Details in Patent

Intellectual Property Rights
Types of IPR and legislations covering
IPR in India & Patent
Dr. Shailendra Bhalawe
Assistant Professor
Department of Agro-forestry
College of Agriculture, Balaghat
Jawaharlal Nehru Agriculture University, Jabalpur
(M.P.)

Types of IPR and legislations covering IPR in India:-
What are the Legislations Covering IPRs in India?
•Patents: The Patents Act, 1970 as amended in 1999, 2001 and 2005
•Design: The Designs Act, 2000
•Trade Mark: The Trade Marks Act, 1999
•Copyright: The Copyright Act, 1957 as amended in 1983, 1984 and 1992, 1994,
1999
•Layout Design of Integrated Circuits: The Semiconductor Integrated Circuits
Layout Design Act, 2000.
•Protection of Undisclosed Information (Trade Secret): No exclusive legislation
exists but the matter would be generally covered under the Contract Act, 1872.
•Geographical Indications: The Geographical Indications of Goods (Registration
and Protection) Act, 1999.
•Plant Varieties: The Protection of Plant Variety and Farmers' Rights Act, 2001.

REGISTRATION:
•IP can be either registered or unregistered.
•With unregistered IP, you automatically have legal rights over your creation.
•Unregistered forms of IP include copyright, unregistered design rights, common law
trade marks and database rights, confidential information and trade secrets.
•With registered IP, you will have to apply to an authority, such as the Intellectual
Property Office in the UK, to have your rights recognised.
•If you do not do this, others are free to exploit your creations.
•Registered forms of IP include patents, registered trade marks and registered design
rights. Copyright is also registerable.

TREATIES AND RECIPROCALAGREEMENTS:
India is also a signatory to the following international IP agreements:
The Paris Convention – under this, any person from a signatory state can apply
for a patent or trade mark in any other signatory state, and will be given the same
enforcement rights and status as a national of that country would be;
The Berne Convention – under this, each member state recognises the
copyright of authors from other member states in the same way as the copyright
of its own nationals.
The Madrid Protocol – under this, a person can file a single trade mark
application at their national office that will provide protection in multiple
countries;
The Patent Cooperation Treaty – this is a central system for obtaining a
‘bundle’ of national patent applications in different jurisdictions through a single
application.
India is not a signatory to the Hague Agreement, which allows the protection of
designs in multiple countries through a single filing.

-:PATENTS:-
A patent is the right granted by a government to an inventor to exclude
others from imitating (copying/duplicating/reproducing), manufacturing,
using or selling the invention in question for commercial use during the
specified period.
1)It is an official document which grants sole rights to the inventor
for manufacturing and marketing his product/process/invention to
derive benefit.
2)In other words, it is legal document issued by a government that
grants exclusive rights for the production, sale and profit from the
invention of a product or process for a specific period of time.
3)Patent is a set of exclusive rights granted by government to a
patentee for a fixed period of time.
4)This right allow the patent owner to prevent others from
manufacturing, using or selling the invention protected by the patent.

Patents are granted for:
1)An invention
2)Innovation/Improvement in an invention
3)The process/product of an invention
4)A concept.

Patent Requirements
The chief requirements for the grant of patent are as follow:
Novelty
Inventiveness
Industrial application and Usefulness
Patentability
Disclosure

Limits of Patent:
There are two basic limitations of patent.
• Limitation of Time: A patent is valid for a specified period, 15-20 years
from the date of its awarded in most countries.
• Limitation of Space: A patent is valid only in the country of its award and
not in other countries.
A group of nations may agree to honor the patents awarded by any member country.

The Patent Act, 1970:
The patent Act, 1970 is a landmark in the industrial development of
India. The basic philosophy of the Act is that patents are granted to
encourage "invention and to ensure that these inventions are worked
on commercial scale without undue delay.
"An invention means a new product or process involving
an inventing step and capable of industrial application"
The world "Invention" has been defined under the Patent Act 1970 as
amended from the time to time as
"New invention" is defined as any invention or technology
which has not been anticipated by publication in any
document or used in the country or elsewhere in the
world before the date of filing of patent application with
complete specification, i.e. the subject matter has not
fallen in public domain or that it does not from part of the
state of the art.

