Patent system in India

O.PRASAD RAO
Deputy controller of Patents and Designs
PATENT OFFICE, CHENNAI.
 IPR Laws in India
Industrial IPR Laws administered by DIPP/ CGPDTM
Controller General of
The Patents Act, Patents, Designs and The Geographical Indications
Trademarks of Goods (Registration &
1970 Protection) Act, 1999 (GI)
(CGPDTM)

The Trade Marks Act, 1999 The Designs Act, 2000

The Semiconductor Integrated Circuits

The Copyright Act, 1957
Layout- Design Act, 2000

IPR Laws administered by other Ministries

Department of Agriculture and

Ministry of Environment and Forests
Cooperation
Biological Diversity Act, 2002 The Protection of Plant Varieties and
Farmers’ Rights Act, 2001
 Intellectual Property Offices, India

Trade Marks Geographical National Registrar

SICLDR # RGNIIPM Patent Office of
PPVFRA* Registry Indications Biodiversity
(Training Authority Copyrights
Registry
academy)
Designs Wing

Kolkata
(Head Office) Mumbai
(Head Office) Delhi
Delhi Delhi Nagpur Chennai Chennai
Kolkata

Delhi
Delhi

Chennai
Kolkata

Mumbai
Chennai

Ahmedabad
 PROPERTY

TANGIBLE INTANGIBLE

INTELLECTUAL
MOVABLE IMMOVABLE PROPERTY

e.g. table, scooter. e.g. house, land

 INTELLECTUAL PROPERTY
&

Intellectual Property Rights

Intellectual Property is that which results from the creations of
intellect in industrial, scientific, literary or artistic field.
Intellectual Property Rights are the exclusive rights granted to
the owner of the said property for its commercial exploitation subject
to the provisions of national laws and international agreements, with
a view to reward the intellectual creativity.
IPR can be assigned or licensed for financial benefits.
Industrial Designs
 Substantive conditions for registration
• The design should be aesthetic i.e., should make an eye appeal
and are judged solely by the eye.
• Only the features of shape, configuration, pattern, ornament,
composition of colour or line or a combination thereof applied
to any article whether two dimensional or three dimensional or
in both forms by any industrial process.
• The design should be new or original.
• The designs must not be dictated by functional or technical
features.
• The design should not be contrary to public order or morality
or does not contain obscene or scandalous matter.
Pharmaceutical Product

8
Textile & Jewellery

9
 Documents necessary for making application for
design registration
• Application shall be filed on prescribed form(Form1)
with prescribed fee of Rs.1000.
• Representation of the article, clearly showing all the
features of the design by different views and stating
names of the views below each view,in durable paper
shall be filed in quadruplicate.The statement of novelty
and disclaimer (if required ) in respect of mechanical
action,trade mark,word,letter, numerals and similar
design in other class shall be endorsed in each copy of
the representation sheet, which should be signed and
dated
• Power of attorney ( if necessary )
• Priority documents (if claimed under paris convention
or WTO ).
 Designs Filing fee:
• Applicant type
• Individual -------Rs.1000
• Small Firm-------Rs.2000
• Large Firm--------Rs.4000
Renewal of designs
• Individual -------Rs.2000
• Small Firm-------Rs.4000
• Large Firm-------Rs.8000
 Term of registration of a Design

• Duration is ten years from the date of

registration, but in case where claim to
priority has been allowed, then duration is
ten years from the priority date.
• This initial period is extendable by a
further period of five years on an
application made with the prescribed
fee(Rs.2000).
 TRADEMARKS

4711 (Cologne)
 SONY OLYMPUS

• A trade mark is any sign which can distinguish the goods

of one trader from those of another. Sign includes,
words, logos, pictures, or a combination of these.
•A trade mark is used as a marketing tool so that customers
can recognize the product of a particular trader.
•To register a trade mark , the mark must be:-
•distinctive, and, not deceptive, or contrary to law or
morality, and, not identical or similar to any earlier marks for
the same or similar goods.
A trademark can be a word, expression, logo, letter, number, slogan, combination
of colors, sound, smell or a hologram.

