MODULE 3

INTRODUCTION TO INTELLECTUAL PROPERTY

• Intellectual Property Rights (IPR): Legal protections for researchers,
granting them
exclusive rights to their discoveries and inventions, fostering innovation.
Key IP Categories Relevant to Research
1. Copyrights: Protects original works such as research papers,
presentations, and software developed during research.
2. Patents: Provide exclusive rights for inventions and discoveries
resulting from research, preventing others from using or
commercializing them without permission.
3. Trademarks: Protects branding associated with research outputs,
such as
products or services developed through research.
4. Industrial Designs: Safeguards the unique aesthetic aspects of research-
related products.
5. Geographical Indications (GIs): Can apply to research on products
linked to
specific regions, emphasizing quality or traditional methods.22
 Importance in Research
• Encourages Innovation: By protecting research outcomes, IP incentivizes
further investment in new ideas.

• Facilitates Collaboration: Clear IP rights can enhance partnerships

between institutions and industries.

• Generates Revenue: Licensing and commercialization of IP can provide

funding for ongoing research activities.
 ROLE OF IP IN THE ECONOMIC AND
CULTURAL DEVELOPMENT OF THE SOCIETY
• Creativity Being the keystone of the progress, no civilized society can afford
to ignore the basic requirement of encouraging the same.
• 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 new and novel things.
• IPR to practiced rigidly , it may have a negative impact to the progress of
society.
• For example , Compliance with trade related Aspects of IPR (TRIPS)
Agreements 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 majority of the farmers.
 IP GOVERNANCE
• IP as an integral component of human society , each and every nation has dedicated agencies
for laying out the guidelines, implementation and enforcement of IP related matters.
• In India , many organizations/ agencies deal with various aspects of IP. The governance of
all categories of IP, except the plant variety and farmers Right act (PPV & FR), is carried
out by the department for promotion of Industry & internal Trade (DPIIT)under the
support of ministry of commerce and industry , GOI (Government of India).
• There are a few other dedicated organized/departments established by the government to
promote patent –ecosystem (patent awareness(PIP,NIPAM,KAPILA), patent filing and
patent commercialization) in India .Eg:Technology Information Forecasting and Assesment
Council(TIFAC), National research Development Corporation (NRDC).
IP GOVERNANCE
IP AS A GLOBAL INDICATOR OF INNOVATION
Origin of Intellectual Property (IP)

History of IP in INDIA
• Early 20th Century Developments
• 1911: The Indian Patents and Designs Act (Act II of 1911) replaced earlier
legislation, establishing the Controller of Patents to oversee patent governance.
• Key Amendments (1920s-1940s): Over the next few decades, amendments
included:
• Government use of inventions
• Patent of Addition
• Extension of patent terms from 14 to 16 years
• Provisional and complete application filing procedures
• Post-Independence Reforms
• 1949 Recommendations: Aimed at modifying the 1911 Act, these included:
• Preventing patent rights misuse
• Ensuring affordable access to food, medicine, and medical devices
• Amendments modeled after the UK Patent Act
• 1952 Amendment: Introduced compulsory licensing for patents on essential
goods like food and drugs.
Comprehensive Legislation
• 1957-1965: A committee reported on patent laws, leading to a revised patent bill
submitted to the Lok Sabha in 1965.
• 1970: The Patents Act was finally enacted, establishing a comprehensive
framework for patent law in India.
Modern Amendments
• 2005: Major amendments included:
• Product patents across all technology fields
• Provisions to prevent "ever-greening" of patents
• Streamlined opposition processes (both pre-grant and post-grant)
• Compulsory licensing for export and manufacturing
• Grace period extension for filing patents related to government exhibitions
Copyrights and Related Rights in India
Historical Context
• 15th Century: The roots of copyright emerged with the advent of printing. Prior to this, the
manual process of writing made duplication labor-intensive and prone to errors.
Evolution of Copyright Law in India
[Link] Phase (British ruling )
• 1847: The first copyright legislation was introduced during the East India Company’s rule.
Key features included:
1. Copyright duration: Lifetime of the author plus seven years posthumously.
2. Mandatory registration for enforcing rights.
3. Provisions for compulsory licenses to publish works if the copyright owner refused
publication after the author's death.
2. Second Phase (British Ruling)
• 1914: The Copyright Act was enacted, drawing from the UK’s Imperial Copyright Act of
1911. This act included:
• Criminal sanctions for copyright infringement.
1. Third Phase (Post-Independence)
• India actively participates in key international copyright treaties and conventions,
such as:
• Berne Convention: Protects authors' rights internationally, ensuring their works are
respected across countries.
• Universal Copyright Convention: Provides a framework for copyright protection
for countries that may not be part of the Berne Convention.
• Rome Convention: Protects the rights of performers and producers of recordings.
• WIPO Copyright Treaty: Focuses on copyright protection in the digital world.
• WIPO Performances and Phonograms Treaty: Protects performers and producers
of sound recordings.
• TRIPS Agreement: Sets minimum standards for intellectual property protection,
including copyright, within the World Trade Organization (WTO).
Trademarks
• 1940: Trade Marks Act introduced, based on the UK’s 1938 Act.
• 1958: Renamed the Trade and Merchandise Marks Act.
• 1999: Replaced by the Trade Marks Act, 1999 to comply with TRIPS.
Geographical Indications
• 1999: Geographical Indications of Goods (Registration and Protection) Act enacted.
• 2003: Act came into force, defining geographical indications under the TRIPS Agreement.
Industrial Designs
• 1872: Patterns and Designs Act was the first legislation for industrial designs.
• 1907: Replaced by the British Patents and Designs Act.
• 1970: Separate Patent Act introduced; the 1911 Act continued for designs.
• 2000: Dedicated Act for industrial designs passed, effective in 2001.
Semiconductor Integrated Circuits and Layout Designs
• 21st Century: Advancements in IT led to the creation of Layout-Designs for Semiconductor
Integrated Circuits (SICLD).
• SICLD Act, 2000: Enacted in India, compliant with WTO and TRIPS regulations.
Plant Varieties
• Pre-1970s: Limited focus on patenting plant and animal matter; microorganisms were
patentable.
• PPV&FR Act, 2001: Established to protect new plant varieties and farmers' rights,
complying with TRIPS Article 27.3(b).
Biodiversity Conservation
• Historical Acts: Indian Forest Act (1927) and Wildlife Protection Act (1972) provided legal
protections.
• Key Policies: National Forest Policy (1988) and various acts (e.g., Biological Diversity Act,
2002) aimed at conservation and sustainable management of biodiversity.
 MAJOR AMENDMENTS IN IP LAWS AND ACTS IN INDIA
In order to fill the gaps existing in the IP Laws and Acts and also to introduce new
guidelines/directions based on the current scenario (socially and politically),each nation keeps on
updating the concerned Ip Laws and Acts.
• 1856 -The Act VI of 1856 on the protection of inventions based on the British Patent Law of
1852.
• 1859 -Rights renamed as "Exclusive Privileges" , Time for the priority increased from 6 months
to 12 months.
• 1952 -Provision of "Compulsory License" in the areas of food, medicine and insecticide
germicide.
• Process for producing substance or any invention relating to surgical.
• 2003 - The Patents Rules, 2003 were introduced.
• 2005-Product patent for inventions in all fields of technology including food, drug, chemicals
and microorganisms.
• New forms of known substances excluded in order to prevent the ever- greening of the patent.
• Introduction of the pre-grant opposition.
Definition PATENTS
• A patent is an exclusive right granted for an innovation that provides a new method or technical
solution to a problem. It legally protects the invention from being copied or reproduced by others.
Disclosure Requirement
• In return for patent protection, the invention must be fully disclosed in an application so that
someone with ordinary skill in the field can replicate it.
Conditions for Obtaining Patent Protection
According to Section 2(1)(j) of the Patents Act, 1970, the following criteria must be met:
1. Novelty: The invention must be new and not part of the "State of the Art," meaning:
• It is not known to the public.
• It has not been published or disclosed in any form.
• It cannot be claimed in any other patent application.
2. Inventive Step:The invention must involve a technical advancement that is:
• Not obvious to someone skilled in the relevant field.
• Economically significant.
• A true innovation over existing knowledge.
3. Capable of Industrial Application:The invention must be capable of being made or used in any
industry, providing a societal benefit.
 To Patent or Not to Patent an Invention
Key Decision
After developing an invention, an inventor must decide whether to:
1. Patent the Invention for personal financial gain, or
2. Place it in the Public Domain, allowing anyone to use it without compensation.
General Preference
• Most inventors choose to patent, as few opt to share their inventions freely.
Consequences of Public Domain
• Placing an invention in the public domain means anyone can exploit it commercially without paying
the inventor.
Monetization Options (Revenue Generating)
1. Patenting: Grants exclusive rights for a limited time, Best for inventions that:
• Have a short lifespan.
• Cannot be kept secret for long.
• Are at risk of being reverse-engineered.
2. Trade Secret: Protects confidential information indefinitely, Suitable when:
• Secrecy can be maintained for many years.
• There’s a low risk of reverse engineering.
 RIGHTS ASSOCIATED WITH PATENTS
• Exclusivity: A patent grants the owner exclusive rights to their invention for a limited
time, typically 20 years from the filing date, allowing them to capitalize on their
innovation.
• Licensing: Patent owners can license their patents, enabling others to use the invention
under specified conditions. This can create revenue streams for the patent holder.
• Infringement: If someone uses, makes, or sells the patented invention without
permission, this constitutes infringement. The patent owner has the right to take legal
action, which may involve seeking injunctions to stop the infringer and demanding
damages.
• Public Disclosure: In exchange for patent protection(Knowledge sharing, Encouraging
Innovations)
• Limitations: Patent rights are territorial, meaning they only apply in the jurisdictions
where the patent is granted. This necessitates separate filings in different countries for
broader protection.
 ENFORCEMENT OF PATENT RIGHTS
• Enforcement: Ensuring compliance with laws and norms.
• Judicial Courts: Main venue for patent rights enforcement.
• Injunctions: Court orders to stop infringement.
• Monitoring: Patent owner’s responsibility to identify infringements.
• Legal Remedies:
➢ Monetary Damages: Compensation for losses.
➢ Attorney’s Fees: Possible recovery of legal costs.
➢ Alternative Dispute Resolution: Mediation or arbitration options.
➢ International Considerations: Separate actions in different jurisdictions.
➢ Documentation: Importance of records for legal disputes (Patent
Applications, Licensing agreement,Evidence etc..)
 Inventions Eligible for Patenting
• Scope: Patents can cover inventions in any field (e.g., simple items like
paper clips to complex technologies like nanotechnology).
• Common Misconception: Patents are not limited to major scientific
breakthroughs; many are granted for improvements on existing inventions.
• Everyday Patents: Common items like toothbrushes, mobile phones, and
cars often include multiple patented inventions.
Non-Patentable Matters
• Public Morality: Inventions contrary to public morals (e.g., human cloning).
• Mere Discoveries: Finding naturally occurring substances or fundamental laws
(e.g., laws of gravity, micro organism).
• Known Substance Variants: Discoveries of new uses for already known
substances (e.g., aspirin for heart treatment).
• Frivolous Inventions: Non-innovative ideas (e.g., a calendar or bus timetable).
 PATENT INFRINGEMENTS
• When a patent is granted, the holder
obtains the exclusive right to use,
exploit, or license the invention for a
certain period of time, typically 20
years from the filing date.
• During this period, no one else can
make, use, sell, or distribute the
patented invention without the patent
holder's consent. If someone does so
without permission, it constitutes
patent infringement.
 Non-Patentable Matters
• Arrangements: Simple rearrangements of existing items (e.g., umbrella with a fan).
• Atomic Energy Act Exclusions: Specific inventions related to radioactive materials.
• Copyrighted Works: Literary and artistic works are protected under copyright, not
patents.
• Integrated Circuit Layouts: Protected separately under the Semiconductor Act.
• Plants and Animals: Entire species and biological processes for their production are
excluded.
• Traditional Knowledge: Inventions based on existing traditional knowledge or
simple combinations of known properties are not patentable.
1. Direct Infringement
This occurs when an individual or entity uses or commercializes a patented invention in a
way that is substantially identical to what is protected by the patent. Examples include:
• Making, using, or selling a product that is virtually identical to the patented invention
without permission.(Literal)
• Using a patented process without authorization in manufacturing, or applying the method
in a way that directly reflects the invention described in the patent claims.(Equivalence)
2. Indirect Infringement
This refers to situations where an infringement happens unintentionally or without direct
use of the patented invention, but the actions contribute to or facilitate another party's
infringement. There are generally two types of indirect infringement:
• Contributory Infringement: When someone supplies a product or service that contributes
to the infringement of a patent, even if they aren't directly infringing themselves.
• Inducement to Infringe: When a person encourages or induces another party to infringe a
patent. This might include promoting, advertising, or advising others to use a patented
product or process in an infringing manner.
• Legal Reliefs for Patent Infringement:

