Unit 5-IPR

Introduction IP and IPR
• Intellectual Property (IP) - is a property created by

a person / persons using his / her own intellect
for ultimate use in commerce and which is not
available in the public domain.
• Examples of IP are, an invention relating to a

product or process, a new design of an article, a
literary or artistic work and a trademark (a word,
a symbol and / or a logo, etc.),
November 18, 2022 1

Intellectual Property Right (IPR)
Intellectual Property Right (IPR) is the statutory

right granted by the Government, to applicant(s)
or owner(s) of an intellectual property (IP) to
exclude others from exploiting the IP commercially
for a given period of time, in lieu of the discloser of
his/her IP in an IPR application.
November 18, 2022 2

Importance of IPRs in general
Why should an IP be protected?
• IP is an assets and can be exploited by the owner

for commercial gains
• IP owner can stop others from manufacturing and

selling products and services which are dully
protected by the IP owner
• IP owner can sell and/or license the IP for

commercial gains
November 18, 2022 3
Importance of IPRs (cont...)
•IP can be used to establish the goodwill and
brand value in the market.
•Inventor, creator or author of an IP can

mention about the IP in his/her resumes and
thus show their competence
•IPR certificate establishes legal and valid

ownership about an intellectual property
November 18, 2022 4

IPRs are protected in accordance with the provisions
of the corresponding legislations of a country.
In India, IPRs can be protected and monopolized
under the provisions of different Acts, mainly, for
example,
1- The Patent Act, 1970,

2- The Designs Act, 2000,
3- The Trade Mark Act, 1999,
4- The Geographical Indications of Goods Act, 1999,
5- The Copyright Act, 1957,
6- Protection of Integrated Circuits Layout and
Designs Act, 2000,
7- Protection of Plant Varieties and Farmers Rights
Act, 2001, and also Trade Secret
November 18, 2022 5
Kinds of IPRs
Patent
Trade Mark
Design
Geographical Indications (GI)
Copyright
All kinds of IPRs are territorial rights

November 18, 2022 6
Kinds of IPRs (cont...)
Patent (to protect technologies - The Patent Act)
Trade Mark (to protect words, signs, logos, labels –The

Trade Mark Act)
Design (to protect outer ornamental configuration –The

Designs Act)
Geographical Indications (GI) (to protect region specific

product –The Geographical Indications of Goods Act)
Copyright (to protect literary and artistic work –The

Copyright Act)
November 18, 2022 7

Patent
Patent is an exclusive monopoly right granted to an
applicant/patentee by the Govt., for a limited period to
practice the invention (manufacture, use and sale), in lieu
of the information (best known method) disclosed to the
Govt. with regard to an invention.
The Patent confers rights to the patentee to exploit the

patent for commercial gains and also to stop others from
manufacturing, and selling the patented products/process.
November 18, 2022 8

Patent (cont...)
• An invention in general means a new discovery,
relating to a product (machine) or process, even
to an existing module or idea.
• An invention according to Indian Patent Act

[Section 2(1)(j)] means:
i- a new product or process;
ii- involving an inventive step; and
iii- Capable of industrial application.
November 18, 2022 9

Patent (cont...)
Therefore any:
- product (e.g. device, machine, composition)
- process (used for preparing a tangible
product), is patentable;
Only if the product or process is:

- new (novel)
- involving an inventive step (non-obvious)
and is
- of industrial use (useful)
November 18, 2022 10

Patent (cont...)

Procedure for grant of a patent
Filing a patent application along with the required documents,
 Publication of the patent application (18 months
publication),
 Filing a request for examination,
 Filing a pre-grant opposition by an interested person,
 Examination of the patent application based on the turn
of the request for examination,
 Filing reply to comply with the requirements of the
objections raised by the patent office,

Procedure for grant of a patent (cont…)
 Attending hearing, if any,
 Acceptance or rejection of the patent application,

 Publication grant of the patent application,
 Filing a post-grant opposition by an interested
person,
 Grant of patent

Documents required to file a patent application
Application form (Form 1),

Specification (Form 2),
Drawings (if needed to describe the invention clearly and
sufficiently),
Undertaking under section 8 (form 3),
Declaration of inventorship (Form 5, in case complete
specification is filed after provisional),
Document to claim priority (in case of a conventional
application), and
Power of Authority (if the patent application is filed
through a patent attorney)
Patent specification
There are two types
1. Provisional Specification -comprises mainly little
description regarding the invention
2. Complete specification –comprises
i. Description and ii. Claims
(i) Description(technology section)

- Describes the BEST MODE, in detail, which the
inventor considers for practicing the invention
- Enables others skilled in the art to make and use the
invention without undue experimentation

(ii) Claims (legal section)
- KEY to all patents
- Protects legal rights of the patentee
- Defines the legal boundaries of the granted

exclusive rights, i.e., determines exactly what the
inventor is entitled to exploit commercially and
exclude others from practicing (making, using,
selling, importing and/or offering for sale)
inventor’s invention.