Sound

Letters

Words

Names

Number

Expression

Logo
Government fees for major Trade Mark Activities:

1.Where the applicant is an Individual / Startup/Small Enterprise --

rs.5,000 (physical) Rs.4,500 (online)
In all other cases (Note: Fee is for each class and for each mark )---
rs.10,000 (physical) rs.9,000 (online)
Form-TM-A.
2.To file a Notice of Opposition to oppose an application published

in the Trade Marks Journal (Form TM-O). Fees:Rs.2,500/-

3. For renewal of registration of a trademark under section 25 for

each class rs.10,000 (physical rs.9,000 (online) and the form is
TM-R.
 PROCEDURE
• AN APPLICATION WITH FEE
• SIGNED BY AGENT OR APPLICANT HIMSELF
• REPRESENTATION OF MARK APPLIED EITHER IN USE OR
PROPOSED TO BE USED.
• BEFORE APPLYING IT IS ALWAYS BETTER TO CARRYOUT
SEARCH IN TRADEMARK REGISTRY(WEBSITE),
• AFTER APPLICATION IS FILED, EXAMINATION OF MARK AND
EXAMINERS REPORT IS FURNISHED.
• AFTER COMPLYING WITH OBJECTIONS THE MARK WILL BE
ACCEPTED AND ADVERTISED IN THE TRADEMARK JOURNAL.
• IF NO OPPOSITIONS ARE FILED WITHIN four MONTHS, THE
MARK WILL BE REGISTERED.
• RENEWAL HAS TO BE DONE ONCE IN TEN YEARS ON
PAYMENT OF REQUISITE FEE.
Copyright
 WHAT IS COPYRIGHT ?

 A Copyright is a protection offered to the

works created by the authors of literary,
dramatic, artistic, musical works, producers of
cinematographic films and sound recordings.

 A Copyright protects the particular manner in which a work’s contents and

ideas are expressed.

 It is a bundle of rights including, rights of reproduction,

communication to the public, adaptation and translation of the work.

Ideas , Facts , Titles and Slogans

cannot be Copyrighted
Copyright protection is available to writings, music,
sculptures, paintings, lectures, choreographic
works, maps, cinematographic works, technical
drawings, translations etc. Protection also extends
to multimedia productions.
The main criterion for the protection of a work
under copyright laws is that it should be original.
Procedure for Filling Copyright Application
Filing of Applications

Diary number in 2-3 weeks

Examination of Application
in about 6 week’s time

Non-compliance of Communication of Removal of objection(s)

objection(s) objection(s)

Abandoned Compliance with objections Re-examination

within 30 days of receiving
the report

Accepted Rejected

Issue of certificate of
registration
ONLINE FILING PROCESS
• Any individual who is an author or rights
owner or assignee or legal heir can file
application for copyright of a work either by
e-filing facility or by speed post.

• With effect from August 01, 2014, the physical

Copyright Counter for filing copyright
applications has been closed in order to
popularize the online filing.
Term of Copyright - 60 years either from the death
of the Author or 60 years from the date of
publication.

Infringement of Copyright– Civil and Criminal

remedies

No copyright in an Idea, themes &

plots of historical or legendary facts

No copyright over news

• Remedies for Infringement
• •Administrative(copyright board)
• •Civil Proceedings(starts from district court)
• •Criminal remedies
• Penalties and Punishments
• •First offence –six months imprisonment and
Rs.50,000/-fine(Section 63)
• •Second offence –one year imprisonment and
Rs.1,00,000/-fine(Section 63 A)
• •Maximum –three years imprisonment and
Rs.2,00,000/-fine
Related Rights
 RELATED AND MORAL RIGHTS
Related rights also termed as neighboring
rights are the rights of persons or
organizations who add substantial creative,
technical or organizational skill in the process
of bringing a work available to public.
Protection is available to performing artists,
producers of phonograms and broadcasting
organizations from unauthorized exploitation of their
rights resulted from the financial and organizational
resources and technical skills which they add to the
copyright protected work.
 GEOGRAPHICAL
INDICATIONS

Paithani weaving
 Definition
• An indication which identifies goods as
agricultural, natural or manufactured.

