RESEARCH METHODOLOGY &

INTELLECTUAL PROPERTY
RIGHTS
(18RMI56)

Dr. A. Chrispin Jiji

Associate Professor
Department of ECE
Cambridge Institute of Technology
Bangalore
Textbook
1. Dipankar Deb, Rajeeb Dey, Valentina E. Balas “Engineering
Research Methodology”, ISSN 1868-4394 ISSN 1868-4408
(electronic), Intelligent Systems Reference Library, ISBN 978-981-
13-2946-3 ISBN 978-981-13-2947-0 (eBook),
https://doi.org/10.1007/978-981-13-2947-0

2. Intellectual Property A Primer for Academia by Prof.

Rupinder Tewari Ms. Mamta Bhardwa

Reference Book:
1. David V. Thiel “Research Methods for Engineers” Cambridge
University Press, 978-1-107-03488- 4

2. Intellectual Property Rights by N.K.Acharya Asia Law House 6th

Edition. ISBN: 978-93-81849-30-9
 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 To Intellectual Property:
1. Role of IP in the Economic and Cultural Development
of the Society
2. IP Governance
3. IP as a Global Indicator of Innovation
4. Origin of IP
5. History of IP in India
6. Major Amendments in IP Laws and Acts in India.
Introduction to Intellectual Property:
• Intellectual means a persons ability to think, to understand and
create ideas. All creations begins with an idea such as inventions,
books, paintings, songs, symbols, names, images or designs used in
business- the products of human creativity and skills

• Intellectual Property (IP)

- IP is a special category of property created by human intellect
(mind) in the fields of arts, literature, science, trade, etc.
- It refers to products of human mind, hence, just like other types
of property, the owners of IP can rent, give or sell it to other
people
- 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 with which we are quite
familiar.
• Intellectual Property Rights (IPR)
- IPR are the rights given to persons over the creations of their
minds Examples: inventions, literary and artistic works and
symbols, names and used in business.
- Usually gives the creator an exclusive right over the use of
his/her creation for a certain period of time
- IPR is 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 the special rights to use, sell,
distribute, offering for sale and restricting others from using the
invention without his prior permission
Why IPR is important?
• It helps authors, creators, developers and owners to get recognition
for their works
• It provides financial benefit to inventors, authors, creators etc for
their works
• It encourages creation of new inventions
• It facilitates the transfer of technology in the form of foreign direct
investment, joint ventures and licensing

Broadly, IP comprises of two branches i.e. Copyrights and Related

Rights and Industrial Property Rights.
- Copyrights and Related Rights refer 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.
- The Industrial Property Rights refer to the Patents, Trademarks,
Trade Services, Industrial Designs and Geographical Indications
1. Role of IP in the Economic and Cultural Development
of the Society
• Creativity being the keystone of any progress.
• 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.
• However, if IPR is practiced severely, it may have a negative
impact on the progress of society.
- For example, agreement with the Trade-Related Aspects
of Intellectual Property Rights (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, exceptions and
limitations associated with IPR have been sanctioned to maintain a
balance between the interests of the creators/inventors and the
community.
- For example, farmers rights under the Protection of Plant
Varieties and Farmers Rights (PVP&FR) Act, 2001 entitles
them to many 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.
• Right to protection against accusations of infringement (violation)
protects the farmers from infringement and other legal accusation
imposed upon them due to his legal ignorance in using others plant
varieties.
• The use of copyrighted material for education and religious
ceremonies is exempted from the operation of the rights granted in
the Copyright Act.
• Similarly, a patent can be canceled in favor of compulsory
licensing by the government during an emergency or a natural
calamity.
• In addition, if an invention/creation 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, and so is the creation of super microbial
pathogens, which can play destruction with human lives.
2. IP Governance
• IP is 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 Rights Act, is carried out by the Department for
Promotion of Industry & Internal Trade (DPIIT) under the
guidance of Ministry of Commerce and Industry, Govt. of India.
• There are a few other dedicated organizations/departments
established by the government to promote patent-ecosystem (patent
awareness, patent filing and patent commercialization) in India e.g.
- Technology Information Forecasting and Assessment
Council (TIFAC)
- National Research Development Corporation (NRDC) and
- Cell for IPR Promotion and Management (CIPAM), etc.
• In order to create a hassle-free exchange of IP related activities
amongst all the nations, it is imperative to have minimum standards
of rules and regulations pertaining to all aspects of IP including
- Rights
- Empowerment (Permission)
- Exceptions (Exclusion), etc.
• To achieve this goal, the 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 (Agreements) like
- Paris Conventions
- Patent Cooperation Treaty (PCT)
- Rome Convention
- Berne Convention, etc.
3. IP as a global indicator of innovation
• IP, especially patents, is considered as one of the important parts 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.
4. Origin of IP
• Though there is no official record of the origin of IP, it is believed
that a basic form of IP was being practiced around 500 Before the
Common Era (BCE) in Sybaris, a state of Greece.
• The natives of Sybaris were granted a years protection for using
their intellect to create any new improvement in luxury.
• A practical and logical approach for IP governance started taking
shape in old-fashioned Europe.
• In 1623, Britain passed an Intellectual Property Legislation which
entitled societies (association of artists or dealers) to create
innovations and bring them to market for trade purposes.
• However, this legislation brought a lot of dislike amongst the public,
and thus was replaced by the Statute of Monopolies, which gave
the rights to the original creator/inventor for 14 years.
• Another legislation, Statute of Anne, was passed by the British
parliament in 1710. This legislation aimed at strengthening
copyrights by providing rights to the authors for recreation and
distribution of their work.
• The work could also be renewed for another 14 years.
• By the end of the 18th century and the beginning of the 19th
century, almost every country started laying down IP legislation
to protect their novel inventions and creations.
5. History of IP in India
i) Patents
• The history of the Indian patent system dates back to the pre
independence era of British rule.
• The first patent related legislation in India was Act VI of 1856,
adapted from the British Patent Law of 1852.
- The objective of this legislation 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:
- 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
• A few years later, it was felt that Designs‘ could also pass the
criteria of the invention and thus should be included in the Patent
Act. The new Act was rechristened as The Patterns and Designs
Protection Act under Act XIII of 1872. This Act was further
amended in 1883 to include the provision of protection for Novelty
in the invention.
• At the beginning of 20th century, all earlier Acts related to
inventions and designs were done away with the introduction of The
Indian Patents and Designs Act 1911. As per this Act, the
governance of patents was placed under the management of the
Controller of Patents.
• In the next three decades, many amendments were introduced for
reciprocal arrangements with other countries for securing priority
dates.
• These amendments dealt with;
- 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.
• Keeping the national interest in mind, recommendations were made
in 1949 as a modification to existing ―The Indian Patents and
Designs Act‖. And those recommendations are as follows
- 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.
• Two years later, another amendment (Act LXX of 1952) was made
to provide compulsory licensing of patents related to food, drugs
and chemicals killing insects and microbes. Based on these
amendments, a bill was presented in the parliament in 1953 but was
rejected.
• In 1957 a committee was constituted and the committee submitted
its report to the government in 1959. It comprised of two segments
addressing
- General aspects of the patent laws, and
- Bill rejected back in 1953.
• The revised patent legislation was submitted to the Lok Sabha in
1965. After many hiccups, clarifications and modifications the
Patents Act, 1970
• However, the Indian Patents and Designs Act of 1911 remained
applicable for designs only till 1994.
• 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.
• In 1999, The Patents (Amendment) Act, 1999 was introduced
providing for the filing of applications for ‗Product Patents‗ in the
areas of drugs, pharmaceuticals and agrochemicals
• The new Patent Act also included provisions for the grant of
Exclusive Market Rights (EMRs) for the distribution and sale of
pharma products on fulfillment of certain conditions.
• The second amendment to the 1970 Act was made through the
Patents (Amendment) Act, 2002 (Act 38 of 2002). This Act
introduced new Patent Rules, 2003, thus replacing the earlier
Patents Rules, 1972. 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.
• With the rapidly changing scenario of IPR at a global level, a need
was felt to further amend the Patent Act, 1970. The highlight of the
Patents (Amendments) Act 2005 were:
• 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 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.
• India is a member of all prominent Conventions and Treaties
related to the facilitation of the inventors for international filing
and protecting the rights over the inventions globally. 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.
ii) Copyrights and related rights
• The concept of copyrights started way back in the 15th century.
However, the actual need for copyrights law was felt only after the
invention of printers and copiers. Before the invention of printers,
writing could be created only once. It was highly laborious and the
risk of errors was involved in the manual process of copying by a
scribe.
• 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 Companys
regime. The term of copyrights was for the lifetime of the
author plus seven years after death. The registration of
copyright was mandatory for the enforcement of rights under
the Act. The government could grant a compulsory license to
publish a book if the owner of the copyright, upon the death of
the author, refused to allow its publication.
 - 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.
- The third phase of the copyrights regime was witnessed post-
independence. The Copyright Act 1957 was enacted,
superseding the Indian Copyright Act, 1914, in order to suit the
provisions of the Berne Convention (1886).
• 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.
• India is an active member of nearly all significant international
Conventions/Treaties related to Copyright Law e.g.
- the Berne Convention as modified in Paris in 1971
- the Universal Copyright Convention (1951)
- the Rome Convention (1961), WCT, WPPT and (TRIPS, 1995).
iii) Trademarks
• The first statutory law related to Trademarks (TM) in India was the
Trade Marks Act, 1940, which was carved out from the Trade Marks
Act, 1938 of the UK.
• It was followed by the incorporation of provisions of TM stated in the
- Indian Penal Code
- Criminal Procedure Code and
- the Sea Customs Act.
• Later on, Trade Marks Act, 1940 was rechristened as Trade and
Merchandise Marks Act, 1958.
• Nearly four decades later, this Act was repealed by the Trade Marks
Act, 1999.
• The need for this occurred to comply with the provisions of the
TRIPS.
• It is the current governing law related to registered TM.
iv) Geographical Indications
• 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.
Geographical Indicators have been defined under Article 22 (1) of
the WTO Agreement on TRIPS.

v) 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
vi) Semiconductor Integrated Circuits and Layout designs
• In the 21st century, Information Technology (IT) has revolutionized
the economic and societal growth of the world economy.
• 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.
• This Act is TRIPS compliant and fulfils the conditions of the
TRIPS agreement concerning the protection of SICLD.
vi) Industrial Design
• The need to protect Industrial Designs (ID) was recognized in the
18th century and the Indian legislation enacted the ―Patterns and
Designs Act in 1872 for the first time.
• The Act was enacted to protect the rights over the creation of the
designs and novel patterns by the inventors.
• The Act was replaced by the British Patents and Designs Act in
1907, which later 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.
vii) 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.
• 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.
• These decisions were taken to address environmental and public
interest concerns.
• The Indian Patents Act, 1970 excludes ―plants and animals in whole
or any part thereof other than microorganisms‖ from patentability.
• To comply with the mandate of Article 27.3 (b) of TRIPS, India
adopted the Protection of Plant Varieties and Farmers Rights
(PPV&FR) Act, 2001 as a sui generis regime protecting not only new
plant varieties but also farmer‘s rights.
viv) Traditional Knowledge
• It is the ancient and indigenous knowledge held by any community or
a group of people.
• In olden times it was not recorded anywhere and was available only in
oral form. So, Traditional Knowledge (TK) was verbally passed on to
future generations. TK is not limited to a particular field.
• It 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.
• Though there is no official record but some forms of TK find
appearance in the culture, stories, legends, folklore, rituals, songs, etc.
• Previously, there was no mechanism available to protect TK, but now,
it has been recognized as IPR under TRIPS Agreement.
• The Government of India has created a digital library termed as
Traditional Knowledge Digital Library (TKDL) as a repository of
2,50,000 formulations of various systems of Indian medicine.
ix) 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 need to protect Industrial Designs (ID) was recognized in the
18th century and the Indian legislation enacted the Patterns and
Designs Act in 1872 for the first time.
• The Act was enacted to protect the rights over the creation of the
designs and novel patterns by the inventors.
• The Act was replaced by the British Patents and Designs Act in
1907, which later 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.
x) Biodiversity conservation
• In 1927 the ―Indian Forest Act‖ and later on the ―Wildlife
Protection Act‖ 1972 was enacted to provide legal protection to
biodiversity.
• In 1988, the ―National Forest Policy‖ was passed, which brought
revolutionary changes in the conservation and management of
biodiversity.
• The Acts and 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
(recognition of rights) Act, 2006
- National Biodiversity Action Plan, 2009
- National Environment Policy, 2006 and a few more.
6. 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. Some of the salient amendments made in Indian Laws
and Acts on IPR are mentioned below:
 Categories of Intellectual Property
Patents:
1. Conditions for Obtaining a Patent Protection
2. To Patent or Not to Patent an Invention.
3. Rights Associated with Patents.
4. Enforcement of Patent Rights.
5. Inventions Eligible for Patenting.
6. Non-Patentable Matters.
7. Patent Infringements.
8. Avoid Public Disclosure of an Invention before Patenting.
 Categories of Intellectual Property
• Intellectual Property (IP) is a vast field comprising of technology-
led inventions, work of artists, novel Industrial Designs, unique
brands of commercial items, and Traditional Knowledge being
practiced continuously over centuries for the production of goods
(carpets, textiles, food products, etc.).
• In order to understand the extensive field of IP, it has been divided
into various categories. In India, these categories include
- Copyright and Related Rights
- Patents
- Trademark
- Trade Secrets
- Industrial Designs
- Geographical Indications and
- Semiconductor Integrated Circuits Layout
- Designs.
Copyright: Copyright is the right to “not copy”. Copyright is the right
given to the owner or creator in relation to publication, and distribution
of a piece of writing, music, picture or related works. Copyright also
applies to technical contents such as software, datasheets and related
documents.

The rights include

- Right to copy (reproduce) a work
- Right to create derivative works based upon it
- Right to distribute copies of the work to public
- Right to publicly display or perform the work

It prevent others from copying, using or selling the work

https://copyright.gov.in
Patents:
• Usually granted for inventions
• Protects the scientific inventions
• A patent is a legal record that gives the holder the exclusive right
over an invention as per the claims, in a limited geographical
domain and for a limited duration by preventing possible interested
parties from any form of manufacture, use or sale of the product or
outcome of the invention
Trademarks:
• Once brand name and brand mark is registered and legalized it
becomes a trade mark
• A brand which is registered under “Trade and Merchandise Marks
Act 1958” treated as a trade mark
• A trademark is a sign that suitably differentiates the owner‘s goods
or services from those of others

• Trade mark is any word, name or symbol (or their combination) that
lets us identify the goods made by an individual, company,
organization etc
Trade services: Any services in relation to trade or any trade related
financing, lending or other financial accommodation provided(or to be
provided) by the bank, including but not limited to
issuance/amendment of letter of credit, document arrival under letter of
credit, application for negotiation and inquiries etc.,

Industrial Designs: An industrial design protection is related to certain

specific ornamental shapes associated with products whose duplication
the owner may wish to prevent
Geographical Indications:
• A geographical indication (GI) is a name or sign used on products
which corresponds to a specific geographical location or origin.
• Items that meet geographical origin and quality standards may be
endorsed with a government-issued stamp which acts as official
certification of the origins and standards of the product.
Patent
• A patent is an exclusive right granted by
a government 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.
• In return, the invention must be disclosed
in an application in a manner sufficiently
clear and complete to enable it to be
replicated by a person with an ordinary
level of skill in the relevant field.
1. Conditions for Obtaining a Patent Protection
• There is a set criterion, as provided in Section 2(1)(j) of the Patents
Act, 1970, which must be fulfilled for a product or a process to
qualify for the grant of a patent. The criterion encompasses:
- 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.
- 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.
- Capable of industrial application - For the benefit of society.
The invention is capable of being made or used in an industry.
2. 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.
• By and large, the inventor prefers the former option. Only a little
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 financial 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 (maybe 100 years or
more) and the probability of reverse engineering (is the
analysis of a technical product to identify how it has been
designed and how it works) 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 (a 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.
3. 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.
• In other words, 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.
• As a matter of fact, the patent rights are negative rights as the owner
is restricting others from using the patent in any manner without his
prior permission.
• The patent holder may choose to take legal action the infringing
party to stop illegal use of the patent and also ask for compensation
for the unauthorized use.
4. Enforcement of Patent Rights
• Enforcement is the process of confirming agreement 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 (is a
legal term for an act that means breaking a law) .
• However, the main responsibility for monitoring, identifying and
taking action against infringers of a patent lies with the patent
owner.
5. 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
etc.
• It is a general belief that patents are awarded only to major
scientific innovations. 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.
penicillins (an antibiotic that kills microbes) and its derivatives.
• The derivatives are made by making subtle changes in the structure
of the penicillin resulting in new/improved properties, such as acid
stability or temperature stability or killing a wide range of microbes
(germs).
• The new antibiotic molecules, known as second, third or fourth
generation penicillins can also be patented.
• In our daily life, we use many patented items, such as toothbrush,
toothpaste, shoes, pen, eyeglasses, textiles, mobile phones, wrist
watch, bicycle, scooter, car, television, cold drinks, beverages and
many more.
• It is not uncommon that many products contain several inventions
(patents) e.g. the laptop computer involves hundreds of inventions
working together.
• Similarly, cars, mobile phones and televisions have many patented
components.
6. Non-Patentable Matters
In the Patent Act, 1970, there are some exclusions (product and
processes) that cannot be patented, such as:
• Invention contrary (opposing) to public morality - a method for
human cloning, a method for gambling (betting/gaming).
• Mere (simple) discovery - finding a new micro-organism occurring
freely in nature, laws of gravity.
• 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.
• Frivolous invention - dough supplemented with herbs, merely
changing the taste of the dough, 100 years calendar, bus timetable.
• Arrangement or rearrangement - an umbrella fitted with a fan, a
torch attached to a bucket.
• Inventions falling within Section 20(1) of the Atomic Energy Act,
1962 - inventions relating to compounds of Uranium, Beryllium,
Thorium, Plutonium, Radium, Graphite, Lithium and more as notified
by the Central Government from time to time.
• 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.
• Topography of integrated circuits - protection of layout designs of
integrated circuits is provided separately under the Semiconductor
Integrated Circuit Layout Designs Act, 2000.
• Plants and animals - plants and animals in whole or any part
including seeds, varieties and species and essentially biological
processes for the production or propagation of plants and animals are
excluded from the scope of protection under patents.
• Traditional knowledge - an invention which in effect is traditional
knowledge or which is an aggregation or duplication of known
properties of traditionally known components are also excluded
7. 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 (is a legal term for an act that means breaking a
law) can be classified into two categories:
- 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.
- Indirect Infringement - When some amount of cheating or
accidental infringement happens without any intention of
infringement.
• If such an unlawful act has been committed, the patentee holds
the right to take legal action the infringer through judicial
intervention.
• Every country has certain laws to deal with such unlawful acts.
• Following reliefs are made available to the patentee:
- Interlocutory/interim injunction- is a temporary order
issued during litigation (hearing) that refers to a ruling or
decision made by a court that is not the final judgment or
disposition of the case
- Damages or accounts of profits.
- Permanent injunction- is a court order requiring a person
to do or cease doing a specific action that is issued as a
final judgment in a case
• It is applicable to mention that 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 the case of national
emergency or other circumstances of extreme urgency after notifying
the owner.
8. 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 in a journal or presentation in a reputed
scientific society or exhibition.
• 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
1. Prior Art Search.
2. Choice of Application to be Filed.
3. Patent Application Forms.
4. Jurisdiction of Filing Patent Application.
5. Publication.
6. Pre-grant Opposition.
7. Examination.
8. Grant of a Patent.
9. Validity of Patent Protection.
10. Post-grant Opposition.
11. Commercialization of a Patent.
12. Need for a Patent Attorney/Agent.
13. Can a Worldwide Patent be Obtained.
14. Do I Need First to File a Patent in India.
15. Patent Related Forms.
16. Fee Structure.
17. Types of Patent Applications.
18. Commonly Used Terms in Patenting.
19. National Bodies Dealing with Patent Affairs.
20. Utility Models.
Process of Patenting
In India, the process of grant of a patent is a lengthy procedure that
may take anywhere 3-4 years or more. The major steps involved in this
process are listed in figure.

Process of Patenting includes

• 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
1. 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 prevents infringement, tracks research and 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 NPL.

i) Patents’ Databases
ii) Non-Patent Literature (NPL)
• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents,
Encyclopedias, Journals (IEEE, Research Gate, Springer, Wiley
Online Library, etc.), Dissertations, NCBI‘s PubMed, Conference
Proceedings, Technical Reports, Public Conferences, etc.
• 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.
2. 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. In
other words, 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
the 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.
3. Patent Application Forms –
• As per the Patent Act, 1970 (Section 39) and the Patents Rules,
2003 (Rule 7, 54, 135 and sub-rule (1) of rule 20, the application for
the grant of patent is filed using Form-1 and Form-2.
 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 (Patent Cooperation Treaty- National Phase)
- Divisional
- Patent of Addition, etc..
 Form-2 seeks technical information and whether to file the
provisional application or complete the application.
- Provisional Application: only Description of the Invention
and the Abstract is to be furnished.
- Complete Application: requires Description of the Invention,
Abstract, Claims and the manner in which invention has to be
performed.
Claims
• 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 required 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): does not depend on
another claim
b) Dependent Claims: depend on another claim
• The Claims must be drafted precisely and carefully in order to seek
patent protection and also to protect the invention against
potential infringers.
Below mentioned are two important forms Form-1 and Form-2 for
filing the patent application (http://www.ip india.nic.in/writeread
data/Portal/IPORule/1_10_1_patents-amend ments-rules-2005.pdf).
4. Jurisdiction of Filing Patent Application –
India has four offices for filing patent applications (Table). The
applications can be filed only in one of the offices based on the
applicant‘s residence or place of business or origin of the invention.
These are termed as jurisdictions to file patents.
• For a foreign applicant, the address for service in India or place of
business of his patent agent determines the appropriate Patent
Office for filing a patent application.
• In the case of joint applications, all the applicants are given with
equal rights and consideration.
5. 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
(http://www.ipindia.nic.in/journalpatents. htm).
• The purpose of publishing the application is to inform the public
about the invention.
• The publication of an application is a mandatory step.
6 . 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.
7. 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.
• It is relevant to mention that a patent application is not examined
automatically after clearing the publication stage.
• 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.
8. Grant of a 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.
9. 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 result in the
cancellation of the patent.
• In some countries, patent protection may be extended beyond 20
years.
• The extension aims to compensate for the time expended on the
administrative approval procedure before products can be put
on the market.
• The time taken for this procedure means that the patent owner
may sometimes not be able to benefit from his right for a
considerable period after the grant of the patent.
10. Post-grant Opposition –
Once the patent has been granted by the Patent Office, it still can be
challenged by anyone within one year from the date of publication
of the grant of the patent. The granted patent can be challenged either
via a Patent Office or in a Court of Law. These bodies may cancel or
withdraw a patent upon a successful challenge by the interested party on
the grounds mentioned below:
• The applicant for the patent wrongly 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 clear and does not involve an inventive
step.
• The subject of the claim is not patentable as per Chapter II of the
Patent Act, 1970.
• The details/specifications of the invention do not sufficiently and
clearly describe the invention.
11. Commercialization of a Patent
• The patent owner may grant permission to an
individual/organization/industry to make, use, and 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 desire or ability 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.
• Once the patent is granted, the patentee (person holding the rights to
the patent) enjoys the exclusive rights to use the patented invention.
• Only the patentee has the right to license or deal with the patent for
any deliberations.
Working/Licensing of the Patent: Although, the validity of the
granted patent is for 20 years (from the date of filing a patent
application), but the patentee is required to furnish information (Form-
27), on an annual basis relating to the commercialization/selling of the
patent. It is called as Working/Licensing of the Patent.

• The licensing of a patent can be exclusive or non-exclusive.

Exclusive License: The patent is sold to only one
individual/organization for a fixed time period. During this time
period, no other person can exploit the relevant IP except the named
licensee.

Non-Exclusive License: A patentee can sell his patent rights to as many

individuals/parties as he likes.
Compulsory Licensing: 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 (of the patent), subject to the fulfilment
of 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.
12. 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 usually means an agent or attorney
who resides and practices in that country).
13. 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 difficult, clumsy, time consuming and
expensive if one wishes to file a patent application in many countries.
• To overcome this issue, many Regional Offices have been established
which receive patent applications on behalf of a group of nations 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.
14. 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. They may file for patent protection in other
countries. But for this, prior approval is needed from the Patent Office.
• However, this approval can be waived off (ignored) under the following
circumstances: a) The applicant is not an Indian resident. b) If 6 weeks have
expired since the patent application was filed in India by an Indian resident.
c) If two or more inventors are working on an invention in a foreign country
and one of the inventors is an Indian resident.
• The invention does not have a 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.
15. Patent Related Forms
There are over 30 patent-related forms. Some of them are mentioned
below.
16. 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). Electronically filed applications are 10% cheaper
than physical filing.
17. Types of Patent Applications
• 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.

• Ordinary Application:
- A patent application filed with complete specifications and
claims but without claiming any priority date.

• PCT Application
- An international application filed in accordance with PCT (Patent
Cooperation Treaty).
- A single application can be filed to seek patent protection and
claim priority in all the member countries of PCT.
• Divisional Application
- When an application claims more than one invention, the
applicant on his own or to meet the official objection on the
ground of plurality may divide the application and file two or
more applications.
- This application divided out of the parent one is known as a
Divisional Application.
- The priority date for all the divisional applications will be the
same as that of the main (the Parent) Application (Ante-dating).

• 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.
- Benefit - There is no need to pay a separate renewal fee for the
Patent of Addition, during the term of the main patent. It expires
along with the main patent.
• 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.
18. Commonly Used Terms in Patenting
There are certain terms that are commonly used in the field of patenting,
as listed in table
19. National Bodies Dealing with Patent Affairs
There are many departments/organizations/bodies dealing with various
aspects of patents, namely,
a) Indian Patent Office (IPO)
b) Department for Promotion for Industry and Internal Trade (DPIIT)
c) Technology Information, Forecasting and Assessment Council
(TIFAC) and
d) National Research Development Corporation (NRDC).

a) Indian Patent Office (IPO)

• The Office of the Controller General of Patents, Designs and Trade
Marks generally known as the Indian Patent Office, is an agency
under the Department for Promotion of Industry and Internal
Trade which administers the Indian law of Patents, Designs and
Trade Marks.
b) Department for Promotion for Industry and Internal Trade
(DPIIT)
• DPIIT, earlier known as the Department of Industrial Policy and
Promotion (DIPP), under the Ministry of Commerce and
Industry, Govt. of India, is the apex IP body.
• It came into existence in 1995 and is the main body for regulating
and administering the industrial sector.
c) Technology Information, Forecasting and Assessment Council
(TIFAC)
• The importance of undertaking technology forecasting and
assessment studies on a systematic and continuing basis was
highlighted in the Government of India’s Technology Policy
Statement (TPS) of 1983.
• Therefore in 1985, TIFAC was established as an autonomous body,
registered as a Society in 1988, under the Department of Science
and Technology.
• It is an important component in filling a critical gap in the overall
Science and Technology system of India.
• Its mission is to assess the state-of-art of technologies and set
directions for future technological developments in India in
important socio-economic sectors
d) National Research Development Corporation (NRDC)
• NRDC, an enterprise of Department of Scientific & Industrial
Research (DSIR), Govt. of India, was set up in 1953 with a mandate
to develop, promote and transfer/commercialize IP and technologies
emanating from Higher Education Institutes (HEIs), R&D research
laboratories/institutions and Public Sector Undertakings (PSUs).
• NRDC has a source of
- 2500 Indian technologies
- filed over 1700 Patents and
- transferred about 5000 technologies in different sectors in India.
• It has also created a technology data bank
(http://fccollc.com/nrdclive/) containing information regarding
technologies available in various fields, such as
- Electrical & Electronics
- Mechanical
- Coil, mining
- Biotechnology
- Healthcare, leather, etc.
20. 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.
• Nearly 80 countries, including France, Germany, Japan, South
Korea, China, Finland, Russian Federation and Spain, provide
protection for Utility Models under their IPR laws.
• India till date does not recognize utility patents.
• If these small patents are recognized under IP protection in India, it
will throw the number of patents (filed and granted) on annual basis.