MODULE 03

Introduction To Intellectual Property: Role of IP in the Economic and Cultural Development

of the Society,IP Governance, IP as a Global Indicator of Innovation, Origin of IP History of IP
in India. Major Amendments in IP Laws and Acts in India.

Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent an Invention.
Rights Associated with Patents. Enforcement of Patent Rights. Inventions Eligible for Patenting.
Non-Patentable Matters. Patent Infringements. Avoid Public Disclosure of an Invention before
Patenting. Process of Patenting. Prior Art Search. Choice of Application to be Filed. Patent
Application Forms. Jurisdiction of Filing Patent
Application. Publication. Pre-grant Opposition. Examination. Grant of a Patent. Validity of
Patent Protection. Post-grant Opposition. Commercialization of a Patent. Need for a Patent
Attorney/Agent. Can a Worldwide Patent be Obtained. Do I Need First to File a Patent in India.
Patent Related Forms. Fee Structure. Types of Patent Applications. Commonly Used Terms in
Patenting. National Bodies Dealing with Patent Affairs. Utility
Models.

Process of Patenting. Prior Art Search. Choice of Application to be Filed. Patent Application
Forms. Jurisdiction of Filing Patent Application. Publication. Pre-grant Opposition. Examination.
Grant of a Patent. Validity of Patent Protection. Post-grant Opposition. Commercialization of a
Patent. Need for a Patent Attorney/Agent. Can a Worldwide Patent be Obtained. Do I Need First
to File a Patent in India. Patent Related
Forms. Fee Structure. Types of Patent Applications. Commonly Used Terms in Patenting.
National Bodies Dealing with Patent Affairs. Utility Models.

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INTRODUCTION TO INTELLECTUAL PROPERTY

 Intellectual Property (IP) is a special category of property created by human intellect

(mind) in the fields of arts, literature, science, trade, etc.
 Since IP is a novel creation of the mind, it is intangible (i.e. invisible and indivisible) in
nature and differs from the tangible property, such as land, house, gold and car with
which we are quite familiar.
 Intellectual Property Rights (IPR) are the privileges accorded to the creator/inventor (of
IP) in conformance with the laws. These rights are given to the creator/inventor in
exchange for revealing the process of creation/invention in the public domain.
 The inventor is conferred with the special rights to use, sell, distribute, offering for sale
and restricting others from using the invention without his prior permission.
 The aforementioned rights do not apply to the physical object (e.g. book or computer or
mobile phone) in which the creation may be embodied but attributed to the intellectual
creativity.
 Broadly, IP comprises of two branches i.e. ‗Copyrights and Related Rights‘ and
‗Industrial Property Rights‘. ‗Copyrights and Related Rights‘ refer to the creative
expressions in the fields of literature and art, such as books, publications, architecture,
music, wood/stone carvings, pictures, portrays, sculptures, films and computer-based
softwares/databases.
 The ‗Industrial Property Rights‘ refer to the Patents, Trademarks, Trade Services,
Industrial Designs and Geographical Indications.

1.1. Role of IP in the Economic and Cultural Development of the Society

 Creativity being the keystone of progress, no civilized society can afford to ignore the
basic requirement of encouraging the same.
 The economic and social development of a society is largely dependent on creativity.
 The protection provided by the IPR to the creators/innovators is in fact an act of
incentivization for encouraging them to create more and motivates others to create new
and novel things.
 However, if IPR is practised rigidly, it may have a negative impact on the progress of
society.
 For example, compliance with the Trade-Related Aspects of Intellectual Property Rights
(TRIPS)
 Agreement has affected the farming community as they are unable to store seeds for the
next crop.
 Multinational companies regulate the price of seeds, which is generally beyond the reach
of a majority of the farmers.
 To circumvent the negative impact of IPR, certain laws, exceptions and limitations
associated with IPR have been enacted to maintain a balance between the interests of the
creators/inventors and the community.
 For example, farmers‘ rights under the Protection of Plant Varieties and Farmers‘ Rights
(PVP&FR) Act, 2001 entitles them to many privileges, such as ‗Rights on seeds’
provides rights to the farmers to save seeds, use seeds and share, exchange or sell seeds to

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 other farmers and ‗Right to protection against accusations of infringement’ protects the
farmers from infringement and other legal accusation levied upon them due to his legal
ignorance in using other‘s plant varieties.
 The use of copyrighted material for education and religious ceremonies is exempted from
the operation of the rights granted in the Copyright Act.
 Similarly, a patent can be revoked in favour of compulsory licensing by the government
during an emergency or a natural calamity.
 In addition, if an invention/creation is not in the interest of society, it is not registered by
the government for grant of any rights associated with IP.
 For example, cloning of human embryos is banned for IP protection, and so is the
creation of super microbial pathogens, which can play havoc with human lives.
 In addition, India is enriched with massive biodiversity and genetic resources and their
use is embodied in what is referred to as Traditional Knowledge (TK).
 However, the use of such knowledge and resources are not limited to local contexts as
many innovations relate to and draw on them.
 Therefore, the main issue of concern is to protect TK and genetic resources, which are
rapidly coming under the governance of sometimes conflicting IPR policies.
 To derive maximum benefit from them, the establishment of adequate legal infrastructure
and enforcement is required.
 With initiatives like ‗Make in India‘, ‗Atmanirbhar Bharat‘ and supporting local
homegrown brands, and easy as well as accessible approach to patents and trademarks
registration, it is possible to reap the benefits of our resources.

1.2. IP Governance

 Since IP is an integral component of human society, each and every nation has dedicated
agencies for laying out the guidelines, implementation and enforcement of IP related
matters.
 In India, many organizations/agencies deal with various aspects of IP.
 The governance of all categories of IP, except the Plant Variety and Farmers‘ Rights Act,
is carried out by the Department for Promotion of Industry & Internal Trade (DPIIT)
under the aegis of Ministry of Commerce and Industry, GoI.
 There are a few other dedicated organizations/departments established by the government
to promote patent-ecosystem (patent awareness, patent filing and patent
commercialization) in India e.g. Technology Information Forecasting and Assessment
Council (TIFAC), National Research Development Corporation (NRDC) and Cell for
IPR Promotion and Management (CIPAM), etc.
 In order to create a hassle-free exchange of IP related activities amongst all the nations, it
is imperative to have minimum standards of rules and regulations pertaining to all aspects
of IP including rights, empowerment, exceptions, etc.
 To achieve this goal, the United Nations (UN) has established an organization called the
World Intellectual Property Organization (WIPO).
 This agency is at the forefront of imparting knowledge about IP and governs international
filing and registration of IP through various Conventions and Treaties like Paris

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 Conventions, Patent Cooperation Treaty (PCT), Rome Convention, Berne Convention,
etc.

