Intellectual Property Law

MODULE-1 GENERAL PRINCIPLES

1. Define Intellectual property. Explain the scope of IPR as expanded by WIPO and TRIPS.

2. What is Intellectual Property? Write down the essential features of the Paris Union and the
Berne Union.

3. . (a) Discuss the roll and function of World Intellectual Property Organization (WIPO) in
protecting Intellectual Property Rights.

(b) What do you understand by the problem of ‘Central Attack and how was it resolved?
*********

4. Explain the scope and objectives and basic principles of TRIPS agreement? What are the issues
governed by this Agreement? What are the salient features of WIPO ?

MODULE-2 PATENT
1. A) What is ‘Patent”? Who can file application for Patent?? Discuss the procedure of Obtaining
Patent under the Patent, 1970.
(b) Can the inventor of new process of bypass surgery claim a patent for new surgical method,
invented by him? Give your opinion. ****

2. a) What are the various rights of a patentee? What are the exceptions and limitations on
exclusive rights of the patentee?Explain.
(b) A foreign applicant of a convention country applies for patent without sufficient
description of the invention. The Controller accepts the application and grants patent. Decide.

3. What is compulsory licence? Discuss the cases in which compulsory licences may be granted.

4. “A monopoly of the patent is the reward of the inventor. Explain the salient Features of the
Patent Act, 1970 in the light of the above statement.

5. 3. (a) What is the object of Patent?

(b) Explain the patentable and non-patentable inventions under the Patent Act, 1970.
MODULE-3 TRADE MARK
1. Define Trade Mark. Discuss its essential features by giving illustrations.

2. (a) Enumerate the powers and functions of Registrar of Trademark.

(b) ‘A’ is registered proprietor of trademark ‘M-SEAL’. ‘B’ adapted and used mark ‘SM-SEAL’
with all essential characters of trademark ‘M-SEAL’. Can ‘B’ be restrained from using the Mark?
Decide.

3. Internet domain names are also entitled to protection as “Trademark’. Comment with the help
of decided cases.

4. The essence of Trade Mark has always been that it is a badge of originality”. In the light of the
above statement discuss Trade Mark and its function.

5. A)Explain Passing-Off action.

(b) What is the distinction between Passing Off and infringement of Trade Mark?
c) What is Anton Piller Order?

Module -4 COPY RIGHT AND RELATED RIGHTS

1. Define Copyright. Who is treated as author in various categories of Work?

2. Copyright exists in expression of Idea and not in Idea”. Explain it with illustrations.

3. A) Discuss ‘Idea-Expression Dichotomy’ with the help of relevant case laws.

(b) What do you understand by Infringement of Copyright?

4. Explain various remedies available against infringement of Copyright under the Copyright Act,
1957.

5. Describe the provisions relating to ownership and assignment of copyrights under the
Copyright (Amendment) Act, 2012 with suitable decided case laws.

6. (a) Explain the meaning of word ‘original’ under the Copyright Act, 1957. Cite judicial decisions
to support your answer.
b) Briefly discuss the various rights of owner of Copyright.

Module-5- THE INFORMATION TECHNOLOGY ACT, 2000

 1. Salient features of Information Technology Act, 2000.

2. (a) Legal Recognition of Electronic Records.

(b) Distinguish between Digital Signature and Electronic Signature.

3. Discuss the Composition, Procedures and Powers of the Cyber Appellate Tribunal.

Shorts
1. Definition of Author’ under Copyright Act, 1957
2. What is the distinction between Passing off and infringement of a trade mark?
3. Madrid Agreement on Registration of Marks.
4. Acknowledgement of receipt.
5. Doctrine of Honest and Concurrent Users
6. Universal Copyright Convention.
7. Evergreening of Patents.
8. Doctrine of Equivalence.
9. Grant and Revocation of compulsory licenses.
10. Patent Co-operation Treaty.
11. Doctrine of deceptive similarity
12. Patent of Addition.

MODULE-1 GENERAL PRINCIPLES

1. Define Intellectual property. Explain the scope of IPR as expanded by WIPO and TRIPS.

Ans:

Definition of Intellectual Property:

Intellectual Property (IP) deals with any basic construction of human intelligence such as artistic,
literary, technical or scientific constructions. Intellectual Property Rights (IPR) refers to the legal rights
granted to the inventor or manufacturer to protect their invention or manufacture product.