The patent is an exclusive right granted by a country to the owner of an
invention to make, use, manufacture and market the invention, provided
the invention satisfies certain condition stipulated in the law.
The law may relate to health, safety, food, security etc. Further, existing
patents in a similar area may also come in the way.
 A patent in the law is a property right and hence, can be gifted,
inherited, assigned, sold or licensed.
As the right is conferred by the state, it can be revoked by the state
under very special circumstances even if the patent has been sold or
licensed or manufactured or marketed in the meantime.
The patent right is territorial in nature and inventors/ their assignees will
have to file separate patent applications in countries of their interest,
along with necessary fees, for obtaining patents in those countries.
By virtue of the grant of a patent, patentee gets the exclusive rights in his
favour that prevent the third parties (not having his consent) from making,
using, offering for sale, selling or importing the patented product or process
within the territory of grant.

Types of Inventions which are not Patentable in India
An invention may satisfy the condition of novelty, inventiveness and usefulness but it
may not quality for patent under the following situations:
•An invention which is frivolous (perky) or which claim anything obviously contrary
to well established natural laws e.g. different types of perpetual motion machines.
•An invention the primary or intended use of which would be contrary to law or
morality or injurious to public health e.g. a process for the preparation of a beverage
which involves use of a Carcinogenic substances, although the beverage may have
higher nourishment value.
•The mere discovery of a scientific principle or formulation of an abstract theory e.g.
Raman Effect.
•The discovery of any new property or new use of known substance or the mere use
of a known process, machine or apparatus unless such known process results in a new
product or employs at least one new reactant.

Process and Product Patent
•There is strict divergence between product and process patent regimes.
•The developed countries follow product patent system.
•On the other, process patent system is preferred by the developing world.
•The two systems are known for their different levels of protection to inventors.

In the case of PROCESS PATENT:
Under a process patent, the patent is granted for a particular manufacturing process
and not for the product itself.
Any other person can produce the same product through some other PROCESS,
modifying the various parameters.
The implication is that there will be more than one producer for the same product
because of the possibility of different process for the manufacturing of the product.
Weakness of the process patent regime is that it gives less protection for the
inventor. There is high tendency for competitors to reengineer the original invention
by discovering a new process with less strain and investment.
Benefit of process patent regime is that it reduces the element of monopoly.

In the case of PRODUCT PATENT:
•It is an exclusive right given to the original inventor of a product. This
means that no other manufacturer can provide the same product through the
same or any other process.
•The implication is that there will not be a competitor for the producer as it is
the product which is patented.
•Product patent system gives higher level of protection to the inventor as there
will not be any other patent holder.
•TRIPs follow the product patent regime.
•India’s 1970 Patent Act allowed only process patent before it was amended
in 2005 to comply with WTO’s TRIPs provisions under which there is only
product patents.

PATENT FILING
The term patent application refers to the legal and administrative
proceedings of requesting the issuance of a patent for an invention, as well as
to the physical document and content of the description and claims of the
invention, including its procedural paper work.
The forms can be submitted online through website
http://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin) if you have a
class 3 digital certificate.
Alternatively, you can send true copies (hard copies) to the patent office.
The patent office charges 10% additional fee if applications are filed offline.
Please note that, the most important factor in filing a patent application is
preparing a patent specification.
Drafting a patent specification is a highly skilled job, which can be only
preformed by persons who have both technical as well as patent law
expertise.
If a person or company is serious about protecting their intellectual property, it
is
highly recommended to use the services of professional patent
practitioners.
Indian patent offices are located at Delhi, Kolkata, Mumbai and Chennai.
The patent application has to be filed in the appropriate office based on
your/your company’s location.

What is the Cost of Filing a Patent Application in India?

