Unit – 5

List of Questions

Q1) What do you mean by Intellectual Property?

Q2) Explain Copyright.

Q3) What are Trademarks?

Q4) Explain Patents.

Q5) Explain Patents and Designs.

Q6) What are Trade secrets?

Q7) What are the law relating to copyright in India including

historical evolution of Copyrights Act, 1957?

Q8) What is the meaning of copyright and computer programs?

Q9) What are the provisions related to Ownership of copyrights and

assignment?

Q10) What are the criteria related to infringement?

Q11) What is Internet Piracy? What are the remedies and

procedures in India?

Q12) Explain patent infringement and their related remedies.

Q13) What are the rights and obligations of Patentee?

Q14) Write short note on Patent cooperation Treaty.

Q15) What are the process of obtaining patent – application,

examination, opposition and sealing of patents?

Q16) What is Patent protection for computer programs?

Q17) What are Patentable inventions with special reference to
biotechnology products?

Q18) Explain Registration of assignments, transmissions, etc.

under Section 69.

Q19) Explain Register of patents and particulars to be entered

therein under section 67.

Q20) What are Revocation of patents under section 64?

Q21) Explain the Procedure for disposal of applications for

restoration of lapsed patents (Section 61).

Q22) Explain the Law relating to Patents under Patents Act, 1970
including Concept and historical perspective of patents law in
India.

Law Relating to Intellectual Property

Q1) What do you mean by Intellectual Property?

A1) Intellectual property (IP) rights are legal and institutional devices to
protect creations of the mind such as inventions, works of art and
literature, and designs. Intellectual property right is the legally
enforceable power to exclude others from using the information created
or to set the terms on which it can be used. The objective of the
agreement on TRIPS is to give adequate and effective protection to
the intellectual property rights to reward creativity and inventiveness.
TRIPS sets out minimum protection to be given to each category of
intellectual property in the national laws of each WTO member. It lays
down procedures and remedies to be provided by each country for
intellectual rights enforcement. The agreement on TRIPS lays down
minimum standards of protection that countries must provide for
intellectual property rights. One of the other important features of the
agreement is that it also requires countries to ensure effective
enforcement of these rights. Its rules apply to:

 Copyright and related rights;

 Trademarks;

 Patents;

 Geographical indications;

 Industrial designs;

 Layout designs of integrated circuits; and

 Undisclosed information.

Q2) Explain Copyright.

A2) Copyright does not protect ideas. Rather, it only covers “tangible”
forms of creations and original work–for example, art, music,
architectural drawings, or even software codes. The copyright owner
has the exclusive right to sell, publish, and/or reproduce any literary,
musical, dramatic, artistic, or architectural work created by the author.
Such classification of copyright is discussed below-

Figure: Types of work eligible for copyright

1. Literary Works

They are not limited to works of literature like plays, novels or poems
and instead include all forms of written documents. Works like technical
books, scripts, research work, computer programs or database, thesis
also form a part of the literary work. For example – Madeline and the
Wedding is a copyrighted script of the animated show Madeline Series.

b. Dramatic Works

They are similar to literary works but include a piece of recitation.

Works like choreography, the arrangement of play, scenic arrangement
come under Dramatic type of copyright works.

c. Artistic Works

Copyright protection covers works of art. These include paintings,

sculptures, graphics, drawings, maps, charts, photographs, caricatures
and cartoons. For example – Tom and Jerry are famous copyrighted
cartoon characters.

d. Musical Works

They can be protected in two different ways. The lyrics of a song fall
under literary work while the music tune (notation) can be protected
under musical works. They need to be submitted in a written format.

e. Sound Recordings

Both non-musical and musical sound recording can be protected by

copyright, regardless of the medium of storage. They include recorded
speech, podcasts, interviews, soundtracks, speeches. All sorts of music
created automatically falls under copyright protection.

f. Movies

A cinematographic work is a combination of both video films and sound

recording. Any work recorded with moving visuals or images, with or
without a sound recording is considered a cinematographic film. For
example – Computer Games, Feature Films or Animation Movies.

Q3) What are Trademarks?

A3) Trademarks are another familiar type of intellectual property rights

protection. A trademark is a distinctive sign which allows consumers to
easily identify the particular goods or services that a company provides.
Some examples include McDonald’s golden arch, the Facebook logo,
and so on. A trademark can come in the form of text, a phrase, symbol,
sound, smell, and/or colour scheme. Unlike patents, a trademark can
protect a set or class of products or services, instead of just one product
or process.

The Trademarks Act, 1999, allows the registration of various types of

trademarks such as word marks, service marks, collective marks,
certification marks, series marks logos/symbols and many other. Such
types are-

Figure: Types of trade mark

a. Word Marks

Word Marks are the most common types of trademarks that are
registered in India. These refer to any marks that are used to identify the
products and services of a trading company or service-providing
company. If the name of your product or service is text- based (contains
text only) it will be registered under Word Marks. For Example - The
word Nestle® is a registered as a Word-Mark.

b. Service Marks

Service Marks represent the service which a company or business deals

in. They distinguish different services available in the market and is filed
under trademark classes 35-45. For example - FedEx is a registered
courier delivery service provider.

c. Logos and Symbols

A logo is a printed/painted figure/design/character and do not consist

of any letters/words/numerals. For word marks that are also used as a
logo, the trademark needs to be registered both as a word mark and a
device mark. In India, the registration for both these aspects can be
made in a single application. For example - Apple has a registered logo
which is used on each of their products.

d. Shape of Goods

The shape of goods is categorized in Trade Dress (appearance of a

product) wherein, other than a logo or label a product can also be
distinguished based on its packaging. For example - The bottle of Coca-
Cola is distinguished from other brands on the basis of its bottle's shape.
e. Series Marks

Series marks are trademarks which have a common syllable, prefix or

suffix, thus denoting as a family of marks sharing a 'common name.' They
should differ only as to matters of non-distinctive characters (goods,
price, quality or size). For example - McDonald's have a series of 'Mc'
registered as word mark which represents their different product range
such as Mc Chicken, Mc Veggie etc.

f. Collective Trademarks

These marks are linked with a group of people and not one single
product or service. These trademarks are primarily owned by an
organization, institutes or any association. They can be used by
members of the organization to represent them as one the part. For
Example - A chartered accountant can use the “CA" device as he is a
registered member of the Institute of Chartered Accountants.

g. Certification Mark

The certification mark is created to show a specific quality standard that

the company has met. This means that the public will be aware that the
trader's goods or services are certified as it has met a particular
standard, as defined by the certifying body that owns the certification
mark. Certification marks are used to define "Standard" of goods and
services. For Example - FSSAI - Certification for the quality of packaged
food products.

h. Geographical Indicators

A geographical indication is used on products to show the unique

nature, reputation and quality the products possess based on the place
of origin. The Geographical Indicators are awarded by the GI Registry
and is granted to natural, agricultural, manufactured and handicraft
products that come from a specific geographical origin. For Example -
Assam Tea is a GI under the Intellectual Property Rights.

Q4) Explain Patents.

A4) A patent is used to prevent an invention from being created, sold, or

used by another party without permission. Patents are the most common
type of intellectual property rights that come to people’s minds when
they think of intellectual property rights protection. A Patent Owner has
every right to commercialize his/her/its patent, including buying and
selling the patent or granting a license to the invention to any third party
under mutually agreed terms.

There are three different categories that patents can fall under:

a) Utility:

A utility patent protects the creation of a new or improved product,

process, composition of matter, or machine that is useful.

b) Design:

A design patent protects the ornamental design on a useful item.

c) Plant:

A plant patent protects new kinds of plants produced by cuttings or

other nonsexual means.

For example,

 Pen with scanner

With a machine as small as a pen, you can transfer text from paper
directly into a computer. Christer Fåhraeus invented the C-pen.

 Steel kidneys
After receiving a grant from the state in 1946, Nils Alwall, a doctor in
Lund, began developing a dialysis machine for people suffering from
kidney disease. Just over twenty years later, his inventions started to be
mass produced.

Q5) Explain Patents and Designs.

A5) A design patent is a form of legal protection of the unique visual

qualities of a manufactured item. A design patent may be granted if the
product has a distinct configuration, distinct surface ornamentation or
both. In other words, a design patent provides protection for the
ornamental design of something that has a practical utility.

In the United States, that means an item that is substantially similar to

something that has the protection of a design patent may not be made,
copied, used or imported into the country. In other countries, a
registered design may act as an alternative to a design patent. In
certain European countries, patent protection for designs may be
obtained for a fee and by meeting basic registration requirements.

How a Design Patent Works

An item or object that is protected by a design patent carries broad

protection from copyright infringement. A design that was not intended
to be a copy and which was devised independently from an existing,
design patent-protected item may still infringe upon that design patent.

