Unit-2

Patents
P. Swathi , MBA( Finance and HRM), LLB, Mcom,
Phd( OU)
Asst. Professor, Dept. of Business Management,
RGUKT IIIT Campus, Basar
 Introduction
 Intellectual property right (IPR):
IPR have become important in the
face of changing trade environment
like global competition, high
innovation risks, high investment
in R&D, production and marketing.
In order to maintain continuous
stream of new ideas and
experimentation IPR is important.
• IPR as a collective term includes the
following independent IP rights which
can be collectively used for protecting
different aspects of an inventive work
for multiple protection:-
Patents
Copyrights
Trademarks
Registered (industrial) design
Geographical indication
Protection of undisclosed information
 Patents
Patents was first designed by Thomas
Jefferson in the year 1790 .
A patent is an exclusive right granted by a
country to the owner of an invention to
make ,use ,manufacture and market the
invention, provided the invention satisfies
certain conditions stipulated in the law.
Exclusive rights implies that no else can make
,use, manufacture or market the invention
without the consent of the patent holder.
The instrument by which such grant is made
is known as ‘Patent’. The person to whom a
patent is granted is called the ‘Patentee’.
A patent in the law is a property right and
• The patent right is territorial in nature and
inventors/their assignees will have to file
separate patent applications in countries
of their interest.
• There are two kinds of patents namely
process and product patent.
• A product-patent system means that the
end result of the product is patented and
not the process by which it is made.
• India follows both the product and process-
patent systems. For the pharmaceutical,
drug, food and chemicals industries, we
follow process patents, while for all other
industries the product-patent system.
• In India grant of process patents was
 Definition of Patents
• Section 2 of the Indian Patent Act,
1976 “Patent means a new
Product (or) Process involving an
inventive step and capable of
industrial application”.
• The expiry period for the patents in
India is 20 years from the date of
application and after which we can
renewal the patents, if not the
invention can be used by any
person.
Examples of Patents
Examples of Patents
• Example wheel chair bound 9 year old boy
has invented a game of 6 players circular
chess.
• The boy Hridayeshwar Singh Bhatia has got
the games designed patented in this game.
• He is the youngest Patent holder in world.
• The patents right is territorial in nature.
• India is a member state of world intellectual
property organization(WIPO), Paris
Convention, patent cooperation Treaty and
Budapest Treaty
YOUNGEST PATENT HOLDER IN WORLD

• JAIPUR: Drawing
inspiration from
scientist
Stephen Hawking, a
wheelchair-bound nine-
year-old boy here has
invented a game of six-
player circular chess.
• The boy, Hridayeshwar
Singh Bhati has got
the game's design
patented in his name.
 Importance of Patents
• Patents provide incentives to the individuals. In particular,
the inventors deserve recognition for their creativity and
material rewards for their marketable inventions.
• The incentives encourage innovation, which ensures that
the quality of human life is enhanced.
• Protection stimulates research, which results in
technological development.
• It enables the inventors to recoup their investment for the
money and time spent developing the ideas in Research
and development
• The use of patent documents enables future researchers
not to reinvent the wheel
 Types of Patents
• Utility Patent: Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may
obtain a patent therefore, subject to the conditions and
requirements of this title.
• E.g: (functional) toys, coatings, tools, machines, good for 20
years
• Plant Patent: Whoever invents or discovers and asexually
reproduces any distinct and new variety of plant, including
cultivated spores, mutants, hybrids, and newly found
seedlings, other than a tuber propagated plant or a plant
found in an uncultivated state. . .
– No bacteria or similar single-cell organisms need apply!
• Design Patent: Whoever invents any new, original, and
ornamental design for an article of manufacture may obtain a
patent. ( E.g: (non-functional) a decoration, apparel, jewellery
• Can easily be designed around...no functionality to
protect
Why Patents?
• Prevents direct copying of invention.
• Prevent others from patenting your inventions.
• Makes competitors find other solutions.
• Enables patentee to license the invention.
• Enables industry to know about new inventions
and make new products.
 Why patent is necessary?
• Encourages technology development.
• Stimulate capital investment & affects economy.
• To increase research and development.
• Induces an Inventor to disclose his invention .
• Encourages establishment of new industries
 WHAT ARE PATENTABLE INVENTION?