According to Article 2 of the WIPO (World Intellectual Property Organisation) – “”Intellectual Property
shall include the rights relating to literary, artistic and scientific works, inventions in all fields of human
endeavour, scientific discoveries, industrial designs, trademarks, service marks and commercial names
and designations, protection against unfair competition, and all the other rights resulting from
intellectual activity in the industrial, scientific, literary or scientific fields.””

Intellectual Property empowers individuals, enterprises, or other entities to exclude others from the
use of their creations. Intellectual Property empowers individuals, enterprises, or other entities to
exclude others from the use of their creations without their consent.

+++++++++++

Scope of IPR as expanded by WIPO and TRIPS agreement:

WIPO and TRIPS redefine and expand Intellectual Property Rights (IPR) globally, covering copyright,
trademarks, patents, and more. They set minimum standards, incorporating existing WIPO obligations
and introducing new ones. The agreements aim to balance protection with global cooperation,
addressing technology innovation, public health, and providing flexibility for developing countries.

1. Copyright and Related Rights: WIPO and TRIPS expand the scope of intellectual property rights
(IPR) by establishing minimum standards for copyright protection, encompassing the rights of
performers, producers of sound recordings, and broadcasting organizations.
2. Trademarks and Service Marks: The agreements cover trademarks and service marks, setting
out standards for their protection, including subject-matter, conferred rights, permissible
exceptions, and minimum duration of protection.
3. Geographical Indications and Appellations of Origin: WIPO and TRIPS address geographical
indications, ensuring protection for products with specific geographical origins, enhancing the
rights of producers and preventing unauthorized use.
4. Industrial Designs: Both agreements provide standards for the protection of industrial designs,
defining subject-matter, conferred rights, exceptions, and duration of protection.
5. Patents: WIPO and TRIPS extend the scope to patents, covering inventions and new varieties of
plants. TRIPS adds obligations beyond existing conventions, making it a Berne and Paris-plus
agreement.
6. Layout-Designs of Integrated Circuits: The agreements include protection for the layout-designs
of integrated circuits, ensuring rights for creators in this technological domain.
7. Undisclosed Information and Trade Secrets: WIPO and TRIPS address undisclosed information,
safeguarding trade secrets and test data, promoting innovation and protecting confidential
business information.
8. Standards: TRIPS establishes minimum standards for each IPR area, incorporating obligations
from WIPO conventions. It adds new obligations where existing conventions are silent or
deemed inadequate, making it a comprehensive agreement.
9. Enforcement: The agreements provide for domestic procedures and remedies for enforcing IPR.
TRIPS outlines general principles, civil and administrative procedures, provisional measures,
border measures, and criminal procedures.
10. Dispute Settlement: TRIPS subjects disputes regarding adherence to its obligations to the WTO’s
dispute settlement procedures, ensuring resolution mechanisms for conflicts among WTO
Members.
 11. Basic Principles: Both agreements uphold principles like national and most-favored-nation
treatment, ensuring equal treatment for persons (including non-nationals) in terms of IPR
protection.
12. National and Most-Favored-Nation Treatment: Articles 3, 4, and 5 establish fundamental rules
for national and most-favored-nation treatment, covering substantive standards, availability,
acquisition, scope, maintenance, and enforcement of IPRs.
13. General Goals: The Preamble outlines the overarching goals of the TRIPS Agreement, including
reducing trade distortions, promoting effective IPR protection, preventing barriers to legitimate
trade, and fostering technological innovation and knowledge transfer.
14. Objectives and Principles: Articles 7 and 8 emphasize the promotion of technological
innovation, the transfer of technology, and balancing rights and obligations. They also recognize
Members’ rights to adopt measures for public health and other public interest reasons.
15. Flexibility for Developing Countries: TRIPS allows developing countries a longer period to
implement obligations and offers transition arrangements, especially in the absence of product
patent protection for pharmaceuticals.

2. What is Intellectual Property? Write down the essential features of the Paris Union and the
Berne Union.

Ans:

First question’s answer is mentioned in question no-1 .