Who can apply for a patent?
A true and first inventor who holds the

rightful ownership in the invention
A person who is an assignee/legal

representative of the first and true inventor
A legal heir of the first and true inventor in

case of demise of the true and first inventor.

Where to file a patent application?
Patent Office Delhi -The States of Haryana, Himachal

Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar
Pradesh, Uttarakhand, National Capital Territory of
Delhi and the Union Territory of Chandigarh.
Patent Office Mumbai-The States of Gujarat,

Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the
Union Territories of Daman & Diu and Dadra & Nagar
Haveli.

Where to file a patent application?
Patent Office Chennai -The States of Andhra Pradesh,

Karnataka, Kerala, Tamil Nadu and the Union
Territories of Pondicherry and Lakshadweep.
Patent Office Kolkata -Rest of India (States of Bihar,

Orissa, West Bengal, Sikkim, Assam, Meghalaya,
Manipur, Tripura, Nagaland, Arunachal Pradesh and
Union Territory of Andaman and Nicobar Islands)

Term (life) of a patent
The term of the patent according to the amended
Patent Act is 20 years from the date of patent.
Govt. fee for filing a patent application

The Government fee in India for filing a patent
application is as follows;
1. Individual -Rs.1600/-,
2. Other than individual, like MSME -Rs. 4000/-, and
3. Pvt. and / or Public Ltd. Company -Rs. 8000/-

Opposition of a patent
Section 25 of the Patent Act
a) Applicant – wrongly obtained the invention ….
b) Publication before priority date of patent application.
c) Prior claiming
d) Invention publicly known
e) No inventive step
f) No invention as per the Patent Act

Opposition of a patent (cont…)
a) Invention not described clearly and sufficiently
b) Undertaking under sec. 8, about foreign filing
c) Convention application not filed in 12 months
d) No disclosure about source or geographical

origin
e) Anticipation – traditional knowledge

Revocation of a patent
Yes, a patent can be revoked, at any time, on the

similar grounds as applicable in case of an opposition.
The revocation application is to be filed at the office of

the Intellectual Property Appellate Board (IPAB)
established by the Govt. of India under the provisions
of the amended Patent Act.

What is PCT and how is a PCT application
initiated?
Patent Cooperation Treaty (PCT) is an International treaty
which provides facility, to an applicant of the member
country, to file a single patent application and designate
the countries in which the applicant wants to protect the
invention. This is known as international phase of the
patent application filed under PCT.

Where can a PCT application be filed?
A PCT application can be filed by the applicant

either at the national receiving office in his/her
own country or at the office of international
Bureau (WIPO), Geneva.
The applicant can claim the date of filing as the

priority date in other countries during national
phase entry.

What is not patentable?
An invention contrary to well established
natural laws, for example perpetual motion,
gravitational force etc..
An invention contrary to laws of public health

and morality, for example, toxic drugs, food
items, drinks, etc..
Mere discovery of scientific principles or

formulations of an abstract theories or mere
discovery of any living thing or non-living
substance occurring in nature.

Mere discovery of any new property or new
use for known substance unless the efficacy of
that substance is increased or mere use of a
known process or machine
Substance obtained by mere ad mixture

resulting only in the aggregation of the
properties of the components - no new product
Mere arrangement or rearrangement of the

known devices working independently in a
known manner
A method for agriculture and horticulture
Any methods of treatment of human beings, or

animals
Plants and animals in whole or any part thereof

other than microorganism
A mathematical or business method or a computer

program per se or algorithms
A literary, dramatic, musical, artistic work, etc.

A mere scheme or rule or method of performing
mental act or method of playing game
A presentation of information
Topography or integrated circuits
An invention relating to the traditional knowledge
An invention relating to Atomic Energy (Sect. 4)

What is Copyright?
“The exclusive right given by law for a certain

term of years to an author, composer etc. (or his
assignee) to print, publish and sell copies of his
original work”
(Oxford English Dictionary)

Why Copyright?
Fair Play: Reward creative efforts. “Thou shall not steal”
Exclusive rights for limited

time → Negative right:
prevent copying/reproduction
Copyright is necessary →
encourage dissemination of
copyrighted works = public interest
Copyright in India
First Act in 1914, followed by the Copyright Act

1957.
1957 Act: adopted many English provisions,

introduced new ideas and concepts.
Copyright Act 1957 – Main Features
Valid from 21 January 1958
Created Copyright Office and Copyright Board
Introduced civil and criminal remedies against

infringement
Copyright Act 1957 – Main Features (II)
Performing rights societies’ rights (for instance,

music royalties)
Definition of categories in which copyright

actually subsists
International copyright
Definition of infringement
Copyright (Amendment) Act 1983 and 1984
Objectives
Berne and Universal Copyright Conventions 

grant of compulsory licenses by developing
countries, publication by deceased authors
1984 Act: discouraging and preventing

widespread video piracy.
Copyright (Amendment) Act 1992
Defined ambit of the Copyright Board’s powers
Introducing special rights for performers
Assignment and licenses of copyright
Rights of copyright owners