• Originating or manufactured in the territory of a

country or a region or locality

• Where a given quality, reputation or other

characteristic of such goods is essentially
attributable to its Geographical origin.
• - Section 2(i) (e) of G.I. Act 1999.
The Goods includes for Registration
• Agricultural
• Natural
• Goods of Handicrafts
• Industry
• Manufactured goods
• Food Stuffs
- Section (2) (1) (f) of G.I. Act 1999.

• Almost all kinds of goods are covered

• Manufactured goods include handicrafts and handlooms
 Who Can apply for Registration?
Any association of persons or producers or any
organization or authority established by or under law
representing the interest of producers of the concerned
goods
How to Apply?
 Application for registration of a GI should be in the
prescribed form (GI-1A to 1D). Accompanied by the
prescribed fee – Rs.5000/- Per Class.
 It must be made in triplicate along with three copies of a
statement of case accompanied by five copies of Additional
Representations, Three certified copies of Map, documents
in support of origin.
 PLANT BREEDER’S RIGHT
 This is the exclusive right of the breeder to
authorize sale, multiplication, importing of
the plant variety which he develops.
 The purpose of granting plant breeder’s
protection is to ensure the recovery of cost of
investments in terms of skill, labor, material
resources etc. which they put together in
breeding new varieties.
 A new plant variety is eligible for protection if
it is new, distinct, uniform, stable and
have a satisfactory denomination.
Integrated Circuit
Layout Designs
 What is Layout Design?

Layout of transistors and other circuit elements,

including lead wires connecting such elements
and expressed in any manner in a
semiconductor integrated circuit (IC).
 IP Evolution
INTELLECT – PROPERTY – RIGHT
Idea  Expression  COPYRIGHT
Idea  Innovation  Invention  PATENT
Idea  Quality + Identity  TRADEMARK
Idea  Appearance  DESIGN
Idea  Keep Confidential  TRADE SECRETS
No Disclosure

35
 PATENT
A PROMINENT
INTELLECTUAL
PROPERTY RIGHT
PATENT IS AN AWARD FOR THE INVENTOR
AND REWARD FOR THE INVESTOR
 PATENT

1) A Grant of Exclusive Legal right by

the Government to the applicant
2) For the Disclosed Invention
3) For a limited period
4) Which is enforced only in the
Country where patent is granted
 What is a Patent?


Inventor or
Assignee
$


Satisfies
•Novelty
Techno-Legal •Inventive Step
Document •Industrial Applicability
 Patent system

Patentee’s interest Public interest

Patent Protection Disclosure of the

to the inventor invention to IPO
 Explanation 2
• Limited period of time- 20 years from the date
of application.
• After expiry- patent comes into public domain.
• Condition: Full disclosure of the invention by
the applicant.
• Must teach others how to make and use the
invention
• Must disclose the best way of making and
using the invention.
 Geographic reach?
• Patent rights are limited territorially.

 An Indian patent is limited to

territory of India.

 An Indian patent cannot be enforced

outside India.
 Field of Invention
Invention can take place in ANY field,
Electronics
Computer applications
Communications
Chemistry
Biotechnology
Nanotechnology
Ayurveda & Siddha

Invention can occur from “Safety pin to Satellite”

 OBJECTIVES OF GRANTING PATENT
• As a monetary reward for revealing
technological innovation
• To provide improved technology at affordable
cost to public with return of investments made
for the development
• To promote the ‘invent around’ concept on an
article.
• To facilitate technical advancement and
economic growth to a country resulting in
cheaper and better products and high life
standards.
• To encourage the commercial exploitation of the
invention to its fullest extent.
 ADVANTAGES OF PATENT
• Avoids Duplication of Research
• Keeps Abreast With Latest Development In
Different Fields of Technology
• Helps Industry To Improve Existing
Technology To Produce Cheaper & Better
Product
• Serves As An Indicator Of Achievements
In R&D Institutions And Ability of Individual
Researcher.
 PRECAUTIONS AND STEPS FOR APPLICANTS BEFORE
APPLYING PATENT

• DON’T USE INVENTION IN PUBLIC FOR COMMERCIAL USE

BEFORE GRANT OF PATENT
• NO OBJECTION FOR R&D AND EXPERIMENTAL WORKS
• ADVISABLE – TO FILE AS SOON AS IDEA GETS A SHAPE
• ONCE IDEA STRIKES APPLY WITH PROVISIONAL
SPECIFICATION - WITHIN 12 MONTHS FILE COMPLETE
SPECIFICATION- MAINTAIN PRIORITY DATE
• CONDUCT NOVELTY SEARCH - CONFIRM – INVENTION
 Can I file abroad?
• No person resident in India can first file his application
outside India.