++++++++++++

Essentials features

Paris Union (Protection of Industrial Property):

1. Objective: Established to address the challenges of protecting inventions internationally due to

diverse laws and simultaneous patent filings in multiple countries.
2. Formation: Adopted on March 20, 1883, at Paris and enforced on July 7, 1884,administered by:
World Intellectual Property Organization (WIPO).
3. National Treatment: Member countries must grant equal protection to nationals of other
member countries as they do to their own nationals, promoting non-discrimination.It means
that regarding protection of industrial property, each country to the convention must grant the
same protection to nationals of the other member countries as it grant the same protection to
nationals of the other member countries as it grant to its own nationals. (No discrimination)
(Article 2 & 3 of the convention)
4. Framework of Priority: Allows for simultaneous protection of inventions in various countries. An
inventor can claim the filing date of the first patent application in one member country as the
effective filing date for subsequent applications in other member countries, within 12 months.
 5. Anti-discrimination Principle: Ensures that foreigners receive the same protection and are not
discriminated against.
6. Total Number of Nation States Party to the Convention (177): The Paris Convention for the
Protection of Industrial Property is an international treaty that aims to harmonize intellectual
property protection among member countries. As of the provided information, there are 177
member states that are party to the Paris Convention. Each member state agrees to adhere to
the principles outlined in the convention.
7. Protection Against Unfair Competition and False Indications: The Paris Convention provides a
framework for protecting industrial property, which includes trademarks. It addresses issues
related to unfair competition and false indications of goods or services. Member states agree to
provide effective protection against unfair competition, ensuring that businesses are not
engaged in deceptive practices that could harm the interests of other businesses.
8. Parallel Importation: Parallel importation refers to the importation of genuine, branded goods
into a country without the authorization of the intellectual property right holder. The Paris
Convention does not explicitly address parallel importation, but it sets the foundation for
international cooperation, and related issues may be considered under the broader scope of
intellectual property protection.
9. Independence of Parties: The Paris Convention recognizes the principle of national treatment,
emphasizing that each member country should treat nationals of other member countries at
least as well as it treats its own nationals regarding industrial property protection.Parties to the
convention agree to provide equal and fair treatment to the nationals of other member states,
fostering a sense of independence and equality in the application of intellectual property rights.

In summary, the Paris Convention establishes a framework for international cooperation in the
protection of industrial property, including trademarks. It addresses issues of unfair competition,
provides guidelines for the treatment of nationals from member states, and sets the stage for
harmonizing intellectual property laws globally.…

Berne Union (Protection of Literary and Artistic Works):

1. Objective: Formed to establish a uniform system for international copyright protection.

2. Formation: Adopted on September 9, 1886, at Berne, Switzerland, and revised multiple times.
3. Coverage: Protects literary, scientific, and artistic works without conditioning protection on
formalities.
4. Principles:
a) National Treatment: Works in one contracting state receive equal protection in all other
contracting or non-contracting states.
b) Automatic Protection: Protection is granted without the need for formalities.
c) Independence of Protection: Protection is independent of the existence of protection in
the country of origin.
5. Minimum Standards of Protection: Include protection for all productions in the literary,
scientific, and artistic domain, with specified exclusive rights, and a minimum duration of
protection.
 6. Rights: Cover a range of exclusive rights, including translation, adaptation, public performance,
broadcasting, reproduction, and more.
7. Duration of Protection: Specifies minimum standards for the duration of protection for covered
works and rights.
General Rule: Author’s lifetime + 50 years

▸ In case of anonymous or pseudonymous work: 50 years from thePublication

► In case of cinematographic work: 50 years from release or creation of work (if not released)

▸ In case of works of applied art and photographic works: 25 years from the creation of such work

3. . (a) Discuss the roll and function of World Intellectual Property Organization (WIPO) in
protecting Intellectual Property Rights. Relation between WIPO and India .

(b) What do you understand by the problem of ‘Central Attack and how was it resolved?

Ans:

a)Role and Function of World Intellectual Property Organisation

Introduction:The World Intellectual Property Organisation or WIPO is a UN specialized agency created in

1967 to promote intellectual property (IP) protection and encourage creative activity all over the world.
WIPO is basically a global forum for IP policy, services, information and cooperation. It acts as a global
forum for IP Services.WIPO is a self-funded agency of the United Nations. WIPO with 192 members,
WIPO’s motto is to encourage creative activity, to promote the protection of intellectual property
throughout the world.

Role and Functions of WIPO are as follows:

1. Campaigns for Global IP Protection:

WIPO actively engages in developing campaigns to enhance intellectual property (IP) protection on a
global scale. This involves coordinating efforts to raise awareness, educate stakeholders, and encourage
the adoption of effective IP protection measures worldwide.