In some countries, such as the U.S., Canada, China, Japan, and South
Africa, applications for design patents are kept secret until they are
granted. In Japan, secrecy can be extended to three years after
registration is granted. The first U.S. Design patent was awarded in 1842
for printing typefaces and border (fonts).
Design Patent Examples

Some examples of design patents include ornamental designs on

jewellery, automobiles or furniture, as well as packaging, fonts
and computer icons (such as emojis). Some famous design patent
objects include the original curvy Coca-Cola bottle (1915) and the
Statue of Liberty (1879).

When a company’s product design has substantial cachet, a design

patent solidifies its competitive advantage by penalizing other firms that
try to develop similar-looking items. For example, Apple has been
awarded damages reportedly totalling more than $900 million from
Samsung, which violated its iPhone design patents.

Q6) What are Trade secrets?

A6) Trade secrets are the secrets of a business. They are proprietary
systems, formulas, strategies, or other information that is confidential
and is not meant for unauthorized commercial use by others. This is a
critical form of protection that can help businesses to gain a competitive
advantage. Although intellectual property rights protection may seem to
provide a minimum amount of protection, when they are utilized wisely,
they can maximize the benefit and value of a creation and enable world-
changing technology to be developed, protected, and monetized. For
example, Coca Cola Formula, KFC Secret Spice –Mix, McDonald’s Big
Mac sauce, Google search algorithm etc.
Trade secrets in India are generally governed by Article 39 of the
TRIPS Agreement which lays down 3 essential conditions.

Figure: Essential of trade secret

a. Secret
The information must be secret which is not generally known amongst,
or readily accessible to, circles that normally deal with the kind of
information in question. For example, KFC Secret Spice –Mix.

b. Commercial Value

This information must have some commercial value attached to it. The
KFC products have commercial value in the market.

c. Reasonable efforts by the rightful holder to keep its secrecy

The rightful holder of the trade secret should have taken reasonable
efforts to keep it secret.

Q7) What are the law relating to copyright in India including

historical evolution of Copyrights Act, 1957?

A7) Pre-Independence Copyright law in India

The Copyright Law of India was enacted by the British colony and like
most of the acts of that time; it was an imitation of the English law.

The first copyright act of India was enacted in 1847, during the regime of
East India Company. As per the act, the term of copyright was either, for
the lifetime of author plus 7 years or 42 years. The government had the
power to grant the publishing license after the death of the author if the
owner of the copyright refused permission. All suits and infringement
related to copyright came under the jurisdiction of the highest local civil
court. The act was replaced by the copyright act of 1914.

The act of 1914 was the first 'modern' copyright law of India. It was the
first law to include all works of art and literature under the ambit of
copyright. It was a replica of the English law of 1911. It was done by the
British to ease the passage of literature over colonial subcontinent.

Post-Independence Copyright law in India

The Copyright Act of 1957 came into force on the 21st of January, 1958
replacing the 1911 act. The act besides amending the copyright law also
introduced milestone changes such as provisions for setting up
copyright office under the control of Registrar of copyright for
registration of books and other works of art. It also established a
copyright board to deal with the disputes relating to copyright.

Q8) What is the meaning of copyright and computer programs?

A8) Copyright does not protect ideas. Rather, it only covers “tangible”
forms of creations and original work–for example, art, music,
architectural drawings, or even software codes. The copyright owner
has the exclusive right to sell, publish, and/or reproduce any literary,
musical, dramatic, artistic, or architectural work created by the author.

According to section 14 of the copyright Act, “copyright” means the

exclusive right subject to the provisions of this Act, to do or authorise the
doing of any of the following acts in respect of a work or any substantial
part thereof, namely: —

(a) in the case of a literary, dramatic or musical work, not being a

computer programme, —

(i) to reproduce the work in any material form including the

storing of it in any medium by electronic means;

(ii) to issue copies of the work to the public not being copies
already in circulation;

(iii) to perform the work in public, or communicate it to the public;

(iv) to make any cinematograph film or sound recording in respect of
the work;

(iv) to make any translation of the work;

(v) to make any adaptation of the work;

(vi) to do, in relation to a translation or an adaptation of the work,
any of the acts specified in relation to the work in sub-clauses (i) to (vi);

(b) in the case of a computer programme, —

(i) to do any of the acts specified in clause (a);

(ii) to sell or give on commercial rental or offer for sale or for

commercial rental any copy of the computer programme: Provided that
such commercial rental does not apply in respect of computer
programmes where the programme itself is not the essential object of
the rental.

(c) in the case of an artistic work, —

(i) to reproduce the work in any material form including—

(A) the storing of it in any medium by electronic or other means; or

(B) depiction in three-dimensions of a two-dimensional work; or

(C) depiction in two-dimensions of a three-dimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in
circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to adaptation of the work any of the acts specified in

relation to the work in sub-clauses (i) to (iv);

(d) in the case of a cinematograph film, —

(i) to make a copy of the film, including—

(A) a photograph of any image forming part thereof; or

(B) storing of it in any medium by electronic or other means;

(ii) to sell or give on commercial rental or offer for sale or for such
rental, any copy of the film;

(iii) to communicate the film to the public;

(e) in the case of a sound recording, —

(i) to make any other sound recording embodying it including storing of

it in any medium by electronic or other means;

(ii) to sell or give on commercial rental or offer for sale or for such
rental, any copy of the sound recording;

(iii) to communicate the sound recording to the public

Computer programs

Section 2 (ffc) “computer programme” means a set of instructions

expressed in words, codes, schemes or in any other form, including a
machine readable medium, capable of causing a computer to perform a
particular task or achieve a particular result;

Q9) What are the provisions related to Ownership of copyrights and

assignment?

A9) The provisions related to ownership of copyright and assignments

are discussed below-

First owner of copyright (Section 17)

Subject to the provisions of this Act, the author of a work shall be the first
owner of the copyright therein: Provided that—

(a) in the case of a literary, dramatic or artistic work made by the

author in the course of his employment by the proprietor of a
newspaper, magazine or similar periodical under a contract of service
or apprenticeship, for the purpose of publication in a newspaper,
magazine or similar periodical, the said proprietor shall, in the absence
of any agreement to the contrary, be the first owner of the copyright in
the work in so far as the copyright relates to the publication of the work
in any newspaper, magazine or similar periodical, or to the
reproduction of the work for the purpose of its being so published, but
in all other respects the author shall be the first owner of the copyright in
the work;

(b) subject to the provisions of clause (a), in the case of a photograph

taken, or a painting or portrait drawn, or an engraving or a
cinematograph film made, for valuable consideration at the instance of
any person, such person shall, in the absence of any agreement to the
contrary, be the first owner of the copyright therein;

(c) in the case of a work made in the course of the author’s employment
under a contract of service or apprenticeship, to which clause (a) or
clause (b) does not apply, the employer shall, in the absence of any
agreement to the contrary, be the first owner of the copyright therein;

(d) in the case of a Government work, Government shall, in the

absence of any agreement to the contrary, be the first owner of the
copyright therein;

(e) in the case of a work to which the provisions of section 41 apply, the
international organization concerned shall be the first owner of the
copyright therein.

Assignment of copyright (Section 18)

(1) The owner of the copyright in an existing work or the prospective

owner of the copyright in a future work may assign to any person the
copyright either wholly or partially and either generally or subject to
limitations and either for the whole term of the copyright or any part
thereof: Provided that in the case of the assignment of copyright in any
future work, the assignment shall take effect only when the work comes
into existence.

Provided further that no such assignment shall be applied to any

medium or mode of exploitation of the work which did not exist or was
not in commercial use at the time when the assignment was made, unless
the assignment specifically referred to such medium or mode of
exploitation of the work:

Provided also that the author of the literary or musical work included in
a cinematograph film shall not assign or waive the right to receive
royalties to be shared on an equal basis with the assignee of copyright
for the utilization of such work in any form other than for the
communication to the public of the work along with the cinematograph
film in a cinema hall, except to the legal heirs of the authors or to a
copyright society for collection and distribution and any agreement to
contrary shall be void:

Provided also that the author of the literary or musical work included in
the sound recording but not forming part of any cinematograph film
shall not assign or waive the right to receive royalties to be shared on an
equal basis with the assignee of copyright for any utilization of such
work except to the legal heirs of the authors or to a collecting society for
collection and distribution and any assignment to the contrary shall be
void.

(2) Where the assignee of a copyright becomes entitled to any right

comprised in the copyright, the assignee as respects the rights so
assigned, and the assignor as respects the rights not assigned, shall be
treated for the purposes of this Act as the owner of copyright and the
provisions of this Act shall have effect accordingly.