Forms are required to be filled for filing of a patent application in India
•Form-1*: Application for grant of a patent
•Form-2*: Provisional/Complete Specification
•Form-3*: Statement and undertaking foreign applications
•Form-5 : Declaration as to inventor ship
•Form-8: Request or claim regarding
mention of inventoras such in a patent
•Form-9: Request for early publication
•Form-18*: Request for examination of a patent application
•Form-26: Form of authorization of a Patent Agent
Note:- * indicates this forms are mandatory for filling of patent

PATENT SPECIFICATION
Provisional Specification:
A provisional specification is usually filed to establish priority of the invention
in case the disclosed invention is only at an early stage and a delay is expected in
giving final shape to the invention.
Although, a patent application accompanied with provisional specification does
not confer any legal patent rights to the applicant, it is, however, a very important
document to establish the earliest ownership of an invention.
The provisional specification is a permanent and independent scientific cum
legal document and no amendment is allowed in this.
No patent is granted on the basis of a provisional specification. It has to be
followed by a complete specification for obtaining a patent for the said invention.
Complete specification must be submitted within 12 months of filing the
provisional specification.
This period is non-extendible. It is not necessary to first file an application
with provisional specification and then the complete specification.
An application with complete specification can be filed right at the first
instance.

Complete Specification:
Title of the invention.
Field to which the invention belongs.
Background of the invention including prior art giving drawbacks of
the known inventions & practices.
Complete description of the invention along with experimental
results.
Drawings etc. essential for understanding the invention.
Claims, which are statements related to the invention on which legal
proprietorship is being sought. Therefore, the claims have to be drafted
very carefully.
Abstract of the invention.
If a biological material is mentioned in a specification; then the
source and geographical origin of the same is to be disclosed in the
specification.
For new biological material, registration number of the same given
by an International Depositary Authority (IDA) is to be included in the
specification along with its address. [Institute of Microbial Technology
(IMTech), Chandigarh is a recognized IDA in India].

PATENT CLAIMS:
In simple terms, the claims define the actual area of exclusivity or protected
features of an invention or the patent.
The claim includes the features or aspects of the invention which the
patentee can stop others from making, using and selling without his/her
permission.
A claim is a statement of novel technical features expressed in terms which
define the scope of the invention sought to be protected.
As stated above the claims are the defining boundary of a patent, tells third
parties what they can and cannot do where the said invention is concerned.
Therefore, in an application for patent, the claims are of paramount
importance
in patent prosecutions at the Patent Office and in a patent litigation before the
courts.
This is the most important section of a Patent. Claims are set with a
boundary of the invention.

PATENT OPPOSITIONS
•Patent opposition in India can be done, either before the patent is granted, by
filing pre-grant opposition by representation, or after the grant of the patent
within a year, by filing a post grant opposition.
•Pre-grant opposition can be filed after the publication of patent
application and before the grant of patent.
•Post-grant opposition can be filed within one year of the grant of the patent.
•An opposition board will be constituted for each of the opposition notifications
accepted by the Controller for the post grant opposition proceedings.

GROUND FOR PATENT OPPOSITIONS:
The grounds of opposition are provided under section 25 (1) of the Indian
Patent Act 1970
Claimed invention or its part wrongfully obtained;
Claimed invention is published in a patent or any other document before
the priority date;
Claimed invention is published in a patent after the priority date having earlier
priority date;
Claimed invention was publicly known or publicly used before the priority
date;
Claimed invention is obvious (understandable) and does not involve clearly
any inventive step, as regards to the matter published or used (in India) before
the priority date;
Claimed invention is not an invention within the meaning of the Patents Act
or is not patentable under the Patents Act;
The complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;

•The applicant has failed to disclose to the Controller the information
regarding foreign applications filed by him for the same invention or has
furnished the information which in any material particular was false to his
knowledge;
•In case of convention (agreement/settlement) application if the application
is not filed before the expiry of 12 months from the date of first application
in convention country;
•The complete specification does not disclose or wrongly mentions the source
and geographical origin of biological material used in the invention;
•Claimed invention was anticipated having regard to the knowledge, oral or
otherwise available within any local or indigenous community in India or
elsewhere.

