patent application filed with complete specifications
and claims but without claiming any priority date.
3. PCT Application: An international application filed in accordance with PCT. A
single application can be filed to seek patent protection and claim priority in all the
member countries of PCT.
4. Divisional Application: When an application claims more than one invention,
the applicant may divide the application and file two or more applications. This
application divided out of the parent one is known as a Divisional Application.
5. Patent of Addition Application: When an invention is a slight modification of
the earlier invention for which the patentee has already applied for or has obtained
a patent, the applicant can go for “Patent of Addition”, if the modification in the
invention is new.

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6. Convention Application: If a patent application has been filed in the Indian
Patent Office, and the applicant wishes to file the same invention in the one or more
Convention countries (e.g. Paris Convention) by claiming the same priority date on
which application was filed in India, such an application is known as Convention
Application. The applicant has to file Convention Application within 12 months from
the date of filing in India to claim the same priority date.
Commonly Used Terms in Patenting
Inventor: Inventor Creator of an invention.
Applicant: Organization/individual/industry that files a patent application or
applies for a patent.
Patentee: A person/organization who owns the patent (granted)
Licensee: Organization/individual/industry which obtains a license of the patent
from the Patentee for commercialization purpose.
Assignee: A person in whose name patent has been assigned legally.
In force: The applicant is paying the annuity (renewal fee) for the patent to keep it
alive (Active Patent).
Working of a Patent: The selling of a patent to an individual/party for commercial
exploitation is called as working of a patent.
Patent Specification: Patent specification is a written description of the invention
& the way of representation and process of making and using the same.
Priority Right: A ‘Priority Right’ or ‘Right of Priority’ is a time-limited right, activated
by the first filing of an application for a patent.
Priority Date: The claimed date on which the first application for the invention is
filed.
Patent Claims: Claims can be defined as the scope of the protection conferred by a
patent, or the protection sought in a patent application. The purpose of the claims
is to define which subject matter is protected by the patent.
National Phase Application: An application filed to obtain patents in different
countries simultaneously based on a single International/PCT application.
Patent Revocation: The revocation means cancellation of the patent due to certain
reasons, such as lack of patentability or wrongfully obtaining a patent.
Restoration of Patent: Once a patent has been ceased (e.g. due to non-payment of
the fee) it can be restored within a permitted period by paying the requisite fee.

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National Bodies Dealing with Patent Affairs
Departments/organizations/bodies dealing with various aspects of patents are:
🠶 Indian Patent Office (IPO),
🠶 Department for Promotion for Industry and Internal Trade (DPIIT)
🠶 Technology Information, Forecasting and Assessment Council (TIFAC)
🠶 National Research Development Corporation (NRDC).
Utility Models
In many cases, a new invention involves an incremental improvement over the
existing products, but this technical improvement is not sufficient enough to pass
the stringent criterion of “Novelty” and “Non-obviousness” set aside for the grant of
a patent. Such small innovations can still be legally protected in some countries and
termed as ‘Utility Models’ or ‘Petty Patents’ or ‘Innovation Patents’. In this case, the
criterion of “Novelty” and “Non-obviousness” are diluted or relinquished. But the
requirement of industrial application or utility is the same as that for patents.
Utility Model is a helpful tool for Micro, Small and Medium Enterprises
(MSME) since the grant of a “Utility Model” is usually less rigorous and involves
minimal cost. MSMEs do not have deep pockets to carry out intensive R&D leading
to the grant of patents. But their innovations are good enough for improving their
products/processes and bringing more financial rewards. Such inventions pass the
requirements set aside for Utility Models but not for patents. The life of the Utility
Model is less as compared to the patents. It varies from 7-15 years in different
countries.

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Important Questions:
1. Define IP & IPR. Explain the branches of IP.
2. Explain the role of IP in the Economic & Cultural Development of the Society.
3. Discuss various organizations/agencies deal with various aspects of IP.
4. Mention the major amendments of Patents (Amendment) Act, 2002.
5. Define patent. Explain the Conditions for Obtaining a Patent Protection.
6. Mention various non-patentable matters.
7. What is patent infringement? Discuss the categories of infringements.
8. With flowchart, briefly explain the steps involved in the grant of a patent.
9. What are the choices for patent application to be filed? Mention the patent
application forms & explain the concept of ‘claims’.
10. What is Pre-grant opposition & Post-grant opposition? Explain.
11. Explain Commercialization of a Patent and Licencing of a Patent.
12. Discuss different types of patent applications.
13. Explain the concept of Utility Models.
14. List few important patent application forms.
15. Define the following terms related to patenting:
i) Licensee. ii) Priority Right. iii) Patent Claims. iv) Patent Revocation.
v) Priority Date. vi) National Phase Application. vii) Patent Specification.

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