1.3. IP as a Global Indicator of Innovation

 IP, especially patents, is considered as one of the important cogs in assessing the
innovation index of a nation.
 The global ranking organizations always have IP or a subset of IP as one of the
parameters for understanding and grading the Science, Technology and Innovation (STI)
ecosystem of a nation.
 For example, the Scimago (publically available online portal which ranks journals and
countries based on the data taken from Scopus) 2020 report ranked India at 4th position
in the parameter of a number of ‗Research Publications‘, and 50th position in the
parameter of ‗Intellectual Property Rights‘.
 The global ranking can be improved by sensitizing the teaching and scientific
communities about the importance of IP and creating infrastructure for the same in the
institutes of higher learning.

1.4. Origin of IP

 Though there is no official record of the origin of IP, it is believed that a rudimentary
form of IP was being practised around 500 Before the Common Era (BCE) in Sybaris, a
state of Greece.
 The natives of Sybaris were granted a year‘s protection for using their intellect to create
―any new improvement in luxury.‖
 A practical and pragmatic approach for IP governance started taking shape in medieval
Europe. In 1623, Britain passed an Intellectual Property Legislation which entitled guilds
(association of artisans or merchants) to create innovations and bring them to market for
trade purposes.
 However, this legislation brought a lot of resentment amongst the public, and thus was
replaced by the ‗Statute of Monopolies‘, which gave the rights to the original
creator/inventor for 14 years.
 Another legislation, ‗Statute of Anne‘, was passed by the British parliament in 1710.
This legislation aimed at strengthening copyrights by providing rights to the authors for
recreation and distribution of their work.
 The work could also be renewed for another 14 years. By the end of the 18 th century and
the beginning of the 19th century, almost every country started laying down IP legislation
to protect their novel inventions and creations.

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1.5. History of IP in India

1.5.1. Patents

 The history of the Indian patent system dates back to the pre independence era of British
rule.
 The first patent related legislation in India was Act VI of 1856, adapted from the British
Patent Law of 1852.
 The objective of this legislation was to encourage the inventions of new and useful
manufactures.
 The rights conferred to the inventor were termed as ‗Exclusive Privileges‘.
 In 1859, certain amendments were made to the Act, such as: Grant of exclusive privileges
to useful inventions.
 Increase of priority time from 6 months to 12 months.
 Exclusion of importers from the definition of the inventor.

The world’s first patent was granted in 1790 to Samuel Hopkins in USA for the "making of pot
ash and pearl ash by a new apparatus and process". In India, the first patent (known as
‘Exclusive Privileges’ at that time) was awarded in 1856 to a civil engineer, George Alfred
DePenning from Calcutta, for his invention, ‘An Efficient Punkah Pulling Machine’.

A few years later, it was felt that ‗Designs‘ could also pass the criteria of the invention and thus
should be included in the Patent Act. The new Act was rechristened as ―The Patterns and
Designs Protection Act‖ under Act XIII of 1872.

This Act was further amended in 1883 (XVI of 1883) to include the provision of protection for
‗Novelty‘ in the invention.

At the beginning of the 20th century, all the earlier Acts related to inventions and designs were
done away with the introduction of ‗The Indian Patents and Designs Act, 1911‘ (Act II of 1911).

As per this Act, the governance of patents was placed under the management of the Controller of
Patents. In the next three decades, many amendments were introduced for reciprocal
arrangements with other countries for securing priority dates.

These amendments dealt with;

Use of invention by the government.
 Patent of Addition.
 Enhancing the term of the patent from 14 years to 16 years.
 Filing of ‗Provisional Application‘ and submission of ‗Complete Application‘ within 9
months from the date of filing the application.

After India got independence in 1947, many patent experts felt the need to review the Indian
Patents and Designs Act, 1911, keeping the national interest (economic and political) in mind.

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A dedicated committee, chaired by a renowned Justice Bakshi Tek Chand (retired Judge of
Lahore High Court), was constituted in 1949 to review the advantages of the patent system.

The committee submitted a plethora of recommendations, including:

 Misuse of patents rights needs to be prevented.

 There must be a clear indication in the Act that food, medicine and surgical and curative
devices should be made available to the masses at the cheapest rate by giving reasonable
compensation to the owner of the patent.
 Amendments in Sections 22, 23 and 23A of the Patent and Design Act, 1911 on the lines of
the UK Patent Act.

These recommendations were introduced in the Act XXXII of 1950. Two years later, another
amendment (Act LXX of 1952) was made to provide compulsory licencing of patents related to
food, drugs and chemicals killing insects and microbes.

Based on these amendments, a bill was presented in the parliament in 1953 but was rejected.

In 1957, the central government constituted yet another powerful committee under the
chairmanship of Justice N.

RajagopalaAyyangar to seek inputs for further strengthening the Indian Patent Law.

The committee submitted its report to the government in 1959.

It comprised of two segments addressing
a) General aspects of the patent laws, and
b) Bill rejected back in 1953.
c)
The revised patent legislation was submitted to the Lok Sabha in 1965. After many hiccups,
clarifications and modifications the Patents Act, 1970
(http://www.ipindia.nic.in/writereaddata/Portal/ IPOAct/1_31_1_patent-act-1970-
11march2015.pdf) was introduced, superseding all the previous laws related to the patents.

However, the Indian Patents and Designs Act of 1911 remained applicable for designs only till
1994.

In 1995, India signed the TRIPS Agreement and got a transition period of 10 years (1995-2005)
to make domestic laws compatible with the international treaty.

In 1999, The Patents (Amendment) Act, 1999 was introduced providing for the filing of
applications for ‗Product Patents‘ in the areas of drugs, pharmaceuticals and agrochemicals
(earlier, only ‗processes‘ were protected under the Patent Act).

The new Patent Act also included provisions for the grant of Exclusive Market Rights (EMRs)
for the distribution and sale of pharma products on fulfilment of certain conditions.

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The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002
(Act 38 of 2002).

This Act introduced new Patent Rules, 2003, thus replacing the earlier Patents Rules, 1972.

The major amendments were:

 The protection term of 20 years for all inventions from the date of filing.
 Scope of non-patentable inventions including Traditional Knowledge expanded.
 Disclosure of source and geographical origin of biological material made compulsory.
 Provisions concerning convention countries simplified.
 Establishment of Appellate Board.
 Compulsory license provisions strengthened.
 Simplification of procedures.
 Harmonization with Patent Cooperation Treaty (PCT) provisions.