(3) In this section, the expression “assignee” as respects the assignment

of the copyright in any future work includes the legal representatives of
the assignee, if the assignee dies before the work comes into existence.
Mode of assignment (section 19)

(1) No assignment of the copyright in any work shall be valid unless it is

in writing signed by the assignor or by his duly authorised agent.

(2) The assignment of copyright in any work shall identify such work,
and shall specify the rights assigned and the duration and territorial
extent of such assignment.

(3) The assignment of copyright in any work shall also specify the
amount of 4 [royalty and any other consideration payable], to the author
or his legal heirs during the currency of the assignment and the
assignment shall be subject to revision, extension or termination on
terms mutually agreed upon by the parties.

(4) Where the assignee does not exercise the rights assigned to him
under any of the other sub-sections of this section within a period of one
year from the date of assignment, the assignment in respect of such
rights shall be deemed to have lapsed after the expiry of the said period
unless otherwise specified in the assignment.

(5) If the period of assignment is not stated, it shall be deemed to be five

years from the date of assignment.

(6) If the territorial extent of assignment of the rights is not specified, it

shall be presumed to extend within India.

(7) Nothing in sub-section (2) or sub-section (3) or sub-section (4) or

sub-section (5) or sub-section (6) shall be applicable to assignments
made before the coming into force of the Copyright (Amendment) Act,
1994 (38 of 1994).

(8) The assignment of copyright in any work contrary to the terms and
conditions of the rights already assigned to a copyright society in which
the author of the work is a member shall be void.

(9) No assignment of copyright in any work to make a cinematograph

film shall affect the right of the author of the work to claim an equal share
of royalties and consideration payable in case of utilisation of the work
in any form other than for the communication to the public of the work,
along with the cinematograph film in a cinema hall.

(10) No assignment of the copyright in any work to make a sound

recording which does not form part of any cinematograph film shall
affect the right of the author of the work to claim an equal share of
royalties and consideration payable for any utilization of such work in
any form.

Q10) What are the criteria related to infringement?

A10) The criteria related to infringement are discussed below-

When copyright infringed (Section 52)

Copyright in a work shall be deemed to be infringed—

(a) when any person, without a licence granted by the owner of the
copyright or the Registrar of Copyrights under this Act or in
contravention of the conditions of a licence so granted or of any
condition imposed by a competent authority under this Act—

(i) does anything, the exclusive right to do which is by this Act conferred
upon the owner of the copyright, or

(ii) permits for profit any place to be used for the communication of the
work to the public where such communication constitutes an
infringement of the copyright in the work, unless he was not aware and
had no reasonable ground for believing that such communication to the
public would be an infringement of copyright; or

(b) when any person—

(i) makes for sale or hire, or sells or lets for hire, or by way of trade
displays or offers for sale or hire, or

(ii) distributes either for the purpose of trade or to such an extent as to

affect prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or

(iv) imports into India, any infringing copies of the work:

Provided that nothing in sub-clause (iv) shall apply to the import of one
copy of any work for the private and domestic use of the importer.

Certain acts not to be infringement of copyright (Section 52)

(1) The following acts shall not constitute an infringement of copyright,

namely, —

(a) a fair dealing with any work, not being a computer programme, for
the purposes of—

(i) private or personal use, including research;

(ii) criticism or review, whether of that work or of any other work;

(iii) the reporting of current events and current affairs, including the
reporting of a lecture delivered in public.

(b) the transient or incidental storage of a work or performance purely

in the technical process of electronic transmission or communication to
the public;

(c)transient or incidental storage of a work or performance for the

purpose of providing electronic links, access or integration, where such
links, access or integration has not been expressly prohibited by the
right holder, unless the person responsible is aware or has reasonable
grounds for believing that such storage is of an infringing copy:

Provided that if the person responsible for the storage of the copy has
received a written complaint from the owner of copyright in the work,
complaining that such transient or incidental storage is an infringement,
such person responsible for the storage shall refrain from facilitating
such access for a
Period of twenty-one days or till he receives an order from the
competent court refraining from facilitation access and in case no such
order is received before the expiry of such period of twenty-one days,
he may continue to provide the facility of such access;

(d) the reproduction of any work for the purpose of a judicial

proceeding or for the purpose of a report of a judicial proceeding;

(e) the reproduction or publication of any work prepared by the

Secretariat of a Legislature or, where the legislature consists of two
Houses, by the Secretariat of either House of the Legislature, exclusively
for the use of the members of that Legislature;

(f) the reproduction of any work in a certified copy made or supplied in

accordance with any law for the time being in force;

(g) the reading or recitation in public of reasonable extracts from a

published literacy or dramatic work;

(h) the publication in a collection, mainly composed of non-copyright

matter, bona fide intended for instructional use, and so described in the
title and in any advertisement issued by or on behalf of the publisher, of
short passages from published literary or dramatic works, not
themselves published for such use in which copyright subsists:

Provided that not more than two such passages from works by the same
author are published by the same publisher during any period of five
years.

(j) the performance, in the course of the activities of an educational

institution, of a literary, dramatic or musical work by the staff and
students of the institution, or of a cinematograph film or a sound
recording if the audience is limited to such staff and students, the
parents and guardians of the students and persons connected with the
activities of the institution or the communication to such an audience of a
cinematograph film or sound recording;

(k) the causing of a recording to be heard in public by utilising it, —

(i) in an enclosed room or hall meant for the common use of residents in
any residential premises (not being a hotel or similar commercial
establishment) as part of the amenities provided exclusively or mainly
for residents therein; or

(ii) as part of the activities of a club or similar organisation which is not

established or conducted for profit;

(l) the performance of a literary, dramatic or musical work by an

amateur club or society, if the performance is given to a non-paying
audience, or for the benefit of a religious institution;

(m) the reproduction in a newspaper, magazine or other periodical of an

article on current economic, political, social or religious topics, unless
the author of such article has expressly reserved to himself the right of
such reproduction;

(n) the storing of a work in any medium by electronic means by a non-

commercial public library, for preservation if the library already
possesses a non-digital copy of the work;

(o) the making of not more than three copies of a book (including a
pamphlet, sheet of music, map, chart or plan) by or under the direction
of the person in charge of a 2 [non-commercial public library for the use
of the library if such book is not available for sale in India;

(p) the reproduction, for the purpose of research or private study or with
a view to publication, of an unpublished literary, dramatic or musical
work kept in a library, museum or other institution to which the public
has access:

Provided that where the identity of the author of any such work or, in the
case of a work of joint authorship, of any of the authors is known to the
library, museum or other institution, as the case may be, the provisions
of this clause shall apply only if such reproduction is made at a time
more than [sixty years] from the date of the death of the author or, in the
case of a work of joint authorship, from the death of the author whose
identity is known or, if the identity of more authors than one is known
from the death of such of those authors who dies last;

(q) the reproduction or publication of—

(i) any matter which has been published in any Official Gazette except
an Act of a Legislature;

(ii) any Act of a Legislature subject to the condition that such Act is
reproduced or published together with any commentary thereon or any
other original matter;

(iii) the report of any committee, commission, council, board or other

like body appointed by the Government if such report has been laid on
the Table of the Legislature, unless the reproduction or publication of
such report is prohibited by the Government;

(iv) any judgment or order of a court, tribunal or other judicial authority,

unless the reproduction or publication of such judgment or order is
prohibited by the court, the tribunal or other judicial authority, as the
case may be;

(r) the production or publication of a translation in any Indian language

of an Act of a Legislature and of any rules or orders made thereunder—

(v) if no translation of such Act or rules or orders in that language has

been previously been produced or published by the Government; or

(vi) where a translation of such Act or rules or orders in that language

has been produced or published by the Government, if the translation is
not available for sale to the public: Provided that such translation
contains a statement at a prominent place to the effect that the translation
has not been authorised or accepted as authentic by the Government.

Q11) What is Internet Piracy? What are the remedies and

procedures in India?
A11) Internet piracy is the act of downloading a file from the internet, or
by procuring an online software through a compact disc. Methods of
conducting internet piracy are websites offering free downloads of
software, auctions selling illegally obtained software or P2P servers
which transfer programs.

Internet piracy has become a huge copyright issue, in the past few
years. The unhindered growth of technology along with the increase in
cybercrimes has made internet piracy issues quite common in today’s
day and age. Here are a few reasons why internet piracy is becoming
such a huge problem-

 Easy and wide distribution using the internet

 No limits as to the number of people that a material can be

distributed to
 Difficult to distinguish between the original and the fake copies

 Hardly any cost associated with the illegal distributing

 Easy to access copyrighted material without the threat of being

raced down.