• A new product or process, involving an

inventive step and capable of being made or
used in an industry. It means the invention to
be patentable should be technical in nature
and should meet the following criteria
i) Novelty : The matter disclosed in the
specification is not published in India or
elsewhere before the date of filing of the
patent application in India.
ii) Inventive Step: The invention is not obvious
to a person skilled in the art in the light of
the prior publication/knowledge/ document.
iii) Industrially applicable: Invention should
possess utility, so that it can be made or
used in an industry.
What are Non patentable inventions?
Some inventions in spite of being new, non-obvious and
useful can not be patented. They include,- [see sec.3]
 Discovery of any living thing or non living substances
occurring in nature.
 A method of agriculture or horticulture.eg ,the method
of terrace farming cannot be patented.
 Emergency drugs for various diseases.
 Any process for medical, surgical, diagnostic, therapeutic
or other treatment of human beings, animals or plants
• Plants and animals in whole or any part thereof
other than microorganisms but including seeds,
varieties and species and essentially biological
processes for production and propagation of
plants and animals.
• An Invention which leads to exploitation and
which causes serious effects to human, animals or
plants life or to the environment will not be
patented.eg. Brown sugar.
 A substance obtained by a mere mixture of
various components or a process for producing
such substance.
 Any invention which in effect is traditional
knowledge or which is an aggregation or
duplication of known properties of traditionally
known component.
 Inventions relating to atomic energy
 Patents cannot be provided for universal truths.
 Persons entitled to apply for patent:

Person claiming to be the true and first

inventor of the invention.
Any person being the assignee of the
true and first inventor of the invention
By the legal representative of any
deceased person who immediately
before death was entitled to make such
an application.
 Full Disclosure of invention:

• While the Act grants exclusive right to the inventor to exploit his invention

for commercial gain for a specific period of time, it also imposes on him the

duty of fully disclosing the invention in the complete specification so as to

facilitate anyone from the public working the invention, once the period of

protection is over. The full disclosure of the patented invention is

mandatory.

• If this is not done, the patent will not be granted. The validity of such

patent, even if granted, can be contested by an opposing party. The patent

can be revoked on such contest succeeding.

• Use by Central Government: Though the patentee
has exclusive right of use, the Act provides
for the Central Govt. to use any invention
even without paying the royalty to the
inventor. The Central Govt. can acquire the
patent from the patentee or any other
person having interest in the patent, by
paying the compensation, in public interest.
• Restricted use of patented invention:
Such use by a person other than the
patentee is permissible. For instance, use of
patented invention is permissible for
research or experimental purposes or for
imparting knowledge or instructions to pupils
 Who can apply for a patent ?
• A patent can be made by any person
whether a citizen of India or not,
claiming to be the true or first inventor
of the invention or by his “assignee” or
legal representative.
• Application may be made alone or
jointly with any other person.
• A company or firm cannot be named as
the true inventor. The term person
includes the Government.
 Expiry Of A Patent
• A patent can expire in the following ways:

1.The patent has lived its full term.

2.The patentee has failed to pay the renewal fee.
3.The validity of the patent has been successfully
challenged by an opponent by filing an opposition
either with the patent office or with the courts.
4.As soon as the patent expires, it pass to the
general public domain and now anybody can use it
without the permission of the original inventor
STAGES FROM FILING TO
GRANT OF A PATENT
 Obtaining A Patent
• File an application for patent

– With one of the patent offices based on territorial jurisdiction

of the place of office or residence of the applicant /agent
– Pay the required fee

• Information concerning application form and details of fee

available at www.ipindia.nic.in

• Guidelines for applicants also available on this website

 Formality Check

• An Examiner checks the formal requirements before

accepting the application and the fee – this is done
immediately
• Issue of application number and the cash receipt – this is
done the same day
• In case of receipt of application by post, cash receipt,
application number is sent by post within 2-3 days
 Publication
• Application is kept secret for a period of 18 months from the date
of filing
• In 19th month, the application is published in the official journal –
this journal is made available on the website weekly
• Applicant has an option to get his application published before 18
months also
• In that case, application is published within one month of the
request
 Request for Examination