• There are two options to file outside India by Indian

residents:

– file the application for patent first in India and wait

for six weeks and thereafter file the application
outside India;
or
– obtain prior permission for filing an application to
patent first outside India.
 Patent Applications

1. Ordinary application
(i) Provisional specification
(ii) Complete specification
2.Convention application
3. PCT International Phase Application
4. PCT National Phase Application
5. Patent of Addition : Improvements / Modifications
6. Divisional Application : Separated from main application

Priority Starts with the date of filing of main application.

Term of Divisional, Addition Application: Expires with the main patent
Scope of Patentability Under
The Patents Act
 What is an Invention?

Sec.2(1)(J)
“Invention” means a new product or
process involving an inventive step and
capable of industrial application
 Patentable subject matter
Invention must
relate to a Process or Product or both
be new (Novel)
involve an inventive step
be capable of industrial application
not fall under Sections 3 and 4
 “NEW”
MEANS
Invention must not be
Published in India or elsewhere.
In prior public knowledge or prior public
use within India.
Claimed in claims in any specification in
India
 Inventive step
A feature of an invention that
involves technical advance as compared to the
existing knowledge or
has economic significance or both and
makes the invention not obvious to a person
skilled in the art
“Would a person with ordinary skills have thought of
the alleged invention?”. If the answer is “No”, then the
invention is non-obvious.
Industrial application
means
Invention is capable
of being made or
used in any kind of
industry
WHAT ARE NOT
PATENTABLE?
 NON PATENTABLE INVENTIONS

Section 3(a)
• Frivolous inventions
• Inventions contrary to well established
natural laws
• Examples
 Merely making in one piece, articles
previously made in two or more pieces is
frivolous.
 A machine alleged to give output without
any input.
 NON PATENTABLE INVENTIONS

Section 3(b)
Commercial exploitation or primary use
of inventions, which could be
Contrary to
public order or
Morality
Examples
– Device or method for committing theft /
burglary.
– Human cloning
 NON PATENTABLE INVENTIONS
Section 3(b) contd…
Or which
Causes serious Prejudice to
 health
 human, animal, plant life or
 to the environment
Examples
 Method or device for adulteration of food.
 Method or device for mass destruction of
plants or animals.
 NON PATENTABLE INVENTIONS
Section 3 ( c )
• Mere Discovery of a Scientific Principle or
• formulation of an Abstract Theory or
• discovery of any living thing or
• discovery of non–living substance occurring in
nature

Examples
Newton’s law.
Darwin’s theory.
Discovery of an animal.
Discovery of natural gas or a mineral.
 NON PATENTABLE INVENTIONS

Section 3 ( d )
The mere discovery of a new form of a known
substance which does not result in the
enhancement of the known efficacy of that
substance
or the mere discovery of any new property or
new use for a known substance
or of the mere use of a known process, machine
or apparatus unless such known process results
in a new product or employs at least one new
reactant.
 NON PATENTABLE INVENTIONS

II. New use for a known substance is also not

patentable; it means 2nd or 3rd use for a known
substance cannot be allowed.
III. Mere use of a known process, machine or
apparatus is not patentable unless such known
process results in a new product or employs at
least one new reactant.
e.g: Use of a food-packing machine for packing
talcum powder.
 NON PATENTABLE INVENTIONS
Section 3(e)
Substance obtained by mere admixture resulting only in
the aggregation of the properties of the components thereof or a
process for producing such substance

Examples
 Combiflam [Paracetamol (Antipyretic) + Brufen (analgesic)]
 Solution of sugar and color additives in water to form a soft
drink
However,
A mixture resulting into synergistic properties of
mixture of ingredients however, may be patentable -
Soap, Detergents, lubricants etc
NON PATENTABLE INVENTIONS
Section 3 ( f )
Mere arrangement or re-arrangement or
duplication of known devices, each
functioning independently of one
another in a known way
Examples
A Bucket fitted with torch,
 An Umbrella with fan
NON PATENTABLE INVENTIONS
Section 3(h)
Method of Agriculture or Horticulture
Examples
 Cultivation of algae , mushrooms
Preparation of an improved soil