PATENTS REVOCATION
•Revocation of patents can be made under Section 64 of the Indian Patents
Act 1970.
•Revocation means: Cancellation of the rights granted to a person by the
grant of a patent.
The patent can be revoked on petition of any person interested or of the Central
Government or on a counter claim in a suit for infringement of the patent by the
High Court or on the basis of the grounds mentioned in section 64

Platforms For
Patent Revocation
Intellectual Property Appellate Board
(Chennai) IPAB
High Court

Ground for Patents Revocation
•The Claims are invalid;
•The Patentee is not entitled for the patent;
•Wrongful obtainment of patent;
•The subject of any claim is not an invention;
•The subject of the invention is not new;
•The subject claimed is obvious;
•The subject claimed is not useful;
•The description of the invention as disclosed in the specification is not
elaborate;
•The scope of invention disclosed in claims is insufficient;
•The patent was obtained on a false suggestion or representation;
•The subject in claim not patentable matter;
•The invention was secretly used in India before the priority date;

Initiation of Patents Revocation Proceeding
•Central Government
1.Central Government directs the Controller to revoke the patent,
6if the invention relates to defense purposes,6if the patent is for an invention
relating to atomic energy, and 6if the Central Government feels
that the patent or the manner in which it is
exercised is prejudicial (harmful / detrimental) to public.
•Revocation of patents in the High Court as
counter claim in an infringement suit.
•Controller
1.If a compulsory license has been granted for a patent, and if a person applies
to the Controller on the ground that the patented invention is not worked at the
optimum to meet the requirements of the public.
2.If an independent patent has been granted for any modification or
improvement on the main invention, the Controller on the patentee’s request
may revoke the independent patent on modification of that invention and grant
him patent of addition. {S.54(2)}
3.If the patentee surrenders the patent the Controller may revoke the patent.

PATENTS INFRINGEMENT
Patent infringement is the commission of a prohibited act with respect to a patented
invention without permission from the patent holder.
An invention is considered to be infringed when:
▪Any immaterial (irrelavant) variation in the invention
▪Mechanical equivalents
▪Colorable imitation of an invention
▪Imitation (copying/misuse) of essential features of the invention

An act is considered to be an infringement when:
1.The patented product is made, used, distributed, sold or imported
2.The patented process has been used, or used, offered for sale, sold or imported
the product directly obtained by that process

Procedure for filling suit for infringement:
1.A suit for infringement has to be filed in a District or High court within
whose territorial jurisdiction the cause of action has arisen,
2.However as soon as a counter claim for revocation of patent is filled
against the suit for infringement of patent,
3.Only high court has the jurisdiction of entertain the matter and the
matter has to be transferred to high court for decision.

COMPULSORY LICENSING
1.Compulsory licensing is when a government allows someone else to produce a
patented product or process without the consent of the patent owner or plans to
use the patent-protected invention itself.
2.In essence, under a compulsory license, an individual or company seeking to
use another's intellectual property can do so without seeking the rights holder's
consent and pays the rights holder a set fee for the license.
3.This is an exception to the general rule under intellectual property laws that the
intellectual property owner enjoys exclusive rights that it may license – or
decline to license – to others.
4.It is one of the flexibilities in the field of patent protection included in the
WTO’s agreement on intellectual property — the TRIPS (Trade-Related Aspects
of Intellectual Property Rights) Agreement.

PATENT COOPERATION TREATY
1.The Patent Cooperation Treaty (PCT) is a multilateral treaty entered into force
in 1978.
2. Through PCT, an inventor of a member country (Contracting State) of PCT
can simultaneously obtain priority for his/her invention in all the member
countries, without having to file a separate application in those countries, by
filing of PCT application, which is popularly known as International Application.
3.India joined the PCT on December 7,1998.
4.All activities related to PCT are coordinated by the World Intellectual Property
Organization (WIPO) situated in Geneva.

Which is the appropriate office in India in relation to PCT applications?
 A PCT application can be filed in any of the Branch Offices of the Patent Office
located at New Delhi, Chennai, Mumbai and Kolkata (Head Office).
Any of these Offices shall function as a receiving office, designated office and
elected office for the purpose of international applications filed under the Treaty.
An international application shall be filed in the Patent Office which would
process the application in accordance with these rules and the provisions under the
PCT.