With the rapidly changing scenario of IPR at a global level, a

need was felt to further amend the Patent Act, 1970. The highlight
of the Patents (Amendments) Act 2005 were:
 Product patent for inventions in all fields of technology.
 New forms of known substances excluded to prevent
evergreening of the patent.
 Rationalization of the opposition procedure.
 Introduction of pre-grant opposition by representation.
 Introduction of post-grant opposition.
 Compulsory license for export purposes.
 Compulsory license for manufacture.
 Extension of grace period from 6 months to 12 months for filing
a patent, if published in government exhibition.
India is a member of all prominent Conventions and Treaties
related to the facilitation of the inventors for international filing and
protecting the rights over the inventions globally. The important
international agreements to which India is a signatory party are
TRIPS Agreement (1995), Paris Convention (1883), PCT (1970)
and Budapest Treaty (1977) and many more.

1.5.2. Copyrights and Related Rights

The concept of copyrights started way back in the 15th century.

However, the actual need for copyrights law was felt only after the invention of printers and
copiers. Before the invention of printers, writing could be created only once.

It was highly laborious and the risk of errors was involved in the manual process of copying by a
scribe.

During the 15th and 16th centuries, printing was invented and widely established in Europe.

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Copies of ‗Bibles‘were the first to be printed.
The government had allowed the printing of the documents without any restrictions, but this led
to the spreading of a lot of governmental information.

Subsequently, the government started issuing licenses for printing.

The evolution of copyrights law in India occurred in three phases.

First, two phases were enacted during the British Raj.

In the first phase, the concept of copyrights was introduced in 1847 through an enactment during
the East India Company‘s regime.

The term of copyrights was for the lifetime of the author plus seven years after death. Unlike
today, copyrights in work were not automatic.
The registration of copyright was mandatory for the enforcement of rights under the Act.
The government could grant a compulsory license to publish a book if the owner of the
copyright, upon the death of the author, refused to allow its publication.

In the second phase Indian legislature, under the British Raj, enacted the Copyright Act of 1914
based on the Imperial Copyright Act (1911) of the UK. An Act for criminal sanction for an
infringement was introduced.

The third phase of the copyrights regime was witnessed postindependence.

The Copyright Act 1957 was enacted, superseding the Indian Copyright Act, 1914, in order to
suit the provisions of the Berne Convention (1886).
The 1957 Act has been amended six times (1983, 1984, 1992, 1994 and 1999, 2012), to comply
with WIPO Copyright Treaty (WCT), 1996 and WIPO Performances and Phonograms Treaty
(WPPT), 1996.

Most of the amendments in copyright laws were in the digital environment, such as penalties for
circumvention of technological protection measures;
rights of management information; liability of internet service provider;
introduction of statutory licenses for the cover versions (the cover version is re-recording or re-
composition of the original song by other artists or composers and is also termed as a remake,
cover song, revival, etc.) and broadcasting organizations;
ensuring the right to receive royalties for authors and usic composers;
exclusive economic and moral rights to performers;
equal membership rights in copyrights societies for authors and other right owners and exception
of copyrights for physically disabled to access any works.

India is an active member of nearly all significant international Conventions/Treaties related to

Copyright Law e.g. the Berne Convention as modified in Paris in 1971, the Universal Copyright
Convention (1951), the Rome Convention (1961), WCT, WPPT and (TRIPS, 1995).

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1.5.3. Trademarks

The first statutory law related to Trademarks (TM) in India was the Trade Marks Act, 1940,
which was carved out from the Trade Marks Act, 1938 of the UK.

It was followed by the incorporation of provisions of TM stated in the Indian Penal Code,

Criminal Procedure Code and the Sea Customs Act. Later on, Trade Marks
Act, 1940 was rechristened as Trade and Merchandise Marks Act, 1958. Nearly four decades
later, this Act was repealed by the Trade Marks Act, 1999.

The need for this occurred to comply with the provisions of the TRIPS. It is the current
governing law related to registered TM.

1.5.4. Geographical Indications

India, as a member of WTO, enacted the Geographical Indications of Goods (Registration and
Protection) Act, 1999.

It came into force with effect from 15th September 2003.

Geographical Indicators have been defined under Article 22 (1) of the WTO Agreement on
TRIPS.

1.5.5. Trade Secrets

Although India has no specific Trade Secrets Laws, Indian courts have upheld Trade Secrets
protection under various statutes, including contract law, Copyright law, the principles of equity
and the common law action of breach of confidence (which in effect amounts to a breach of
contractual obligation).

1.5.6. Semiconductor Integrated Circuits and Layout Designs

In the 21st century, Information Technology (IT) has revolutionized the economic and societal
growth of the world economy.

The rapid and tremendous scientific advancements in the field of IT resulted in the creation of a
new class of IP called the Layout-Design of the Semiconductor Integrated Circuits.

Various organizations, including WTO and TRIPS Agreement laid down rules and regulations
regarding the protection of Semiconductor Integrated Circuits and Layout Designs (SICLD)
India being a member of the WTO also passed an Act called the SICLD Act, 2000.

This Act is TRIPS compliant and fulfils the conditions of the TRIPS agreement (Articles. 35 to
38) concerning the protection of SICLD.

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1.5.7. Plant Varieties

Till 1970s, not much emphasis was laid on patentable matter originating from animals and
plants.
However, microbes and microbial products/processes were patentable.

To include all kinds of biological materials under the ambit of patent laws, a decision to enact a
new sui generis law under the International Convention for the Protection of New Varieties of
Plants (UPOV, 1978) and UPOV, 1991 was taken.

These decisions were taken to address environmental and public interest concerns.

The Indian Patents Act, 1970 excludes ―plants and animals in whole or any part thereof other
than microorganisms‖ from patentability.

To comply with the mandate of Article 27.3 (b) of TRIPS, India adopted the PPV&FR Act, 2001
as a sui generis regime protecting not only new plant varieties but also farmers‘ rights.

1.5.8. Traditional Knowledge

It is the ancient and indigenous knowledge held by any community or a group of people.

In olden times it was not recorded anywhere and was available only in oral form.

So, Traditional Knowledge (TK) was verbally passed on to future generations.

TK is not limited to a particular field. It covers a wide area, such as the use of plants or their
extracts for medical treatments, a traditional form of dance, particular techniques used for
hunting, craft knowledge/skills and so on.

Though there is no official record but some forms of TK find appearance in the culture, stories,
legends, folklore, rituals, songs, etc.

Previously, there was no mechanism available to protect TK, but now, it has been recognized as
IPR under TRIPS Agreement. T

he Government of India has created a digital library termed as Traditional Knowledge Digital
Library (TKDL) as a repository of 2,50,000 formulations of various systems of Indian medicine.