2. Harmonization of National Legislations:

WIPO works towards aligning and harmonizing national legislations related to intellectual property. This
involves facilitating discussions among member states to promote consistency and coherence in the legal
frameworks governing intellectual property rights (IPR) at the national level.

3. International Agreements on IPR Protection:

WIPO plays a crucial role in the negotiation and establishment of international agreements pertaining to
the protection of intellectual property rights. This involves bringing together member states to sign
treaties and agreements that set standards for the recognition and enforcement of IPR globally.

4. Administration of Berne and Paris Unions:

WIPO oversees administrative functions related to the Berne Union (dealing with the protection of
literary and artistic works) and the Paris Union (dealing with the protection of industrial property). This
includes managing procedures, facilitating communication, and ensuring compliance with the
agreements established by these unions.

5. Legal and Technical Assistance:

WIPO provides legal and technical assistance to member states in the field of intellectual property. This
can include expert advice on legal frameworks, technical guidance on IP-related issues, and support in
resolving disputes related to intellectual property.

6. Research and Publication:

WIPO conducts research on various aspects of intellectual property and publishes the results. This serves
to contribute to the global understanding of IP issues, trends, and best practices. The organization also
collects and circulates information to keep stakeholders informed.

7. Facilitation of International IP Protection Services:

WIPO facilitates services that aid in international intellectual property protection. This involves providing
platforms, databases, and tools that assist in the registration, management, and enforcement of
intellectual property rights across borders.

8. Implementation of Necessary Actions:

WIPO is empowered to take appropriate and necessary actions to fulfill its mandate. This can include
responding to emerging challenges in the field of intellectual property, adapting to technological
advancements, and addressing the evolving needs of its member states. The organization remains
flexible in implementing measures to effectively carry out its mission.

+++++++

WIPO and India

India joined the WIPO in 1975.

India is a part of the following WIPO Treaties:

 IPO Convention (1975)

 Paris Convention (1998)
 Berne Convention (1928)
 Patent Cooperation Treaty (1998)
 Phonograms Convention (1975)
  Nairobi Treaty (1983)
 Nice Agreement (2019)
 Locarno Agreement (2019)
 Vienna Agreement (2019)

India acceded to all of the above treaties. India was the first country to ratify the Marrakesh Treaty.

India has jumped places in the Global Innovation Index (GII) in recent years. In the 2019 GII, India is
ranked 52nd, which is a big leap from previous years.

 Since 2011, India is the top-ranked innovative country in the Southern and
Central Asia region.
 India has been outperforming on innovation relative to its GDP per capita for
eight years at a stretch.
 On innovation quality, India ranks second among middle-income economies
globally.
 The Confederation of Indian Industry (CII) is a GII Knowledge Partner since
2009.
 In India, the Ministry of Commerce and Industry deals with WIPO and related
issues.

*(b) The problem of Central Attack and the Way to resolve :

4. Explain the scope/ issues governed by this agreement and objectives and basic principles of
TRIPS agreement? What are the salient features of WIPO ?

Ans:

Scope / Issues governed by TRIPS agreement:

The TRIPS Agreement protects intellectual property in trade-related regions to a large extent and is
regarded as a comprehensive new framework for intellectual property standards protection. The TRIPs
Agreement also has the distinction of being the first legal agreement to address all areas of intellectual
property with a number of specific clauses.

The three main Issues governed by the agreement are:

 1. Standard– All member states are required to provide a minimum set of criteria for the
protection of IPRs in each of the IP categories covered by the Agreement. Each area of IP is
addressed in such a way that the major aspects of protection, such as the subject matter sought
to be protected, the rights to be granted, and possible exceptions to such rights, as well as the
minimum period of protection, are all explicitly stated.
2. Enforcement– The second set of clauses focuses on domestic processes and remedies for
intellectual property rights enforcement. The Agreement establishes a set of broad rules that
apply to all IPR enforcement actions. It also includes rules on civil and administrative processes
and remedies, provisional measures, particular border requirements, and criminal proceedings,
all of which outline the procedures and remedies that must be provided so that the right holders
can successfully exercise their rights.
3. Dispute settlement– Disputes occurring between WTO members over responsibilities emanating
from the TRIPS Agreement are subject to the WTO’s dispute resolution processes.