In India, the Copyright Act 1957 along with the Information Technology
Act, 2000 deal with the several facets of piracy. However, of late, there
has been an increasing need for more pieces of legislation that can help
us conclusively deal with the problem of internet piracy. With more and
more technological advancements, the need for enforcement of strong
copyright laws to deal with complex internet piracy cases has become
essential.

The main legislation for the protection of art from copyright issues is the
Copyright act of 1957. The copyright act was amended in 2012 to bring
under its umbrella the various forms of online piracy that takes place.
Section 65 A of the new copyright (amendment) act, 2012 protects the
owners of copyrighted materials in case of a breach. Section 65 A states
that “any person who circumvents an effective technological measure
applied to protect any of the rights conferred by this Act, to infringe
such rights, shall be punishable with imprisonment which may extend to
two years and shall also be liable to fine.” Such punishment is bound to
deter several cybercriminals from using or misusing the copyrighted
data. This section is meant for “protection of technological measures”
and is key to curb digital piracy.

Section 65 B of the Copyright (Amendment) Act, 2012 provides

“Protection of Rights Management Information”. The section states that
“any person, who knowingly- (1) removes or alters any rights
management information without authority, or (2) distributes, imports for
distribution broadcasts or communicates to the public, without authority,
copies of any work, or performance knowing that electronic rights
management information has been removed or altered without authority
shall be punishable with imprisonment which may extend to two years
and shall also be liable to fine.” This is essential to protect unauthorized
access and misuse of sensitive information.

Another piece of legislation that deals with digital piracy is the

Information Technology Act, 2000. Section 66 of the Information
Technology Act provides for punishment with up to 3 years of
imprisonment and fines up to Rs 2 lakhs for illegal online distribution of
copyrighted content.

A rather new measure that the Indian courts have taken to reduce the
cases of digital piracy in India is the “john doe” order”. John Doe orders
require very little information about the accused and his identity is
unknown at the time of filing of the petition. All the above-mentioned
pieces of legislation along with these new John Doe orders help block
potential threats before the release of new movies and govern the entire
digital piracy scenario in India. However, several different aspects of
digital piracy are still not dealt with, by Indian legislation. There are
several issues and challenges regarding online piracy in India that still
need a lot of work.

Q12) Explain patent infringement and their related remedies.

A12) Patent infringement proceedings can only be initiated after grant of
patent in India but may include a claim retrospectively from the date of
publication of the application for grant of the patent. Infringement of a
patent consists of the unauthorised making, importing, using, offering
for sale or selling any patented invention within the India. Under the
(Indian) Patents Act, 1970 only a civil action can be initiated in a Court of
Law. Further, a suit for infringement can be defended on various
grounds including the grounds on which a patent cannot be granted in
India and based on such defence, revocation of Patent can also be
claimed.

Burden of proof in case of suits concerning infringement (Section

104 A)

(1) In any suit for infringement of a patent, where the subject matter of
patent is a process for obtaining a product, the court may direct the
defendant to prove that the process used by him to obtain the product,
identical to the product of the patented process, is different from the
patented process if, —

(a) the subject matter of the patent is a process for obtaining a new
product; or

(b) there is a substantial likelihood that the identical product is made by

the process, and the patentee or a person deriving title or interest in the
patent from him, has been unable through reasonable efforts to
determine the process actually used:

Provided that the patentee or a person deriving title or interest in the

patent from him first proves that the product is identical to the product
directly obtained by the patented process.

(2) In considering whether a party has discharged the burden imposed

upon him by sub-section (1), the court shall not require him to disclose
any manufacturing or commercial secrets, if it appears to the court that it
would be unreasonable to do so.
Power of court to grant relief in cases of groundless threats of
infringement proceedings (Section 106)

(1) Where any person (whether entitled to or interested in a patent or an

application for patent or not) threatens any other person by circulars or
advertisements or by communications, oral or in writing addressed to
that or any other person, with proceedings for infringement of a patent,
any person aggrieved thereby may bring a suit against him praying for
the following reliefs, that is to say—

(a) a declaration to the effect that the threats are unjustifiable;

(b) an injunction against the continuance of the threats; and

(c) such damages, if any, as he has sustained thereby.

(2) Unless in such suit the defendant proves that the acts in respect of
which the proceedings were threatened constitute or, if done, would
constitute, an infringement of a patent or of rights arising from the
publication of a complete specification in respect of a claim of the
specification not shown by the plaintiff to be invalid the court may grant
to the plaintiff all or any of the reliefs prayed for.

Reliefs in suit for infringement (Section 108)

(1) The reliefs which a court may grant in any suit for infringement
include an injunction (subject to such terms, if any, as the court thinks fit)
and, at the option of the plaintiff, either damages or an account of profits.

(2) The court may also order that the goods which are found to be
infringing and materials and implements, the predominant use of which
is in the creation of infringing goods shall be seized, forfeited or
destroyed, as the court deems fit under the circumstances of the case
without payment of any compensation.
Q13) What are the rights and obligations of Patentee?

A13) The rights of patentee are-

1. Right to exploit the Patent

When the new invention is a product, the Patentee has the exclusive
rights to use, make, import, or sell for these purposes related to an
invention in India. On the other hand, when the invention of the inventor
is a procedure or process of manufacturing of any article or substance,
the right to exploit means the exclusive right exercise or use the
procedure or method in the territory of India.

2. Right to Grant License

The Patentee of a Patent is given the right to grant license or transfer

rights or enter into some arrangement for some consideration. The
assignment or license to be valid and legitimate it is required to be in
writing and should be registered with the Controller of Patent. Unless a
document of assignment of a Patent is not registered, it is not admitted
as evidence of title of the Patent, and such a rule is applicable to the
assignee, not the assignor.

3. Right to Surrender

By giving notice in the prescribed manner, the Patentee of a Patent has

the right to surrender a Patent at any time and at his/her own discretion.
The advertisement for such an offer of surrender is required to be done
in the Journal. The publication is done to give an opportunity to the
people to oppose the offer of surrender of the Patentee. This is done
when the Patentee apprehends his/her non-performance of the Patent in
the future and upon which he/she decides to surrender the Patent.

4. Right to sue for Infringement

The Patentee has the right to sue for Infringement of Patent in District
Court has the jurisdiction to try the suit.

5. Right to Use and Enjoy Patent

The Patentee of the Patent has the exclusive right to exercise, make,
utilize, convey or offer or the patented substance or article in India or to
practice or utilize or the process or techniques associated with the
invention. Such rights can be exercised either by the Patentee
himself/herself or by his/her licensees or agents.

Obligations of patentee

1. Duty to Disclose

Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose

of the Patentee. Section 8(1) of the Patent Act, 1970, tells that the
Patentee has an obligation to disclose all required data related to the
remote uses of comparative or same invention documented by him/her
or through him/her or through someone by him/her at the time of
applying or within 6 months of applying. The Patentee of a Patent is
required to record an announcement of all the listed particulars viewing
the applications and, in addition to the above, an endeavour to disclose
all the points of interest of any subsequent applications that might be
documented at the future stages. Section 8(2) of the Patent Act, 1970,
puts an obligation on the Patentee to provide all the data required by the
Controller of Patent with regards to the relating of any remote
applications at whatever point demand is made by the Controller of
Patents within a time period of 6 months of such a demand by the
Controller of Patent. The first part of the obligation of Patentee begins
when a man records an application of Patent. On the other hand, the
second part begins after a demand is made by the Controller of Patents
under the Patents Act, 1970.
2. Duty to Request for Examination

Not like other Intellectual Property Rights, the Registration process of

Registration of Patent does not accommodate any kind of programmed
examination of the grant of Patent application. In the procedure above
mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the
obligation is thrown on the Patentee himself/herself to ask for the
Controller of Patents to look at the growth or development connected for
Patent.

3. Duty to Respond to Objections

The Controller of Patent before accepting the examination request

passes it to the analyst who looks at the growth and gives a report to the
Controller of Patent known as the First Examination Report (FER). On
certain cases there may be some protests which will be brought up in
the First Examination Report, it is the right of Patentee to reply to such
opposition complaints and consent to the corresponding within a time
period of a year of the issuance of the First Examination Report (FER)
falling which the application of the Patentee will be considered to be
surrendered by the Controller of Patent.

4. Duty to clear all Objections

It is the obligation of the owner of the Patent to respond to the raised

objections as well as to clear and remove each one of the raised
objections and, in addition, certain oppositions raised against his/her
invention. In the event that the Controller of Patent has not fulfilled
he/she, it may also require a meeting also. Furthermore, it is the
obligation of the owner of Patent to go for a consultation and clear all the
objections and, in addition, oppositions, if are raised any, against the
invention of the inventor.
5. Duty to Pay Statutory Fees

The Patentee has an obligation to pay all the statutory expenses

required to get a grant of a Patent in the process of Registration without
failure generally, his/her application for the grant of Patent won’t be
managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions
recognized with payment of charges and, in addition, the consequences
for non-payment of such prescribed fees. After this process is imitated to
and the Patentee of Patent clears every one of the restrictions and
protests raised against his/her invention, if the Controller of Patent is
fulfilled, he/she will grant a Patent to the invention and publishes it in
the Journal, or generally, the Controller rejects such a Patent.