Term of Copyright
Depends on nature of work/owner of

copyright and whether the work has been
published
Most works: 60 years
Broadcast Reproduction: 25 years

The Nature of Copyright
Statute-based, no registration necessary
Copyright = intellectual property
Combines different rights (literary works: the

right to reproduce in hardback and paperback
editions, the right of translation adaptation)
Labour, Skill and Capital
“It is the product of the labour, skill and capital

of one man which must not be appropriated by
another.”
• Lord Atkinson, Macmillan v Cooper AIR 1924 PC 75)

It‘s All About the Idea: Or isn‘t It?
 Copyright in form or expression, not in idea: “There is

nothing in the notion of copyright to prevent a second
person from producing an
identical result...”
(Gregory Committee
Report, 1952, para 9)
 Copyright only in material form  principle of fixation

What Copyright Protects
Original Literary, Dramatic, Musical and

Artistic Works
Cinematograph Films
Sound Recordings
Literary Works
Novels, poems, short stories
Books on any subject
Computer programmes
Computer Databases
Song lyrics
Computer Software
Includes
Programme Manuals
Punched Cards
Magnetic Tapes/Discs
Computer printouts
Computer programmes
Trademark
The modern definition is
“it is a word, name, symbol, or device or a combination
thereof, used by a person [including a business entity],
or which a person has a bonafide intention to use, to
identify and distinguish his or her goods from those
manufactured by others and to indicate the source of
those goods.”
44
Purpose and Function of Trademark
Trademarks perform two critical functions in the

marketplace:
[1] they provide assurance that goods are of a

certain quality and consistency, and
[2] they assist consumers in making decisions about

the purchase of goods.
The main purpose of trademark is to show the

difference about the quality of goods and service
45
For example:
If a trademark such as NIKE could be

counterfeited (imitating) and used by another on
inferior merchandise (goods), there would be no
incentive for the owners of the NIKE mark to
produce high-quality shoes and to expend
money establishing consumer recognition of the
products offered under the NIKE marks.
46
TYPES OF MARKS
There are four different types of marks
1. Trademark
2. Service mark
3. Certification mark
4. Collective mark
47
Trademark and Service mark
The term trademark thus refers to some physical and
tangible good, and service mark refers to an intangible
service, in common usage the term trademark is often
used to refer to marks for both goods and service.
The key point in this legal description is that a

trademark is a visual mark that may use any
combination of letters and imagery to aid a company in
differentiating itself from other entities
48
• The purpose of a trademark is to visually represent a person,
company, or product, and trademark should be designed to
provide easy and definite recognition.
• The term mark will be used as a synonym for both trademark and
service marks.
• The federal statute ((law) an act passed by a legislative body)

governing trademark law, the U.S. Trademark Act (Lanham Act,
found at 15 U.S.C 1051 et seq.) itself states that the term mark
includes any trademark, service mark, collective mark, or
certificate mark.
49
A Certification mark
A certification mark is a word, name, symbol,
device, or combination thereof, used by one
person to certify that the goods or services of
others have certain features in regard to quality,
material, mode of manufacture, or some other
characteristic (or that the work done on the
goods or services was performed by members of
a union or other organization).
For example: Hallmark, ISO mark
50
Collective Mark
A collective mark is one used by a collective
membership organization, such as a labor union,
fraternity, or professional society, to identify that the
person displaying the mark is a member of the
organization.
Thus, the FUTURE FARMERS OF AMERICA and

AMERICAN BAR ASSOCIATION marks indicate
membership in certain organizations
51
A company may use several marks For Example: the
word: COCA-COLA, the stylized WAVE DESIGN, and
the slogan “THINGS GO BETTER WITH COKE”.
All of these marks are used on one product and all are
protected by the Coca-Cola Company.
On some occasions, companies use house marks to

establish recognition in a wide range of products or
service.
52
Geographical Indications
Geographical Indication (GI) means an indication
of goods as originating, produced, processed or
prepared in a specific geographical area or
territory of a country, where a given quality,
reputation or other characteristics of such goods
are essentially attributable to its geographical
origin.
53
Examples of GI
54
Examples of GI – (conti...)
55
Importance of GI
provides a particular indication (mark and/or
logo) to be used by the people(s) of that area
who are involved in producing a unique
product having unique properties and/or
advantages;
helps a purchaser or user of the goods to

identify the goods manufactured and/or
produced in a particular geography;
56
Importance of GI (cont ..)
helps the manufactures and/or producers of