The whole TRIPS Agreement is further divided into seven parts which contain the complex provisions
regarding intellectual property:

1. Part I- General Provisions and Basic Principles (Article 1 to Article 8) .

2. Part II- This part covers the requirements for the availability, scope, and application of
intellectual property rights. (Article 9 to Article 40) .
3. Part III- The enforcement of IPRs is the focus of this part. (Article 41 to Article 61) .
4. Part IV: This part covers the procedures for obtaining and maintaining intellectual property
rights. (Article 62)
5. Part V: This part deals with the prevention and resolution of conflicts resulting from the
provisions of the Agreement. (Article 63 to Article 64)
6. Part VI: This part is about transitional agreements. (Article 65 to Article 67)
7. Part VII: This part of the Agreement deals with a variety of institutional arrangements. (Article 68
to Article 73)

++ Objectives of TRIPS agreement:

Some of the objectives of TRIPS are as follows:

1. Reduction of Distortions and Impediments to International Trade: TRIPS aims to minimize

distortions and obstacles in international trade related to intellectual property.
2. Promotion of Effective and Adequate Protection of Intellectual Property Rights: The agreement
seeks to encourage robust and sufficient protection for intellectual property rights.
3. Ensuring Measures and Procedures Don’t Hinder Legitimate Trade: TRIPS intends to ensure that
measures and procedures to enforce intellectual property rights do not become barriers to
legitimate trade.
 4. Contribution to Technological Innovation: Article 7 emphasizes that the protection and
enforcement of intellectual property rights should contribute to the promotion of technological
innovation.
5. Transfer and Dissemination of Technology: TRIPS aims to facilitate the transfer and
dissemination of technology, benefiting both producers and users of technological knowledge.
6. Mutual Advantage of Producers and Users: The objectives aim for a balance that is mutually
advantageous for both producers and users of technological knowledge.
7. Conducive to Social and Economic Welfare: The promotion of technological innovation and
technology transfer should be in a manner conducive to social and economic welfare.
8. Balance of Rights and Obligations: TRIPS seeks to maintain a balance of rights and obligations
concerning intellectual property rights.
9. Recognition of Members’ Rights for Public Health and Other Public Interest Reasons: Article 8
acknowledges the rights of TRIPS Members to adopt measures for public health and other public
interest reasons.
10. Prevention of Abuse of Intellectual Property Rights: Members are allowed to take measures to
prevent the abuse of intellectual property rights, provided such measures are consistent with
the provisions of the TRIPS .

+++ Basic principles of TRIPS :

1. National Treatment (Article 3):

Ensures that foreign individuals and companies are treated no less favorably than their domestic
counterparts. Applies to the protection and enforcement of all intellectual property rights covered by the
agreement.

2. Most Favoured Nation (Article 4):

Extends the principle of non-discrimination by ensuring that members grant the same level of protection
to the intellectual property of all WTO members. Enhances equality and fair competition among nations
in the realm of intellectual property.

3. Minimum Standards of Protection:

Establishes minimum standards for the protection and enforcement of various intellectual property
rights, including patents, copyrights, trademarks, and trade secrets. Requires member countries to
provide a baseline level of protection, promoting a consistent and predictable global IP environment.

4. Technological Innovation and Transfer (Preamble and Objectives):

Recognizes the role of intellectual property in promoting innovation, technological advancement, and
the transfer of technology. Encourages members to strike a balance between the rights of intellectual
property holders and the broader societal interest in accessing and using innovations.

5. Enforcement Measures (Part III):

Outlines procedures and remedies for the enforcement of intellectual property rights, ensuring effective
and dissuasive measures against infringement. Promotes a system where rights holders can seek
appropriate redress for violations of their intellectual property rights.

6. Flexibilities (Article 7):

Acknowledges the right of members to adopt measures necessary to protect public health and nutrition
and to promote the public interest in sectors such as education, research, and access to information.

7. Dispute Settlement (Part V):

Establishes mechanisms for resolving disputes related to the TRIPS agreement, allowing members to
seek recourse if they believe another member is not fulfilling its obligations.

8. Transition Periods for Developing Countries (Article 66):

Recognizes the special needs and requirements of developing countries, providing flexibility in the
implementation of certain provisions to support their capacity building and development efforts.

These principles collectively aim to create a balanced and equitable international framework for
intellectual property, fostering innovation while considering the diverse needs and developmental levels
of WTO member countries.