Q14) Write short note on Patent cooperation Treaty.

A14) The Patent Cooperation Treaty (PCT) makes it possible to seek

patent protection for an invention simultaneously in each of a large
number of countries by filing an "international" patent application. Such
an application may be filed by anyone who is a national or resident of a
PCT Contracting State. It may generally be filed with the national patent
office of the Contracting State of which the applicant is a national or
resident or, at the applicant's option, with the International Bureau of
WIPO in Geneva. The Patent Cooperation Treaty (PCT) provides us with
an overview of an international treaty which is duly administered by the
World Intellectual Property Organization (WIPO). The Patent
Cooperation Treaty (PCT) is an international treaty with more than 148
Contracting States. It is administered by the World Intellectual Property
Organization. (WIPO). The PCT is an international treaty which provides
a system for filing a patent application and allow us to obtain patents in
multiple countries around the world on the basis of a single patent
application. As PCT simplifies the procedure for obtaining Patent
protection in many countries, making it more efficient and economical
for: a) Users of the patent system i.e an applicant/(s) and inventors b)
National Offices. The PCT simplifies the patent filing process for
applicant and the ultimate decision to grant a patent vest exclusively
with each national or regional Patent Office. A single PCT application
has the same legal effect as a national Patent application in each of the
PCT Contracting States. Without the PCT, we would have to file a
separate patent application in each country separately and
independently. PCT save applicant time, effort and expense of
preparing separate applications in various languages and file it in
different signatory’s states. Patent Cooperation Treaty- file an
application under the PCT, directly or within the 12-month period as
provided for by the Paris Convention from the filing date of a first
application, which is valid in all Contracting States of the PCT.

Basic Features of PCT System

1. Formal examination done by one office.

2. Retrieval is carried out by one office.
3. International publication done by one office.
4. Examination and authorization finished by national office.
5. Single application with legal effect in all PCT countries.
6. 148 countries and 4 regional patent systems.

Advantages

A single application in single language filed in a single country

called the international application.
 Provides a strong basis for patenting decisions to the users.

 Harmonizes formal requirements.

 Used by the world’s major corporations, universities and research

institutions when they seek international patent protection.

 This single application has the effect of filing simultaneously in

different countries (designated countries).

 Protects applicant from certain inadvertent errors.

 Evolves to meet user needs.

Q15) What are the process of obtaining patent – application,
examination, opposition and sealing of patents?

A15) Form of application (section 7)

(1) Every application for a patent shall be for one invention only and
shall be made in the prescribed form and filed in the patent office.

(1A) Every international application under the Patent Cooperation

Treaty for a patent, as may be filed designating India shall be deemed to
be an application under this Act, if a corresponding application has also
been filed before the Controller in India.

(1B) The filing date of an application referred to in sub-section (1A) and

its complete specification processed by the patent office as designated
office or elected office shall be the international filing date accorded
under the Patent Cooperation Treaty.

(2) Where the application is made by virtue of an assignment of the right

to apply for a patent for the invention, there shall be furnished with the
application, or within such period as may be prescribed after the filing
of the application, proof of the right to make the application.

(3) Every application under this section shall state that the applicant is in
possession of the invention and shall name the person claiming to be the
true and first inventor; and where the person so claiming is not the
applicant or one of the applicants, the application shall contain a
declaration that the applicant believes the person so named to be the
true and first inventor.

(4) Every such application (not being a convention application or an

application filed under the Patent Cooperation Treaty designating India)
shall be accompanied by a provisional or a complete specification.

Examination of application (Section 12)

(1) When a request for examination has been made in respect of an
application for a patent in the prescribed manner under sub-section (1)
or sub- section (3) of section 11B, the application and specification and
other documents related thereto shall be referred at the earliest by the
Controller to an examiner for making a report to him in respect of the
following matters, namely: —

(a) whether the application and the specification and other documents
relating thereto are in accordance with the requirements of this Act and
of any rules made thereunder;

(b) whether there is any lawful ground of objection to the grant of the
patent under this Act in pursuance of the application;

(c) the result of investigations made under section 13; and

(d) any other matter which may be prescribed.

(2) The examiner to whom the application and the specification and
other documents relating thereto are referred under sub-section (1)
shall ordinarily make the report to the Controller within such period as
may be prescribed.

Opposition of patent

Patent opposition, if used appropriately, can act as an important tool to

prevent the grant of frivolous patents.

Types of patent opposition proceeding

1. Pre-grant opposition proceedings – grounds and procedure

According to Section 25(1) of the Patents Act, 1970, any person may, in
writing, oppose the grant of a patent following publication of the patent
application but before the grant of the patent based on the grounds
stated in Sections 25(1)(a) to (k). The representation for opposition is
filed in Form-7(A) along with a statement and evidence in support of the
opposition. The opponent may also request a hearing if desired. The
legislature has intentionally retained a six-month window before the
grant of a patent from the date of publication of the application,
providing third parties an opportunity to oppose the grant of a patent.
However, the representation can be filed only if a request for
examination of the patent application has already been filed. After
consideration of the representation, if the controller decides that there is
merit in the representation, he or she will give notice of the opposition to
the applicant. After receiving notice, the applicant files a reply to the
representation along with evidence, if any is available, within three
months of receipt of the notice.

A pre-grant opposition can be filed only on the following grounds:

 Wrongful obtainment of the invention (Section 25(1)(a) of the

Patents Act);
 Anticipation by prior publication (anywhere in the world) (Section

25(1)(b));
 Anticipation by prior claiming in India (Section 25(1)(c));

 Public knowledge or public use in India before the priority date

(Section 25(1)(d));
 Obviousness and lack of inventive step in the invention (Section

25(1)(e));
 Being an excluded subject matter (such as those inter
alia provided in Section 3) (Section 25(1)(f));
 Insufficiency of disclosure of the complete specification (Section

25(1)(g));
 Non-compliance of the requirement of Section 8 or furnishing

materially false information (Section 25(1)(h));

 Non-filing of the application within 12 months of filing the first

application in a convention country (Section 25(1)(i));

 Non-disclosure or wrongful mention of the source or geographical

origin of biological material (Section 25(1)(j)); and

 Anticipation with regard to traditional knowledge of any

community anywhere in the world (Section 25(1)(k)).

2. Post-grant opposition proceedings – grounds and procedure

According to Section 25(2) of the Patents Act, any person interested can
file a post-grant opposition within 12 months of the date of publication of
the grant of a patent on any of the grounds prescribed, by giving a
notice of opposition to the controller. The grounds of post-grant
opposition are identical to those for pre-grant opposition. After receipt
of the notice, the controller informs the patentee of the opposition and
orders an opposition board to examine the opposition and give the
controller its recommendation.

Grant and sealing of patent (Section 43)

(1) Where, a complete specification in pursuance of an application for a

patent has been accepted and either-

(a) the application has not been opposed under section 25 and the time
for the filing of the opposition has expired; or

(b) the application has been opposed and the opposition has been
finally decided in favour of the applicant; or

(c) the application has not been refused by the Controller by virtue of
any power vested in him by this Act, the patent shall, on request made
by the applicant in the prescribed form, be granted to the applicant or,
in the case of a joint application, to the applicants jointly, and the
Controller shall cause the patent to be sealed with the seal of the patent
office and the date on which the patent is sealed shall be entered in the
register.

(2) Subject to the provisions of sub-section (1) and of the provisions of

this Act with respect to patents of addition, a request under this section
for the sealing of a patent shall be made not later than the expiration of a
period of six months from the date of advertisement of the acceptance of
the complete specification:

(a) where at the expiration of the said six months any proceeding in
relation to the application for the patent is pending before the Controller
or the High Court, the request may be made within the prescribed
period after the final determination of that proceeding;

(b) where the applicant or one of the applicants has died before the
expiration of the time within which under the provisions of this sub-
section the request could otherwise be made, the said request may be
made at any time within twelve months after the date of the death or at
such later time as the Controller may allow.

(3) The period within which under sub-section (2) a request for the
sealing of a patent may be made may, from time to time, be extended by
the Controller to such longer period as may be specified in an
application made to him in that behalf, if the application is made and the
prescribed fee paid within that longer period:

Provided that the first-mentioned period shall not be extended under

this sub-section by more than three months in the aggregate.

Q16) What is Patent protection for computer programs?

