Meaning and definition of intellectual property. Types of intellectual property, Patent act of 1970 and amendments (as per WTO agreement) Background, Object, Definition Inventions, patentee, true and first inventor, Procedure for grant of process and product patents, Right to patentee, infringement, remedies

1. Intellectual
Property
Right
Unit 3

2. Content
1. Meaning and definition of
intellectual property.
2. Types of intellectual
property,
3. Patent act of 1970 and
amendments (as per WTO
agreement)
4. Background, Object,
Definition
5. Inventions, patentee, true
and first inventor,
6. Procedure for grant of
process and product
patents,
7. Right to patentee,
infringement, remedies

3. Meaning and definition of Intellectual
Property
Intellectual property
rights are the rights
given to persons over
the creations of their
minds.
They usually give the
creator an exclusive
right over the use of
his/her creation for a
certain period of time.

4. Types of IP
Patents, Trademarks,
Copyrights, and Trade
Secrets

5. Types Of IPR

6. Patent
It is important to note that patent for a new
invention is registered only if the invention is
‘novel’ and ‘original’
A ‘Patent’ is an intellectual property right which
protects any new invention.
A patent is granted for a term of 20 (twenty)
years from the date of filling of the application.

7. The Trademarks Act, 1999
The validity of a trademark registration is for an initial period of 10 (ten) years which can renewed perpetually.

8. The Copyrights
Act, 1957
‘original
literary,
Dramatic, Musical,
artistic works, cinematograph
films,
and sound
recording.
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

9. Trade Secrets
A trade secret is typically something not
generally known to the public, where
reasonable efforts are made to keep it
confidential
They are
strategies, or
other
confidential
information,
Recipe.
They are
proprietary
systems,
formulas

10. Trade Secrets
Confidential, and confers some type of
economic value to the holder by the
information not being known by another
party.
They are proprietary systems,
formulas, strategies, or other
confidential information

11. Trade Mark

12. The Geographical
Indications 1999 (“GI
Act”)
• Many goods in India are widely popular owing to
their place of origin. For instance, ‘Darjeeling tea’
is unique .
• Place of origin includes Banarsi Saree; Basmati
Rice
• 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.

13. Types of GI

14. Patent Act
1970
• The Patents Act, 1970 is the legislation that till
date governs patents in India. It first came
into force in 1972.
• The Office of the Controller General of
Patents, Designs and Trade Marks or
CGPDTM is the body responsible for the
Indian Patent Act.
• The Patent Office has its headquarters in
Calcutta and has branches in New Delhi,
Chennai and Mumbai. The office of the
CGPDTM is based in Mumbai. Nagpur hosts
the office of the Patent Information System
and also the National Institute for Intellectual
Property Management.

15. Amendment
• The Patents Act has been repeatedly
amended in 1999, 2002, 2005, 2006
respectively. The Rules under Patent
Act were also amended in 2012, 2013,
2014.

16. Patent Protection for Pharmaceuticals, Foods,
Agro-chemicals
The extension of product patents
to pharmaceutical substances.
Previously, patents of this nature
were not patentable, but this
changed with the deletion
of Section 5 of the Principal
Act which previously provided
that only the process or method
of manufacturing such
substances but not the substance
themselves.

17. Inventions, patentee, true and first inventor
IF A PERSON IS TO BE CALLED AN
INVENTOR, HE OR SHE MUST HAVE
CONTRIBUTED INTELLECTUALLY TO THE
FINAL OUTCOME OF THE SCIENTIFIC
WORK THAT LED TO A PATENT.
THE “TRUE AND FIRST INVENTOR” IS NOT
THE FIRST TO DISCOVER, BUT THE FIRST TO
FILE, SINCE THE DISCOVERY IS REVEALED
TO THE PUBLIC BY FILING. AS A RESULT,
THE FIRST TO REGISTER IS ALSO THE FIRST
TO INVENT.

18. Inventions, patentee,
true and first
inventor
An application for
a patent for any
invention may
only be submitted
by the ‘true and
first inventor’ of
the invention or
an assignee of the
invention.
A ‘patentee,’ as per Section
2(1) (p), is the “person”
mentioned as the grantee or
owner of the patent in the
patent office registry.
Logically, this means that the
terms “inventor” and
“person” would refer to a
natural person.
Section 2(1) (s) of the
Act, covers the
government as a
non-natural body.
Furthermore, the
term “true and first
inventor” has an
exclusivist meaning,
as a natural person is
not mentioned