+++++ Salient features of WIPO

The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations
dedicated to promoting and protecting intellectual property (IP) worldwide. Here are some salient
features of WIPO:

1. Global Scope: WIPO operates on a global scale, providing a forum for member countries to
discuss and establish international standards for the protection of intellectual property.
2. Multilateral Treaties: WIPO administers various international treaties and agreements related to
intellectual property, such as the Paris Convention for the Protection of Industrial Property and
the Berne Convention for the Protection of Literary and Artistic Works.
3. Patents, Trademarks, and Copyrights: WIPO deals with a wide range of intellectual property
areas, including patents, trademarks, copyrights, and related rights. It facilitates the registration
and protection of these rights at an international level.
4. Information and Services: WIPO offers a range of services, including databases, research, and
information resources related to intellectual property. This helps stakeholders make informed
decisions and promotes a better understanding of IP issues.
5. Dispute Resolution: WIPO provides mechanisms for the resolution of intellectual property
disputes, such as arbitration and mediation services. This contributes to the effective and
efficient resolution of conflicts between parties.
6. Capacity Building: WIPO engages in capacity-building activities to enhance the knowledge and
skills of member countries in the field of intellectual property. This includes training programs,
workshops, and educational resources.
 7. Development Agenda: WIPO has a Development Agenda that focuses on ensuring that the
benefits of intellectual property contribute to social and economic development, especially in
developing countries.
8. Technology Transfer and Innovation: WIPO promotes the transfer of technology and the sharing
of knowledge to stimulate innovation. It works to bridge the gap between developed and
developing nations in accessing and utilizing technological advancements.
9. Public Outreach and Awareness: WIPO undertakes efforts to raise awareness about the
importance of intellectual property rights and their role in fostering innovation, creativity, and
economic growth.
10. Collaboration with Other Organizations: WIPO collaborates with various international
organizations, governmental bodies, and stakeholders to address global challenges related to
intellectual property and to develop comprehensive and effective solutions.

These features collectively highlight WIPO’s role in fostering a balanced and accessible international
intellectual property system.

MODULE-2 PATENT

1. A) What is ‘Patent”? Who can file application for Patent?? Discuss the procedure of Obtaining
Patent under the Patent, 1970.

(b) Can the inventor of new process of bypass surgery claim a patent for new surgical method,
invented by him? Give your opinion.

Ans:

*a) Definition of Patent:

Section 2 in The Patents Act, 1970

Patent– means a patent for any invention granted under this Act.

Meaning of patent

A Patent is a form of industrial or intellectual property. A patent is an exclusive right granted by the
Government to the inventor to exclude others to use, make and sell an invention is a specific period of
time. A patent is also available for improvement in their previous Invention.

The main motto to enact patent law is to encourage inventors to contribute more in their field by
awarding them exclusive rights for their inventions. Term-Patent under the act is granted by controller to
the inventor for a period of 20 Years.
A grant of Patent In India gives the Patentee the exclusive model to utilize or make the patented
invention or utilize the patented procedure related to the invention.

Moreover, Patent is a set of exclusive rights granted by the government to an inventor or

assignee for a limited period of time in exchange for detailed public disclosure of the invention.

++ Who can file an application for Patent:

Section 6. Persons entitled to apply for patents.

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;

© 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.

Section 134. Notification as to countries not providing for reciprocity.

Where any country specified by the Central Government in this behalf by notification in the Official
Gazette does not accord to citizens of India the same rights in respect of the grant of Patents and the
protection of patent rights as it accords to its own nationals, no national of such

Country shall be entitled, either solely or jointly with any other person,--

(a) To apply for the grant of a patent or be registered as the proprietor of a patent;
(b) To be registered as the assignee of the proprietor of a patent; or
(c) to apply for a licence or hold any licence under a patent granted under this Act.

+++++

Procedure for obtaining Patent :

Step -1 -Invention Description:

Provide a comprehensive account of your invention, delving into specifics such as the field it belongs to,
a detailed description of its functioning, and enumerating the associated benefits.

Maintain meticulous lab records, ensuring they are not only thorough but also endorsed with signatures
and dates from both yourself and the relevant authoritative figure.

Step-2- Visual Representation:

Elevate the communicative power of your patent application by incorporating intricate diagrams,
detailed drawings, and explanatory sketches.

Acknowledge the pivotal role that visual elements play in elucidating the complexities of your invention
to patent examiners and potential stakeholders.

