Module 3:

Introduction To Intellectual Property

Outline
• Role of IP in the Economic and Cultural Development of the Society
• IP Governance, Origin of IP History of IP in India
• To Patent or Not to Patent an Invention
• Enforcement of Patent Rights
• Patent Infringements
• Process of Patenting
• Prior Art Search
• Commercialization of a Patent
• Types of Patent Applications
• Jurisdiction of Filing Patent Application
Introduction
• Intellectual Property (IP) is the terminology attributed to intangible assets having
commercial value, and arising from human intelligence, creativity, and imagination,
but typically lacking physical form
1. Trademarks: A trademark is a sign that suitably differentiates the owner’s goods
or services from those of others
2. Patents: A patent is a legal record that bestows the holder the exclusive right
over an invention as per the claims
3. Industrial Designs: An industrial design protection is related to certain specific
ornamental shapes associated with products
4. Copyright: Copyright is the right bestowed on the owner or creator in relation to
publication, and distribution of a piece of writing, music, picture
Role of IP in the Economic and Cultural Development
• Incentive for Innovation and Investment
• The assurance of exclusive rights incentivizes individuals and organizations to create new
products, technologies, and creative works
• Technology Transfer and Collaboration
• Companies are more willing to share their innovations through licensing agreements or
partnerships when they know their intellectual property is protected
• Entrepreneurship and Small Business Growth
• This protection allows smaller entities to compete in the marketplace and fosters an
environment where startups can thrive, contributing to economic dynamism
• Preservation of Cultural Heritage
• They protect artistic and literary works, ensuring that cultural expressions are documented,
maintained, and made accessible for future generations
• It may have a negative impact on the progress of society - Trade-Related Aspects of
Intellectual Property Rights (TRIPS) Agreement
• Protection of Plant Varieties and Farmers‘ Rights (PVP&FR) Act
• Rights on seeds, Right to protection against accusations of infringement
IP Governance
• Intellectual Property (IP) governance in India is managed by various government
bodies and institutions that oversee the creation, protection, and enforcement of
intellectual property rights
• Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM)
• The CGPDTM, under the Department for Promotion of Industry and Internal Trade (DPIIT) in
the Ministry of Commerce and Industry, is responsible for the administration of the patent,
design, and trademark systems in India
IP Governance
• Copyright Office
• It registers copyright works, handles copyright infringement issues, and promotes awareness about copyright
protection
• National Biodiversity Authority (NBA)
• The NBA, under the Ministry of Environment, Forest and Climate Change, plays a role in the protection of
traditional knowledge and biodiversity
• 45,000 species of plants and 91,000 species of animals
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
• Patent Filings, Trademark Registrations, Copyright Registrations, Industrial Designs
• Global innovation indices, such as the 𝑮𝒍𝒐𝒃𝒂𝒍 𝑰𝒏𝒏𝒐𝒗𝒂𝒕𝒊𝒐𝒏 𝑰𝒏𝒅𝒆𝒙 (𝑮𝑰𝑰), often
include IP-related indicators in their assessment methodologies
• Scimago reported 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
• China, US, Japan, Republic of Korea, Germany
IP as a Global
Indicator of
Innovation
Origin of IP
• The concept of IP has its origins in 𝒂𝒏𝒄𝒊𝒆𝒏𝒕 𝒄𝒊𝒗𝒊𝒍𝒊𝒛𝒂𝒕𝒊𝒐𝒏𝒔, where certain forms of protection for
creative works and innovations were recognized
• The earliest forms of IP protection can be traced back to ancient civilizations such as Ancient
Greece and Rome - around 500 Before the Common Era (BCE) in 𝑺𝒚𝒃𝒂𝒓𝒊𝒔, 𝒂 𝒔𝒕𝒂𝒕𝒆 𝒐𝒇 𝑮𝒓𝒆𝒆𝒄𝒆
• Poets and playwrights were granted exclusive rights to perform their works at festivals
• During the Middle Ages (Medieval Europe), guilds and trade associations in Europe played
a role in protecting the rights of 𝒂𝒓𝒕𝒊𝒔𝒂𝒏𝒔 𝒂𝒏𝒅 𝒄𝒓𝒂𝒇𝒕𝒔𝒎𝒆𝒏
• Guilds and trade associations in Europe played a role in protecting the rights of artisans and craftsmen
• The first known patent system was established in 𝑽𝒆𝒏𝒊𝒄𝒆 𝒊𝒏 𝟏𝟒𝟕𝟒, with the issuance of a
decree granting a limited monopoly to inventors of new and useful inventions
• The 𝑺𝒕𝒂𝒕𝒖𝒕𝒆 𝒐𝒇 𝑴𝒐𝒏𝒐𝒑𝒐𝒍𝒊𝒆𝒔 enacted by the English Parliament in 1624 marked an
important milestone in the development of patent law
• The 𝑺𝒕𝒂𝒕𝒖𝒕𝒆 𝒐𝒇 𝑨𝒏𝒏𝒆, enacted in England in 1710, is considered one of the earliest
copyright laws
• The 19th and 20th centuries saw the emergence of international agreements and treaties