19. Procedure
• Step 1: Conceiving your Invention
• Step 2: Patent Search and Drafting
• The next step which follows is effective drafting of the patent application. The
patent application. The application consists of various parts such as Claims,
such as Claims, Background, Description, Drawing (if any), Abstract, and
Abstract, and Summary.
Step 3- Filing the Patent Application
This is where the actual process starts. After drafting the patent application, this
patent application, this can be filed in the government patent office as per the
patent office as per the application form in Form 1. A receipt would be generated
receipt would be generated with the patent application number. One can also file a
number. One can also file a provisional patent application, in case; the invention is
in case; the invention is at an early stage under Form 2. The benefit of filing a
benefit of filing a provisional application is that one can secure a prior date of filing
secure a prior date of filing whic ..
• Step 4- Publication of the Application
• Step 5- Request for Examination
Step 6- Respond to the Objections
The applicant needs to respond to the objection received from the patent office by
the patent office by way of the First Examination Report.
Step 7- Grant of Patent
After addressing all objections, the application would be placed for a grant once it
placed for a grant once it is found to be meeting all patentability requirements, and
patentability requirements, and finally, the patent will be granted to the applicant.
granted to the applicant. The grant of a patent is notified in the patent journal which
in the patent journal which is published from time to time.

20. Filing of the
Application
Electronic filing
(July 20,2007)
Physical filing at the Patent Office

21. Where to file
patent
application
• The appropriate office of the patent office shall be the head office of the
patent office or the branch office as the case may be within whose territorial
limits …
Residence of applicant or
Domicile; or His the place of
business; or
The place where the invention actually originated.
• If the applicant has no business or domicile in India, the address
forservice in India is given by such applicant
Office Territorial Jurisdiction
Patent Office Branch,
Chennai
The States of Andhra Pradesh, Karnataka, Kerala, Tamil
Nadu and the Union Territories of Pondicherry and
Lakshadweep
Patent Office Branch Mumbai The States of Maharashtra, Gujarat, Madhya Pradesh, Goa
and Chhattisgarh and the Union Territories of Daman and Diu
& Dadra and Nagar Haveli.
Patent Office
Branch, New
Delhi
The States of Haryana, Himachal Pradesh, Jammu and
Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi
and the Union Territory of Chandigarh.
Patent Office, The rest of India

22. How to file a patent
application?
• Documents can be filed in the patent
office
 through online( e-filing) or
 www.ipindiaonline.gov.in/online
 through post or
 can be submitted by hand

23. Part of a Patent-techno-legal
document
• Legal
Information
 Name ,address ,
 contact details
 inventor,
 assignee,
 Assignments
 Details of foreign
filing
 Request for examination- Form
18
 Request for Early publication -
Form 9
 Power of authority(if assigned
to patent agent)
Form
1
Form
3
• Technical
information
(Specification)
• Form 2
• Background of the
invention
– describes the need for
the invention
• Summary of the invention
– describes how the
invention works
– someone should be able
to duplicate your work
– the preferred embodiment
– examples
• Claim
s– most important
part
– independent
claims
• Abstra
Form
26

24. Part of a Patent-techno-legal
document
• Legal
Information
 Name ,address ,
 contact details
 inventor,
 assignee,
 Assignments
 Details of foreign
filing
 Request for examination- Form
18
 Request for Early publication -
Form 9
 Power of authority(if assigned
to patent agent)
Form
1
Form
3
• Technical
information
(Specification)
• Form 2
• Background of the
invention
– describes the need for
the invention
• Summary of the invention
– describes how the
invention works
– someone should be able
to duplicate your work
– the preferred embodiment
– examples
• Claim
s– most important
part
– independent
claims
• Abstra
Form
26

25. Patent Grant in INDIA
Conceptualizing an invention
Filing of application With complete specification
With provisional specification
Publication u/s 11A (early or
post 18-months )
Filing complete within
12 months after
provisional YES
If NOT
Application
ABANDONED
REQUEST for EXAMINATION
on Form-18 within 48 months
from date of priority.
Pre-grant opposition U/s 25(1)
EXAMINATION [for
patentability &
other requirements
F.E.R. Issued.

26. F.E.R. ISSUED
• Re-Examination of amended documents
• Controller offers a hearing to the applicant.
• Application is to be put in order within 12 months from issue
of FER
Objections not met
within 12 months
ABANDONED Grant of Patent u/s 43 and
publication of grant
Post grant opposition u/s 25(2)
Objections met within 12
months
34

27. Main steps of Patenting Procedure
• Filing of application at the Patent Office
• Filing of request for examination
• Publication
• Examination
• Pre-grant Opposition
• Grant of Patent
• Post-grant Opposition

28. Patent Application
Publicati
on
Examination
Application Grant
Publication of
Grant
Pre Grant opposition

29. Rights of a Patentee
1) Right against exploit the patent: The patentee has a right to
prevent 3rd parties, from exploiting the patented invention.
2) Right to grant license: The patentee has a power to assign
rights or grant license.
3) Right to surrender: The patentee is given the right to
surrender the patent by giving notice in prescribed manner
to the controller.
4) Right to sue for infringement: A patentee is given the right
to institute proceeding for Infringement of the patent in a
district court.
5) He has the right to assign his right to a third person

30. Infringement
Infringement of a
patent consists of
the unauthorized
making, using,
offering for sale or
selling any patented
invention during
the term of the
patent.