Step-3- Patentability Check:

Conduct a rigorous assessment to determine the eligibility of your invention for patent protection in
accordance with the stipulations outlined in the Indian Patent Act.

Verify that your invention fulfills key criteria, including novelty, non-obviousness, and its practical
application in an industrial context.

Step-4- Patent Discovery:

Undertake a meticulous examination of your invention to ascertain its alignment with the criteria
delineated in the Indian Patent Act.

Emphasize crucial aspects such as the uniqueness (novelty), non-obvious nature, and the pragmatic
application of your invention in an industrial setting.

Step-5- File Patent Application:

12 months time for filing full specification. Lesser cost. After filing a provisional application, you secure
the filing date, which is very important in thebPatent world. You get 12 months to come up with the
complete specification; your patent Application will be removed at the end of 12 months. When you
have completed the required documents and your research work is at a level where you can have
prototypes and experimental results to prove your inventive move; you can file the complete
specification with the patent application.

Filing the provisional specification is an optional step if you are in the stage where you have complete
knowledge about your Invention you can go straight to the full specification.

Step-6- Publication of Patent application:

Upon filing the complete specification along with the application for the patent, the application is
published 18 months after the first filing. If you do not wish to wait until the expiration of 18 months
from the filing date to publish your patent application, an initial publication request may be made with
the prescribed fee. The Patent application is usually published early as a one-month form request.

Step-7- Examination Request:

Trigger the examination phase by submitting a Request for Examination (RFE), prompting a patent
examiner to scrutinize various criteria including patent subject matter, newness, clarity, inventiveness,
industrial application, and enablement.

Patent Subject: Patent subject must have to be –

 Newness
 Lack of clarity
 Inventory steps
 Industrial application

By enabling The examiner makes the first examination report of the patent application upon a review for
the above conditions. This is called patent prosecution. Everything that happens for a patent Application
before the grant of a patent is usually called patent prosecution.

The first examination report submitted to the Controller by the examiner usually includes prior Art
(existing documents prior to the filing date) that are similar to the claimed invention and is also reported
to the patent applicant.

Step -8- Answer the objection :

Most patent applicants will receive some type of objections based on the examination report. The best
thing is to analyze the examination report with the patent professional (patent agent) and react to the
objections in the examination report.

This is an opportunity for an investor to communicate his novelty over the prior art in examination
reports. Inventors and patent agents create and send a test response that tries to prove that their
Invention is indeed patentable and meets all patent criteria.

Step 9: clearance of objections

The Controller and the patent applicant is connected for ensuring that all objections raised regarding the
invention or application is resolved and the inventor has a fair chance to prove his point and establish
novelty and inventive steps on other existing arts.

Upon receiving a patent application in order for grant, it is the first grant for a patent applicant.

Step-10- Grant Notification:

Await official notification of the patent grant, signaling the successful culmination of the application
process.

This grant is publicly announced in the Patent Journal, published periodically, marking the formal
recognition of your invention’s patent status.
 2. A) What are the various rights of a patentee? What are the exceptions and limitations on
exclusive rights of the patentee?Explain.

(b) A foreign applicant of a convention country applies for patent without sufficient description
of the invention. The Controller accepts the application and grants patent. Decide.

Ans:

*A) Various Rights of a Patentee :

A grant of Patent in India gives the Patentee the exclusive model to utilize or make the patented
invention or utilize the patented procedure related to the invention. Certain Rights and obligations of
Patentee are enshrined under the Patent Act, 1970. The various kinds of Rights of Patentee are as
follows:

1. Where the grant of Patent is done for a product, the exclusive right to prevent any third party,
Who is no having his/her consent, from any act of offering, using, making for sale, importing or
exporting for such products in the territory of India;
2. Where the subject matter associated with the Patent is a process, the exclusive right to prevent
any third party, who is no having his/her consent, from any act of offering, using, making for sale,
importing or exporting for such products that are directly obtained from the process in the
territory of India;
3. Moreover, the product produced by the Patentee should not be such that it cannot be patented
In India as per Section 48 of the Patent Act, 1970.

The elaborated Rights of Patentee in India are as follows:

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. (As per Section 69(5) of the Patent Act, 1970)

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

6. Right before sealing:

During the period from the date of advertisement of the acceptance of the complete specification and
the date of sealing of the patent the applicant for patent can exercise all the privileges and rights of a
patentee except the filing of a suit for infringement, this provision is now deleted by the patents
amendment Act 2005.