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1.5.9. Industrial Designs

A design is a creation of the human mind, which is appealing to the eyes and attracts the
attention of the viewers.

The need to protect Industrial Designs (ID) was recognized in the 18th century and the Indian
legislation enacted the ‗Patterns and Designs Act‘ in 1872 for the first time.

The Act was enacted to protect the rights over the creation of the designs and novel patterns by
the inventors.

The Act was replaced by the British Patents and Designs Act in 1907, which later became the
basis for the Indian Patents and Designs Act, 1911.

In 1970, a separate Act was enacted for the patent, i.e. the Patent Act, 1970.

The Indian Patents and Designs Act, 1911, remained in force for designs only. Finally, in the
year 2000, a dedicated Act for the ID was passed, which came into force in 2001.

1.5.10. Biodiversity Conservation

Biodiversity is an inseparable part of human livelihood.

The mention of protecting biodiversity can be found in the times of Chandragupta and Ashoka.
In those eras, the trees and forest were classified, such as reserved category.

In 1927 the ‗Indian Forest Act‘ and later on the ‗Wildlife Protection Act, 1972‘ was enacted to
provide legal protection to biodiversity.

In 1988, the ‗National Forest Policy‘ was passed, which brought revolutionary changes in the
conservation and management of biodiversity.

The Acts and policies in force to protect the environment and biodiversity in India include
Mining and Mineral Development Regulation Act, 1957;
Water (prevention and control of pollution) Act, 1974;
Forest Conservation Act, 1980; Biological Diversity Act, 2002;
Scheduled Tribes and other Traditional Forest Dwellers (recognition of rights)
Act, 2006;
National Biodiversity Action Plan, 2009;
National Environment Policy, 2006 and a few more.

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1.6. Major Amendments in IP Laws and Acts in India

In order to fill the gaps existing in the IP Laws and Acts and also to introduce new
guidelines/directions based on the current scenario (socially and politically), each nation keeps
on updating the concerned IP Laws and Acts. Some of the salient amendments made in Indian
Laws and Acts on IPR are mentioned below:

Table 1.1: History of Laws and Acts pertaining to intellectual property in India.

S.No. Year Historical Proceedings

Patents

1 1856 The Act VI of 1856 on the protection of

inventions based on the British Patent Law of 1852.
2 1859 Rights renamed as ‗Exclusive Privileges‘.
Time for the priority increased from 6 months to 12 months.
3 1883 The Patterns and Designs Protection Act
Introduction of novelty in the invention.
A grace period of 6 months for the disclosure of the invention.
4 1911 Renamed as ‗The Indian Patent and Design Act‘ and brought under the
management of ‗Controller of Patents‘.
5 1930 Introduction of Patent of Addition.
Government can use the invention if required.
The term of patent protection increased from 14 to 16 years.
6 1945 Filing of the provisional specification to secure the priority date.
Provision of submitting complete specifications within 9 months.
7 1949 Dedicated Committee formed under the leadership of Justice Bakshi Tek Chand
for reviewing patent system as per the national environment.
8 1950 A working statement needs to be submitted at the Patent Office.
Endorsement of the Patents with the words ‗License of Right‘ on the
application made by the government so that the Controller could grant the license.
9 1952 Provision of ‗Compulsory License‘ in the areas of food, medicine and
insecticide germicide.
Process for producing substance or any invention relating to surgical or
curative devices. 
10 1965 After incorporation of the recommendation submitted by the committee formed in
1949, a new bill was introduced in Lok Sabha but was not cleared.

11 1967 Again submitted to Parliamentary Committee.
1911 Act remained applicable for Designs.
12 1970 The Patent Act, 1970 passed by the Parliament Committee.
13 1972 The Patent Act, 1970 came into force with the introduction of patent rules.
14 1995 TRIPS Agreement was signed by India and got transition period 1995-2005 to
make domestic laws compatible with TRIPS.
15 1999 Introducing the provisions for receiving the applications for the product
patent in the field of pharmaceuticals and agro-chemicals (mail box)*.
Provisions for the grant of EMRs for distribution and sale of pharma products

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 on fulfilment of certain conditions.
Grant of EMR subject to certain conditions.
* after the amendments (1999) the product patents related to the pharmaceuticals
and agrochemicals were kept on hold for examination till 2005. It is called a
mailbox or black box.
16 2002 The uniform 20-year term of the patent for all inventions.
Disclosure of source and geographical origin of biological material made
compulsory.
Establishment of Appellate Board.
Compulsory License provisions strengthened.
17 2003 The Patents Rules, 2003 were introduced.
18 2005 Product patent for inventions in all fields of technology including food, drug,
chemicals and microorganisms.
New forms of known substances excluded in order to prevent the ever-
greening of the patent.
Introduction of the pre-grant opposition.
Introduction of post-grant opposition.
Extension of grace period to 12 months. 
Copyrights and Related Rights
19 1847 The concept of Copyrights in India was introduced.
Validity - Lifetime+7 years but not more than 42 years in total.
20 1914 Copyright Act, 1914 was introduced based on the Imperial Copyright Act, 1911
of UK.
21 1957 Copyright Act, 1914 was replaced with Copyright Act, 1957 with minor
modifications.
22 1984 Penalty on second and subsequent conviction.
23 1994 Registration of Copyright Society made mandatory.
24 2012 To comply with international Treaties for copyrights protection in the digital
environment.
Right to receive royalties for authors and music composers.
Exception of copyrights for physically disabled persons to access any work.
25 2013 Copyrights Rules, 2013 introduced.
Trademarks
26 1940 Trademarks Registry established in India.
27 1958 . The Trade and Merchandise Marks Act, 1958 enacted as per TRIPS Agreement.
28 1999 Amended to avoid duplicity and ensure securing proprietors‘ trade and goodwill.
29 2002 Trademarks Rules introduced.
30 2010 Amended to comply with Madrid Protocol for international filing.
Provision for filing opposition of the registration within 4 months.
31 2013 Trademarks Rules introduced.
Geographical Indications
32 1999 Being a member of the World Trade Organization (TRIPS), GI of goods
(Registration and Protection) Act was introduced.
33 2002 The Geographical Indications of Goods (Registration and Protection) Rules, 2002
was introduced.
34 2003 The Geographical Indications of Goods (Registration & Protection) Act came into
force.

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 MODULE 03 - PATENTS

Patents: Conditions for Obtaining a Patent Protection, To Patent or Not to Patent an

Invention. Rights Associated with Patents. Enforcement of Patent Rights. Inventions
Eligible for Patenting. Non-Patentable Matters. Patent Infringements. Avoid Public
Disclosure of an Invention before Patenting.
Process of Patenting.Prior Art Search. Choice of Application to be Filed. Patent
Application Forms. Jurisdiction of Filing Patent Application. Publication. Pre-grant
Opposition. Examination. Grant of a Patent. Validity of Patent Protection.