However,
Agricultural Equipments are patentable
NON PATENTABLE INVENTIONS
Section 3(i)
Any process for medicinal, surgical, curative, prophylactic,
diagnostic, therapeutic or other treatment of human beings or
a similar treatment of animals to render them free of disease
or to increase their economic value or that of their products

Examples
 Removal of cancer tumor
 Surgical processes
 Processes relating to therapy
 Method of vaccination,
 Blood transfusion
NON PATENTABLE INVENTIONS

Section 3(j)
Plants & animals in whole or any part
thereof other than micro- organisms, but
including seeds, varieties and species and
essentially biological process for
production or propagation of plants &
animals
NON PATENTABLE INVENTIONS
Section 3(k)
* mathematical method or
* business method or
* algorithms or
* computer programme per se

Examples
– Computer program by itself or as a record on a
carrier
However
– New calculating machine
– combination of hardware and software
is patentable
NON PATENTABLE INVENTIONS
Section 3(l)
A literary, dramatic, musical or artistic
work or any other aesthetic creation
including cinematographic work and
television productions
These fall under copyright protection
NON PATENTABLE INVENTIONS

Section 3(m)
A mere scheme or rule or method of performing mental act or
method of playing game
Examples
•Scheme for learning a language
•Method for solving a crossword puzzle,
•Method of learning a language
•Method of teaching /learning
However,
•Novel apparatus for playing game is patentable.
 NON PATENTABLE INVENTIONS
Section 3 (n)
Presentation of information
Examples
 Any manner or method of expressing
information whether by
spoken words
Visual display
symbols
diagrams
Information recorded on a medium.
NON PATENTABLE INVENTIONS
Section 3 (o)
Topography(layout) of
integrated circuits.
Examples
3D configuration of electronic
circuits.
NON PATENTABLE INVENTIONS
Section 3 (p)

Traditional Knowledge or an aggregation

or duplication of known properties of
traditionally known component or
components

Examples
-Wound healing property of Turmeric.
-Insecticidal properties of neem.
 Non Patentable inventions
Section 4
Inventions falling within Section 20(1) of the
Atomic Energy Act, 1962 are not patentable
Effect
Inventions relating to compounds of Uranium, Beryllium,
Thorium, Plutonium, Radium, Graphite, Lithium and more as
notified by Central Govt. from time to time.
 INVENTIONS RELATED TO
DEFENCE

• To be referred to Central Government

(Sec. 35).

• Secrecy directions to be periodically

reviewed (Sec 36).
 US4490935
• Spring action
• Actuated by pulling
axially
 Writing instrument with solar-powered electronic counting
and liquid crystal display

• Pen on pressing
• Connects solar cell
array with counter
• LCD connected to
counter displays
counts
 Aqueous ballpoint pen refill

• Refill with plurality of

colors
• Aqueous inks Ia and Ib
with different colors
• Tip is spiral or
horizontal
 Writing apparatus with incorporated light
2002-04-04

• Light connected to
battery – inside pen
• Same Push button for
pen and light
 Pen with a scented housing
2004-02-12

• has a grip incorporated

into the pen barrel
• Barrel with scent
coating
• is useful as a
promotional device
• Aroma of coffee
 INTELLECTUAL PROPERTY

Constructional
features

Catalogue/Booklet Name/Logos
CELL PHONE

Working
Mechanism – PATENT
Shape - DESIGN
Name - TRADE MARK
Manual - COPY RIGHT
 CAREER IN IPR

1) IPR Managers
2) Technology Transfer Experts
3) Patents Examiner/Trademark Examiner
4) Patent & trademark agents / attorneys
5) Patent search experts
 ADDRESS

PATENT OFFICE ,
Intellectual Property Rights
Building,
GST Road, Guindy,
Chennai – 600 032.
Website: http://www.ipindia.nic.in
oggu.ipo@nic.in 9444927171

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