A16) In India the 1970 patent Act exclude mathematical or business or a

computer program per se or algorithms from patentability. In the last 10
years of India's experiments with TRIPS compliance in the domain of
patents, put a major test in section.3. In 2004 a major amendment was
introduced in section 3 through Patent Amendment Ordinance with
respect to the patentability of computer programs. By the new clause
sec.3 (k), a computer program per se other than its technical application
to industry or a combination with hardware; a mathematical method or
business method or algorithms.

Unlike the copyright law which merely protects the expression of an

idea, patent law protects the concepts of the invention. Currently some
countries protect computer software like any other invention as long as
it is a proper subject for patent protection i.e., if it is a new and useful
process involving an inventive step and capable of industrial
application. The subjects which are excluded from patent protection are
laws of nature, natural phenomena, abstract ideas and mathematical
expressions of scientific truths. Mathematical and scientific expressions
are denied patent protection because technology is suppressed against
the desires of the authors of the constitution, if such patents are granted.

Comparing to the protection given under patent law, the protection

given by copyright and trade secrets has limited scope. The owner of
the copyright over an item of software has the right to prevent any other
person from copying the code as it is written but does not have the right
to prevent the utilization of the idea behind the code, providing that the
person utilizing the idea must use it in a manner that is different from the
arrangement of the code. The copyright law is also limited to prohibit
unauthorized copying of the protected work but it does not prohibit all
forms of copying. The expression of a method of operation and
principles of a computer program cannot be protected by copyright.
Functional aspects of a computer program are excluded from copying. A
patent provides more secure protection than the copyright and the trade
secret. It protects the 'idea' or 'functionality' of the software. Copying of
an idea is very easy to do and anybody can describe it simply, that is
might a patent is restricting from doing.

If a computer software is merely an algorithm it should not be protected

under patents. The term of algorithm is not defined in the patent act. If
the invention is technical in nature it will entitled to get protection under
patents. The mathematical algorithms which per se are not regarded as
patentable subject matter universally, they are merely considered as
abstract ideas or mental steps.

Advantages of patent protection

Patenting software has three specific advantages over both copyright

and trade secret protection.

1. If a patent holder files a patent infringement claim he cannot be

faced with the defence of independent creation.
 2. The patent grants the creator a monopoly right to license his
product and since disclosure of the invention is a requirement of
patentability, the inventor need not concern himself with the
secrecy problems facing copyright and trade secret holders.
3. The patent holder receives a 20-year monopoly over the
invention, during which time others are prohibited from making
using or selling the invention.

There has not been any international convention which granting patent
to computer software. The Paris convention, 1883, on the protection of
industrial property, leaves it to member countries to specify the
protectable subject matter for patents.

The World Intellectual Property Organization (WIPO) 1978 provided that

for granting patent protection for computer software it must fulfil the
criteria of new and inventive technical solutions. However, in most of the
countries, the question of patentability cannot be answered with any
degree of certainty.

The Agreement on Trade Related Aspects of Intellectual Property Rights

(TRIPS) describes patentable subject matter under article 27.1, subjects
to certain exceptions or conditions under the agreement "patent shall be
available for inventions, whether products or processes, in all fields of
technology, provided they are new, involve an inventive step and are
capable of industrial application". TRIPS prohibit any field specific
exclusion of patents.

Q17) What are Patentable inventions with special reference to

biotechnology products?

A17) Under the Patent Act 1970, every invention must pass a two-step
test in order to be patentable – namely, it must:

 Notfall in any of the categories specifically excluded under

Section 3 of the Patent Act; and
  Passthe well-known three-pronged test of novelty, inventive step
and industrial applicability.

The following are the excluded biotechnology-related inventions.

1. Section 3(b) – inventions contrary to public morality

Inventions for which the primary or intended use or commercial

exploitation is contrary to public order or morality or which cause
serious prejudice to human, animal or plant life or health or to the
environment are not patentable. Examples include genetic modification
of animals which results in suffering of the modified animal without any
substantial medical or other benefit, and inventions causing adverse
environmental impact.

2. Section 3(c) – discoveries, things isolated from nature, plants

and animals

Discoveries of living things or non-living substances occurring in nature

are not patentable subject matter. Thus, micro-organisms isolated from
nature and DNA, RNA or proteins isolated from living organisms are not
patentable. Although naturally occurring micro-organisms are not
patentable, genetically modified micro-organisms and vaccines are
patentable, subject to other requirements. Synergistic compositions of
new or known micro-organisms can also be patentable, as can
processes for isolating such substances. To remove any ambiguity, the
act was amended in 2002 to include “biochemical, biotechnological and
microbiological processes” within the definition of potentially
patentable chemical processes. Plants and animals or their parts –
including seeds, varieties and species – are not patentable. Further,
essentially biological processes for the production of plants or animals
(e.g. Conventional methods of plant breeding and tissue culture
techniques) are also not patentable.
3. Section 3(d) – new forms or uses of known substance

A new form of a known substance is not patentable unless it differs

significantly in properties with regard to the known efficacy. This
provision essentially prevents the ever greening of patents through
trivial modifications or incremental innovations. However, its
interpretation has been the source of polarising debate among legal
professionals, academics, non-governmental organisations and
pharmaceutical companies.

4. Section 3(e) – mere admixture

The mere admixture of two or more previously known substances is not

patentable, unless it is shown that the combinative effect of such
substances is more than the sum of their individual effects. In other
words, such a combination should result in a synergistic effect. The
synergism must be properly demonstrated in the complete specification
by providing appropriate experimental data.

5. Section 3(i) – methods of treatment and diagnosis

The act does not prevent patenting of pharmaceuticals and medical

devices. Thus, medicinal compounds, drugs, formulations, stents,
surgical sutures and staplers are patentable. However, Section 3(i)
precludes from patentability:

 Any process for the medicinal, surgical, curative, prophylactic,

diagnostic, therapeutic or other treatment of human beings; or
 Any treatment of animals which renders them free of disease or

increases their economic value (or that of their products).

Q18) Explain Registration of assignments, transmissions, etc.

under Section 69.
A18) Where any person becomes entitled by assignment, transmission
or operation of law to a patent or to a share in a patent or becomes
entitled as a mortgagee, licensee or otherwise to any other interest in a
patent, he shall apply in writing in the prescribed manner to the
Controller for the registration of his title or, as the case may be, of notice
of his interest in the register.

(2) Without prejudice to the provisions of sub-section (1), an application

for the registration of the title of any person becoming entitled by
assignment to a patent or a share in a patent or becoming entitled by
virtue of a mortgage, licence or other instrument to any other interest in
a patent may be made in the prescribed manner by the assignor,
mortgagor, licensor or other party to that instrument, as the case may
be.

(3) Where an application is made under this section for the registration
of the title of any person the Controller shall, upon proof to title of his
satisfaction, —

(a) where that person is entitled to a patent or a share in a patent,

register him in the register as proprietor or co-proprietor of the patent,
and enter in the register particulars of the instrument or even by which
he derives title; or

(b) where that person is entitled to any other interest in the patent, enter
in the register notice of his interest, with particulars of the instrument, if
any, creating it:

Provided that if there is any dispute between the parties whether the
assignment, mortgage, licence, transmission, operation of law or any
other such transaction has validly vested in such person a title to the
patent or any share or interest therein, the Controller may refuse to take
any action under clause (a) or, as the case may be, under clause (b),
until the rights of the parties have been determined by a competent
court.

(4) There shall be supplied to the Controller in the prescribed manner

for being filed in the patent office copies of all agreements, licences and
other documents affecting the title to any patent or any licence
thereunder authenticated in the prescribed manner and also such other
documents as may be prescribed relevant to the subject matter:

Provided that in the case of a licence granted under a patent, the

Controller shall, if so, requested by the patentee or licensee, take steps
for securing that the terms of the licence are not disclosed to any person
except under the order of a court.

(5) Except for the purposes of an application under sub-section (1) or of

an application to rectify the register, a document in respect of which no
entry has been made in the register under sub-section (3) shall not be
admitted by the Controller or by any court as evidence of the title of any
person to a patent or to a share or interest therein unless the Controller
or the court, for reasons to be recorded in writing, otherwise directs.

Q19) Explain Register of patents and particulars to be entered

therein under section 67.

A19) There shall be kept at the patent office a register of patents,

wherein shall be entered—

(a) the names and addresses of grantees of patents;

(b) notifications of assignments, extension, and revocations of patents;

and

(c) particulars of such other matters affecting the validity or

proprietorship of patents as may be prescribed.

(2) No notice of any trust, whether express, implied or constructive, shall

be entered in the register, and the Controller shall not be affected by
any such notice.

(3) Subject to the superintendence and directions of the Central

Government, the register shall be kept under the control and
management of the Controller.
(4) Notwithstanding anything contained in sub-section (1), it shall be
lawful for the Controller to keep the register of patents or any part
thereof in computer floppies, diskettes or any other electronic form
subject to such safeguards as may be prescribed.

(5) Notwithstanding anything contained in the Indian Evidence Act, 1872

(1 of 1872), a copy of, or extracts from, the register of patents, certified
to be a true copy under the hand of the Controller or any officer duly
authorised by the Controller in this behalf shall, in all legal proceedings,
be admissible in evidence.

(6) In the event the register is kept wholly or partly in computer

floppies, diskettes or any other electronic form, —

(a) reference in this Act to an entry in the register shall be deemed to

include reference to a record of particulars kept in computer floppies,
diskettes or any other electronic form and comprising the register or
part of the register;

(b) references in this Act to particulars being registered or entered in

the register shall be deemed to include references to the keeping of
record of those particulars comprising the register or part of the register
in computer floppies, diskettes or any other electronic form; and

(c) references in this Act to the rectification of the register are to be read
as including references to the rectification of the record of particulars
kept in computer floppies, diskettes or any other electronic form and
comprising the register or part of the register.

Q20) What are Revocation of patents under section 64?

A20) Subject to the provisions contained in this Act, a patent, whether

granted before or after the commencement of this Act, may, be revoked
on a petition of any person interested or of the Central Government by
the Appellate Board or on a counter-claim in a suit for infringement of
the patent by the High Court on any of the following grounds, that is to
say—

(a) that the invention, so far as claimed in any claim of the complete
specification, was claimed in a valid claim of earlier priority date
contained in the complete specification of another patent granted in
India;

(b) that the patent was granted on the application of a person not
entitled under the provisions of this Act to apply therefor:

(c) that the patent was obtained wrongfully in contravention of the rights
of the petitioner or any person under or through whom he claims;

(d) that the subject of any claim of the complete specification is not an
invention within the meaning of this Act;

(e) that the invention so far as claimed in any claim of the complete
specification is not new, having regard to what was publicly known or
publicly used in India before the

Priority date of the claim or to what was published in India or elsewhere

in any of the, documents referred to in section 13:

(f) that the invention so far as claimed in any claim of the complete
specification is obvious or does not involve any inventive step, having
regard to what was publicly known or publicly used in India or what was
published in India or elsewhere before the priority date of the claim:

(g) that the invention, so far as claimed in any claim of the complete
specification, is not useful;

(h) that the complete specification does not sufficiently and fairly
describe the invention and the method by which it is to be performed,
that is to say, that the description of the method or the instructions for the
working of the invention as contained in the complete specification are
not by themselves sufficient to enable a person in India possessing
average skill in, and average knowledge of, the art to which the
invention relates, to work the invention, or that it does not disclose the
best method of performing it which was known to the applicant for the
patent and for which he was entitled to claim protection;

(i) that the scope of any claim of the complete specification is not
sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the matter disclosed in the
specification;

(j) that the patent was obtained on a false suggestion or representation;

(k) that the subject of any claim of the complete specification is not
patentable under this Act;

(l) that the invention so far as claimed in any claim of the complete
specification was secretly used in India, otherwise than as mentioned in
sub-section (3), before the priority date of the claim;

(m) that the applicant for the patent has failed to disclose to the
Controller the information required by section 8 or has furnished
information which in any material particular was false to his knowledge;

(n) that the applicant contravened any direction for secrecy passed
under section 35 or made or caused to be made an application for the
grant of a patent outside India in contravention of section 39;

(o) that leave to amend the complete specification under section 57 or

section 58 was obtained by fraud.

(p) that the complete specification does not disclose or wrongly

mentions the source or geographical origin of biological material used
for the invention;

(q) that the invention so far as claimed in any claim of the complete
specification was anticipated having regard to the knowledge, oral or
otherwise, available within any local or indigenous community in India
or elsewhere.

(2) For the purposes of clauses (e) and (f) of sub-section (1)—,
(a) no account shall be taken of personal document or secret trial or
secret use; and

(b) where the patent is for a process or for a product as made by a

process described or claimed, the importation into India of the product
made abroad by that process shall constitute knowledge or use in India
of the invention on the date of the importation, except where such
importation has been for the purpose of reasonable trial or experiment
only.

(3) For the purpose of clause (1) of sub-section (1), no account shall be
taken of any use of the invention—

(a) for the purpose of reasonable trial or experiment only; or

(b) by the Government or by any person authorised by the Government

or by a government undertaking, in consequence of the applicant for the
patent or any person from whom he derives title having communicated
or disclosed the invention directly or indirectly to the Government or
person authorised as aforesaid or to the Government undertaking; or

(c) by any other person, in consequence of the applicant for the patent
or any person from whom he derives title having communicated or
disclosed the invention, and without the consent or acquiescence of the
applicant or of any person from whom he derives title.

(4) Without prejudice to the provisions contained in sub-section (1), a

patent may be revoked by the High Court on the petition of the Central
Government, if the High Court is satisfied that the patentee has without
reasonable cause failed to comply with the request of the Central
Government to make, use or exercise the patented invention for the
purposes of Government within the meaning of section 99 upon
reasonable terms.

(5) A notice of any petition for revocation of a patent under this section
shall be served on all persons appearing from the register to be
proprietors of that patent or to have shares or interests therein and it
shall not be necessary to serve a notice on any other person.
Q21) Explain the Procedure for disposal of applications for
restoration of lapsed patents (Section 61).

A21) (1) If, after hearing the applicant in cases where the Applicant so
desires or the Controller thinks fit, the Controller is prima facie satisfied
that the failure to pay the renewal fee was unintentional and that there
has been no undue delay in the making of the application, he shall
publish the application in the prescribed manner; and within the
prescribed period any person interested may give notice to the
Controller of opposition thereto on either or both of the following
grounds, that is to say,—

(a) that the failure to pay the renewal fee was not unintentional; or

(b) that there has been undue delay in the making of the application.

(2) If notice of opposition is given within the period aforesaid, the

Controller shall notify the applicant, and shall give to him and to the
opponent an opportunity to be heard before he decides the case.

(3) If no notice of opposition is given within the period aforesaid or if in

the case of opposition, the decision of the Controller is in favour of the
applicant, the Controller shall, upon payment of any unpaid renewal fee
and such additional fee as may be prescribed, restore the patent and
any patent of addition specified in the application which has ceased to
have effect on the cesser of that patent.

(4) The Controller may, if he thinks fit as a condition of restoring the

patent, require that an entry shall be made in the register of any
document or matter which, under the provisions of this Act, has to be
entered in the register but which has not been so entered.

Q22) Explain the Law relating to Patents under Patents Act, 1970
including Concept and historical perspective of patents law in
India.
A22) Historical perspective

The history of Patent law in India starts from 1911 when the Indian
Patents and Designs Act, 1911 was enacted. The present Patents Act,
1970 came into force in the year 1972, amending and consolidating the
existing law relating to Patents in India. The Patents Act, 1970 was again
amended by the Patents (Amendment) Act, 2005, wherein product
patent was extended to all fields of technology including food, drugs,
chemicals and micro-organisms. After the amendment, the provisions
relating to Exclusive Marketing Rights (EMRs) have been repealed, and
a provision for enabling grant of compulsory license has been
introduced. The provisions relating to pre-grant and post-grant
opposition have been also introduced.

An invention relating to a product or a process that is new, involving

inventive step and capable of industrial application can be patented in
India. However, it must not fall into the category of inventions that are
non-patentable as provided under sections 3 and 4 of the (Indian)
Patents Act, 1970. In India, a patent application can be filed, either alone
or jointly, by true and first inventor or his assignee.

Meaning

A patent is used to prevent an invention from being created, sold, or

used by another party without permission. Patents are the most common
type of intellectual property rights that come to people’s minds when
they think of intellectual property rights protection. A Patent Owner has
every right to commercialize his/her/its patent, including buying and
selling the patent or granting a license to the invention to any third party
under mutually agreed terms.

What are not inventions (Section 3)

The following are not inventions within the meaning of this Act, —

(a) an invention which is frivolous or which claims anything obviously

contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation
of which could be contrary to public order or morality or which causes
serious prejudice to human, animal or plant life or health or to the
environment;

(c) the mere discovery of a scientific principle or the formulation of an

abstract theory or discovery of any living thing or non-living substance
occurring in nature;

(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.

(e) a substance obtained by a mere admixture resulting only in the

aggregation of the properties of the components thereof or a process for
producing such substance;

(f) the mere arrangement or re-arrangement or duplication of known

devices each functioning independently of one another in a known way;

(g) Omitted by the Patents (Amendment) Act, 2002

(h) a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic

diagnostic, therapeutic or other treatment of human beings or any
process for a similar treatment of animals to render them free of disease
or to increase their economic value or that of their products.