aimed at harmonizing intellectual property laws on a global scale
• International organizations such as the
𝑾𝒐𝒓𝒍𝒅 𝑰𝒏𝒕𝒆𝒍𝒍𝒆𝒄𝒕𝒖𝒂𝒍 𝑷𝒓𝒐𝒑𝒆𝒓𝒕𝒚 𝑶𝒓𝒈𝒂𝒏𝒊𝒛𝒂𝒕𝒊𝒐𝒏 (WIPO) were established to promote
global cooperation in IP matters
 History of IP in India - Patents
• India has a rich tradition of innovation and knowledge
creation dating back to ancient times
• The British East India Company established a patent system
in India to protect inventions, primarily to serve the interests
of British manufacturers and traders
• The law, known as the "Act VI of 1856," provided for the
grant of exclusive rights to inventors for their inventions
• In 1859, certain amendments were made to the Act, such as
• 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
• In India, the first patent was awarded in 1856 to a civil
engineer, George Alfred DePenning from Calcutta, for his
invention, ‘An Efficient Punkah Pulling Machine’
History of IP in India - Patents
• The new Act was rechristened as ―The Patterns and Designs Protection Act under
Act XIII of 1872
• The Indian Patents and Designs Act of 1911 replaced the earlier patent law
and introduced significant changes to the patent system
• Many amendments were introduced
• 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
• Priority Date: The date on which the first application for the invention is filed,
whether it is provisional or with complete specifications
• After India got independence in 1947, many patent experts felt the need to
review the Indian Patents and Designs Act, 1911
History of IP in India - Patents
• A dedicated committee, chaired by a renowned Justice Bakshi Tek Chand, was
constituted in 1949 to review the advantages of the patent system
• Misuse of patents rights needs to be prevented
• There must be a clear indication in the Act that food, medicine and surgical and
curative devices should be made available to the masses at the cheapest rate by giving
reasonable compensation to the owner of the patent
• Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on the
lines of the UK Patent Act
• These recommendations were introduced in the Act XXXII of 1950
• Act LXX of 1952 - compulsory licencing of patents related to food, drugs and
chemicals killing insects and microbes
• A bill was presented in the parliament in 1953 but was rejected
• The Patents Act of 1970 represented a significant milestone in India's IP
history
History of IP in India - Patents
• The second amendment to the 1970 Act was made through the Patents
(Amendment) Act, 2002 (Act 38 of 2002)
• 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
• Harmonization with Patent Cooperation Treaty (PCT) provisions
• In 1995, India signed the TRIPS Agreement and got a transition period of 10
years (1995-2005) to make domestic laws compatible with the international
treaty
• India amended its patent laws to comply with TRIPS requirements, including
the introduction of product patents for pharmaceuticals and other sectors
History of IP in India - Patents
• 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 evergreening of the 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
• The important international agreements to which India is a signatory party
are TRIPS Agreement (1995), Paris Convention (1883), PCT (1970) and
Budapest Treaty (1977) and many more
History of IP in India - Copyrights
• The concept of copyrights started way back in the 15th century
• The actual need for copyrights law was felt only after the invention of printers and copiers
• During the 15th and 16th centuries, printing was invented and widely established in
Europe
• Copies of 𝑩𝒊𝒃𝒍𝒆𝒔 were the first to be printed
• The government had allowed the printing of the documents without any restrictions
• The evolution of copyrights law in India occurred in three phases
1. Copyrights was introduced in 1847 through an enactment during the East India
Company‘s regime
• Lifetime of the author plus seven years after death
2. Under the British Raj, enacted the Copyright Act of 1914 based on the Imperial
Copyright Act (1911) of the UK
• criminal sanction for an infringement was introduced
3. The Copyright Act 1957 was enacted, superseding the Indian Copyright Act, 1914, in
order to suit the provisions of the 𝑩𝒆𝒓𝒏𝒆 𝑪𝒐𝒏𝒗𝒆𝒏𝒕𝒊𝒐𝒏
History of IP in India - Trademarks
• The first statutory law related to Trademarks (TM) in India was the Trade Marks Act,
1940
• Trade Marks Act, 1940 was rechristened as Trade and Merchandise Marks Act, 1958
• This Act was repealed by the Trade Marks Act, 1999
• The need for this occurred to comply with the provisions of the TRIPS
History of IP in India - Geographical Indications
• Geographical Indications (GIs) are a form of intellectual property rights that identify
products as originating from a specific geographical location