1. Interlocutory/Interim Injunction: This is a temporary court order issued to prevent

further infringement during the litigation process, typically until a full trial can take place.

2. Damages or Accounts of Profits: The patent holder can seek financial compensation for
losses suffered due to the infringement or can request that the infringer pays any profits they
made from using the patented invention. The court may award damages based on the actual
damage suffered by the patentee or on the profits made by the infringer.

3. Permanent Injunction: A permanent injunction is a court order that permanently stops the
infringing activity once the court has ruled that an infringement has occurred. This remedy is
typically sought once the case is concluded, and it is often accompanied by compensation
for the harm caused by the infringement.
 AVOID PUBLIC DISCLOSURE OF AN
INVENTION BEFORE PATENTING
• Novelty Requirement: To be patentable, an invention must be novel (not publicly disclosed)before
filing a patent application.
• Public Disclosure Risks: Any publication, presentation, or sale before filing can jeopardize the
novelty of the invention and prevent patenting.
• Grace Period: Many patent laws allow a 12-month grace period from the date of public disclosure
(e.g., journal publication, conference presentation) to file a patent application without losing novelty.
Available in some countries (e.g., U.S., Japan), but not in others (e.g., Europe).
• Non-Disclosure Agreements (NDAs): To protect your invention when disclosing it to potential
investors or partners, A legal agreement that ensures confidentiality and protects against unauthorized use
or disclosure.
• Purpose: Safeguards novelty and allows time to file a patent after disclosure.
• Best Practices:
• File before disclosure: If possible, file the patent application before making any public disclosure.
• Use NDAs: Always use NDAs when discussing your invention with others.
• Document all disclosures: Keep records of any public disclosure to support your filing within the
grace period.
 PROCESS OF PATENTING
1. Filing of Application with IPO (Intellectual
Property Office):
• Submission: The inventor submits the patent
application to the relevant Intellectual Property
Office (e.g., USPTO, EPO, or national IP office).
This includes providing necessary documents such
as the patent specification, claims, drawings (if
applicable), and required forms.
• Initial Review: The application is checked for
formalities to ensure all required information is
provided.
2. Publication:
• Timing: The patent application is published 18
months after the filing date (or priority date). This
makes the details of the invention publicly available.
• Purpose: Publication gives the public notice of the
invention but does not grant patent rights yet. It
serves to establish prior art, and anyone can
challenge or oppose the application.
3. Examination:
• Request for Examination: After publication, the applicant usually needs to request
examination of the application. This step may require an additional fee.
• Patent Office Examination: The application is reviewed for novelty, non-
obviousness, and industrial applicability. The examiner will compare the invention
with existing prior art and assess if the invention meets patentability criteria.
• Office Actions: The examiner may issue office actions requiring the applicant to
amend or clarify claims. If objections are raised, the applicant must respond.
4. Grant of Patent:
• Approval: If the application passes the examination and any objections are
resolved, the patent is granted. The applicant receives exclusive rights to the
invention for a specified period (typically 20 years).
• Patent Certificate: The applicant is issued a patent certificate, and the invention is
legally protected.
 Prior Art Search in Patent Process
[Link]: Ensure the invention is novel and hasn’t been publicly disclosed before the
filing date.
[Link] is Prior Art? Prior Art refers to any existing information (patents, articles,
publications) that is publicly available before the patent filing date.
3. Why Conduct a Prior Art Search?
• Avoid Infringement: Ensures the invention doesn't violate existing patents.
• Track R&D: Understand current trends and technology in the field.
• Assess Patentability: Checks if the invention is truly new, non-obvious, and useful.
4. What to Look for in a Prior Art Search?
• Novelty: Is the invention truly new?
• Patentability: Does it meet patent criteria (novelty, inventive step, industrial
application)?
• Freedom to Operate: Can the invention be commercialized without infringing others'
patents?
5. Where to Search:
• Patent Databases:
• Indian Patent Search: IP India
• WIPO Patentscope: WIPO
• Espacenet: Espacenet
• USPTO: USPTO
• Google Patents: Google Patents
• Non-Patent Literature (NPL):Scholarly Publications: Research papers, journals, books
(IEEE, Springer, Wiley, PubMed).
• Industry Sources: Datasheets, trade magazines, blogs, social media, etc.
[Link] to NPL:
• Most NPL is free online, but some journals may require subscriptions.
 Choice of Patent Application to File
• Once you decide to patent your invention, you need to choose between filing a
Provisional or Complete (Final) Patent Application. Provisional Application is
typically preferred for the following reasons:
1. Cost-Effective: It is cheaper and requires fewer formalities than a complete
application.
2. Quick Process: It takes less time to file, making it a faster way to begin the patent
process.
3. Flexibility: You can include improvements or changes made after filing in the final
application, as it doesn't require complete specifications or data.
4. Priority Date: A provisional application allows you to secure a priority date for your
invention, which is important for establishing the timing of your invention's novelty.
 Patent Application Forms
Form-1: Form-2:
• General Information: Includes • Technical Information: This
details like: form requests more detailed
➢ Title of the Application information, including
➢ Names of Applicants and • For Provisional Application:
Inventors Only Description of the
➢ Type of Application (e.g., Invention and Abstract are
Ordinary, Convention, PCT- required.
NP, Divisional, Patent of
Addition).
Claims:
• The most crucial part of the application, as they define the scope of the invention and the
protection being sought.
• Claims specify what the patent covers and what it does not cover, clearly outlining the
invention's boundaries.
JURISDICTION OF FILING PATENT APPLICATION
Patent Application:
• The inventor files a patent application, either provisional or complete, with the
Patent Office. It includes details of the invention, claims, and the applicant’s
details.
Publication:
• After 18 months from the filing (or priority date), the application is published in
the Official Journal. This step discloses the invention to the public.
Pre-Grant Opposition:
• Anyone can oppose the application within 6 months of publication.
• If successful, the application may be rejected or sent for further examination.
Examination:
• The applicant must file a request for examination using Form-18A within 48
months of [Link] examiner reviews the application and raises any objections,
which the applicant must resolve.
Grant of a Patent:
• If all objections are addressed, the patent is granted and published in the Official
Journal. The applicant now holds exclusive rights to the invention
• Validity of Patent Protection:
• A patent is valid for 20 years from the filing date.
• The patent must be renewed annually by paying the renewal fee; failure to do so may
result in cancellation.
• Post-Grant Opposition:
• After the patent is granted, anyone can oppose it within 1 year on grounds such as
lack of novelty, obviousness, or insufficient disclosure.
• Commercialization of a Patent:
• The patent owner can license the invention to others (exclusive or non-exclusive).
• If not commercially used within 3 years, compulsory licensing can be requested by
others.
• The owner must provide annual updates on the working of the patent (Form-27).
 Key Reasons to Use a Patent Attorney/Agent:
[Link]: Patent applications involve technical and legal details, especially in drafting claims