Post-grant Opposition. Commercialization of a Patent. Need for a Patent

Attorney/Agent. Can a Worldwide Patent be Obtained. Do I Need First to File a Patent
in India. Patent Related Forms. Fee Structure. Types of Patent Applications. Commonly
Used Terms in Patenting. National Bodies Dealing with Patent Affairs. Utility
Models.

CATEGORIES OF INTELLECTUAL PROPERTY

Intellectual Property (IP) is a vast field comprising of technology-led inventions, work of

artisans, novel Industrial Designs, unique brands of commercial items, and Traditional
Knowledge being practised continuously over centuries for the production of goods
(carpets, textiles, food products, etc.).

In order to understand the extensive field of IP, it has been divided into various
categories. In India, these categories include Patents, Copyright and Related Rights,
Trademark, Trade Secrets, Industrial Designs, Geographical Indications and
Semiconductor Integrated Circuits Layout Designs. Each of these categories is
described in the following sections.

Patents
A patent is an exclusive right granted for an innovation that generally provides a new way of
doing something or offers a new technical solution to a problem.

The exclusive right legally protects the invention from being copied or reproduced by others.
In return, the invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the relevant
field.

Invention is the creation of a new idea or concept.

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Innovation is the process of translating an invention into commercial entity or widespread use.

Conditions for Obtaining a Patent Protection

There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be
fulfilled for a product or a process to qualify for the grant of a patent.

The criterion encompasses:

Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application is new
and not known to anybody in the world. In other words, the innovation is
a) not in the knowledge of the public,
b) not published anywhere through any means of publication and
c) not be claimed in any other specification by any other applicant.

Inventive step - Not obvious to the person (s) skilled in the art.
The innovation is a) a technical advancement over the existing knowledge,
b) possesses economic significance and,
c) not obvious to a person skilled in the concerned subject.

Capable of industrial application - For the benefit of society.

The invention is capable of being made or used in any industry.

To Patent or Not to Patent an Invention

 Once an invention has been developed, the inventor has to decide whether to exploit the
invention for personal benefits as provided by the statutory laws of the country or put it in
the public domain. By and large, the inventor prefers the former option.
 Only a miniscule of inventions are placed in the public domain without claiming any
benefits.
 In the latter case, anybody can exploit the innovation for commercial or societal benefit
without paying any money to the inventor.
 If the owner of an invention wishes to seek monetary gains, he can choose from either of
the two options, i.e. patenting or Trade Secret.
 If the inventor is absolutely sure of maintaining the secrecy of invention for a very long
period (maybe 100 years or more) and the probability of reverse engineering of the
technology is nil or very low, then the ‗Trade Secret‘ category is preferred.
 If the invention has a short life span or can be kept secret only for a small period of time
(a couple of years or so) or the probability of reverse engineering is high once the
invention is in the public domain, then the ‗patent‘ category is preferred.

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Rights Associated with Patents

 As per the Court of Law, a patent owner has the right to decide who may or may not use
the patented invention.
 In other words, the patent protection provided by the law states that the invention cannot
be commercially made, used, distributed, imported, or sold by others without the patent
owner's consent.
 The patent owner may permit other parties to use the invention on mutually agreed terms.
 As a matter of fact, the patent rights are negative rights as the owner is restricting others
from using the patent in any manner without his prior permission.
 The patent holder may choose to sue the infringing party to stop illegal use of the patent
and also ask for compensation for the unauthorized use.

2.1.4. Enforcement of Patent Rights

 Enforcement is the process of ensuring compliance with laws, regulations, rules,

standards and social norms.
 Patent rights are usually enforced by the judicial courts.
 The Court of Law has the authority to stop patent infringement.
 However, the main responsibility for monitoring, identifying and taking action against
infringers of a patent lies with the patent owner.

2.1.5. Inventions Eligible for Patenting

 Patents may be granted for inventions/technologies in any field, ranging from a paper clip
or ballpoint pen to a nanotechnology chip or a Harvard mouse (mouse with cancer
genes).
 It is a general belief that patents are awarded only to major scientific breakthroughs. But,
it is not true. In fact, the majority of patents are granted to inventions displaying an
improvement over the existing invention.
 For example, many patents can be awarded to a single molecule e.g. penicillins (an
antibiotic that kills microbes) and its derivatives.
 The derivatives are made by making subtle changes in the structure of the penicillin
resulting in new/improved properties, such as acid stability or temperature stability or
killing a wide range of microbes (germs).
 The new antibiotic molecules, known as second, third or fourth generation penicillins can
also be patented.
 In our daily life, we use many patented items, such as toothbrush, toothpaste, shoes, pen,
eyeglasses, textiles, mobile phones, wrist watch, bicycle, scooter, car, television, cold
drinks, beverages and many more.
 It is not uncommon that many products contain several inventions (patents) e.g. the
laptop computer involves hundreds of inventions working together. Similarly, cars,
mobile phones and televisions have many patented components.

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2.1.6. Non-Patentable Matters

In the ‗Patent Act, 1970, there are some exclusions (product and processes) that cannot be
patented, such as:
Invention contrary to public morality - a method for human cloning, a method for gambling.
Mere discovery - finding a new micro-organism occurring freely in nature, laws of gravity.

Mere discovery of a new form of a known substance - use of aspirin for heart treatment.
Aspirin was patented for reducing fever and mild pains.

Frivolous invention - dough supplemented with herbs, merely changing the taste of the dough,
100 years calendar, bus timetable.

Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to a bucket.

Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 - inventions relating
to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and
more as notified by the Central Government from time to time.

Literary, dramatic, musical, artistic work - books, sculptures, drawings, paintings, computer
programmes, mathematical calculations, online chatting method, method of teaching,
method of learning a language as they are the subject matter of Copyright Act. 1957.

Topography of integrated circuits - protection of layout designs of integrated circuits is

provided separately under the Semiconductor Integrated Circuit Layout Designs Act, 2000.

Plants and animals - plants and animals in whole or any part including seeds, varieties and
species and essentially biological processes for the production or propagation of plants and
animals are excluded from the scope of protection under patents.

Traditional knowledge - an invention which in effect is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known components are also
excluded.

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2.1.7. Patent Infringements

Once the patent is granted to the applicant, he owns the right to use or exploit the invention in
any capacity. If anyone uses the invention without the prior permission of the owner, that act will
be considered an infringement of the invention. Infringements can be classified into two
categories:

Direct Infringement - when a product is substantially close to any patented product or in a case
where the marketing or commercial use of the invention is carried out without the permission of
the owner of the invention.