that area to establish goodwill in the market
with regard to their goods and/or product;
owner of the GI can stop use and adoption of

the same GI, and/or deceptively similar GI to
the registered GI, by any person(s) not
authorized by the owner even of the same area
for which the GI has been registered.
57
What can be registered as a GI?
Any name, geographical or figurative

representation or any combination thereof
conveying or suggesting the geographical origin
of the goods to which it applies.
58
What is not registered as a GI?
the use of which would be contrary to any law for the

time being in force; or
which comprises or contains scandalous or obscene

matter; or
which comprises or contains any matter likely to heart

the religious sentiments of any class or section of the
citizens of India; or
which would otherwise be disentitled to protection in a

court; or
59
Who can apply for the registration of a GI?
An association of producers or an organization

or authority established by or under any law,
representing interests of the producers of the
concerned goods and desirous to register a GI in
relation to such goods, can apply for the
registration of a GI.
60
What are the particulars needed to file a GI
application?
Mainly following particulars are needed;

representations of any name, geographical or
figurative representation or any combination thereof
conveying or suggesting the geographical origin of
the goods to which it applies,
61
What is the Govt. fee to file a GI registration
application?
The Government fee to file a design

application is only Rs. 5000.00 (Five Thousand,
only).
62
Who can use a GI?
Only the person(s), who has/have been authorized by

the registered owner of the GI and particulars of whom
have been incorporated in Part B of the Register of GI at
the office of GI, can use the GI.
63
What is the life (term) of a GI?
The GI is registered for a period of 10 years,
initially and can be renewed from time to time.
Thus, a GI can be kept in force so long as it is

renewed in a timely manner every after 10
year’s interval.
64
Can a GI registration be opposed?
Yes, registration of GI can be opposed by any

person within three months from the date of
advertisement of an application for registration,
in a prescribed manner and with a prescribed
fee.
The person (opponent) has to file a notice of

opposition in writing in a prescribed manner
and with the prescribed fee.
65
Is it possible to re-register a registered GI?
Yes, a GI can be re-registered for different goods

included in different classes by the registered owner of
the GI.
Is it possible to restore a GI, if removed from the

register, due to non-payment of the renewal
fee?
Yes, a GI can be restored by filing a request ,in a

prescribed manner with the prescribed fee and in the
prescribed time period, to restore the GI.
66
What is the effect of registration of a GI?
The registration of a “GI” grants legal rights to

stop unauthorized use of the registered GI even
by the people of that geographical area.
67

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Unit 5-IPR

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Introduction IP and IPR

• Intellectual Property (IP) - is a property created by

• Examples of IP are, an invention relating to a

November 18, 2022 1

Intellectual Property Right (IPR) is the statutory

November 18, 2022 2

• IP is an assets and can be exploited by the owner

• IP owner can stop others from manufacturing and

• IP owner can sell and/or license the IP for

•Inventor, creator or author of an IP can

•IPR certificate establishes legal and valid

November 18, 2022 4

1- The Patent Act, 1970,

All kinds of IPRs are territorial rights

Trade Mark (to protect words, signs, logos, labels –The

Design (to protect outer ornamental configuration –The

Geographical Indications (GI) (to protect region specific

Copyright (to protect literary and artistic work –The

November 18, 2022 7

The Patent confers rights to the patentee to exploit the

November 18, 2022 8

• An invention according to Indian Patent Act

November 18, 2022 9

Only if the product or process is:

November 18, 2022 10

November 18, 2022 11

November 18, 2022 12

 Attending hearing, if any,

 Acceptance or rejection of the patent application,

November 18, 2022 13

Application form (Form 1),

(i) Description(technology section)

November 18, 2022 15

- Protects legal rights of the patentee

- Defines the legal boundaries of the granted

November 18, 2022 16

A true and first inventor who holds the

A person who is an assignee/legal

A legal heir of the first and true inventor in

November 18, 2022 17

Patent Office Delhi -The States of Haryana, Himachal

Patent Office Mumbai-The States of Gujarat,

November 18, 2022 18

Patent Office Chennai -The States of Andhra Pradesh,

Patent Office Kolkata -Rest of India (States of Bihar,

November 18, 2022 19

Govt. fee for filing a patent application

November 18, 2022 20

a) Applicant – wrongly obtained the invention ….

b) Publication before priority date of patent application.

d) Invention publicly known

f) No invention as per the Patent Act

November 18, 2022 21

a) Invention not described clearly and sufficiently

b) Undertaking under sec. 8, about foreign filing

c) Convention application not filed in 12 months

d) No disclosure about source or geographical

e) Anticipation – traditional knowledge

November 18, 2022 22

Yes, a patent can be revoked, at any time, on the

The revocation application is to be filed at the office of

November 18, 2022 23

November 18, 2022 24

A PCT application can be filed by the applicant