(j) plants and animals in whole or any part thereof other than
microorganisms but including seeds, varieties and species and
essentially biological processes for production or propagation of plants
and animals;

(k) a mathematical or business method or a computer programme per se

or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
productions;

(m) a mere scheme or rule or method of performing mental act or

method of playing game;

(n) a presentation of information;

(o) topography of integrated circuits;

(p) an invention which in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known
component or components.

Inventions relating to atomic energy not patentable (Section 4)

No patent shall be granted in respect of an invention relating to atomic

energy falling within sub section (1) of section 20 of the Atomic Energy
Act, 1962 (33 of 1962).

Persons entitled to apply for patents (Section 6)

(1) Subject to the provisions contained in section 134, an application for

a patent for an invention may be made by any of the following persons,
that is to say, —

(a) by any person claiming to be the true and first inventor of the
invention;

(b) by any person being the assignee of the person claiming to be the
true and first inventor in respect of the right to make such an application;

(c) by the legal representative of any deceased person who immediately

before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the
persons referred to therein either alone or jointly with any other person.

Information and undertaking regarding foreign applications

(Section 8)

(1) Where an applicant for a patent under this Act is prosecuting either
alone or jointly with any other person an application for a patent in any
country outside India in respect of the same or substantially the same
invention, or where to his knowledge such an application is being
prosecuted by some person through whom he claims or by some person
deriving title from him, he shall file along with his application or
subsequently within the prescribed period as the Controller may
allow—

(a) a statement setting out detailed particulars of such application; and

(b) an undertaking that, up to the date of grant of patent in India, he

would keep the Controller informed in writing, from time to time, of
detailed particulars as required under clause (a) in respect of every
other application relating to the same or substantially the same
invention, if any, filed in any country outside India subsequently to the
filing of the statement referred to in the aforesaid clause, within the
prescribed time.

(2) At any time after an application for patent is filed in India and till the
grant of a patent or refusal to grant of a patent made thereon, the
Controller may also require the applicant to furnish details, as may be
prescribed, relating to the processing of the application in a country
outside India, and in that event the applicant shall furnish to the
Controller information available to him within such period as may be
prescribed.

Provisional and complete specifications (Section 9)

(1) Where an application for a patent (not being a convention
application or an application filed under the Patent Cooperation Treaty
designating India) is accompanied by a provisional specification, a
complete specification shall be filed within twelve months from the date
of filing of the application, and if the complete specification is not so
filed, the application shall be deemed to be abandoned.

(2) Where two or more applications in the name of the same applicant
are accompanied by provisional specifications in respect of inventions
which are cognate or of which one is a modification of another and the
Controller is of opinion that the whole of such inventions are such as to
constitute a single invention and may properly be included in one
patent, he may allow one complete specification to be filed in respect of
all such provisional specifications.

Provided that the period of time specified under sub-section (1) shall be
reckoned from the date of filing of the earliest provisional specification.

(3) Where an application for a patent (not being a convention

application or an application filed under the Patent Cooperation Treaty
designating India) is accompanied by a specification purporting to be a
complete specification, the Controller may, if the applicant be requests
at any time within twelve months from the date of filing of the
application, direct that such specification shall be treated, for the
purposes of this Act, as a provisional specification and proceed with the
application accordingly.

(4) Where a complete specification has been filed in pursuance of an

application for a patent accompanied by a provisional specification or
by a specification treated by virtue of a direction under sub-section (3)
as a provisional specification, the Controller may, if the applicant so
requests at any time before grant of patent, cancel the provisional
specification and post-date the application to the date of filing of the
complete specification.

Contents of specifications (Section 10)

(1) Every specification, whether provisional or complete, shall describe
the invention and shall begin with a title sufficiently indicating the
subject-matter to which the invention relates.

(2) Subject to any rules that may be made in this behalf under this Act,
drawings may, and shall, if the Controller so requires, be supplied for
the purposes of any specification, whether complete or provisional; and
any drawings so supplied shall, unless the Controller otherwise directs
be deemed to form part of the specification, and references in this Act to
a specification shall be construed accordingly.

(3) If, in any particular case, the Controller considers that an application
should be further supplemented by a model or sample of anything
illustrating the invention or alleged to constitute an invention, such
model or sample as he may require shall be furnished before the
application is found in order for grant of a patent, but such model or
sample shall not be deemed to form part of the specification.

(4) Every complete specification shall—

(a) fully and particularly describe the invention and its operation or use
and the method

By which it is to be performed;

(b) disclose the best method of performing the invention which is known
to the applicant and for which he is entitled to claim protection; and

(c) end with a claim or claims defining the scope of the invention for
which protection is claimed;

(d) be accompanied by an abstract to provide technical information on

the invention:

Provided that—

(i) the Controller may amend the abstract for providing better
information to third parties; and
(ii) if the applicant mentions a biological material in the specification
which may not be described in such a way as to satisfy clauses (a) and
(b), and if such material is not available to the public, the application
shall be completed by depositing the material to an international
depository authority under the Budapest Treaty and by fulfilling the
following conditions, namely: —

(A) the deposit of the material shall be made not later than the date of
filing the patent application in India and a reference thereof shall be
made in the specification within the prescribed period;

(B) all the available characteristics of the material required for it to be

correctly identified or indicated are included in the specification
including the name, address of the depository institution and the date
and number of the deposit of the material at the institution;

(C) access to the material is available in the depository institution only

after the date of the application of patent in India or if a priority is
claimed after the date of the priority;

(D) disclose the source and geographical origin of the biological

material in the specification, when used in an invention.

(4A) In case of an international application designating' India, the title,

description, drawings, abstract and claims filed with the application
shall be taken as the complete specification for the purposes of this Act.

(5) The claim or claims of a complete specification shall relate to a single

invention, or to a group of inventions linked so as to form a single
inventive concept, shall be clear and succinct and shall be fairly based
on the matter disclosed in the specification.

(6) A declaration as to the inventor ship of the invention shall, in such

cases as may be prescribed, be furnished in the prescribed form with
the complete specification or within such period as may be prescribed
after the filing of that specification.

(7) Subject to the foregoing provisions of this section, a complete

specification filed after a provisional specification may include claims in
respect of developments of, or additions to, the invention which was
described in the provisional specification, being developments or
additions in respect of which the applicant would be entitled under the
provisions of section 6 to make a separate application for a patent.

Secrecy directions relating to inventions relevant for defence

purposes (section 35)

(1) Where, in respect of an application made before or after the

commencement of this Act for a patent, it appears to the Controller that
the invention is one of a class notified to him by the Central Government
as relevant for defence purposes, or, where otherwise the invention
appears to him to be so relevant, he may give directions for prohibiting
or restricting the publication of information with respect to the invention
or the communication of such information.

(2) Where the Controller gives any such directions as are referred to in
subsection (1), he shall give notice of the application and of the
directions to the Central Government, and the Central Government
shall, upon receipt of such notice, consider whether the publication of
the invention would be prejudicial to the defence of India, and if upon
such consideration, it appears to it that the publication of the invention
would not so prejudice, give notice to the Controller to that effect, who
shall thereupon revoke the directions and notify the applicant
accordingly.

(3) Without prejudice to the provisions contained in sub-section (1),

where the Central Government is of opinion that an invention in respect
of which the Controller has not given any directions under sub-section
(1), is relevant for defence purposes, it may at any time before grant of
patent notify the Controller to that effect, and thereupon the provisions
of that sub-section shall apply as if the invention where one of the class
notified by the Central Government, and accordingly the Controller
shall give notice to the Central Government of the directions issued by
him.
Grant of patents (Section 43)

(1) Where an application for a patent has been found to be in order for
grant of the patent and either—

(a) the application has not been refused by the Controller by virtue of
any power vested in him by this Act; or

(b) the application has not been found to be in contravention of any of

the provisions of this Act, the patent shall be granted as expeditiously as
possible to the applicant or, in the case of a joint application, to the
applicants jointly, with the seal of the patent office and the date on which
the patent is granted shall be entered in the register.

(2) On the grant of patent, the Controller shall publish the fact that the
patent has been granted and thereupon the application, specification
and other documents related thereto shall be open for public inspection.

Amendment of patent granted to deceased applicant (Section 44)

Where, at any time after a patent has been granted in pursuance of an

application under this Act, the Controller is satisfied that the person to
whom the patent was granted had died, or, in the case of a body
corporate, had ceased to exist, before the patent was granted, the
Controller may amend the patent by substituting for the name of that
person the name of the person to whom the patent ought to have been
granted, and the patent shall have effect, and shall be deemed always to
have had effect, accordingly.