PATENT SEARCH:
1.A patent search is prudent (practical) and cost effective process of searching for
all issued patents or published patent applications related to your invention.
2.Based on the patent search results, you can determined whether your invention
is patentable and to what degree it is patentable.
3.It is primarily focused on determining what similar inventions are already
patented.
4.There is no cost for doing a patent search in India. A patent search can be done
through the Patent database of India available at:
http://ipindiaservices.gov.in/publicsearch.
5.A search may not only help inventors decide whether to pursue a patent but also
to modify their efforts to improved the probability of getting a patent.
6.Knowing the prior art related to your invention guides the patent applicant in
drafting the patent application necessary to properly disclose applicant’s novel
invention.
7.We need to conduct a search of issued patents, published patent applications or
other published or public information to evaluate whether any part of your
invention or idea has been patented, published or disclosed previously.

8. A patent gives its owner the right to prevent others from making, using,
importing or selling the invention without approval. Before such a right is
granted, there obviously is a rigorous check on whether the process or product is
inventive (i.e. isn’t obvious), novel (hasn’t been anticipated in any published
document) and industrially applicable (possesses utility).
9. It involves a search of the database of the intellectual property regulator of
India to check whether there exists an object or invention that is the same as or
similar to applicant’s invention. This is also known as a prior art search.

Importance of Patent Search:
1.Before filing a patent application, a patent search can help with different
objectives like:
2.Determining the probability of having a patent granted to a proposed
invention.
3.Determining the claims to be filed in the patent application.
4.Determining the freedom to operate.
5.Determining whether a granted patent can be invalidated.
6.Knowing more about similar inventions and status of similar patent
filings.

Patent Database:
A database is a collection of information that is organized so that it can easily be
accessed, managed, and updated. In one view, databases cam be classified
according to types of content: bibliographic, full-text, numeric and images
PATENT DATABASES:
•PatentScope (WIPO)
EKASWA
•EPIDOS-INPADOC
•Canadian Patents Database (CIPO)

•PatentScope (WIPO):
1.Patent Scope is the public database of record for Primary Care Trust (PCT)
international patent application published by the World Intellectual Property
Organization (WIPO).
2.It contains approximately 1.7 million international application published from
1978 forward.
3.In 2009, WIPO extended PatentScope to include national patent application
collection from the African Regional Intellectual Property Organization, Cuba,
Israel, Korea, Mexico, Singapore, South Africa and Vietnam.
4.The largest of these are Korea (1.3 million documents from 1973-2007),
Mexico (1,80,000 documents from 1991-2009) and Israel Mexico (1,44,000
documents from 1990-1999).
5.WIPO also introduced a new search interface with simple, structures and
browse function, and the option to display search results as table or graphs.

EKASWA:
EKASWA is India’s first patent database hosted by technology information and
forecasting Assessment Council (TIFAC). As a first step in this direction a
Patent Facilitating Centre (PFC) was set up by Department of Science and
Technology Information Forecasting and Assessment Council (TIFAC). In 1995.
A bibliographic report on patents granted/published in US, Europe, PCT and
India are provided to the client.
Providing the abstracts of the relevant patents as requested by the client.
Providing full text document of the patents

EPIDOS-INPADOC:
1.EPIDOS-INPADOC is complete database under the National Informatics
Centre (NIC). It is one of the most comprehensive database on the patent
bibliography.
2.This database is known as EPIDOS (European Patent Information &
Document Service). European Patent Office (EPO) publishes this database.
3.EPO has been receiving the bibliography of all the patents filed and granted
in approximately 71 countries since 1968 onwards.
4.Almost 3 million references are added each year. Awe live in the age of the
information technology (IT).
5.The universal acceptance of the power of IT to transform and accelerate the
development process, especially in developing economies is indisputable.

•Canadian Patents Database (CIPO):
The Canadian Patents Database, which is maintained by the Canadian
Intellectual Property Office, contains more than two millions Canadian Patens and
published application from 1869 to present.
This database lets you access 92 years of patents descriptions and images. You
can search, retrieve and study more than 21,10,000 patent documents. Full text
images are available from 1920 onwards. Recent improvements includes a few
aesthetic changes to search interface and the inclusion of a representative drawing
(if available) displayed in the bibliographic record. In addition, as of January
2,92,010 abstracts in both English and French are available for application field
under the PCT

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