Indirect Infringement - When some amount of deceit or accidental infringement happens

without any intention of infringement.
If such an unlawful act has been committed, the patentee holds the right to sue the infringer
through judicial intervention.
Every country has certain laws to deal with such unlawful acts. Following reliefs are made
available to the patentee:
 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.

It is pertinent to mention that the Central government always holds the rights (Section 100 of the
Patent Act, 1970, Rule 32 of the Patent Rules, 2003) to use the invention in the case of national
emergency or other circumstances of extreme urgency after notifying the owner.

2.1.8. Avoid Public Disclosure of an Invention before Patenting

 Generally, an invention that has been either published or publicly displayed cannot be
patented, as the claimed invention will lose the ‗Novelty‘ criterion.
 However, under certain circumstances,the Patents Act provides a grace period of 12
months for filing a patent application from the date of its publication in a journal or
presentation in a reputed scientific society or exhibition.
 Sometimes, disclosure of an invention before filing a patent application is unavoidable,
 e.g. selling your invention to a potential investor or a business partner who would like to
know complete details of the invention in order to judge its commercial value.
 In such a case, it is advisable to sign a Non-Disclosure Agreement (NDA) or any other
confidential agreement to safeguards your interest.

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2.1.9. Process of Patenting

In India, the process of grant of a patent is a lengthy procedure that may take anywhere 3-4 years
or more. The major steps involved in this process are listed in figure 2.1.

Figure 2.1: Flow chart of major steps involved in the grant of a patent.

2.1.9.1. Prior Art Search –

 Before an inventor embarks upon the patent filing process, he has to ensure that his
invention is ‗novel‘ as per the criterion for the grant of a patent.
 For this, he has to check whether or not his invention already exists in the public domain.
 For this, he needs to read patent documents and Non-Patent Literature (NPL), scientific
journals/reports/magazines, etc.
 The information lying in the public domain in any form, either before the filing of the
patent application or the priority date of the patent application claiming the invention, is
termed as Prior Art.
 Conducting a prior art search before filing the patent has advantages as it averts
infringement, tracks research and development and provides access to detailed
information on the invention.
 The prior art search is carried out on the parameters such as novelty, patentability, state
of the art, infringement, validity and freedom to operate.
 The commonly used databases for prior art search fall in two categories i.e. Patents
Databases and NPL.

Patents’ Databases
Indian Patent Advanced Search System(InPASS- http://ipindiaservices.gov.in/publicsearch/).
Patentscope(WIPO- https://www.wipo.int/patentscope/en/).
Espacenet(EU- https://worldwide.espacenet.com/patent/).
USPTO(USA- https://www.uspto.gov/).

Department of E & C E, GEC, Hassan Page 19

Google Patents Advanced Search(https://patents.google.com/advanced).
Orbit Intelligence(https://www.questel.com/business-intelligence-software/orbit-intelligence/).
Derwent Innovation(https://clarivate.com/derwent/solutions/derwent-innovation/).
PROQUEST(https://about.proquest.com/search/?searchKeyword=patent+).

Non-Patent Literature (NPL)

 Scholarly publications: Handbooks, Textbooks, Withdrawn Patents, Encyclopedias,

Journals (IEEE, Research Gate, Springer, Wiley Online Library, etc.), Dissertations,
NCBI‘s PubMed, Conference Proceedings, Technical Reports, Public Conferences, etc.

 Industry/trade publications: Industry reviews and public disclosures (Social media,

youTube, Books, Magazines, Datasheets, Blueprints, etc.).

 Others: Newspapers, Websites, Technology blogs, Researchers‘ websites, etc.

 Although, majority of NPL data is available freely on the public forum, some of the
journals are paid and can be accessed after paying the subscription.

 Major Patent Offices such as the United States Patent and Trademark Office's (USPTO),
European Patent Office (EPO), Japan Patent Office (JPO), etc. are maintaining inhouse
NPL databases to make patents examination more effective.

2.1.9.2. Choice of Application to be Filed - Once a decision has been made to patent the
invention, the next step is, what kind of application needs to be filed i.e. provisional patent
application or complete (Final) patent application - generally, the provisional patent application
is preferred for the following reasons:

 It is cheaper, takes less time, and involves fewer formalities.

 Any improvements made in the invention after the filing of the provisional application can be
included in the final application.

In other words, the provisional application does not require complete specifications of the
inventions.
The application can be filed even though some data is yet to be collected from pending
experiments.
 A provisional application allows you to secure a priority date for the patent applied.

However, it is mandatory to file the complete patent application within one year of the filing of
the provisional application; otherwise, the application stands rejected.

2.1.9.3. Patent Application Forms - As per the Patent Act, 1970 (Section 39) and the Patents
Rules, 2003 (Rule 7, 54, 135 and subrule (1) of rule 20, the application for the grant of patent is
filed using Form-1 (Fig. 2.2) and Form-2 (Fig. 2.3).

Department of E & C E, GEC, Hassan Page 20

The information sought in Form-1 is general in nature i.e. Title of Application,

Names of Applicant(s) and Inventor(s),

Type of Application(Ordinary, Convention, PCT-NP (PCT- National Phase), Divisional, Patent
of Addition, etc.).
Whereas Form-2 seeks technical information and whether to file the provisional application or
complete the application. For ‗Provisional Application‘, only ‗Description of the Invention‘ and
the ‗Abstract‘ is to be furnished.

Whereas, ‗Complete Application‘ requires ‗Description of the Invention‘, ‗Abstract‘, ‗Claims‘

and the manner in which invention has to be performed.

The ‗Claims‘ of the patent are a very crucial part of the specifications because they define the
actual boundary of the invention.

‗Claims‘ specify what is actually claimed by the invention and what is being sought to be
protected.
It clearly describes what the patent does and does not cover. The Claims are usually expressed as
a declaration of technical particulars articulated in legal terms.

Claims can be classified into two types

a) Independent Claims (stand alone claim) and
b) Dependent Claims (dependent on independent claim).
The Claims must be drafted precisely and carefully in order to seek patent protection and also to
protect the invention against potential infringers.

Below mentioned are two important forms Form-1 and Form-2 for filing the patent application
(http://www.ip india.nic.in/writereaddata/Portal/IPORule/1_10_1_patents-amend ments-rules-
2005.pdf).

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2.1.9.4 Jurisdiction of Filing Patent Application - India has four offices for filing patent
applications (Table 2.1). The applications can be filed only in one of the offices based on the
applicant‘s residence or domicile or place of business or origin of the invention.

These are termed as jurisdictions to file patents.