31. Types of Patent
Infringement
• A. Direct infringement: The most apparent and common type of infringement. This
infringement includes marketing, sale or commercial use of a similar patented item or
invention that performs substantially identical functions.
• Direct infringement is of two types - literal and nonliteral.
• Literal: When the accused product/process falls in the scope of patent claims then the
infringement is known as literal infringement.
Eg. Polaroid Corp v. Eastman Kodak Co., where patent infringement by Eastman Kodak of
Polaroid's "Instant camera technology" was considered a case of literal infringement.
• Nonliteral infringement : It is also known as Doctrine of equivalence. when the component
or device has same function to obtain similar or same results. This infringement provides a
patentee with added and fair protection for their patents.
• Eg. Ravi Kamal Bali v. Kala Tech 8. In said case, it was alleged that the defendants infringed a
patent on a tamper proof lock/seal for containers. The defence was that the product differed in
material particulars from the patented product, but the court found the changes to be
inconsequential and thereby, applied the doctrine.

32. Types of Patent
Infringement
• B. Indirect infringement is when the infringement has
happened, however the infringement is facilitated by
someone else. Indirect infringements are of two types:
• Inducted infringement – where one actively induces the
other person to infringe a patent by encouraging,
assisting, aiding, inducing him/her to do so. Patent
infringement by inducement typically means that the
inducer willingly and knowingly aided in the infringement
but may or may not have specifically intended to violate a
patent infringement.
• Contributory infringement – where there is an
intentional participation/assistance by one party in an act
of infringement to the other party making them vicariously
liable for the acts of the infringer.

33. Types of Patent
Infringement
• Wilful Infringement : This infringement involves someone showing a serious disregard for the
existence of a patent.
Case Law – Symed Labs vs. Glenmark Pharmaceuticals
• In this case Symed Labs Ltd. had sued Glenmark Pharmaceuticals Laboratories
• First patent was granted for "Novel intermediates for Linezolid and related compounds" while the
213063 patent was granted for "A novel process for the preparation of Linezolid and related
compounds".
• In the case judgement declared on Jan 09, 2015, the judge was convinced that the plaintiff had
good prima facie case in favour of Symed. He further decided that protection to the patent
processes ought to be granted to the plaintiff as damages will not be an efficacious remedy.
There was an irreparable loss and injury because of the long uninterrupted use of patents, and
the balance of convenience also lay in favour of the plaintiff. Thus, the judge granted an ad
interim injunction restraining Glenmark from manufacturing, selling, offering for sale, advertising
or directly or indirectly dealing in the production of Linezolid manufactured in a manner so as to
result in infringement of the plaintiff's registered patents.

34. Infringement Remedies
A patentee acquires the
right, enforceable by law,
to decide who shall and
who shall not exploit his
patented invention.
In India, the patent holder
is honored with the right
to use, sell, manufacture
and distribute the
patented product
Patent infringement
Violation of a patentee's
right with respect to some
invention is known as
patent infringement.
When the rights of the
patent holder or the
claims in the patent are
violated by a third party,
without the consent or
license of the patent
holder,

35. Remedy for
Infringement of Patent
• An action for infringement must be instituted by
way of a suit in any District Court or a High Court
having jurisdiction to entertain the suit.
• The plaintiff on satisfying the court about
infringement of his patent would be entitled to
the following relief:
• Injunction Damages
• Account of profits
• Injunction
• The Plaintiff may at the commencement of the action move for an interim
injunction to restrain the defendant from committing the acts complained of until
the hearing of the action or further orders. The plaintiff should make out a prima
facie case and also show that the balance of convenience lies in his favor.
• Damages
• In assessing the damages, the important question is what is the loss sustained
by the patentee. The loss must be the natural and direct consequence of the
defendant acts. The object of damages is to compensate for loss or injury.
• Accounts of Profits
• Where a patentee claims the profits made by the unauthorized use of his
patent, it is important to ascertain how much of his invention was appropriated,
in order to determine what proportion of the net profits realized by the infringer
was attributable to its use.