• Application is examined on request

• Request for examination can be made either by
the applicant or by a third party
• A period of 48 months, from the date of filing, is
available for making request for examination
 Examination
• Application is sent to an Examiner within 1 month from the date
of request for examination
• Examiner undertakes examination and checks,

– whether the claimed invention is not prohibited for grant of

patent
– whether the invention meets the criteria of patentability
 Issue of FER

• A period of 1 to 3 months is available to Examiner to

submit the report to the Controller
• 1 month’s time available to Controller to vet the
Examiner’s report
• First Examination Report (FER) containing list of the
objections is issued within 6 months from the date of
filing of request
 Response from the Applicant

• 12 months’ time, from the date of issue of FER, is

available to the applicant to meet the objections

• If objections are met, grant of patent is approved

by the Controller – within a period of 1 month
 Pre-grant Opposition

• After publication, an opposition can be filed

within a period of 6 months

• Opportunity of hearing the opponent is also

available
Examination of Pre-grant Opposition

• Opposition (documents) is sent to the applicant

• A period of 3 months is allowed for receipt of

response
 Consideration of
Pre-grant Opposition
• After examining the opposition and the submissions made during
the hearing, Controller may
– Either reject the opposition and grant the patent

– Or accept the opposition and modify/reject the patent

application
• This is to be done within a period of 1 month from the date of
completion of opposition proceedings
 Grant of a Patent

• A certificate of patent is issued within 7 days

• Grant of patent is published in the official journal

 Renewal Fee
• To be paid within 3+6 months from date of recording in the register
[sec 142 (4) ]
• No fee for 1st and 2nd year
• Renewal fee, on yearly basis, is required to be paid for 3rd to 20th for
keeping the patent in force
• Delay up to six months from due date permissible on payment of fee
for extension of time
• Patent lapses if renewal fee is not paid within the prescribed period
 Apple sued HTC over iPhone patents
• Apple sued phone maker HTC and has filed a
complaint with the U.S. International Trade
Commission, alleging that the Taiwanese
company is infringing 20 Apple patents related
to the iPhone
• Steve Jobs, Apple's CEO, said in a statement "We
think competition is healthy, but competitors
should create their own original technology, not
steal ours."
 Rights of a patentee
1. Right to exploit the patent.
 The patentee has a right to prevent 3rd parties, from exploiting the patented invention.

2. Right to grant license.

 The patentee has a power to assign rights or grant license.

3. Right to surrender.
 The patentee is given the right to surrender the patent by giving notice in prescribed
manner to the controller.

4. Right to sue for infringement.

 A patentee is given the right to institute proceeding for infringement of the patent in
a district court .
 Patents -Infringement
Infringement:
 Use by a person other than the patentee or his assignee or licensee
would be an infringement of the patent.
 Civil remedy is filing of a suit in a court of competent jurisdiction.
 The plaintiff on satisfying the court about the infringement would
be entitled to the following reliefs –
1) interlocutory injunction
2) damages
3) account of profits
 When the subject-matter of a patent is a process for obtaining a
product, the onus is on the defendant to prove that the process
used by him is different from the patented process.
• A suit as any grievance relating to infringement of
patent may be instituted in a court not inferior to a
District court. But where a counter claim for
revocation of the patent is made by the defendant,
the suit along with counter claim, shall be
transferred to the High Court.
• The reliefs which a court may grant include an
injunction and either damages or account of
profits. The court may also order that the
infringing goods shall be seized, forfeited or
destroyed.
• Any act of making, constructing, using or selling a
patented invention solely for uses reasonably
related to the development and submission of
information required under any law; and
importation of patented products by any person
from a person who is duly authorized by the
patentee to sell or distribute the product; shall not
be construed as an infringement of patent rights.
Principles applicable to working of patented
inventions:
Patented inventions are worked in India on a
commercial scale and to the fullest extent without
undue delay.
The protection and enforcement of patent rights
contribute to the promotion of technological
innovation and to the transfer and dissemination
of technology to the mutual advantage of
producers and users and in a manner conducive to
social and economic welfare.