and the description of the invention.

[Link] Expertise: Patent attorneys understand the nuances of patent law, helping to navigate the

application process, address objections, and respond to patent office requests.

[Link] Representation Requirement: Many countries require foreign applicants to use a local patent

attorney or agent.

[Link] Guidance: Attorneys help with patent strategy, portfolio management, and conducting prior

art searches to assess the patent’s novelty and non-obviousness.

[Link] Pitfalls: Attorneys reduce the risk of mistakes like public disclosure before filing, which

could invalidate the patent.

 CAN A WORLDWIDE PATENT BE OBTAINED?
Patent Rights Are Territorial
No concept of “Universal” or “World Patent.”
Patent must be filed in each country separately.
Regional Patent Offices
One application covers multiple nations.
Examples: European Patent Office (EPO), African Regional Intellectual Property
Organization (ARIPO).
International Route (PCT System)
Patent Cooperation Treaty (PCT) allows a single application for 190+ member countries.
Applicant’s country must be a PCT member (India is a member).
 DO I NEED FIRST TO FILE A PATENT IN INDIA
Filing Patent Outside India
Indian residents must first file in India before filing abroad.
Prior approval from the Indian Patent Office is required.
Exceptions / Waivers:
Applicant is not an Indian resident.
6 weeks passed since filing in India.
Joint invention abroad, Indian resident involved, no market in India → seek Foreign
Filing Permission (FFP).
International collaboration with Indian resident inventor → permission needed.
Inventions in defense / atomic energy / utility models → approval mandatory.
 Types of Patent Applications
1. Provisional Application – For inventions not fully finalized;
secures priority date.
2. Ordinary Application – Complete specifications filed without
claiming priority.
3. PCT Application – International application under Patent
Cooperation Treaty; covers multiple member countries.
4. Divisional Application – Filed when a single application claims
multiple inventions; divided to meet objections or applicant’s
choice.
5. Patent of Addition – For minor improvements of an existing
patent; expires with main patent; no separate renewal fee.
6. Convention Application – Filed in other Convention countries
within 12 months to claim the same priority date as the Indian filing.
 National Bodies Dealing with Patents
•Indian Patent Office (IPO) – Administers patents, designs, and trademarks under
DPIIT.
•Department for Promotion of Industry & Internal Trade (DPIIT) – Apex IP
body; regulates industrial sector policies.
•Technology Information, Forecasting & Assessment Council (TIFAC) – Assesses
state-of-art technologies and sets directions for future tech development in socio-
economic sectors.
•National Research Development Corporation (NRDC) – Promotes and
commercializes technologies from HEIs, R&D labs, and PSUs; maintains tech
repository and patents database.
 Utility Models
•For incremental innovations not meeting strict patent criteria (Novelty &
Non-obviousness).
•Also called Petty Patents or Innovation Patents.
•Easier, faster, and less expensive than patents → ideal for MSMEs.
•Validity: 7–15 years (varies by country).
•Recognized in ~80 countries; India does not currently recognize utility
models.