• India, as a member of WTO, enacted the Geographical Indications of Goods

(Registration and Protection) Act, 1999

• It came into force with effect from 15th September 2003

History of IP in India - Trade Secrets
• Trade secrets are valuable intellectual property assets that consist of confidential
information, knowledge, or practices used by businesses to gain a competitive
advantage over others

• 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
History of IP in India -
Plant Varieties
• Till 1970s, not much emphasis was laid on patentable matter
originating from animals and plants
• However, microbes and microbial products/processes were
patentable
• The Indian Patents Act, 1970 excludes ―plants and animals in
whole or any part thereof other than microorganisms from
patentability
• Example: "Tomimaru Muchoo" Tomato
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Major Amendments in IP Laws and Acts in India
Conditions for Obtaining a Patent Protection
• A patent is an exclusive right granted for an innovation
• There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970
1. Novelty
• The innovation claimed in the patent application is new and not known to anybody
2. Inventive step
• The innovation is a technical advancement over the existing knowledge
3. Capable of industrial application
• The invention is capable of being made or used in any industry
To Patent or Not to Patent an Invention?
• Whether to exploit the invention for personal benefits as provided by the statutory
laws of the country or put it in the public domain

• 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
• Less probability of reverse engineering
• If you can maintain the secrecy of invention for a very long period
• Trade Secret
• Why?
• Patents last in general for up to 20 years
Rights Associated with Patents
• 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 holder may choose to sue the infringing party to stop illegal use of the
patent
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 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

• It is a general belief that patents are awarded only to major scientific

breakthroughs

• It is not uncommon that many products contain several inventions

Non-Patentable Matters
1. Invention contrary to public morality
2. Mere discovery
3. Mere discovery of a new form of a known substance
4. Frivolous invention
5. Arrangement or rearrangement
6. Inventions falling within Section 20(1) of the Atomic Energy Act, 1962
7. Literary, dramatic, musical, artistic work
8. Topography of integrated circuits
9. Plants and animals
10. Traditional knowledge
Patent Infringements
• If anyone uses the invention without the prior permission of the owner, that act
will be considered an infringement of the invention
1. Direct Infringement
2. Indirect Infringement
Avoid Public Disclosure of an Invention before Patenting
• An invention that has been either published or publicly displayed cannot be
patented, as the claimed invention will lose the Novelty criterion

• Non-Disclosure Agreement (NDA)

Process of Patenting
Process of Patenting
1. Prior Art Search
• 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
• The prior art search is carried out on the parameters such as novelty, patentability, state of the
art, infringement, validity and freedom to operate
Process of Patenting
1. Prior Art Search
Process of Patenting
1. Prior Art Search
Choice of Application to be Filed
• Provisional patent application or complete (Final) patent application
• Provisional patent application ?
1. It is cheaper, takes less time, and involves fewer formalities
2. Any improvements made in the invention after the filing of the provisional
application can be included in the final application
3. A provisional application allows you to secure a priority date for the patent
applied
Patent Application Forms
• Form-1 is general in nature i.e. Title of Application, Names of Applicant(s) and
Inventor(s), Type of Application
• Form-2 seeks technical information and whether to file the provisional application
or complete the application
Publication
• 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]
Pre-grant Opposition
• Within 6 months from the date of publication
• It is termed as Pre-grant Opposition
• The applicant has to fill a Form-9 – rapid publication
Examination
• All the important criteria (novel, inventive step, etc.) are scrutinized by the
professionals depending on the content of the invention
• It is pertinent to mention that a patent application is not examined automatically
after clearing the publication stage
• 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 a Patent
• 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
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
• Renewed annually by paying Patent Renewal Fee as per Section 53, Rule 80 of the
Indian Patents Act
Post-grant Opposition
• Can be challenged by anyone within one year from the date of publication of the
grant of the patent
1. The applicant for the patent wrongfully obtained the invention or any part of the
invention.
2. The invention claimed has been published before the priority date.
3. The invention claimed was publicly known/used before the priority date.
4. The invention claimed is obvious and does not involve an inventive step.
5. The subject of the claim is not patentable as per Chapter II of the Patent Act,
1970.
6. The details/specifications of the invention do not sufficiently and clearly describe
the invention.
Commercialization of a Patent
• A patent owner may grant a license to a third party for the reasons mentioned
below:
1. The patent owner has a decent job e.g. university professor and has no desire or
aptitude to exploit the patent on his own.
2. The patent owner may not have the necessary manufacturing facilities.
3. The manufacturing facility is not able to meet the market demand.
4. The patent owner wishes to concentrate on one geographic market
• If the patentee is not able to commercialize his patent within three years from the
date of the grant of a patent, any person may submit an application to the
Controller of Patents for grant of Compulsory Licensing
1. Reasonable requirements of the public concerning the patented invention have
not been satisfied.
2. The patented invention is not available to the public at a reasonable price.
3. The patented invention is not worked in the territory of India.
Need for a Patent Attorney/Agent
• In general, applicants can prepare their patent applications and file them without
assistance from a patent attorney.
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
• File an international patent under the Patent Cooperation Treaty (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 - approval is
needed from the Patent Office
1. The applicant is not an Indian resident
2. If 6 weeks have expired since the patent application was filed in India by an
Indian resident
3. If two or more inventors are working on an invention in a foreign country and
one of the inventors is an Indian resident - Foreign Filing Permission (FFP)
Patent Related Forms
Fee Structure
Types of Patent Applications
1. Provisional Application
2. Ordinary Application
3. PCT Application
4. Divisional Application
5. Patent of Addition Application
6. Convention Application
Commonly Used Terms in Patenting
Commonly Used Terms in Patenting
Commonly Used Terms in Patenting
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
• Such small innovations can still be legally protected in some countries and termed
as Utility Models or Petty Patents or Innovation Patents
• Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME)