MODULE-1

LESSON-1: GENERAL INTRODUCTION OF IPRS:

WHAT IS IPR (INTELLECTUAL PROPERTY RIGHTS)?
INTELLECTUAL PROPERTY REFERS TO CREATION OF MIND I.E. INVENTIONS, INDUSTRIAL
DESIGNS FOR ARTICLE, LITERARY & ARTISTIC WORK, SYMBOLS ETC. USED IN
COMMERCE.
INTELLECTUAL PROPERTY IS DIVIDED INTO TWO CATEGORIES:
INDUSTRIAL PROPERTY, WHICH INCLUDES INVENTIONS (PATENTS), TRADEMARKS,
INDUSTRIAL DESIGNS, AND GEOGRAPHIC INDICATIONS AND
2. COPYRIGHT, WHICH INCLUDES LITERARY AND ARTISTIC WORKS SUCH AS NOVELS,
POEMS, PLAYS, FILMS AND MUSICAL WORKS ETC.
ACCORDING TO THE TRIPS AGREEMENT, THE INTELLECTUAL PROPERTY HAS BEEN
CLASSIFIED INTO-PATENTS, INDUSTRIAL DESIGNS, TRADE MARKS, COPYRIGHT,
GEOGRAPHICAL INDICATIONS, LAYOUT DESIGNS OF INTEGRATED CIRCUITS, PROTECTION
OF UNDISCLOSED INFORMATION/TRADE SECRETS. DIFFERENT IP RIGHTS VARY IN THE
PROTECTION THEY PROVIDE.
1.

DEFINITION OF DIFFERENT IP FORMS AND THEIR HISTORY:

PATENTS:
WHAT IS PATENT?
A PATENT IS GRANTED AS AN EXCLUSIVE RIGHT BY THE GOVERNMENT FOR AN
INVENTION FOR A LIMITED PERIOD OF TIME IN CONSIDERATION OF FULL DISCLOSURE
OF THE INVENTION BY AN APPLICANT. A PATENTEE ENJOYS EXCLUSIVE RIGHT TO
PREVENT A THIRD PARTY FROM AN UNAUTHORIZED ACT OF MAKING, USING, OFFERING
FOR SALE, SELLING OR IMPORTING THE PATENTED PRODUCT OR PROCESS WITHIN THE
COUNTRY DURING THE TERM OF THE PATENT. A PATENTED INVENTION BECOMES FREE
FOR PUBLIC USE AFTER EXPIRY OF THE TERM OF THE PATENT OR WHEN THE PATENT
CEASES TO HAVE EFFECT ON ACCOUNT OF NON-PAYMENT OF RENEWAL FEE.

INDIAN PATENT HISTORY:

THE FIRST LEGISLATION IN INDIA RELATING TO PATENTS WAS THE ACT VI OF 1856. THE
OBJECTIVE OF THIS LEGISLATION WAS TO ENCOURAGE INVENTIONS OF NEW AND
USEFUL MANUFACTURES AND TO INDUCE INVENTORS TO DISCLOSE SECRET OF THEIR
INVENTIONS.
THE ACT WAS SUBSEQUENTLY REPEALED BY ACT IX OF 1857 SINCE IT HAD BEEN
ENACTED WITHOUT THE APPROVAL OF THE SOVEREIGN. FRESH LEGISLATION FOR

GRANTING EXCLUSIVE PRIVILEGES WAS INTRODUCED IN 1859 AS ACT XV OF 1859. THIS

LEGISLATION CONTAINED CERTAIN MODIFICATIONS OF THE EARLIER LEGISLATION,
NAMELY, GRANT OF EXCLUSIVE PRIVILEGES TO USEFUL INVENTIONS ONLY AND
EXTENSION OF PRIORITY PERIOD FROM 6 TO 12 MONTHS. THE ACT EXCLUDED
IMPORTERS FROM THE DEFINITION OF INVENTOR. THE 1856 ACT WAS BASED ON THE
UNITED KINGDOM ACT OF 1852 WITH CERTAIN DEPARTURES INCLUDING ALLOWING
ASSIGNEES TO MAKE APPLICATION IN INDIA AND ALSO TAKING PRIOR PUBLIC USE OR
PUBLICATION IN INDIA OR UNITED KINGDOM FOR THE PURPOSE OF ASCERTAINING
NOVELTY.
THE ACT OF 1859 PROVIDED PROTECTION FOR INVENTION ONLY AND NOT FOR DESIGNS
WHEREAS UNITED KINGDOM HAD BEEN PROTECTING DESIGNS FROM 1842 ONWARDS.
TO REMOVE THIS LACUNA, THE PATTERNS AND DESIGNS PROTECTION ACT (ACT XIII)
WAS PASSED IN 1872. THIS ACT AMENDED THE 1859 ACT TO INCLUDE ANY NEW AND
ORIGINAL PATTERN OR DESIGN OR THE APPLICATION OF SUCH PATTERN TO ANY
SUBSTANCE OR ARTICLE OF MANUFACTURE WITHIN THE MEANING OF NEW
MANUFACTURE. THE ACT XV OF 1859 WAS FURTHER AMENDED IN 1883 BY XVI OF 1883
TO INTRODUCE A PROVISION TO PROTECT NOVELTY OF THE INVENTION, WHICH PRIOR
TO MAKING APPLICATION FOR THEIR PROTECTION WERE DISCLOSED IN THE
EXHIBITIONS OF INDIA. A GRACE PERIOD OF 6 MONTHS WAS PROVIDED FOR FILING
SUCH APPLICATIONS AFTER THE DATE OF THE OPENING OF SUCH EXHIBITION.
IN 1888, NEW LEGISLATION WAS INTRODUCED TO CONSOLIDATE AND AMEND THE LAW
RELATING TO INVENTION AND DESIGNS IN CONFORMITY WITH THE AMENDMENTS
MADE IN THE UK LAW. THE MODIFICATIONS INTRODUCED IN THE INDIAN LAW, BY ACT V
OF 1888, OVER THE UK LEGISLATION, INTER ALIA, INCLUDES:
SHIFTING OF AUTHORITY TO ADMINISTER THE ACT FROM THE HOME DEPARTMENT TO
SECRETARY TO GOVERNMENT OF INDIA;
EXTENSION OF THE JURISDICTION OF THE ACT TO OTHER COURTS APART FROM HIGH
COURTS OF MADRAS, CALCUTTA AND BOMBAY;
REDUCTION IN THE FEE FROM RS. 100 TO RS. 10 ONLY AT FILING STAGS;
GRADUATION OF FEE AS TO AMEND APPROXIMATELY WITH THE INCREASING VALUE
WITH THE INVENTION ACQUIRES AS IT BECOMES MORE COMMONLY KNOWN AND
USED.
PROVISION FOR DETAILED DISCLOSURE OF THE INVENTION, INCLUDING BEST MODE
OF WORKING THE INVENTION IN FULL CLEAR, CONCISE AND EXACT TERMS SO AS TO
ENABLE ANY PERSON SKILLED IN THE ART OR SCIENCE TO MAKE USE OF THE
INVENTION;
PROVISION OF POWERS TO CALL FOR A MODEL OF THE INVENTION;

 CHANGE OF TIME FOR FILING PETITION IN RESPECT OF PATENT GRANTED IN UNITED

KINGDOM FROM 12 MONTHS FROM THE LETTERS PATENT TO 12 MONTHS FROM THE
DATE OF SEALING;
POWERS TO EXTEND THE TERM OF EXCLUSIVE PRIVILEGES BY 7 YEARS ORDINARILY
AND 14 YEARS IN EXCEPTIONAL CASES.
PROVISION FOR GRANTING COMPULSORY LICENCE WHERE INVENTION IS NOT MADE
ACCESSIBLE TO PUBLIC, ON REASONABLE TERMS;
APPOINTMENT OF AGENTS TO ENCOURAGE FILING BY FOREIGN INVENTOR;
INTRODUCTION OF PROVISION FOR PROTECTION OF NEW OR ORIGINAL DESIGN;
PROVISION FOR COUNTING THE GRACE PERIOD FOR FILING APPLICATION FOR
INVENTION DISPLAYED IN THE EXHIBITION FROM THE DATE OF ADMISSION OF THE
INVENTION INTO THE EXHIBITION INSTEAD OF THE DATE OF THE OPENING OF THE
EXHIBITION.
IN 1911, THE INDIAN PATENTS AND DESIGNS ACT, 1911, (ACT II OF 1911) WAS BROUGHT
IN REPLACING ALL THE PREVIOUS LEGISLATIONS ON PATENTS AND DESIGNS. THIS ACT
BROUGHT PATENT ADMINISTRATION UNDER THE MANAGEMENT OF CONTROLLER OF
PATENTS FOR THE FIRST TIME. THIS ACT WAS AMENDED IN 1920 TO PROVIDE FOR
ENTERING INTO RECIPROCAL ARRANGEMENTS WITH UK AND OTHER COUNTRIES FOR
SECURING PRIORITY. IN 1930, FURTHER AMENDMENTS WERE MADE TO INCORPORATE,
INTER-ALIA, PROVISIONS RELATING TO GRANT OF SECRET PATENTS, PATENT OF
ADDITION, USE OF INVENTION BY GOVERNMENT, POWERS OF THE CONTROLLER TO
RECTIFY REGISTER OF PATENT AND INCREASE OF TERM OF THE PATENT FROM 14 YEARS
TO 16 YEARS. IN 1945, ANOTHER AMENDMENT WAS MADE TO PROVIDE FOR FILING OF
PROVISIONAL SPECIFICATION AND SUBMISSION OF COMPLETE SPECIFICATION WITHIN
NINE MONTHS.
AFTER INDEPENDENCE, IT WAS FELT THAT THE INDIAN PATENTS & DESIGNS ACT, 1911
WAS NOT FULFILLING ITS OBJECTIVE. IT WAS FOUND DESIRABLE TO ENACT
COMPREHENSIVE PATENT LAW OWING TO SUBSTANTIAL CHANGES IN POLITICAL AND
ECONOMIC CONDITIONS IN THE COUNTRY. ACCORDINGLY, THE GOVERNMENT OF INDIA
CONSTITUTED A COMMITTEE UNDER THE CHAIRMANSHIP OF JUSTICE (DR.) BAKSHI TEK
CHAND, A RETIRED JUDGE OF LAHORE HIGH COURT, IN 1949, TO REVIEW THE PATENT
LAW IN INDIA IN ORDER TO ENSURE THAT THE PATENT SYSTEM IS CONDUCIVE TO THE
NATIONAL INTEREST.
THE TERMS OF REFERENCE INCLUDED
A) TO SURVEY AND REPORT ON THE WORKING OF THE PATENT SYSTEM IN INDIA;

B) TO EXAMINE THE EXISTING PATENT LEGISLATION IN INDIA AND TO MAKE

RECOMMENDATIONS FOR IMPROVING IT, PARTICULARLY WITH REFERENCE TO THE
PROVISIONS CONCERNED WITH THE PREVENTION OF ABUSE OF PATENT RIGHTS;
C) TO CONSIDER WHETHER ANY SPECIAL RESTRICTIONS SHOULD BE IMPOSED ON
PATENT REGARDING FOOD AND MEDICINE;
D) TO SUGGEST STEPS FOR ENSURING EFFECTIVE PUBLICITY TO THE PATENT SYSTEM
AND TO PATENT LITERATURE, PARTICULARLY REGARDING PATENTS OBTAINED BY INDIAN
INVENTORS;
E) TO CONSIDER THE NECESSITY AND FEASIBILITY OF SETTING UP A NATIONAL PATENTS
TRUST;
F) TO CONSIDER THE DESIRABILITY OR OTHERWISE OF REGULATING THE PROFESSION OF
PATENT AGENTS
G) TO EXAMINE THE WORKING OF THE PATENT OFFICE AND THE SERVICES RENDERED BY
IT TO THE PUBLIC AND MAKE SUITABLE RECOMMENDATIONS FOR IMPROVEMENT; AND
H) TO REPORT GENERALLY ON ANY IMPROVEMENT THAT THE COMMITTEE THINKS FIT
TO RECOMMEND FOR ENABLING THE INDIAN PATENT SYSTEM TO BE MORE CONDUCIVE
TO NATIONAL INTEREST BY ENCOURAGING INVENTION AND THE COMMERCIAL
DEVELOPMENT AND USE OF INVENTIONS.
THE COMMITTEE SUBMITTED ITS INTERIM REPORT ON 4TH AUGUST, 1949 WITH
RECOMMENDATIONS FOR PREVENTION OF MISUSE OR ABUSE OF PATENT RIGHT IN
INDIA AND FOR AMENDMENTS TO SECTIONS 22, 23 & 23A OF THE PATENTS & DESIGNS
ACT, 1911 ON THE LINES OF THE UNITED KINGDOM ACTS OF 1919 AND 1949. THE MAIN
RECOMMENDATIONS OF THE COMMITTEE WERE AS FOLLOWS:(A) ANY INTERESTED PERSON MAY APPLY FOR A COMPULSORY LICENCE OR REVOCATION
OF THE PATENT ON ANY OF THE FOLLOWING GROUNDS, NAMELY
(I) PATENTED INVENTION, BEING CAPABLE OF BEING COMMERCIALLY WORKED IN
INDIA, IS NOT BEING COMMERCIALLY WORKED THEREIN TO THE FULLEST POSSIBLE
EXTENT;
(II) DEMAND FOR THE PATENTED ARTICLE IN INDIA IS NOT BEING MET TO AN
ADEQUATE EXTENT OR ON REASONABLE TERMS;
(III) COMMERCIAL WORKING OF THE INVENTION IN INDIA IS BEING PREVENTED OR
HINDERED BY THE IMPORTATION OF THE PATENTED ARTICLES; AND
(IV) THE REFUSAL OF THE PATENTEE TO GRANT A LICENCE OR LICENCES ON
REASONABLE TERMS, WHEREBY THE COMMERCIAL OR INDUSTRIAL ACTIVITIES IN
INDIA ARE PREVENTED OR HINDERED;
(B) FOR OBTAINING RELIEF AGAINST ABUSE OF PATENT RIGHTS, AN APPLICATION CAN BE
MADE TO THE CONTROLLER OF PATENTS AND DESIGNS ANY TIME AFTER THE SEALING OF

THE PATENT AND THE ORDER OF THE CONTROLLER TO BE APPEALABLE BEFORE THE
APPELLATE AUTHORITY WHICH SHOULD BE AN AD-HOC SPECIAL TRIBUNAL NOMINATED
BY THE CENTRAL GOVERNMENT CONSISTING OF
(I) A SITTING OR RETIRED JUDGE OF A HIGH COURT ( AS THE PRESIDENT),
(II) A BARRISTER OR ADVOCATE OF NOT LESS THAN TEN YEARS STANDING,
PREFERABLY CONVERSANT WITH PATENT LAW AND PROCEDURE, AND
(III) A TECHNICAL EXPERT IN THE PARTICULAR SUBJECT WITH WHICH THE PATENT IN
QUESTION IS CONCERNED
THE FUNCTIONS OF THE SPECIAL TRIBUNAL SHOULD BE JUDICATORY AND NOT
ADVISORY, AND ITS DECISIONS SHOULD BE FINAL AND IT SHOULD HAVE THE POWER TO
AWARD COSTS.
THE COMMITTEE ALSO OBSERVED THAT THE PATENTS ACT SHOULD CONTAIN CLEAR
INDICATION TO ENSURE THAT FOOD AND MEDICINE AND SURGICAL AND CURATIVE
DEVICES ARE MADE AVAILABLE TO THE PUBLIC AT THE CHEAPEST PRICE
COMMENSURATE WITH GIVING REASONABLE COMPENSATION TO THE PATENTEE.
BASED ON THE ABOVE RECOMMENDATION OF THE COMMITTEE, THE 1911 ACT WAS
AMENDED IN 1950 (ACT XXXII OF 1950) IN RELATION TO WORKING OF INVENTIONS AND
COMPULSORY LICENCE/REVOCATION. FOLLOWING GROUNDS WERE PROVIDED FOR
MAKING APPLICATIONS FOR COMPULSORY LICENCE:
(A) PATENTED INVENTION, BEING CAPABLE OF BEING COMMERCIALLY WORKED IN
INDIA, IS NOT BEING COMMERCIALLY WORKED THEREIN TO THE FULLEST POSSIBLE
EXTENT;
(B) DEMAND FOR THE PATENTED ARTICLE IN INDIA IS NOT BEING MET TO AN
ADEQUATE EXTENT OR ON REASONABLE TERMS;
(C) COMMERCIAL WORKING OF THE INVENTION IN INDIA IS BEING PREVENTED OR
HINDERED BY THE IMPORTATION OF THE PATENTED ARTICLES;
(D) THE REFUSAL OF THE PATENTEE TO GRANT A LICENCE OR LICENCES ON
REASONABLE TERMS, THE COMMERCIAL OR INDUSTRIAL ACTIVITIES IN INDIA ARE
PREVENTED OR HINDERED;
(E) A MARKET FOR THE EXPORT OF THE PATENTED ARTICLE MANUFACTURED IN INDIA
IS NOT BEING SUPPLIED;
(F) THE WORKING OR EFFICIENT WORKING IN INDIA OF ANY OTHER PATENTED
INVENTION WHICH MAKES A SUBSTANTIAL CONTRIBUTION TO THE ESTABLISHMENT OR
DEVELOPMENT OF COMMERCIAL OR INDUSTRIAL ACTIVITIES IN INDIA IS UNFAIRLY
PREJUDICED; AND
(G) CONDITIONS OF LICENCE UNFAIRLY PREJUDICED THE ESTABLISHMENT OR
DEVELOPMENT OF COMMERCIAL OR INDUSTRIAL ACTIVITIES IN INDIA.

THE TIME PERIOD PRESCRIBED FOR MAKING THE APPLICATIONS WAS AT ANY TIME
AFTER EXPIRATION OF THREE YEARS FROM THE DATE OF SEALING. THE APPLICATION
COULD ALSO BE MADE BY THE LICENCEE. THE TERM, PATENTED ARTICLE INCLUDED ANY
ARTICLE MADE BY A PATENTED PROCESS. OTHER PROVISIONS WERE RELATED TO
ENDORSEMENT OF THE PATENT WITH THE WORDS LICENCE OF RIGHT ON AN
APPLICATION BY THE GOVERNMENT SO THAT THE CONTROLLER COULD GRANT
LICENCES. IN 1952, AN AMENDMENT WAS MADE TO PROVIDE COMPULSORY LICENCE IN
RELATION TO PATENTS IN RESPECT OF FOOD AND MEDICINES, INSECTICIDE, GERMICIDE
OR FUNGICIDE AND A PROCESS FOR PRODUCING SUBSTANCE OR ANY INVENTION
RELATING TO SURGICAL OR CURATIVE DEVICES, THROUGH ACT LXX OF 1952 . THE
COMPULSORY LICENCE WAS ALSO AVAILABLE ON NOTIFICATION BY THE CENTRAL
GOVERNMENT. BASED ON THE RECOMMENDATIONS OF THE COMMITTEE, A BILL WAS
INTRODUCED IN THE PARLIAMENT IN 1953 (BILL NO.59 OF 1953). HOWEVER, THE BILL
LAPSED ON DISSOLUTION OF THE LOK SABHA.
IN 1957, THE GOVERNMENT OF INDIA APPOINTED JUSTICE N. RAJAGOPALA AYYANGAR
COMMITTEE TO EXAMINE THE QUESTION OF REVISION OF THE PATENT LAW AND ADVISE
GOVERNMENT ACCORDINGLY. THE REPORT OF THE COMMITTEE, WHICH COMPRISED OF
TWO PARTS, WAS SUBMITTED IN SEPTEMBER, 1959. THE FIRST PART DEALT WITH
GENERAL ASPECTS OF THE PATENT LAW AND THE SECOND PART GAVE DETAILED NOTE
ON THE SEVERAL CLAUSES OF THE LAPSED BILL OF 1953. THE FIRST PART ALSO DEALT
WITH EVILS OF THE PATENT SYSTEM AND SOLUTION WITH RECOMMENDATIONS IN
REGARD TO THE LAW. THE COMMITTEE RECOMMENDED RETENTION OF THE PATENT
SYSTEM, DESPITE ITS SHORTCOMINGS. THIS REPORT RECOMMENDED MAJOR CHANGES
IN THE LAW WHICH FORMED THE BASIS OF THE INTRODUCTION OF THE PATENTS BILL,
1965. THIS BILL WAS INTRODUCED IN THE LOK SABHA ON 21ST SEPTEMBER, 1965,
WHICH, HOWEVER, LAPSED.
IN 1967, AN AMENDED BILL WAS INTRODUCED WHICH WAS REFERRED TO A JOINT
PARLIAMENTARY COMMITTEE AND ON THE FINAL RECOMMENDATION OF THE
COMMITTEE, THE PATENTS ACT, 1970 WAS PASSED. THIS ACT REPEALED AND REPLACED
THE 1911 ACT SO FAR AS THE PATENTS LAW WAS CONCERNED. HOWEVER, THE 1911 ACT
CONTINUED TO BE APPLICABLE TO DESIGNS. MOST OF THE PROVISIONS OF THE 1970
ACT WERE BROUGHT INTO FORCE ON 20TH APRIL, 1972 WITH THE PUBLICATION OF THE
PATENTS RULES, 1972.
THE SALIENT FEATURES OF THE PATENTS ACT, 1970 ARE:
ELABORATE DEFINITION OF INVENTION
NO PRODUCT PATENTS FOR SUBSTANCES INTENDED FOR USE AS FOOD, DRUGS AND
MEDICINES INCLUDING THE PRODUCT OF CHEMICAL PROCESSES
CODIFICATION OF CERTAIN INVENTIONS AS NON-PATENTABLE
MANDATORY FURNISHING OF INFORMATION REGARDING FOREIGN APPLICATION

 ADOPTION OF ABSOLUTE NOVELTY CRITERIA IN CASE OF PUBLICATION

EXPANSION OF THE GROUNDS FOR OPPOSITION TO THE GRANT OF A PATENT
EXEMPTION OF CERTAIN CATEGORIES OF PRIOR PUBLICATION, PRIOR
COMMUNICATION AND PRIOR USE FROM ANTICIPATION
PROVISIONS FOR SECRECY OF INVENTIONS RELEVANT FOR DEFENCE PURPOSES
PROVISION FOR USE OF INVENTIONS FOR THE PURPOSE OF GOVERNMENT OR FOR
RESEARCH OR INSTRUCTION TO PUPILS
REDUCTION IN THE TERM OF PATENTS RELATING TO PROCESS IN RESPECT OF
SUBSTANCES CAPABLE OF BEING USED AS FOOD OR AS MEDICINE OR DRUGS
ENLARGEMENT OF THE GROUNDS FOR REVOCATION OF A PATENT
PROVISION FOR NON-WORKING AS GROUND FOR COMPULSORY LICENCES, LICENCES
OF RIGHT, AND REVOCATION OF PATENTS
ADDITIONAL POWERS TO CENTRAL GOVERNMENT TO USE AN INVENTION FOR
PURPOSES OF GOVERNMENT INCLUDING GOVERNMENT UNDERTAKINGS
PREVENTION OF ABUSE OF PATENT RIGHTS BY MAKING RESTRICTIVE CONDITIONS IN
LICENCE AGREEMENTS/CONTRACT AS VOID
PROVISION FOR APPEAL TO HIGH COURT ON CERTAIN DECISIONS OF THE
CONTROLLER
PROVISION FOR OPENING OF BRANCHES OF THE PATENT OFFICE.
THIS ACT REMAINED IN FORCE FOR ABOUT 24 YEARS TILL DECEMBER 1994 WITHOUT
ANY CHANGE. AN ORDINANCE EFFECTING CERTAIN CHANGES IN THE ACT WAS ISSUED
ON 31ST DECEMBER 1994, WHICH CEASED TO OPERATE AFTER SIX MONTHS.
SUBSEQUENTLY, ANOTHER ORDINANCE WAS ISSUED IN 1999. THIS ORDINANCE WAS
LATER REPLACED BY THE PATENTS (AMENDMENT) ACT, 1999 THAT WAS BROUGHT INTO
FORCE RETROSPECTIVELY FROM 1ST JANUARY, 1995. THE AMENDED ACT PROVIDED FOR
FILING OF APPLICATIONS FOR PRODUCT PATENTS IN THE AREAS OF DRUGS,
PHARMACEUTICALS AND AGRO CHEMICALS THOUGH SUCH PATENTS WERE NOT
ALLOWED. HOWEVER, SUCH APPLICATIONS WERE TO BE EXAMINED ONLY AFTER 31ST
DECEMBER, 2004. MEANWHILE, THE APPLICANTS COULD BE ALLOWED EXCLUSIVE
MARKETING RIGHTS (EMRS) TO SELL OR DISTRIBUTE THESE PRODUCTS IN INDIA,
SUBJECT TO FULFILMENT OF CERTAIN CONDITIONS.
THE SECOND AMENDMENT TO THE 1970 ACT WAS MADE THROUGH THE PATENTS
(AMENDMENT) ACT, 2002 (ACT 38 0F 2002). THIS ACT CAME INTO FORCE ON 20TH MAY,
2003 WITH THE INTRODUCTION OF THE NEW PATENTS RULES, 2003 BY REPLACING THE
EARLIER PATENTS RULES, 1972. SALIENT FEATURES OF THE PATENTS (AMENDMENT) ACT,
2002 WERE:

 FURTHER CODIFICATION OF NON PATENTABLE INVENTIONS

20 YEARS TERM OF PATENT FOR ALL TECHNOLOGY
PROVISION FOR REVERSAL OF BURDEN OF PROOF IN CASE OF PROCESS PATENTS
PROVISIONS OF COMPULSORY LICENCES TO MEET PUBLIC HEALTH CONCERNS
DELETION OF PROVISION OF LICENCE OF RIGHT
INTRODUCTION OF SYSTEM OF DEFERRED EXAMINATION
MANDATORY PUBLICATION OF APPLICATIONS AFTER 18 MONTHS FROM THE DATE OF
FILING
PROVISION FOR PROCESS PATENT FOR MICRO ORGANISMS
ESTABLISHMENT OF APPELLATE BOARD
PROVISION FOR PARALLEL IMPORTS
PROVISION FOR EXEMPTION FROM INFRINGEMENT PROCEEDINGS FOR USE OF A
PATENTED INVENTION FOR OBTAINING REGULATORY APPROVAL FOR A PRODUCT
BASED ON THAT PATENTED INVENTION
PROVISION TO PROTECT BIODIVERSITY AND TRADITIONAL KNOWLEDGE.
THE THIRD AMENDMENT TO THE PATENTS ACT, 1970 WAS INTRODUCED THROUGH THE
PATENTS (AMENDMENT) ORDINANCE, 2004 W.E.F. 1ST JANUARY, 2005. THIS ORDINANCE
WAS LATER REPLACED BY THE PATENTS (AMENDMENT) ACT, 2005 (ACT 15 OF 2005 ) ON
4TH APRIL, 2005 WHICH WAS BROUGHT INTO FORCE FROM 1ST JANUARY, 2005. THE
SALIENT FEATURES OF THIS AMENDMENT ARE EXTENSION OF PRODUCT PATENTS TO ALL FIELDS OF TECHNOLOGY INCLUDING FOOD,
DRUGS, CHEMICALS AND MICRO ORGANISMS
DELETION OF THE PROVISIONS RELATING TO EXCLUSIVE MARKETING RIGHTS (EMRS)
INTRODUCTION OF A PROVISION FOR ENABLING GRANT OF COMPULSORY LICENCE
FOR EXPORT OF MEDICINES TO COUNTRIES WHICH HAVE INSUFFICIENT OR NO
MANUFACTURING CAPACITY TO MEET EMERGENT PUBLIC HEALTH
SITUATIONS
MODIFICATION IN THE PROVISIONS RELATING TO OPPOSITION PROCEDURES WITH A
VIEW TO STREAMLINING THE SYSTEM BY HAVING BOTH PRE-GRANT AND POSTGRANT
OPPOSITION IN THE PATENT OFFICE
STRENGTHENING THE PROVISIONS RELATING TO NATIONAL SECURITY TO GUARD
AGAINST PATENTING ABROAD OF DUAL USE TECHNOLOGIES

 RATIONALISATION OF PROVISIONS RELATING TO TIME-LINES WITH A VIEW TO

INTRODUCING FLEXIBILITY AND REDUCING THE PROCESSING TIME FOR PATENT
APPLICATION.
PATENTS RULES
SECTION 159 OF THE PATENTS ACT, 1970 EMPOWERS THE CENTRAL GOVERNMENT TO
MAKE RULES FOR IMPLEMENTING THE ACT AND REGULATING PATENT ADMINISTRATION.
ACCORDINGLY, THE PATENTS RULES, 1972 WERE NOTIFIED AND BROUGHT INTO FORCE
W.E.F. 20TH APRIL, 1972. THESE RULES WERE AMENDED FROM TIME TO TIME TILL 20TH
MAY, 2003 WHEN NEW PATENTS RULES, 2003 WERE BROUGHT INTO FORCE BY
REPLACING THE 1972 RULES. THESE RULES WERE FURTHER AMENDED BY THE PATENTS
(AMENDMENT) RULES, 2005 AND THE PATENTS (AMENDMENT) RULES, 2006. THE LAST
AMENDMENTS WERE MADE EFFECTIVE FROM 5TH MAY, 2006.
TRADE MARKS:
TRADEMARKS ARE WORDS, NAMES, SYMBOLS, BRANDS, DEVICES, HEADINGS, LABELS,
TICKETS, SIGNATURES, LETTERS OR NUMERALS OR ANY COMBINATION THEREOF, USED
OR PROPOSED TO BE USED BY MANUFACTURERS OF GOODS TO IDENTIFY AND TO
DISTINGUISH THEIR GOODS FROM GOODS MANUFACTURED AND SOLD BY OTHERS. A
PERSON WHO SELLS HIS GOODS UNDER A PARTICULAR TRADEMARK ACQUIRES A SORT
OF LIMITED EXCLUSIVE RIGHT TO USE THE MARK IN RELATION TO THOSE GOODS.
A TRADEMARK IS A SIGN, OR A COMBINATION OF SIGNS, WHICH DISTINGUISHES THE
GOODS OR SERVICES OF ONE ENTERPRISE FROM THOSE OF ANOTHER.
SUCH SIGNS MAY USE WORDS, LETTERS, NUMERALS, PICTURES, SHAPES AND COLORS,
AS WELL AS ANY COMBINATION OF THE ABOVE. AN INCREASING NUMBER OF
COUNTRIES ALSO ALLOW FOR THE REGISTRATION OF LESS TRADITIONAL FORMS OF
TRADEMARK, SUCH AS THREE-DIMENSIONAL SIGNS (LIKE THE COCA-COLA BOTTLE OR
TOBLERONE CHOCOLATE BAR), AUDIBLE SIGNS (SOUNDS, SUCH AS THE ROAR OF THE
LION THAT PRECEDES FILMS PRODUCED BY MGM), OR OLFACTORY SIGNS (SMELLS, SUCH
AS PERFUMES). BUT MANY COUNTRIES HAVE SET LIMITS AS TO WHAT MAY BE
REGISTERED AS A TRADEMARK, GENERALLY ALLOWING ONLY SIGNS THAT ARE VISUALLY
PERCEPTIBLE OR CAN BE REPRESENTED GRAPHICALLY.
A TRADEMARK IS A SIGN USED ON GOODS OR IN CONNECTION WITH THE MARKETING
OF GOODS. THE TRADEMARK MAY APPEAR NOT ONLY ON THE GOODS THEMSELVES BUT
ALSO ON THE CONTAINER OR WRAPPER IN WHICH THE GOODS ARE SOLD. WHEN USED
IN CONNECTION WITH THE MARKETING OF THE GOODS THE SIGN MAY APPEAR IN
ADVERTISEMENTS, FOR EXAMPLE IN NEWSPAPERS OR ON TELEVISION, OR IN THE
WINDOWS OF THE SHOPS IN WHICH THE GOODS ARE SOLD.
IN ADDITION TO TRADEMARKS IDENTIFYING THE COMMERCIAL SOURCE OF GOODS OR
SERVICES, SEVERAL OTHER CATEGORIES OF MARKS EXIST. COLLECTIVE MARKS ARE

OWNED BY AN ASSOCIATION, SUCH AS AN ASSOCIATION REPRESENTING ACCOUNTANTS

OR ENGINEERS, WHOSE MEMBERS USE THE MARK TO IDENTIFY THEMSELVES WITH A
LEVEL OF QUALITY AND OTHER REQUIREMENTS SET BY THE ASSOCIATION.
CERTIFICATION MARKS, SUCH AS THE WOOLMARK, ARE GIVEN FOR COMPLIANCE WITH
DEFINED STANDARDS, BUT ARE NOT CONFINED TO ANY MEMBERSHIP. A TRADEMARK
USED IN CONNECTION WITH SERVICES IS CALLED A SERVICE MARK. SERVICE MARKS ARE
USED FOR EXAMPLE BY HOTELS, RESTAURANTS, AIRLINES, TOURIST AGENCIES, CARRENTAL AGENCIES, LAUNDRIES AND CLEANERS. ALL THAT HAS BEEN SAID ABOUT
TRADEMARKS APPLIES ALSO TO SERVICE MARKS.

HISTORICAL BACKGROUND OF TRADE MARKS ACT:

THE TRADE MARKS ACT, 1940 (5 OF 1940) WAS THE FIRST STATUTE LAW ON TRADE
MARKS IN INDIA. PRIOR TO THAT PROTECTION OF TRADE MARKS WAS LEFT TO THE
GOVERNED BY COMMON LAW.
CASES CONCERNING TRADE MARKS WERE DECIDED IN THE LIGHT OF SECTION 54 OF
SPECIFIC RELIEF ACT, 1877, WHILE REGISTRATION WAS SECURED BY OBTAINING A
DECLARATION AS TO OWNERSHIP UNDER THE INDIAN REGISTRATION ACT, 1908 (SEE
WHIRLPOOL CORPORATION VS. REGISTRAR OF TRADE MARKS 1998 (SUPPL.) ARB. LR
553).
SOME OF THE PROVISIONS OF THE FIRST TRADE MARKS ACT, 1940 CAME INTO FORCE ON
11.3.1940 AND THE REST BECAME EFFECTIVE ON 1.6.1942 (GAZETTE OF INDIA
EXTRAORDINARY, 1942. P.684) FOR STATEMENT OF OBJECTS & REASONS, SEE GAZETTE
OF INDIA 1939, PART V, P. 249- REPORT OF SELECT COMMITTEE, GAZETTE OF INDIA,
1940, PART V. P. 51.
THE SAID ENACTMENT WAS AMENDED BY THE TRADE MARKS AMENDMENT ACT, 1941
(27 OF 1941) AND LATER BY TWO OTHER AMENDMENTS. BY THE TRADE MARKS
AMENDMENT ACT, 1943, THE TRADE MARKS REGISTRY, WHICH WAS FORMERLY A PART
OF THE PATENT OFFICE, CALCUTTA (NOW KOLKATA) WAS SEPARATED FROM THE PATENT
OFFICE TO CONSTITUTE A SEPARATE TRADE MARKS REGISTRY UNDER A REGISTRAR OF
TRADE MARKS AT BOMBAY (NOW MUMBAI). THEREAFTER, THE ACT WAS AMENDED BY
THE TRADE MARKS AMENDMENT ACT, OF 1946, TO GIVE EFFECT TO THE RECIPROCAL
ARRANGEMENTS RELATING TO TRADE MARKS BETWEEN THE GOVERNMENT OF INDIA
AND THE THEN INDIAN STATES AND FURTHER AMENDMENTS INTRODUCED BY PART B
STATES LAWS ACT, 1951.
THE TRADE MARKS ENQUIRY COMMITTEE, WHICH WAS CONSTITUTED BY THE
GOVERNMENT OF INDIA IN NOVEMBER 1953, RECOMMENDED SOME CHANGES BUT
SINCE THE REPORT SHOWED SOME DIVERGENCE OF OPINION AMONG THE MEMBERS ,
MR. JUSTICE RAJAGOPALA AYYANGAR, (THEN A JUDGE OF THE MADRAS HIGH COURT,
WHO LATER SERVED AND RETIRED AS A JUDGE OF THE SUPREME COURT) WAS

APPOINTED BY THE GOVERNMENT OF INDIA TO EXAMINE THE TRADE MARKS ACT, 1940,
WITH REFERENCE TO THE REPORT OF THE TRADE MARKS ENQUIRY COMMITTEE AND TO
RECOMMEND AS TO WHAT CHANGES IN THE THEN EXISTING LAW WERE NECESSARY. ON
THE BASIS OF THE REPORT OF MR. JUSTICE AYYANGAR THE TRADE MARKS ACT, 1940
WAS REPLACED BY THE TRADE & MERCHANDISE MARKS ACT, 1958. THE 1958 ACT
CONSOLIDATED THE PROVISIONS OF THE TRADE MARKS ACT, 1940, THE INDIAN
MERCHANDISE MARKS ACT, 1889(WHICH WAS IN FORCE SINCE 1.4.1889) AND THE
PROVISIONS RELATING TO TRADE MARKS IN THE INDIAN PENAL CODE. THE TRADE &
MERCHANDISE MARKS ACT, 1958 (ACT 43 OF 1958) WAS BROUGHT INTO FORCE ON
25TH NOVEMBER 1959. CERTAIN MINOR AMENDMENTS WERE CARRIED OUT BY THE
REPEALING & AMENDING ACT, 1960 (58 OF 1960) AND THE PATENTS ACT, 1970 (39 OF
1970). THUS THE HISTORY OF LEGAL PROTECTION TO TRADE MARKS IN INDIA IS MORE
THAN A CENTURY OLD.
REVISION OF THE 1958 ACT
THE TRADE & MERCHANDISE MARK ACT, 1958 HAS BEEN REVISED AND REPLACED BY THE
TRADE MARK ACT, 1999. THE PROCESS STARTED AS IT WAS FELT THAT A
COMPREHENSIVE REVIEW OF THE 1958 ACT BE MADE IN VIEW OF NEW DEVELOPMENTS
IN TRADING AND COMMERCIAL PRACTICES, INCREASING GLOBALIZATION OF TRADE AND
INDUSTRY, THE NEED TO ENCOURAGE INVESTMENT FLOWS AND TRANSFER OF
TECHNOLOGY, NEED FOR SIMPLIFICATION AND HARMONIZATION OF TRADE MARK
MANAGEMENT SYSTEM IN THE COUNTRY.
THE TRADE MARKS BILL, 1993 WAS INTRODUCED IN THE LOK SABHA ON 19.5.1993,
WHICH WAS PASSED BY THE LOK SABHA ON THE LINES RECOMMENDED BY THE
STANDING COMMITTEE.
HOWEVER, AS THE BILL FAILED TO GET THROUGH THE RAJYA SABHA, IT LAPSED ON THE
DISSOLUTION OF THE LOK SABHA. A NEW BILL TITLED AS TRADE MARKS BILL, 1999 (BILL
NO.33 OF 1999) WAS INTRODUCED IN RAJYA SABHA AND EVENTUALLY PASSED BY BOTH
THE HOUSES OF PARLIAMENT. THE BILL RECEIVED THE ASSENT OF THE PRESIDENT ON
30.12.1999 AND BECAME AN ACT.
THE CURRENT LAW OF TRADE MARKS CONTAINED IN THE TRADE MARKS ACT, 1999 IS IN
HARMONY WITH TWO MAJOR INTERNATIONAL TREATIES ON THE SUBJECT, NAMELY THE
PARIS CONVENTION FOR PROTECTION OF INDUSTRIAL PROPERTY AND TRIPS
AGREEMENT TO BOTH OF WHICH INDIA IS A SIGNATORY.
QUESTIONS ON TRADE MARKS:
WHEN IS IT PROPER T O USE THE "TM" AND THE REGISTRATION SYMBOL "" WITH
THE MARK?
ANSWER: ONCE YOU HAVE FILED AN APPLICATION FOR REGISTRATION OF TRADEMARK,
THE "TM" SYMBOL MAY BE USED WITH THE MARK. ANYONE WHO CLAIMS RIGHTS IN A
MARK MAY USE THE TM (TRADEMARK) DESIGNATION WITH THE MARK TO ALERT THE
1.

PUBLIC TO THE CLAIM. HOWEVER, THE REGISTRATION SYMBOL, , MAY ONLY BE USED
ONCE THE MARK IS ACTUALLY REGISTERED IN THE TRADEMARK REGISTRAR'S OFFICE.
EVEN THOUGH AN APPLICATION IS PENDING, THE REGISTRATION SYMBOL MAY NOT BE
USED BEFORE THE MARK HAS ACTUALLY BECOME REGISTERED.
WHAT IS THE DURATION OF THE REGISTERED TRADE MARK? CAN IT BE EXTENDED?
ANSWER: THE DURATION OF THE REGISTERED TRADE MARK IS INITIALLY TEN YEARS
FROM THE DATE OF FILING AN APPLICATION. THIS INITIAL PERIOD OF REGISTRATION
MAY BE EXTENDED TIME TO TIME FOR FURTHER PERIOD OF EVERY 10 YEARS UPON
PAYMENT OF THE RENEWAL FEES.
2.

DESIGNS:
INDUSTRIAL DESIGNS
AN INDUSTRIAL DESIGN, IN GENERAL TERMS, IS THE ORNAMENTAL OR AESTHETIC
ASPECT OF A USEFUL ARTICLE. THIS ASPECT MAY DEPEND ON THE SHAPE, PATTERN OR
COLOR OF THE ARTICLE. THE DESIGN MUST HAVE VISUAL APPEAL AND PERFORM ITS
INTENDED FUNCTION EFFICIENTLY. MOREOVER, IT MUST BE ABLE TO BE REPRODUCED BY
INDUSTRIAL MEANS; THIS IS THE ESSENTIAL PURPOSE OF THE DESIGN, AND IS WHY THE
DESIGN IS CALLED INDUSTRIAL. IN A LEGAL SENSE, INDUSTRIAL DESIGN REFERS TO THE
RIGHT GRANTED IN MANY COUNTRIES, PURSUANT TO A REGISTRATION SYSTEM, TO
PROTECT THE ORIGINAL, ORNAMENTAL AND NONFUNCTIONAL FEATURES OF A
PRODUCT THAT RESULT FROM DESIGN ACTIVITY.
VISUAL APPEAL IS ONE OF THE MAIN FACTORS WHICH INFLUENCE CONSUMERS IN THEIR
PREFERENCE FOR ONE PRODUCT OVER ANOTHER. WHEN THE TECHNICAL
PERFORMANCE OF A PRODUCT OFFERED BY DIFFERENT MANUFACTURERS IS RELATIVELY
EQUAL, CONSUMERS WILL MAKE THEIR CHOICE BASED ON PRICE AND AESTHETIC
APPEAL. SO IN REGISTERING THEIR INDUSTRIAL DESIGNS, MANUFACTURERS PROTECT
ONE OF THE DISTINCTIVE ELEMENTS THAT DETERMINE MARKET SUCCESS.
BY REWARDING CREATORS FOR THEIR EFFORT IN PRODUCING NEW INDUSTRIAL
DESIGNS, THIS LEGAL PROTECTION ALSO SERVES AS AN INCENTIVE TO INVEST
RESOURCES IN DESIGN ACTIVITIES.
ONE OF THE BASIC AIMS OF INDUSTRIAL DESIGN PROTECTION IS TO STIMULATE THE
DESIGN ELEMENT OF PRODUCTION. THIS IS WHY INDUSTRIAL DESIGN LAWS USUALLY
ONLY PROTECT DESIGNS THAT CAN BE USED IN INDUSTRY OR THAT CAN BE PRODUCED
ON A LARGE SCALE.
THIS CONDITION OF UTILITY IS A NOTABLE DIFFERENCE BETWEEN INDUSTRIAL DESIGN
PROTECTION AND COPYRIGHT, SINCE THE LATTER IS ONLY CONCERNED WITH AESTHETIC
CREATIONS. INDUSTRIAL DESIGNS CAN GENERALLY BE PROTECTED IF THEY ARE NEW OR
ORIGINAL.

DESIGNS MAY NOT BE CONSIDERED NEW OR ORIGINAL IF THEY DO NOT SIGNIFICANTLY

DIFFER FROM KNOWN DESIGNS OR THEIR COMBINATIONS.
IN MOST INDUSTRIAL DESIGN LAWS, DESIGNS THAT ARE DICTATED SOLELY BY THE
ARTICLE'S FUNCTION ARE EXCLUDED FROM PROTECTION. IF THE DESIGN FOR AN
ARTICLE PRODUCED BY MANY MANUFACTURERS, SUCH AS A SCREW, IS DICTATED PURELY
BY THE FUNCTION THAT THE SCREW IS INTENDED TO PERFORM, THEN PROTECTION FOR
THAT DESIGN WOULD HAVE THE EFFECT OF EXCLUDING ALL OTHER MANUFACTURERS
FROM PRODUCING ITEMS INTENDED TO PERFORM THE SAME FUNCTION. SUCH
EXCLUSION IS NOT WARRANTED, UNLESS THE DESIGN IS SUFFICIENTLY NOVEL AND
INVENTIVE TO QUALIFY FOR PATENT PROTECTION.
IN OTHER WORDS, THE LEGAL PROTECTION OFFERED BY INDUSTRIAL DESIGNS
CONCERNS ONLY THE DESIGN THAT IS APPLIED TO, OR EMBODIED IN, ARTICLES OR
PRODUCTS. THIS PROTECTION DOES NOT PREVENT OTHER MANUFACTURERS FROM
PRODUCING OR DEALING IN SIMILAR ARTICLES OR PRODUCTS, AS LONG AS THESE DO
NOT EMBODY OR REPRODUCE THE PROTECTED DESIGN. INDUSTRIAL DESIGN
REGISTRATION PROTECTS AGAINST UNAUTHORIZED EXPLOITATION OF THE DESIGN IN
INDUSTRIAL ARTICLES. IT GRANTS THE OWNER OF THE DESIGN THE EXCLUSIVE RIGHT TO
MAKE, IMPORT, SELL, HIRE OR OFFER FOR SALE ARTICLES TO WHICH THE DESIGN IS
APPLIED OR IN WHICH THE DESIGN IS EMBODIED.
THE TERM FOR AN INDUSTRIAL DESIGN RIGHT VARIES FROM COUNTRY TO COUNTRY.
THE USUAL MAXIMUM TERM IS FROM 10 TO 25 YEARS, OFTEN DIVIDED INTO TERMS
REQUIRING THE PROPRIETOR TO RENEW THE REGISTRATION IN ORDER TO OBTAIN AN
EXTENSION OF THE TERM. THE RELATIVELY SHORT PERIOD OF PROTECTION MAY BE
RELATED TO THE ASSOCIATION OF DESIGNS WITH MORE GENERAL STYLES OF FASHIONS,
WHICH TEND TO ENJOY SOMEWHAT TRANSIENT ACCEPTANCE OR SUCCESS,
PARTICULARLY IN HIGHLY FASHION-CONSCIOUS AREAS, SUCH AS CLOTHING OR
FOOTWEAR.
QUESTIONS ON DESIGNS:
WHAT IS MEANT BY 'DESIGN' UNDER THE DESIGNS ACT, 2000?
ANSWER: "DESIGN" MEANS ONLY THE FEATURES OF SHAPE, CONFIGURATION, PATTERN
OR ORNAMENT OR COMPOSITION OF LINES OR COLOUR OR COMBINATION THEREOF
APPLIED TO ANY ARTICLE WHETHER TWO DIMENSIONAL OR THREE DIMENSIONAL OR IN
BOTH FORMS, BY ANY INDUSTRIAL PROCESS OR MEANS, WHETHER MANUAL,
MECHANICAL OR CHEMICAL, SEPARATE OR COMBINED, WHICH IN THE FINISHED ARTICLE
APPEAL TO AND ARE JUDGED SOLELY BY THE EYE, BUT DOES NOT INCLUDE ANY MODE
OR PRINCIPLE OR CONSTRUCTION OR ANY THING WHICH IS IN SUBSTANCE A MERE
MECHANICAL DEVICE, AND DOES NOT INCLUDE ANY TRADE MARK, AS DEFINE IN CLAUSE
(V) OF SUB-SECTION OF SECTION 2 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958,
PROPERTY MARK OR ARTISTIC WORKS AS DEFINED UNDER SECTION 2(C) OF THE
COPYRIGHT ACT, 1957.
3.

WHAT IS THE DURATION OF THE REGISTRATION OF A DESIGN? CAN IT BE

EXTENDED?
ANSWER: THE DURATION OF THE REGISTRATION OF A DESIGN IS INITIALLY TEN YEARS
FROM THE DATE OF REGISTRATION, BUT IN CASES WHERE CLAIM TO PRIORITY HAS BEEN
ALLOWED THE DURATION IS TEN YEARS FROM THE PRIORITY DATE. THIS INITIAL PERIOD
OF REGISTRATION MAY BE EXTENDED BY FURTHER PERIOD OF 5 YEARS ON AN
APPLICATION MADE IN FORM-3 ACCOMPANIED BY A FEE OF RS. 2,000/- TO THE
CONTROLLER BEFORE THE EXPIRY OF THE SAID INITIAL PERIOD OF COPYRIGHT. THE
PROPRIETOR OF A DESIGN MAY MAKE APPLICATION FOR SUCH EXTENSION EVEN AS
SOON AS THE DESIGN IS REGISTERED.
4.

HISTORY OF DESIGNS LAW:

IT IS STARTED WITH THE DESIGNS ACT, 1911. PRESENTLY THE DESIGNS ACT, 2000 (CAME
IN FORCE ON 11-05-2001) IS IN FORCE.

KEY FEATURES WHICH MAKE THE PRESENT DESIGNS ACT AS PER INTERNATIONAL
STANDARDS:
(A) THE BROADENED SCOPE OF ARTICLE WHICH NOW SPECIFICALLY INCLUDES ANY
PART OF AN ARTICLE CAPABLE OF BEING MADE AND SOLD SEPARATELY;
(B)DESIGN TO INCLUDE APART FROM SHAPE, CONFIGURATION, PATTERN OR
ORNAMENT EVEN COMPOSITION
OF LINES OR COLOURS APPLIED TO ANY ARTICLE;
(C) ABSOLUTE (WORLDWIDE)NOVELTY FOR REGISTRATION OF DESIGNS;
(D) INTRODUCTION OF THE INTERNATIONAL SYSTEM OF CLASSIFICATION OF GOODS;
(E) POSSIBLE RESTORATION OF LAPSED DESIGNS;
(F)POSSIBLE INSPECTION OF REGISTERED DESIGNS IMMEDIATELY AFTER
REGISTRATION;
(G) ALLOWING BROADENED CONVENTION PRIORITY;
GEOGRAPHICAL INDICATIONS:
A GEOGRAPHICAL INDICATION IS A SIGN USED ON GOODS THAT HAVE A SPECIFIC
GEOGRAPHICAL ORIGIN AND POSSESS QUALITIES OR A REPUTATION THAT ARE DUE TO
THAT PLACE OF ORIGIN. AGRICULTURAL PRODUCTS TYPICALLY HAVE QUALITIES THAT
DERIVE FROM THEIR PLACE OF PRODUCTION AND ARE INFLUENCED BY SPECIFIC LOCAL
FACTORS, SUCH AS CLIMATE AND SOIL.
WHETHER A SIGN FUNCTIONS AS AN INDICATION IS A MATTER OF NATIONAL LAW AND
CONSUMER PERCEPTION. GEOGRAPHICAL INDICATIONS MAY BE USED FOR A WIDE
VARIETY OF AGRICULTURAL PRODUCTS, SUCH AS "TUSCANY" FOR OLIVE OIL PRODUCED

IN A SPECIFIC AREA OF ITALY, OR "ROQUEFORT" FOR CHEESE PRODUCED IN A CERTAIN

REGION OF FRANCE. THE USE OF GEOGRAPHICAL INDICATIONS IS NOT LIMITED TO
AGRICULTURAL PRODUCTS.
THEY MAY ALSO HIGHLIGHT PARTICULAR QUALITIES OF A PRODUCT, WHICH ARE DUE TO
HUMAN FACTORS FOUND IN THE PLACE OF ORIGIN OF THE PRODUCTS, SUCH AS
SPECIFIC MANUFACTURING SKILLS AND TRADITIONS. THAT PLACE OF ORIGIN MAY BE A
VILLAGE OR TOWN, A REGION OR A COUNTRY. AN EXAMPLE FOR THE LATTER IS
SWITZERLAND OR SWISS, WHICH IS WIDELY PERCEIVED AS A GEOGRAPHICAL INDICATION
FOR PRODUCTS THAT ARE MADE IN SWITZERLAND, IN PARTICULAR FOR WATCHES.
AN APPELLATION OF ORIGIN IS A SPECIAL KIND OF GEOGRAPHICAL INDICATION, USED
ON PRODUCTS THAT HAVE A SPECIFIC QUALITY THAT IS EXCLUSIVELY OR ESSENTIALLY
DUE TO THE GEOGRAPHICAL ENVIRONMENT IN WHICH THE PRODUCTS ARE PRODUCED.
THE CONCEPT OF GEOGRAPHICAL INDICATION ENCOMPASSES APPELLATIONS OF ORIGIN.
EXAMPLES OF APPELLATIONS OF ORIGIN WHICH ARE PROTECTED IN STATES PARTY TO
THE LISBON AGREEMENT FOR THE PROTECTION OF APPELLATIONS OF ORIGIN AND THEIR
INTERNATIONAL REGISTRATION INCLUDE "HABANA" FOR TOBACCO GROWN IN THE
HAVANA REGION OF CUBA, OR "TEQUILA" FOR SPIRITS PRODUCED IN PARTICULAR AREAS
OF MEXICO.
GEOGRAPHICAL INDICATIONS ARE PROTECTED IN ACCORDANCE WITH NATIONAL LAWS
UNDER A WIDE RANGE OF CONCEPTS, SUCH AS LAWS AGAINST UNFAIR COMPETITION,
CONSUMER PROTECTION LAWS, LAWS FOR THE PROTECTION OF CERTIFICATION MARKS
OR SPECIAL LAWS FOR THE PROTECTION OF GEOGRAPHICAL INDICATIONS OR
APPELLATIONS OF ORIGIN. IN ESSENCE, UNAUTHORIZED PARTIES MAY NOT USE
GEOGRAPHICAL INDICATIONS IF SUCH USE IS LIKELY TO MISLEAD THE PUBLIC AS TO THE
TRUE ORIGIN OF THE PRODUCT.
APPLICABLE SANCTIONS RANGE FROM COURT INJUNCTIONS PREVENTING THE
UNAUTHORIZED USE, TO THE PAYMENT OF DAMAGES AND FINES OR, IN SERIOUS CASES,
IMPRISONMENT.
QUESTIONS ON GEOGRAPHICAL INDICATIONS:
WHAT IS A GEOGRAPHICAL INDICATION?
ANSWER:
1.

IT IS AN INDICATION
IT ORIGINATES FROM A DEFINITE GEOGRAPHICAL TERRITORY.
IT IS USED TO IDENTIFY AGRICULTURAL, NATURAL OR MANUFACTURED GOODS
THE MANUFACTURED GOODS SHOULD BE PRODUCED OR PROCESSED OR PREPARED IN
THAT TERRITORY
IT SHOULD HAVE A SPECIAL QUALITY OR REPUTATION OR OTHER CHARACTERISTICS

WHO CAN APPLY FOR THE REGISTRATION OF A GEOGRAPHICAL INDICATION?

ANSWER: ANY ASSOCIATION OF PERSONS, PRODUCERS, ORGANIZATION OR AUTHORITY
ESTABLISHED BY OR UNDER THE LAW CAN APPLY. THE APPLICANT MUST REPRESENT THE
INTEREST OF THE PRODUCERS. THE APPLICATION SHOULD BE IN WRITING IN THE
PRESCRIBED FORM. THE APPLICATION SHOULD BE ADDRESSED TO THE REGISTRAR OF
GEOGRAPHICAL INDICATIONS ALONG WITH PRESCRIBED FEE.
2.

HOW LONG THE REGISTRATION OF GEOGRAPHICAL INDICATION IS VALID?

ANSWER: THE REGISTRATION OF A GEOGRAPHICAL INDICATION IS VALID FOR A PERIOD
OF 10 YEARS.
3.

CAN A GEOGRAPHICAL INDICATION BE RENEWED?

ANSWER: IT CAN BE RENEWED FROM TIME TO TIME FOR FURTHER PERIOD OF 10 YEARS
EACH.
4.

COPYRIGHTS:
WHAT IS A COPYRIGHT?
COPYRIGHT IS A FORM OF INTELLECTUAL PROPERTY PROTECTION GRANTED UNDER THE
INDIAN COPYRIGHT ACT 1957, TO THE CREATORS OF ORIGINAL WORKS OF AUTHORSHIP
SUCH AS LITERARY, DRAMATIC, MUSICAL, ARTISTIC, AND CERTAIN OTHER INTELLECTUAL
WORKS. THE COPYRIGHT VESTS IN ORIGINAL WORK IN WHATEVER FORM IT MAY BE AND
IN INDIA IT IS NOT MANDATORY BUT USEFUL IN COURTS WHERE CIVIL AND/OR
CRIMINAL PROCEEDINGS CAN BE TAKEN TO PROTECT IT.
1.

COPYRIGHT RELATES TO ARTISTIC CREATIONS, SUCH AS POEMS, NOVELS, MUSIC,

PAINTINGS, AND CINEMATOGRAPHIC WORKS. IN MOST EUROPEAN LANGUAGES OTHER
THAN ENGLISH, COPYRIGHT IS KNOWN AS AUTHOR'S RIGHTS. THE EXPRESSION
COPYRIGHT REFERS TO THE MAIN ACT WHICH, IN RESPECT OF LITERARY AND ARTISTIC
CREATIONS, MAY BE MADE ONLY BY THE AUTHOR OR WITH HIS AUTHORIZATION.
THAT ACT IS THE MAKING OF COPIES OF THE LITERARY OR ARTISTIC WORK, SUCH AS A
BOOK, A PAINTING, A SCULPTURE, A PHOTOGRAPH, OR A MOTION PICTURE. THE
SECOND EXPRESSION, AUTHOR'S RIGHTS REFERS TO THE PERSON WHO IS THE CREATOR
OF THE ARTISTIC WORK, ITS AUTHOR, THUS UNDERLINING THE FACT, RECOGNIZED IN
MOST LAWS, THAT THE AUTHOR HAS CERTAIN SPECIFIC RIGHTS IN HIS CREATION, SUCH
AS THE RIGHT TO PREVENT A DISTORTED REPRODUCTION, WHICH ONLY HE CAN
EXERCISE, WHEREAS OTHER RIGHTS, SUCH AS THE RIGHT TO MAKE COPIES, CAN BE
EXERCISED BY OTHER PERSONS, FOR EXAMPLE, A PUBLISHER WHO HAS OBTAINED A
LICENSE TO THIS EFFECT FROM THE AUTHOR.
WHAT DOES A COPYRIGHT PROTECT?
COPYRIGHT LAW PROTECTS CREATIVE EXPRESSION, NOT FACT, IDEA SYSTEM OR METHOD
OF PROCESS OR OPERATION. EXPRESSION MAY BE FOUND IN PRODUCT DESIGN,
WRITTEN EXPRESSION, TRADITIONAL ARTISTIC WORKS, AND OTHER ORIGINAL WORKS
SUCH AS LITERARY, DRAMATIC, MUSICAL, AND ARTISTIC WORKS SUCH AS POETRY,
NOVELS, MOVIES, SONGS, COMPUTER SOFTWARE AND ARCHITECTURE.
2.

HOW LONG IS A COPYRIGHT VALID?

THE DURATION OF A COPYRIGHT DEPENDS ON WHEN THE AUTHOR ACQUIRED THE
COPYRIGHT. CURRENTLY, THE DURATION FOR INDIVIDUALS IS LIFE OF THE AUTHOR PLUS
70 YEARS, OR THE CASE OF A JOINT WORK, THE TERM LASTS FOR 70 YEARS AFTER THE
LAST SURVIVING AUTHOR'S DEATH, ALTERNATIVELY 75 YEARS, WHICHEVER IS LONGER. IF
A COMPANY IS THE AUTHOR, THE DURATION IS 95 YEARS FROM THE YEAR OF FIRST
PUBLICATION OR 120 YEARS FROM THE YEAR OF CREATION, WHICHEVER EXPIRES FIRST.
3.

TRADE SECTRET:
A TRADE SECRET IS A FORMULA, PRACTICE, PROCESS, DESIGN, INSTRUMENT, PATTERN,
OR COMPILATION OF INFORMATION USED BY A BUSINESS TO OBTAIN AN ADVANTAGE
OVER COMPETITORS WITHIN THE SAME INDUSTRY OR PROFESSION. IN SOME
JURISDICTIONS, SUCH SECRETS ARE REFERRED TO AS "CONFIDENTIAL INFORMATION",
WHILE IN OTHERS THEY ARE A SUBSET OR EXAMPLE OF CONFIDENTIAL INFORMATION.
THE SANCTIONED PROTECTION OF SUCH TYPE OF INFORMATION FROM PUBLIC
DISCLOSURE IS VIEWED AS AN IMPORTANT LEGAL ASPECT BY WHICH A SOCIETY
PROTECTS ITS OVERALL ECONOMIC VITALITY. A COMPANY TYPICALLY INVESTS TIME AND
ENERGY (WORK) INTO GENERATING INFORMATION REGARDING REFINEMENTS OF
PROCESS AND OPERATION. IF COMPETITORS HAD ACCESS TO THE SAME KNOWLEDGE,
THE FIRST COMPANY'S ABILITY TO SURVIVE OR MAINTAIN ITS MARKET DOMINANCE
WOULD BE IMPAIRED. WHERE TRADE SECRETS ARE RECOGNISED, THE CREATOR OF
PROPERTY REGARDED AS A "TRADE SECRET" IS ENTITLED TO REGARD SUCH "SPECIAL
KNOWLEDGE" AS INTELLECTUAL PROPERTY.
THE PRECISE LANGUAGE BY WHICH A TRADE SECRET IS DEFINED VARIES BY JURISDICTION
(AS DO THE PARTICULAR TYPES OF INFORMATION THAT ARE SUBJECT TO TRADE SECRET
PROTECTION). HOWEVER, THERE ARE THREE FACTORS THAT (THOUGH SUBJECT TO
DIFFERING INTERPRETATIONS) ARE COMMON TO ALL SUCH DEFINITIONS: A TRADE
SECRET IS SOME SORT OF INFORMATION THAT:
IS NOT GENERALLY KNOWN TO THE RELEVANT PORTION OF THE PUBLIC;
CONFERS SOME SORT OF ECONOMIC BENEFIT ON ITS HOLDER (WHERE THIS BENEFIT
MUST DERIVE SPECIFICALLY FROM ITS NOT BEING GENERALLY KNOWN, NOT JUST FROM
THE VALUE OF THE INFORMATION ITSELF);
IS THE SUBJECT OF REASONABLE EFFORTS TO MAINTAIN ITS SECRECY.
TRADE SECRETS ARE NOT PROTECTED BY LAW IN THE SAME MANNER AS TRADEMARKS
OR PATENTS. PROBABLY ONE OF THE MOST SIGNIFICANT DIFFERENCES IS THAT A TRADE
SECRET IS PROTECTED WITHOUT DISCLOSURE OF THE SECRET.

TRADE SECRET PROTECTION IN INDIA:

FROM 1977 UNTIL 1991, APPROVAL OF FOREIGN INVESTMENTS BY THE INDIAN
GOVERNMENT OFTEN REQUIRED THE DISCLOSURE OF TRADE SECRETS. THIS DETERRED
FOREIGN INVESTMENT BY US COMPANIES SUCH AS COCA-COLA AND IBM. SINCE 1991,
THE SITUATION HAS IMPROVED.
UNDER INDIAN COMMON LAW AND BRITISH PRECEDENTS, THERE IS PROTECTION FOR
TRADE SECRETS AND CONFIDENTIAL INFORMATION INCLUDING BUT NOT LIMITED TO

FORMULAE, PRODUCT SPECIFICATIONS, MANUFACTURING TECHNIQUES, DRAWINGS,

DIAGRAMS, PRICING, SUPPLIER DETAILS, CUSTOMER LISTS, PRICING, MANAGEMENT
KNOW-HOW, STRATEGIC BUSINESS PLANS. ALL REMEDIES ARE AVAILABLE--INJUNCTIVE
RELIEF, DAMAGES, ACCOUNTING OF PROFITS, AND THE RETURN OF ALL PROPERTY
CONTAINING THE TRADE SECRET INFORMATION. AN EX PARTE SEIZURE ORDER
(ENGLAND--ANTON PILLAR ORDER), WHICH IS ANALOGOUS TO A SEARCH WARRANT,
CAN BE OBTAINED IN CIVIL ACTIONS TO SEARCH THE DEFENDANT'S PREMISES IN ORDER
TO OBTAIN THE EVIDENCE TO ESTABLISH THE THEFT OF TRADE SECRETS AT TRIAL.
APART FROM THE COMMON LAW, INDIA HAS NOT ADOPTED ANY CIVIL OR CRIMINAL
STATUTES OR LAWS RELATING TO TRADE SECRETS.

INTERNET DOMAIN NAMES AND DISPUTES:

A DOMAIN NAME IS THE ADDRESS OF A WEB SITE WHICH IS INTENDED TO BE EASILY
IDENTIFIABLE AND REMEMBERED SUCH AS WWW.INDIANPATENTOFFICE.GOV.IN.
SOMETIMES THEY ARE USED AS TRADEMARKS OR BUSINESS IDENTIFIERS ALSO THUS
ATTRACTING CUSTOMERS TO THE WEBSITES. THE REASONS FOR DOMAIN NAME
DISPUTES MAY BE SEVERAL. ONE OF THEM IS THAT WHEN YOUR DOMAIN NAME IS
SIMILAR OR CONFUSING WHEN COMPARED TO SOME OTHER DOMAIN NAME.

Concept of property and property rights is as old as human civilization.

With the industrial revolution, the concept of Industrial Property and
Intellectual Property got concretized.
In earlier days rulers used to provide some special grants to persons who came
up with some new ideas, literary works, etc.

What is Intellectual Property?

Intellectual Property, very broadly, means the legal rights which result from
intellectual activity in the industrial, scientific, literary and artistic fields,
It is the creation of human intellect
It is the creative process of human mind
It is an intangible property e It is an intangible property eg. Patents copyrights,
etc

Why are such protection granted?

Statutory recognition f the economic and moral rights of creators to their
creations
To promote creativity and the dissemination and public applications of its
results contributing in economic and social development

Intellectual property thus aims at safeguarding creators and other

producers of intellectual goods and services by granting them certain timelimited rights to control the use made of those productions.
According to the convention of WIPO, IP shall include the following:
Literary, artistic and scientific works -- Copyrights
Performances of performing artists, phonograms and broadcasts --
Neighboring rights (neighboring on copyrights)
Invention in all fields of human Endeavour
Industrial designs
Trademarks, and commercial names and designations
And all other rights resulting from intellectual activity in the industrial,
scientific, literary or artistic fields.

What is the use of Intellectual Property?

To exclude others from making, using, selling proposing to sell within or

outside the country, where the IP has been granted.
Forcefully guard his IP against any literal or non-literal infringements.
Do everything in-house to create the needed intellectual property in standalone mode.

Merge with or acquire another business with complementary intellectual

property
COPYRIGHTS..

It is the expression of thoughts and not the ideas. So that, if you imagine a
plot as such is not protected.
For example: A plot consisting of a story about young men and women
falling in love despite family and caste obstacles would not be
protected.
But when you express it in a synopsis or in, say a short story, or a play,
the expression of that plot will be protected.

Berne Convention (1886): Convention governing copyrights

The expression literary and scientific works according to Berne

Convention includes:
Every production in the literary, artistic or scientific domain such as
books, pamphlets or other writings; dramato-musical works,
choreographic works; entertainments in dumb show; musical
compositions with or without words, etc.
works of applied art; illustrations, maps, plans, sketches and threedimensional works relative to geography, topography, architecture or
science.
Translations, adaptations, arrangements of music and other alterations of
a literary or artistic work shall be protected as original works without
prejudice to the copyright in the original work.
The above list is not restricted. It is exhaustive

Court decisions in different countries have protected material such as:

Private letters
Divorce guide
A haircut
Floral decoration of a bridge
a son -et -lumire show
Examination papers

Derivative works (As per Berne Convention)

Derivative works can also be protected. They are the works derived from
other existing sources.
Examples are:
Translation of work into different language
Adaptations of works such as making film scenario based on novel
Arrangements of music, such as an orchestra version of musical
composition initially written for piano;
Abridgement of novel

Before embarking in a derivative work, you must respect the rights of the
author of the initial work
Rights under the copyright..

Economic rights: which allow the owner of rights to derive the financial
reward from the use of his works by others
Right or reproduction
Rights of public performance, broadcasting and communication to public

Moral rights: Which allow the author to take certain actions to preserve
the personal link between himself and the work
RELATED RIGHTS
( Neighboring Rights )
Related rights..

Related rights are not copyright, but they are closely associated with it;
they are derived from a work protected by copyright.

They offer the same kind of exclusivity as copyright, but they dont cover
the actual works
Three groups of people or organizations, which bear related rights

Performers such as the singer of a song;

Producers of recordings such as record companies;

Broadcasting Organisations.
Related rights governed by:

Rome convention (1961) or more specifically; the

"International Convention for the Protection of
Performers, Producers of Phonograms and
Broadcasting Organizations.

Most recent: WIPO Performances and Phonograms Treaty ("WPPT"),

concluded in Geneva on December 20, 1996.
TRADEMARKS Trademarks..

Trademarks (often abbreviated as TM in English) are in common usage

Importance of trademarks in commercial activities is due to the increased
competition among companies undertaking trade in more than one
country.
Trademarks have been used to simplify the identification by consumers of
goods or services, as well as their quality and value.

Thus, a trademark may be considered as a tool of communication used by

producers to attract consumers.
Characteristics

Trademarks..
It should be distinctive (not necessarily descriptive) For example: Apple
But, it should not be deceptive; For example: Real Leather

Cont..

A formal definition of trademark could be:

A trademark is a sign that individualizes the goods of a given enterprise
and distinguishes them from goods of its competitors.

A trademark may consist of words, designs, letters, numerals or

packaging, slogans, devices, symbols, etc.
Service marks is similar to trademark, differing only in that latter protect
goods, while the former protects services.

Generally speaking, the term trademarks includes both trademarks and

service marks.
New kinds of trademarks:..

Holograms on credit cards

Sound marks: an advertising jingle can serve as a trademark.

There are even smell marks in certain countries, where a particular scent
could be protected as a There are even smell marks in certain countries,
where a particular scent could be protected as a trademark
Trademarks are governed by:

Paris Convention - 1978

Trademark Law Treaty (TLT) 1994

Industrial design..

An industrial design is that aspect of a useful article which is ornamental

or aesthetic.
It may consists of three dimensional features such as the shape or surface
of the article; or two dimensional surfaces such as patterns, lines colour.

Industrial designs are applied to a wide variety of products of industry or

handicraft: from watches, jewelry, fashion and other luxury items, to
industrial and medical implements; from house ware, furniture and
electrical appliances to vehicles and architectural structures; from
practical goods and textile designs to leisure items, such as toys and pet
accessories.
Line of demarcation:
Industrial Designs and Trademarks

An industrial design is constituted by the appearance of product, which

must not necessarily be distinctive (a prime requirement for trademark)
Industrial designs governed by:

Hague Agreement Concerning the International Deposit of Industrial

Designs
Paris Convention
GEOGRAPHICAL INDICATIONS

Geographical Indications

The use of geographical indications is an important method of indicating

the origin of goods and services.

One of the aims of their use is to promote commerce by informing the

customer of the origin of the products.

For example:

Champagne is used to indicate that a special kind of sparkling wine

originates in the Champagne region of France.

Cognac is used for brandy from the French region around the town of
Cognac.
Geographical Indications are governed by:

Lisbon Agreement for the Protection of

Appellations of Origin and their International Registration

TRIPS Agreement
Paris Convention for the Protection of Industrial
Property

Appellations of Origin means more precise geographical indication

Patent
Bird s Birds eye view eye view..
A patent is a form of intellectual property.
AA patent is exclusive right granted to a person for an patent is exclusive right
granted to a person for an
invention, which is a product or a process that is,
New
II l i ti t d nvolves an inventive steps and
Has an industrial application
Patent provides protection for limited period: generally
20years from date of filing.
Only one patent is granted for one invention.

Patents are governed by:

Paris Convention for the Protection of Industrial Property

Patent Cooperation Treaty (PCT)
Agreement on Trade Related Aspects of
Intellectual Property Rights (TRIPS Agreement)

Unfair competition

Unfair competition

Causing confusion
Misleading
Discrediting Competitors
Violation of trade secrets
Taking advantage of anothers achievements (free riding)

Comparative advertising
Importance..

Fair play in the marketplace cannot be ensured only by the protection of

industrial property rights. A wide range of unfair acts, such as misleading
advertising and the violation of trade secrets are usually not dealt with by
the specific laws on industrial property.

Unfair competition law is therefore necessary either to supplement the

laws on industrial property or to grant a type of protection that no such
law can provide.
Unfair competition is governed by:

TRIPS Agreement

Paris Convention for the Protection of Industrial Property

IPR in INDIA

Design Act 2001 (Amendments 2008)

Trademark Act 1999
New elements of the Trademark Act 1999
Trademark rules 2002
Geographical Indications of Goods (Registration and Protection) Act, 1999
The Patents Act 1970
The Patents (Amendment) Act 1999, 26 March 1999
The Patents (Amendment) Act 2002, 25 June 2002

The Patents (Amendment) Act 2005

IPR in INDIA offices:

The Office of the Controller General of Patents, Designs & Trade Marks
(CGPDTM) is located at Mumbai.

Cont..

What is Patent?
Dictionaryy definition: A right
securing to an inventor for
a term of years the exclusive
right right to make use or sell to make, use or sell
his invention.
In other words,
An exclusive exclusive monopoly granted by the the Government to the
Inventor, for the commercial exploitation of an invention for a specific period of
time.
A patent is intangible property which may be assigned, licensed or sold.
Persons or entities violating the patentees exclusive right can be prevented
from practicing the invention and/or forced to pay damages to the patent
holder.
Scope of property is defined by the claims of the patent.

Goals of Patent System

To promote innovation and to give applicants an incentive to develop and
market the products that will be beneficial to the society and there will be
economic, industrial and technological development in the country.

Who can apply for a patent?

An application for a patent for an invention may
bb d b f th f ll i ith e made by any of the following persons either
alone or jointly with another:
a) True and first Inventor
b) His/her assignee
c) Legal representative of the deceased
inventor or assignee.
Why one should go for patent?
To prevent others from using, selling or working
out ones invention and to enj y joy the exclusive rights over the

invention.Patentability criterias
Company name
New / Novel
Non-Obvious Obvious (Inventive)
HH I d t i l A li bilit as Industrial Applicability.Novelty
Company name
AA no el in ention is one novel invention is one, which hich has not been has
not been
disclosed, in the prior art where prior art means
everything everything that has been published presented that has been
published, presented
or otherwise disclosed to the public on the date
of patent.Non-obviousness
Company name
Inventive Inventive step is a feature of an invention that step is a feature of an
invention that
involves technical advancement as compared to
existing knowledge or having economic
significance or both, making the invention non
obvious to a person skilled in art. How to determine Non-obviousness?
Company name
To judge the inventive step, the following question is to
bebe borne borne inin mind mind-Would Would aa non non-inventive inventive
mind mind have have
thought of the alleged invention?.
If the answer is No, then the invention is non-obvious.
Comparison of the subject matter of a patent and the
backg p ground/ prior art is necessary g y for determining the

non-obviousness of an invention.
The The prior art means both patent and non prior art means both patent and
non-patent patent related related
information, literature, etc.Cont..
Company name
In the European Patent Office, they adopt a process
called: Problem Solution Approach.
This process involves three main steps as follows:
1) Determining the closest prior art.
2) Establishing the technical problem being solved.
3) Determining whether or not the claimed invention,
starting from the closest prior art and the technical
problem problem would have been would have been obvious obvious to the
person to the person skilled in the art.Industrial Applicability
Company name
An invention to be patentable must be useful. If the
subjject matter is devoid of utilityy it does not satisfy the
requirement of invention.
AnAn invention invention isis capable capable of of industrial industrial
application application ifif itit
satisfies the following three conditions,
Cumulatively:
It can be made;
ItIt can bbe usedd iin att ll t east one fifi ld eld off actiti it vity;
It can be reproduced with the same characteristics
as many times as necessaryDisclosure of an invention in a patent
Company name

AnAn inin entor ventor has has toto disclose disclose his his inin ention
vention inin ss ch uch
a manner that any person, other than the
inventor inventor, skilled skilled inin the the art art should should bebe able able
toto work work
out the invention.Company name
Can a scientist get a patent on the invention, which
he has already published in the form a paper in
a national / International journal???Company name
Does a patentee get money once a patent has
been granted to him?
PATENT APPLICATION
How a patent is filed?
Company name
By filing an application with the patent office in the the stipulated forms as
required by patent office. stipulated forms as required by patent office.
Who should draft patent application?
Company name
The Inventor
Patent AttorneyWhat does a patent application
contain?
Company name
Title
Background of the invention
Summary Summary of the invention of the invention
Detailed description of the invention
Examples
Claims

Figures
Other Attachments
Abstract AbstractWhere to apply?
Company name
Application for the patent has to be filed in the respective patent office office
asas mentioned mentioned below below where where the the territorial
jurisdiction jurisdiction isis decided decided based on whether any of the
following occurrence falls within the territory
a) Place of residence, domicile or business of the applicant
b) b) Pl Place ffrom whhere ththe ii ti nvention actt ll ually orii i t d ginated.
c)) Address for service in India ggiven byy the apppplicant when he
has no place of business or domicile in India.

Company
name

Patent
Offices
Mumb

Territori
jurisdicti
al
on
The states of Gujarat,

ai

Madhya
Pradesh, Goa,
Maharashtra,
th unioterritorio Dama&Di
Chhattisgarh,
and
e n Dadra
es & fNagar
n
u
Haveli
The states of Haryana,

Del
hi

Chenn
ai

Kolkata (Head
Office)

, Jamm&Kashm
, Punja
,
Prades
Himachal
Rajasthan,
Uttar
h
u
ir Pradesh,
b
Delhi and
Uttaranchal,
Chandigarh.
The states of Andhra
Karnataka,
Pradesh, Kerala and Tamil
the
union
Nadu
and territories of
and
Pondicherry
Lakshadweep.
Rest of
India

When should one access the patent

literature? (Patent searching)
Company name
( g)
Technical or content information
Valuable source to know the developments in a
particular field; many information is available
only in patent literature and not elsewhere
Legal status
Validity/Opposition
Competitive intelligence
Patent familyPurposes
Company name
Search for prior art before filing applications
Avoid infringements
Monitor patents in a given area of technology
Monitor patents by a company, university or
individual
Locate information on a specific patent
Search for potential co-operation partners and
licensorsClaim Infringement
Company name
The term infringement means invasion of the boundary of the
patentee.
Types of infringement
1. Literal Literal infringement infringement

 Means each and every element of claim can be

literally found in accused devise or process.
2. Infringement under DOE (Doctrine of Equivalents)
If there is no literal infringement, a claim can still be ged u de t e doct e o equ a
e ts t e be infringed under the doctrine of equivalents if theaccused device or
process performs substantially the same function, in substantially substantially
the same way, and achieve the same way, and achieve substantially the same
result.Company name
Doctrine of Equivalents
A leg p gal rule in most of the worlds patent systems that allows a court to hold
a party liable for patent infringement even though the infringing device or
process does not fall within the literal scope of a patent claim, but nevertheless
is equivalent to the claimed is equivalent to the claimedinvention.Company
name
Who is responsible to ensure that the patent has not been infringed?? not been
infringed??
It is the sole duty/ responsibility of the patentee to see;that his patent is not
being infringed upon by someone else.
It is patentees duty duty toto file file aa suit suit of of infringement
infringement against against the infringer.Patent Expiration..
Company name
11. The The patent has lived its full term (20 years).
2. The patentee is failed to pay the renewal fee.
3. The validity of patent has been successfully challenged by an opponent (in
Patent office/ courts).
Merits of patenting..
Company name
I.
II.
III.

Attracts Investment
Invent Around
Best means to protect fruits of research.

Demerits of patenting..

Company name
Costly Costly process process
Higher prices for consumers (distorts the market
economy)
Societal underutilization of the technology
Discourages Discourages further research in areas newly further research in
areas newly
patentedNON-PATENTABLE INVENTIONS
Company name
There are some pproducts and p , processes, which
are not patentable in India They are classified
into two categories in the Patent Act
a) Those which are not inventions (S.3)
b) Inventions relating to Atomic Energy (S.4)Non-patentable inventions as per
section 3
Company name
1. An invention which claims anything obvious contrary to
well established natural laws.
2. The discovery of a scientific principle
3. The discovery of a new form of a known substance which
does not result in the enhancement of the known efficacy
of that substance
ExplanationFor the p p purposes of this clause,, salts,, esters,, ethers,,
polymorphs, metabolites, pure form, and other derivatives of
known substance shall be considered to be the same
substance, unless they differ significantly in properties with
regard to effi fficacy.Company name

4. A substance obtained byy a mere admixture resulting only

in the aggregation of the properties of the components
there of or a process for producing such substance:
Example
AA composition composition of of two two drugs drugs, ii.ee. Paracetamol
Paracetamol and and
Ibuprofen for curing fever and painCompany name
5. Any process for the medicinal, surgical, curative, prophylactic,
diagnostic, diagnostic, therapeutic or other therapeutic or other treatment
treatment of human being or any of human being or any
process for a similar treatment of animals to render them free of
disease or to increase their economic value or that of their
products.
6. Any plant or microorganism and hybrid variety of it are non
patentable but but process of making hybrid varieties are patentable process of
making hybrid varieties are patentable
Example: Clones and new variety of plants are not patentable. But
process process / method of preparing Genetically Modified Organisms are /
method of preparing Genetically Modified Organisms are
patentable subject matter.Is there any international or global
patent?
Company name
There is no international / global patent.
There are regional and/or International treaties to
facilitate the procedure to seek protection like Patent Cooperation operation
Treaty Treaty (PCT) (PCT) or or European European Patent Patent Convention
Convention
(EPC).What is the difference between

Indian and U.S. Patent?

Company name
US patent- United state Patent Office
Indian patent- Indian Patent Office
The US Patent is applicable within USA only and has no
effect in India.
Rule for g g granting ppatent in US is First person who
invents the invention gets the patent but for rest of world
person who files the patent first gets the patent.
PATENT INFRINGEMENT
BHAVESH BAROT
KK B I P E R .B.I.P.E.R.What What isis Infringement??? Infringement???
OOne wii hthout hh i aving l l legal authh i ority,
makes
uses
offers to sell
sells
any patented inventions, within a state where
a patt t ent iis iin enfforce, or ii t mports ii t nto suchh a
state, any patented invention during the term
of patent.Some Some exceptions exceptions for for
infringement
Acts done privately for Noncommercial
p p purposes
Acts done for Experiment Purposes relating
toto the the subject subject matter matter of of the the invention invention
Preparation of medicine in a Pharmacy for an

individual individual case case onon Prescription Prescription byby doctor

doctorInfringement Infringement can can happen happen byby
MM ki aking wii hthout selli lling or usiing, or
Using without making or selling, or
Selling without making or using, or
Offering for sale without making or sellingInfringement Infringement can can
occur occur ifif
Patent iis not expii d red
Patent is being maintained
Only if the patent claims not subject to
terminal disclaimer
Only if patent claims were not fraudulently
obtained by inequitable conductInfringement Infringement cannot cannot occur
occur
IfIf prodduct or process madde or usedd wii hthout
authority for experimental or other nonprofit
purposes
As long as the activity is not carried out for
commercii l al purpose
Where there is no intent of profiting or doing
bb i usinessInfringement Infringement cannot cannot occur occur
FFor purpose off subb i i mitting ddata ffor FDA FDA
approval
Use off patentedd prodduct on a vessell, aircrafft
or vehicle, which is temporarily present in
II di ndia
Example: Patented device travels in foreign

aii ft rcraft flflown tto andd ffrom II di ndiaInfringement Infringement may may
not not occur occur
OOne whho purchhases a patentedd prodduct ffrom
the patentee with an authority to sell it for
use use inin India India and and then then uses uses that that product product
or or
sells that product.
EE l xample: PP t t d atented El El t i ectric MM t otor bb ht ought
from motor maker or distributor, then used in
a car.
A foreign patent is not infringed by making,
selling selling or or using using inin India IndiaInfringing acts
Direct
Induced
Contributory
Through the concept of Doctrine of
EquivalenceDirect Infringement
Direct Direct Infringement Infringement occurs occurs when when someone
someone who who,
without authority, makes, uses or sells a
patented invention in the country where the
patt t ent iis validlid or enff bl orceable
InIn Graver Graver Tank Tank && Mfg Mfg. CoCo. vsvs Linde Linde Air Air
Products Products
Co., the learned Justice said In determining
whether an accused device or composition
infringes infringes aa valid valid patent patent, report report must must bebe
had had inin

the first instance to the words of claim. If

accused matter falls clearly within the claim,
infringement infringement isis made made and and that that isis the the end end
of of itit.Induced/Indirect Infringement
Induced Induced infringement infringement occurs occurs when when aa
person person actively actively
and knowingly aids and abets anothers direct
infringement of a patent.
E.g. Suppose that a chemical company owns a
patent for a new method of using a old herbicide.
Thhe competitor makkes thhe hh b d erbicide andd selllls it in a
bottle with instructions for using the new method.
The competitors customer use the new method and
thh b ereby thhey ii f i nfringe thhe patent.
The The competitor competitor might might bebe liable liable for for inducing
inducing its its
customers infringements.Induced Infringement
The Taxol Case (Australia)
Bristol BristolMyers Myers Squibb Squibb CoCo. held held two two Australian
Australian patents patents
for methods of administering the drug taxol to the
patients for the treatment of cancer.
F H Faulding and Co. Ltd supplied Taxol to medical
practitioners in Australia along with the instructions
regarding regarding the the administration administration of of the the drug
drug inin the the
treatment of cancer. By following the instructions
provided by Faulding, the medical practitioner would

infringe infringe the the patents patents held held byby Bristol BristolMyers
Myers.
It was held that Faulding was guilty of Induced
InfringgementContributory Infringement
CC t ib t ontributory ii f i nfringer
Whoever sells or offers to sell;
A componentt or patt t d ented machi hine,
manufacture, combination or composition
OR
A material or apparatus, for use in practicing
aa patented patented process process, constituting constituting aa material
material
part of the invention, knowing the same has
been made of can be used for the
infringement of such patent.Contributory Infringement
Beecham Beecham VsVs Bristol Bristol Myers Myers Squibb Squibb
The Hetacillin Case (1978)
Beecham held the patents on the antibiotic
Ampicillin, as well as on the processes for its
manufacture
Bristol used Beechams patented manufacturing
processes in the synthesis of Hetacillin, a
derivative derivative of ofAmpicillin Ampicillin made made byby adding adding
acetone acetone.
In the presence of Acetone, Hetacillin converts
freelyy and reversiblyy into Ampicillin and acetone
i.e. as if it is Ampicillin with a hat on
Court made a decision that the act of selling the

prodrug prodrug did did infact infact infringe infringe the the product product
claim claimTypes Types ofof Infringement Infringement
ThThere are two types off II f i nfringement
Literal Infringement
Infringement under Doctrine of EquivalenceLiteral Infringement
IIt means eachh andd every ellement off cl i laim iis
found in accused device or process
Proving literal infringement requires a two
part inquiry:
The interpretation of the meaning of the claim
Whether the claimed invention has been infringedInfringement under
Doctrine of Equivalence
A product that
performs substantially the same function
in substantially the same way
toto obtain obtain the the same same result result
will be found to infringe under DOE
ThThe ff d t l undamental guidi iding prii i l nciple iis tto preventt ththe
unscrupulous copyist from escaping liability of
infringement simply by making minor modifications,
without without having having any any novelty novelty..
Protects patentees from infringers that make insubstantial
changes changes toto avoid avoid aa finding finding of of literal literal
infringement infringementCont..
Function
Is it doing the same thing that the claim covers?
IsIs itit performing performing the the same same operation operation asas its
its

counterpart in the claim?

Way
Is it doing it in the same way.
Analyze how that element operates.
Result
Is the end product of each the same.
DoDo they they both both ultimately ultimately accomplish accomplish the the
same same end? end?File Wrapper Estoppel/
Prosecution Prosecution History History Estoppel Estoppel
IfIf a cll i aim scope iis relili i h d nquished dd i uring
prosecution on the grounds of patentability,
the the doctrine doctrine of of prosecution prosecution history history estoppel
estoppel
provides that the relinquished scope cannot
bebe covered covered byby toto operation operation of of the the doctrine
doctrine of of
equivalentsInfringement under DOE:
A case study
Example: WarnerJenkins Company v. Hilton
Davis Chemical Co.
The The patent patent covered covered aa process process for for removing
removing
impurities from dyes
The The dye dye isis filtered filtered through through aa porous porous
membrane at certain pressures and pH levelsCont..
The The claim claim at at issue issue stated: stated:
A process for purification of a dye, the
impprovement which comprises:

A. Subjecting an aqueous solutionto

ultrafiltration
B. Through a membrane having a porous
diameter of 55155Angstrom
C. Under a hydrostatic pressure of
approximately 200 400 PSIg
DD. At At aa pHpH between between 66 and and 99Cont..
ThThe ii f i nfringer (W(WarnerJJ ki ) enkins) ii i nvention
satisfied all elements except D.
The infringers process operated at a pH of 5
D. At a pH between 6 and 9Cont..
IIs thhere lili l teral ii f i nfringement??
A, B and C were met, but element D:
At a pH between 6 and 9?
A pH of 5 is not equal to between 6 and 9Cont..
IIs thhere ii f i nfringement undder thhe DD i octrine off
Equivalents?
Does a pH of 5 perform substantially the same
function in substantially the same way to bring
about the same result as a pH of 6?Cont..
ThThe CC t ourt ll k d ooked tto ththe prosecutition hi hi tstory:
Wh When ththe patt t ent applili ti cation was ori i ll iginally
filed, element D of the claim did not provide a
pHpH. Without Without this this limitation limitation, any any pHpH would
would
have been covered by the claim.
The Patent Office cited another patent which

disclosed an ultrafiltration pprocess op g perating

at a pH of greater than 9.Cont..
BB d ased on thi this rejj ti ection, Hilt Hilton DD i avis ii l d d ncluded
element D, limiting the range to 9 and below.
At At aa pHpH between between 66 and and 99
Without this added limitation of 9 the Patent
Office would not have allowed the patent
Why did they limit the lower pH end?
Element D could have been:
At a pH between 0 and 9 or
at a pH off 9 or llessCont..
NNo ii f i nfringement undder thhe D i Doctrine off
Equivalents if:
ThThe dd f d efendant usedd a pHH greater thhan 9
Prosecution history estoppel applies
Is there infringement for a pH of less than 6?
NNo prosecutiion hi history estoppell
The Court held 5 is an equivalent of 6 under the
doctrine doctrine of of equivalents equivalentsDOE DOE After After Festo Festo
FF t esto CCorp. v. ShSh k t oketsu Ki Ki k nzoku KKogyo K b hiki Kabushiki CCo.,
Ltd Ltd.
234 F.3d 558 (Fed. Cir. 2000) (en banc)
When an amendment is made during patent
prosecution.
And that amendment is made for a reason
related to the statutory requirements for a
patt t ent

 Then the limitation (as amended) is entitled to

NO equivalents equivalentsCont
AA l i pplying FFesto to Hil Hilton D i Davis:
The applicant was forced to amend the claim
from any pH to a pH of less than 9.
Applicant amended pH to 6 9.
After Festo,, there are no eqquivalents ffor either
a pH below 6 or a pH above 9.Ranbaxy Ranbaxy Labs Vs Labs Vs Glaxo Glaxo Inc.
Inc.
Ranbaxy Ranbaxy was was developing developing aa generic generic form
form of of Ceftin Ceftin,
an antibiotic manufactured by Londonbased
Glaxo.
Ceftin Ceftin had had annual annual revenue revenue of of $$403 403 million
million inin 2001 2001
and its patent was going to expire in 2004.
Instead of waiting, Ranbaxy begin to market its
generic in United States.
In 2001, Glaxo filed suit in the U.S. District Court of
New Jersey but in vain.
The The claim claim of of **Glaxo s Glaxos++ patent patent called called for for
the the product product
to be essentially free (<10%) from crystalline form
of the material while Ranbaxys product had in
excess of 10 % of the crystalline form.
So Glaxo was unlikely to show literal infringementCont..
With With regard regard toto infringement infringement under under DOE
DOE,

Ranbaxy argued that prosecution history

estopped Glaxo from making that claim.
Glaxos patent was originally consisting of 9
claims which was then amended and was
restricted to 5 claims to make it suitable for
patentability.
This narrowing of claims created prosecution
history history estoppel estoppel precluding precluding application application
of of
equivalents. And thus, without any scope of
equivalents Glaxo could not succeed on this
merits.Damages Damages for for infringement
Upon a finding of infringement the court shall
awardd ddamages add t equate tto compensatte ffor
the infringement, but in no event less than a
reasonable royaltyCont..
AdAd t equate tto C t Compensate ffor ththe
Infringement:
LL t ost profit fits off ththe patt t entee
Profits of the infringer
Reasonable Royalty
What a willing licensor would have paid a willing
lice see censee at at tt e ime just just pp orior toto tt ehe infringe e t gement.
A floor on damagesDesigning around patent
An insight
Designing around patents is, in fact, one of the
ways in which the patent system works to the

advantage of the public in promoting progress in

the useful art, its constitutional purpose, etc.
Thhe competitor willlling to ddesign aroundd existing
patent, with his skill and art can design
substantial substantial changes changes into into the the new new product
product toto
avoid infringement.
Patent Application
A patent application is a request pending
Patent Application
p pp q p g
at the patent office for the grant of a
patent for the invention described and
claimed by that application.
The term is also used to refer the
process of applying for a patent or to the
patent application itself.
2Patent Patent Application Application
National Applications Generally filed at the
national patent office to obtain a patent in the
country of that office.
Regional Regional Applications Applications ItIt isis the the one one which
which may may
have effect in a range of countries, e.g. EPO
grants patent which can take effect in some or
allll countriies contractiing to EEuropean PPatent
Convention (EPC), following a single

application process.
International Applications (under PCT) The
PCT is operated by WIPO and provides a
centrali centrali ed zed application application process process, bb t ut patents
patents are are
not granted under the treaty.
3Types Types of Applications of Applications
Standard app y pplication / Ordinary Patent
application
Provisional application
Continuation applications
Continuation-in-p pp part application
Divisional application
Basic Basic convention application convention application
Patent of addition
4Standard Application /
Ordinary Patent Application
A standard patent application is a patent
Ordinary Patent Application
p pp p
application containing all of the
necessary parts (e.g. a written
description of the invention and claims)
that are required for the grant of a
patent.
ItIt isis also also referred referred toto asas Non Non-provisional provisional
application

5Provisional application
Provisional patent applications can be filed at patent
Provisional application
offices of the respective country.
AA provisional provisional application application provides provides the the
opportunity opportunity toto
place an application on file to obtain a filing date
(thereby securing a priority date), but without the
expense expense and and complexity complexity of of aa standard standard
patent patent
application.
Application with complete specifications is to filed
within 12 months of filing the provisional
applications. Failing to do so, provisional application
and priority rights expires.
6Characteristics of Provisional
application
Establishes a filing date (earliest priority
application
Establishes a filing date (earliest priority
date)
Examination Examination process process does does not not begin begin
Clock does not start running on lifetime
of patent
Has simpler filing requirements
Lower filing fees
Claims are not required

7Continuation application (US law)

It is a patent application filed by a applicant who
Continuation application (US law)
wants to pursue additional claims to an
invention disclosed in an earlier application of
the the applicant applicant (the (the parent parent application) application) that
that has has
not been issued or abandoned.
The continuation uses the same specification
as thhe pendi ding parent applili i cation, cll i aims fili filing
date priority of the parent, and must name at
least one of the same inventors as in the
parent.
This type of application is useful when a patent
ee aminer xaminer has has allo allo ed wed some some bb t ut rejected rejected
other other
claims in an application
8Continuation in part (CIP)
application (US law)
In this application, the applicant adds the matter
application (US law)
not disclosed in the parent application.
It repeats some substantial portion of the
parent s parents specification specification, and and has has at at-least least one
one
common inventor as named in the parent
application.
It is a convenient way to claim enhancements

developed after the parent application was filed.

9Divisional application
It contains matter from the previously-filed
application (the "parent" application) Whilst a
Divisional application
application (the parent application). Whilst a
divisional application is filed later than the
parent application, it may retain its parent's
fili filing dd t ate, andd will ill generalllly cll i aim ththe same
priority.
Divisional applications are generally used in
cases where the parent application may lack
unitity off ii ti nvention; thth t at iis, ththe parentt applili ti cation
describes more than one invention and the
applicant is required to split the parent into one
or more divisional applications each claiming
only a single invention
10Basic convention application
This may be filed where you may want to file
Basic convention application
only in one country, apart from India.
Claims priority of previously filed application
AA li ti pplication tto bbe fil fil ded iin a conventition counttry
within 12 months of first application filed
Mo e ore use u useful wheen fileded in noon-PCCT cou es countries
(Malaysia)
11Patent of Addition (India)

 It is granted for the improvement or

Patent of Addition (India)
gp
modification of already existing patented
invention, for an unexpired term of main
patent.
12Who Who is Entitled to a Patent? is Entitled to a Patent?
In the US, g , Patent Rights Awarded to the
First to Invent
Invention Consists of:
- Conception - mental part of the inventive act
- Reduction to Practice (RTP)
Actual RTP - Build or conduct claimed
product/method and verify that it works for its
intended purpose
Constructive RTP - File patent application
- Diligence - effort between conception and
RTP
13How How to Obtain a Patent? to Obtain a Patent?
GETTING GETTING STARTED STARTED
14Planning for Successful
PP P i atent Protection
Keepp and maintain good laboratory
notebooks
Routinely Routinely sign sign and and date date your your
notebook even prior to actually
accomp g plishing yyour objective

 Have records witnessed with

siggnature and date byy an objective
witness a non-inventor
15Laboratory notebook
A Laboratory Note Book is a vital record
Laboratory notebook
y
detailing the dates of conception of an
invention, reduction to practice and
ownership of Intellectual Property Rights.
Laboratory Notebook can be regarded
as a legal document because it records
the the chronological chronological history history of of your your
invention
16Importance of laboratory notebook
Under U. S. law a patent is granted to the first
Importance of laboratory notebook
pg
person who conceives the idea for the
invention, not the first person to apply for the
patent.
So a laboratory notebook is essential evidence
of the date of conception.
When properly kept, a laboratory notebook
p y permanently records,, for future p , proof, what was
done on a project, and particularly what
inventions were made and when.

Patent infringement
Patent infringement is the commission of a prohibited act with respect to a
patented invention without permission from the patentholder. Permission may
typically be granted in the form of a licence. The definition of patent
infringement may vary by jurisdiction, but it typically includes using or selling the
patented invention. In many countries, a use is required to be commercial (or to
have a commercial purpose) to constitute patent infringement.
The scope of the patented invention or the extent of protection is defined in the
claimsof the granted patent. In other words, the terms of the claims inform the
public of what is not allowed without the permission of the patent holder.
Patents are territorial, and infringement is only possible in a country where a
patent is in force. For example, if a patent is filed in the United States, then
anyone in the United States is prohibited from making, using, selling or
importing the patented item, while people in other countries may be free to
make the patented item in their country. The scope of protection may vary from
country to country, because the patent is examined by the patent officein each
country or region and may have some difference of patentability, so that a
granted patent is difficult to enforce worldwide.

Elements of patent infringement

Typically, a party which manufactures, imports, uses, sells, or offers for sale
patented technology, during the term of the patent and within the country that
issued the patent, is considered to infringe the patent.
The test varies from country to country, but in general it requires that the
infringing party's product (or method, service, and so on) falls within one or
more of the claims of the patent. The process employed involves "reading" a
claim onto the technology of interest. If all of the claim's elements are found in
the technology, the claim is said to "read on" the technology; if a single element
from the claim is missing from the technology, the claim does not literally read
on the technology and the technology does not infringe the patent with respect
to that claim.

In response to allegations of infringement, an accused infringing party will

generally assert one or more of the following:

it was not practicing the patented invention;

it was not performing any infringing act in the territory covered by the
the patent has expired;
the patent (or the particular claim(s) alleged to be infringed) is invalid,
because the invention in question does not meet patentability or includes
a formal defect, rendering the patent invalid or unenforceable;
it has obtained a license under the patent;
the patent holder is infringing patent rights belonging to the accused
infringing party, and the party may resolve the dispute in settlement or
cross-licensing.

Indirect infringement
Under certain jurisdictions, there is a particular case of patent infringement
called "indirect infringement." Indirect infringement can occur, for instance,
when a device is claimed in a patent and a third party supplies a product which
can only be reasonably used to make the claimed device.
Legislation
United States
In United States law, an infringement may occur where the defendant has made,
used, sold, offered to sell, or imported an infringing invention or its equivalent.
One also commits indirect infringement if he actively and knowingly induces
another to infringe, and is liable for that infringement. Types of "indirect
infringement" include "contributory infringement" and "induced infringement."
No infringement action may be started until the patent is issued. However, pregrant protection is available under 35 U.S.C. 154(d), which allows a patent
owner to obtain reasonable royalty damages for certain infringing activities that
occurred before patent's date of issuance. This right to obtain provisional
damages requires a patent holder to show that (1) the infringing activities
occurred after the publication of the patent application, (2) the patented claims
are substantially identical to the claims in the published application, and (3) the
infringer had "actual notice" of the published patent application.

The Patent Reform Act of 2009 will, if enacted, make changes such as tightening
the definition of "willful" infringement and limit infringement cases to states
where the defendant's business operates.
Clearance search, and clearance, validity and enforceability opinions
A clearance search, also called freedom-to-operate search or infringement
search, is a search done on issued patents or on pending patent applicationsto
determine if a product or process infringes any of the claimsof the issued
patents or pending patent applications. A clearance search may also include
expired art that acts as a 'safe harbor' permitting the product or process to be
used based on patents in the public domain. These searches are often
performed by one or more professional patent searchers who are under the
direction of one or more patent attorneys.
A clearance search can be followed by a clearance opinion, i.e. a legal opinion
provided by one or more patent attorneys as to whether a given product or
process infringes the claims of one or more issued patents or pending patent
applications. Clearance opinions may be done in combination with a "validity
and enforceability" opinion. A validity and enforceability opinion is a legal
opinion as to whether a given patent is valid and/or enforceable. In other words,
a validity opinion is a legal opinion or letter in which a patent attorney or patent
agent analyzes an issued patent and provides an opinion on how a court might
rule on its validity or enforceability[. Validity opinions are often sought before
litigation related to a patent. The average cost of a validity opinion (according to
one 2007 survey) is over $15,000, with an infringement analysis adding an
additional $13,000.
The cost of these opinions for U.S. patents can run from tens to hundreds of
thousands of dollars (or more) depending upon the particular patent, the
number of defenses and prior art references, the length of the prosecution file
history, and the complexity of the technology in question.
An exculpatory opinion (setting forth reasons the patent is not infringed, or
providing other defenses such as prior use, intervening rights, or prior invention)
is also possible.
Patent infringement insurance

Patent infringement insurance is an insurance policy provided by one or more

insurance companies to protect either an inventor or a third party from the risks
of inadvertently infringing a patent.
For inventors, patent infringement insurance covers legal costs in case they have
to sue an infringer to enforce their patent.
For third parties, patent infringement insurance covers their legal costs in case
they are sued for patent infringement by an inventor.
Patent infringement insurance is generally considered too expensive to be worth
it. The premiums must be high, however, due, at least in part, to the high legal
costs of patent infringement cases. A typical patent infringement case in the US
costs 1 - 3 million dollars in legal fees for each side.

Types of Patent infringement:

The Doctrine of Equivalents in Patent Infringement
A patent contains several partsa specification, usually one or more drawings,
and always one or more claims. No matter how much a questioned machine,
manufacture, composition of matter or process may look like the specification
and drawings of a patent, it is only the claims of the patent which can be
infringed. For that reason, if an issue of infringement arises, it becomes
necessary to examine the claims of the patent in question.
The first step is to "read" each claim of the patent upon the accused structure or
process. Every requirement of each claim must be considered to see if each
thing set out in the claim also appears in the accused practice. If one or more
things set forth in a claim is not present in the practice being reviewed, there is
no infringement of that claim. On the other hand, if each thing which is set out
in even one claim of the patent is present in the accused structure or process,
then there is direct and literal infringement. When literal infringement is found,
that is normally the end of the inquiry.
When the claims of a patent are read against an accused practice, they may be
so close to identical that infringement is clear. Also, the accused practice may be
so remote from the patent that there is no possibility of infringement. Very
often, however, there are some differences, requiring further study. Sometimes,
such differences are incorporated into a design after knowledge of a patent in an

effort to avoid infringement. Then, the question presented is whether the design
is sufficiently different from the patent to be held to be non- infringing. If the
design is too close to the patent, it will infringe. If the design is remote enough,
it will not infringe. The U.S. Supreme Court has stated: "One who seeks to pirate
an invention, like one who seeks to pirate a copyrighted book or play, may be
expected to introduce minor variations to conceal and shelter the piracy.
Outright and forthright duplication is a dull and very rare form of infringement."
One reason that literal infringement of a patent is a dull form of infringement is
that where the potential infringer knows of the patent and takes steps to avoid
infringement by making changes from the exact thing which is disclosed and
claimed in the patent. At the same time, the individual may copy as much of the
patent as thought possible without becoming liable for infringement. When that
happens, the issue raised is whether the accused structure or process is the
"equivalent" of what is claimed in the patent. A similar problem can arise where
a practice is adopted without knowledge of a patent, and the patent becomes
known only after a business commitment has been made to follow the practice.
The rule of law for determining equivalency as laid down by the Supreme Court
is quite simple: "If two devices do the same work in substantially the same way,
and accomplish substantially the same result, they are the same, even though
they differ in name, form, or shape." Despite the seeming simplicity of this rule,
its application to a particular case is often complex.
Determination of equivalency frequently involves conflicting opinions of experts
and disputes as to scientific or engineering facts. The issue is often resolved by
the testimony of expert witnesses and the decision may rest on which of the
experts is the more believable. Things which are equivalent for one purpose may
not be for other purposes. In one well- known case, the patent included claims
for welding rods having a flux containing a major proportion of "alkaline earth
metal silicate." The accused welding rods included a flux composed principally of
"manganese silicate," which is not an alkaline earth metal silicate. Nevertheless,
the accused welding rods were held to infringe because of testimony that
manganese and magnesium were similar in many of their reactions and that
they served the same purposes in fluxes.
Most patents are not issued with the claims originally filed. The claims of most
patent applications are rejected, and the claims are amended with the inclusion
of more detailed and restrictive language. If an examiner rejects the claims as
unpatentable over the prior art and the claims are amended to read more

narrowly to avoid the prior art, the patentee is barred from asserting the claims
in the broader sense. Since he or she gave up the broader construction to obtain
allowance of the claims, the patentee is not permitted to assert that the broader
construction is the equivalent of the claim which was finally allowed. The
process of rejection and amendment followed by allowance is shown by
correspondence in the Patent and Trademark Office file. That file history is
contained in a heavy paper jacket known as a "file wrapper." As a result, the
rejection of a claim followed by a narrowing and more limiting amendment is
known as a "file wrapper estoppel."
It is also possible for a device to be so far changed in principle from a patented
device that it performs the same or a similar function in a substantially different
way, even though it falls within the literal words of the claim. This situation can
occur when the accused device is so far removed from the invention as disclosed
in the patent that it is considered in law to be a different thing entirely. Even if
the claims literally read on the thing which is accused, the claims are limited by
construction to cover the invention which was disclosed in the patent and to
exclude a thing which is different from the disclosed invention. This result is
sometimes known as the "Reverse Doctrine of Equivalents."
Possible infringement of a patent claim must never be taken lightly. Issues of
direct infringement, equivalency, file wrapper estoppel, and limitation of the
claims to an invention as disclosed all must be considered before concluding that
infringement does or does not exist.
Standards for determining equivalents
United Kingdom
The United Kingdom has never employed a doctrine of equivalents approach.. As
a signatory to the European Patent Convention (EPC), the UK follows the
Protocol on the Interpretation of Article 69 of the EPC, which requires member
states to draw a balance between interpreting patent claims with strict literalism
(with the description and drawings only helping resolve ambiguity) and
regarding the claims as a mere guideline only.
United States

In the United States, the doctrine of equivalents analysis is applied to individual

claim limitations, not to the invention as a whole.
One way of determining whether a difference is "insubstantial" or not is called
the "triple identity" test. Under the triple-identity test, the difference between
the limitation in the accused device and the limitation literally recited in the
patent claim may be found to be "insubstantial" if the limitation in the accused
device:
1.

It performs substantially the same function

2.

In substantially the same way

3.

To yield substantially the same result

Harmonization attempts
Attempts have been made to harmonize the doctrine of equivalents.
For instance, Article 21(2) of 1991 WIPO's "Basic Proposal for a Treaty
Supplementing the Paris Convention states:
"(a) (...) a claim shall be considered to cover not only all the elements as
expressed in the claim but also equivalents.
(b) An element ("the equivalent element") shall generally be considered as
being equivalent to an element as expressed in a claim if, at the time of any
alleged infringement, either of the following conditions is fulfilled in regard
to the invention as claimed:
the equivalent element performs substantially the same function in
substantially the same way and produces substantially the same result as
the element as expressed in the claim, or

(i)

it is obvious to a person skilled in the art that the same result as that achieved
by means of the element as expressed in the claim can be achieved by means of
the equivalent element."