Department of E & C E, GEC, Hassan Page 26

For a foreign applicant, the address for service in India or place of business of his patent agent
determines the appropriate Patent Office for filing a patent application.

In the case of joint applications, all the applicants are bestowed with equal rights and
consideration.

2.1.9.5. Publication –
 Once the patent application has been filed at the Regional Patent Office, the patent
application is kept secret for 18 months in the Patent Office.
 After the expiry of 18 months (from the date of filing of the application or the priority
claimed date,whichever is earlier), the application is published in the Official Journal of
Patent Office (http://www.ipindia.nic.in/journalpatents.htm).
 The purpose of publishing the application is to inform the public about the invention. The
publication of an application is a mandatory step.

2.1.9.6 Pre-grant Opposition –

 If anybody has an objection to the invention claimed in the patent application, he can
challenge the application by approaching the Controller of Patents within 6 months from
the date of publication.
 It is termed as Pre-grant Opposition. Depending on the outcome of the case, the patent
application may be rejected or recommended for the next step, i.e. patent examination.
 Although the patent application is kept secret for 18 months, but under special
circumstances, this period can be reduced when the patentee/applicant plans to sell or
license the patent or seek an investor).
 For this, the applicant has to fill a Form-9 and submit it to the Controller General.
 Patentee: A person/Organization who owns the patent (granted)

2.1.9.7 Examination –

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  Patent examination is a critical step in the process of grant of a patent. All the important
criteria (novel, inventive step, etc.) are scrutinized by the professionals depending on the
content of the invention.
 Usually, the examiner raises certain queries/doubts which need to be addressed by the
inventors.
 Once the examiner is satisfied with the answers received from the inventors, the
application is recommended for the grant of a patent.
 It is pertinent to mention that a patent application is not examined automatically after
clearing the publication stage.
 The applicant or his representative has to make a request for examination of the patent by
filing Form-18A and submitting the same within 48 months from the date of filing of the
application.

2.1.9.8. Grant of a Patent –

 After fulfilling all the requirements for the grant of a patent, including all
objections/queries raised by the ‗Patent Examiner‘ and the public at large, the patent is
granted to the applicant.
 The granted patent is published in the Official Journal of the Patent Office. This journal is
published every Friday and contains information related to patent applications published
under section (u/s) 11A, post-grant publication, restoration of patent,notifications, list of
non-working patents and public notices issued by the Patent Office.

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2.1.9.9. Validity of Patent Protection –
 The patent protection is granted to an applicant for a limited period, generally 20 years,
starting from the date of filing of the application.
 Once a patent is granted for an invention in India, the next vital step is to ensure that it is
renewed annually by paying Patent Renewal Fee as per Section 53, Rule 80 of the Indian
Patents Act, till the expiry of the patent grant period.
 Non-payment of Patent Renewal Fee might result in the cancellation of the patent.
 In some countries, patent protection may be extended beyond 20 years.
 The extension aims to compensate for the time expended on the administrative approval
procedure before products can be put on the market.
 The time taken for this procedure means that the patent owner may sometimes not be able
to benefit from his right for a considerable period after the grant of the patent.

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2.1.9.10. Post-grant Opposition –
 Once the patent has been granted by the Patent Office, it still can be challenged by
anyone within one year from the date of publication of the grant of the patent.
 The granted patent can be challenged either via a Patent Office or in a Court of Law.
 These bodies may invalidate or revoke a patent upon a successful challenge by the
interested party on the grounds mentioned below:

a) The applicant for the patent wrongfully obtained the invention or any part of the
invention.
b) The invention claimed has been published before the priority date.
c) The invention claimed was publicly known/used before the priority date.
d) The invention claimed is obvious and does not involve an inventive step.
e) The subject of the claim is not patentable as per Chapter II of the Patent Act, 1970.
f) The details/specifications of the invention do not sufficiently and clearly describe the
invention.

2.1.10. Commercialization of a Patent

 The patent owner may grant permission to an individual/organization/industry to make,
use, and sell his patented invention. This takes place according to agreed terms and
conditions between the involving parties.
 A patent owner may grant a license to a third party for the reasons mentioned below:

a) The patent owner has a decent job e.g. university professor and has no desire or aptitude
to exploit the patent on his own.
b) The patent owner may not have the necessary manufacturing facilities.
c) The manufacturing facility is not able to meet the market demand.
d) The patent owner wishes to concentrate on one geographic market; for other geographical
markets, he may choose to license the patent rights.

 Once the patent is granted, the patentee (person holding the rights to the patent) enjoys
the exclusive rights to use the patented invention.
 Only the patentee has the right to licence or deal with the patent for any deliberations.
Although, the validity of the granted patent is for 20 years (from the date of filing a
patent application), but the patentee is required to furnish information (Form-27), on an
annual basis relating to the commercialization/selling of the patent. It is called as
‗Working/Licensing of the Patent‘.

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

In an Exclusive Licence, the patent is sold to only one individual/organization for a fixed time
period. During this time period, no other person or entity can exploit the relevant IP except the
named licensee.

In Non-Exclusive Licence, a patentee can sell his patent rights to as many individuals/parties as
he likes. If the patentee is not able to commercialize his patent within three years from the date

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of the grant of a patent, any person may submit an application to the Controller of Patents for
grant of Compulsory Licensing (of the patent), subject to the fulfilment of following conditions:

 Reasonable requirements of the public concerning the patented invention have not been
satisfied.
 The patented invention is not available to the public at a reasonable price.
 The patented invention is not worked in the territory of India.

2.1.11. Need for a Patent Attorney/Agent

In general, applicants can prepare their patent applications and file them without assistance from
a patent attorney.

However, given the complexity of patent documents, it is advisable to seek legal assistance from
a patent attorney/agent when drafting a patent application.

Furthermore, the legislation of many countries requires that an applicant, whose ordinary
residence or principal place of business is outside the country, be represented by an attorney or
agent qualified in the country (which usually means an agent or attorney who resides and
practices in that country).

2.1.12. Can a Worldwide Patent be Obtained

There is no such term as ‗Universal Patent‘ or ‗World Patent‘ or ‗International Patent‘ as the
patent rights are territorial.

An application for a patent must be filed with a Patent Office of the country in which one wishes
to seek patent protection.

Unfortunately, this option becomes laborious, cumbersome, timeconsuming and expensive if one
wishes to file a patent application in many countries.

To ease out this issue, many Regional Offices have been established which receive patent
applications on behalf of a group of nations e.g. European Patent Office and African Regional
Intellectual Property Organization.

A single application is sufficient to cover many nations that are members of a particular regional
office/organization. However, if one wishes to seek patent protection in several countries
worldwide, it is preferred to file an international patent under the Patent Cooperation Treaty
(PCT).

The only condition is that the applicant‘s country should be a member of PCT. India, along with
over 190 nations, is a member of PCT.

2.1.13. Do I Need First to File a Patent in India

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Yes, in general, Indian residents are required to file the patent application first in India.
Subsequently, they may file for patent protection in other countries.

But for this, prior approval is needed from the Patent Office. However, this approval can be
waived off under the following circumstances:
 The applicant is not an Indian resident.
 If 6 weeks have expired since the patent application was filed in India by an Indian resident.
 If two or more inventors are working on an invention in a foreign country and one of the
inventors is an Indian resident.

The invention does not have a potential market in India and hence does not wish to file the patent
in India. In such a scenario, the Indian resident has to seek Foreign Filing Permission (FFP) from
an Indian Patent Office.

 In case of international collaboration, if one part of the invention originated in India and the
inventor is an Indian resident, he has to seek permission to file the patent outside India.

 If the invention is related to defense or atomic energy or utility model, the inventor/s needs to
seek permission from the Indian Patent Office because inventions related to these domains are
not the subject matter of patentability in India.

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2.1.14. Patent Related Forms
There are over 30 patent-related forms. Some of them are mentioned below.

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2.1.15. Fee Structure
As per the patent Act, 1970 and The Patents Rules (1972), the requisite fee has been specified
based on the type of form/s to be submitted to the Office (Table 2.3). Electronically filed
applications are 10% cheaper than physical filing.

2.1.16. Types of Patent Applications

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 Provisional Application - A patent application filed when the invention is not fully finalized
and some part of the invention is still under experimentation. Such type of application helps to
obtain the priority date for the invention.

 Ordinary Application - A patent application filed with complete specifications and claims
but without claiming any priority date.
 PCT Application - An international application filed in accordance with PCT. A single
application can be filed to seek patent protection and claim priority in all the member countries
of PCT.

 Divisional Application - When an application claims more than one invention, the applicant
on his own or to meet the official objection on the ground of plurality may divide the application
and file two or more applications.

This application divided out of the parent one is known as a Divisional Application. The priority
date for all the divisional applications will be the same as that of the main (the Parent)
Application (Ante-dating).

 Patent of Addition Application - When an invention is a slight modification of the earlier

invention for which the patentee has already applied for or has obtained a patent, the applicant
can go for ‗Patent of Addition‘, if the modification in the invention is new.

Benefit - There is no need to pay a separate renewal fee for the ‗Patent of Addition‘, during the
term of the main patent. It expires along with the main patent.

 Convention Application - If a patent application has been filed in the Indian Patent Office,
and the applicant wishes to file the same invention in the one or more Convention countries (e.g.
Paris Convention) by claiming the same priority date on which application was filed in India,
such an application is known as Convention Application.

The applicant has to file Convention Application within 12 months from the date of filing in
India to claim the same priority date

2.1.17. Commonly Used Terms in Patenting

There are certain terms that are commonly used in the field of patenting, as listed in table 2.4.

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2.1.18. National Bodies Dealing with Patent Affairs

There are many departments/organizations/bodies dealing with various aspects of patents,

namely, the Indian Patent Office (IPO), Department for Promotion for Industry and Internal
Trade (DPIIT); Technology Information, Forecasting and Assessment Council (TIFAC) and
National Research Development Corporation (NRDC).

2.1.19. Utility Models

In many cases, a new invention involves an incremental improvement over the existing products,
but this technical improvement is not sufficient enough to pass the stringent criterion of
‗Novelty‘ and ‗Non-obviousness‘ set aside for the grant of a patent.

Such small innovations can still be legally protected in some countries and termed as ‘Utility
Models’ or ‘Petty Patents’ or ‘Innovation Patents’.

In this case, the criterion of ‗Novelty‘ and ‗Non-obviousness‘ are diluted or relinquished. But
the requirement of industrial application or utility is the same as that for patents.

Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since the grant
of a ‗Utility Model‘ is usually less rigorous and involves minimal cost.

MSMEs do not have deep pockets to carry out intensive R&D leading to the grant of patents.

But their innovations are good enough for improving their products/processes and bringing more
financial rewards.

Such inventions pass the requirements set aside for Utility Models but not for patents.

The life of the Utility Model is less as compared to the patents. It varies from 7-15 years in
different countries.

Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland, Russian
Federation and Spain, provide protection for Utility Models under their IPR laws.

India till date does not recognize utility patents. If these small patents are recognised under IP
protection in India, it will catapult the number of patents (filed and granted) on annual basis.

2.1.20. Additional Information

 The patent system in India is governed by the Patents Act, 1970 (No.39 of 1970) as amended
by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003.

The Patent Rules are regularly amended in accordance with the changing environment, the most
recent being in 2020.

Department of E & C E, GEC, Hassan Page 38

 First patent filed in India - On 3rd March 1856, a civil engineer and inventor named George
Alfred DePenning of Calcutta, India, filed the first petition for grant of Exclusive Privileges
(term used for patents at that time) under this Act for his invention called ‘An Efficient Punkah-
Pulling Machine’.

This patent was also first ever granted in India.

 As per the Budapest Treaty (1977), microorganisms, which are a part of the patent disclosure
procedure, must be deposited with units of the International Depositary Authority (IDA).
Patents that have changed the world:

 Patent number: US 223 898. Edison‘s electric bulb (1880).

 The telephone (US 174 465): The first telephone was invented and patented by Alexander
Graham Bell in 1876. Bell went on to cofound the American Telephone & Telegraph Company
(AT&T).
Later, the company expanded to control all telecommunications and became the world‘s most
significant industry.

 Maximum number of patents (9700) have been granted to a Japanese Shunpei Yamazaki in
a span of 49 years (1972- December, 2020) at the rate of 196 patents per year.

 Maximum number of Patents (1299) granted to a person of Indian origin is Gurtej Sandhu
in a span of 30 years (1991- December, 2020) at the rate of 43 patents per year.

Patent Status (India): The number of patent applications filed in India is considerably low vis a
vis many countries.
However, during 10 years period (2010-20) an increase of nearly 30% and 86% was observed in
the number of patent applications filed and examined respectively (Fig. 2.5).

In case of patents granted, data of first three years (2010-13) showed a dip in the numbers
followed by a significant rise (nearly six folds) in the ensuing years (2013-20).
It could be attributed to the increase in the number of patent applications processed as the
government hired more patent examiners.

The number of patent examined rose to 80,088 in 2019- 20 as compared to 11,208 in 2010-11.

Department of E & C E, GEC, Hassan Page 39

Department of E & C E, GEC, Hassan Page 40