Article 28 of the TRIPS agreement provides the following rights:

A patent shall confer on its owner the following exclusive rights:

1. Where the subject matter of a patent is a product, to prevent third parties not having the
owner’s consent from the acts of making, using, offering for sale, selling, or importing for these
purposes that product;
2. Where the subject matter of a patent is a process, to prevent third parties not having the
owner’s consent from the act of using the process, and from the acts of using, offering for sale,
selling,or importing for these purposes at least the product obtained directly by that process.

++++++++++++++++

Limitations or exceptions on the rights of the patentees’ rights-use for experiment, Research, etc.

Any person may, for the purpose merely of experiment or research, or for the purpose of imparting
instructions to pupils, make or use a patented article or use a patented process without the consent of
the patentee and without payment of any royalty.

1. Government use of patent

a) A patent has the same effect as against the Government as it has against any other
person. But the Government may use the patented invention, and even acquire it, under
certain circumstances and terms, or prohibit a person from using an invention.
b) The Government may import the patented article or make the article for its own use, or
use the patented process for its own use. In the case of a patent relating to medicine or
 drug the Government may import the medicine or drug for its own use or for
distribution to hospit hospitals or medical institutions.
c) The aforesaid use can be made without the consent of the patentee or payment of any
royalties. Apart from this, the Government has also power to make use of the patented
invention and sell the articles made in accordance with the patented invention on
payment of royalties.
d) The Government may also acquire a patent on payment of suitable compensation.

2. Compulsory licences

If the patent is not worked so as to satisfy the reasonable requirements of the public at a reasonable
price the Controller may grant compulsory licences to any applicant to work the patent. Further the
Central Government may also declare that compulsory licences should be granted in respect of any
patent or class of patents. The terms of the licence will be determined by the Controller. Certain patents
may be endorsed with “licenses of right”. In respect of patents relating to food, medicine or drug they
are deemed to be endorsed with the words “licenses of right “after the expiration of three years from
the date of sealing .

3. Revocation for non-working

A patent may be revoked for non-working or where the working has not resulted in the satisfaction of
the reasonable requirements of the public in respect of the patented invention at a reasonably
affordable price.

4. Invention for defence purposes:

Inventions relevant for defence purposes may be subject to certain secrecy provisions. Publication or
communication of information relating to such inventions may be restricted or prohibited by directions
of the Controller. Secrecy provisions affect the invention at the application stage. So long as the
directions prohibiting or restricting the publication of c of communication of the invention remain in
force the application will not be refused but the ecomplete specification, if accepted, will not bea
eadvertised and no patent will be granted for the invention. During the continuance of the directions the
applicant will be debarred from using the invention, but the Central Government may use it and pay
royalties to the applicant. If the applicant suffers hardship he may be made suitable payment as
solatium.

5. Use in foreign Vessels:

A patent is not deemed to be infringed by the use of the invention in a foreign vessel or aircraft, or a
vehicle owned by a foreigner which comes into India or its territorial waters temporarily or accidentally if
it satisfies certain conditions. The conditions are that the invention is used in the body of the vessel or its
machinery, apparatus or its accessories. It must be used on board the vessel for its actual needs. In the
case of an aircraft or land vehicle the invention must be used in the construction or working of the
aircraft or vehicle as the case may be.
 6. Limitations on restored patents

When a patent which has once lapsed has been restored, certain limitations are imposed on the rights of
the patentee. If any infringement was committed during the period between the date of lapse and the
date of advertisement of the application for restoration the patentee is debarred from taking any action
in respect of the infringement.

7. Validity of patent :

The validity of the patent is not guaranteed by the grant. A patent may be revoked on various grounds.

3. What is compulsory license? Discuss the cases in which compulsory licences may be granted.

Ans:

Compulsory License :

Compulsory licensing is when a government allows a third party to produce a patented product or
process without the consent of the patent owner or plans to use the patent-protected invention itself.

Article 31 of TRIPS (which pertains to use without authorization of the right holder) lays down the set of
conditions that govern the use of compulsory licensing by WTO members,

###

Cases in which Compulsory Licenses may be granted:

Section 84 of the Indian Patent Act provides that an application to the Controller for the grant of
compulsory license may be made by any person interested including the license holder after the
expiration of a period of three years from the date of grant of a patent on fulfillment of any of the
following conditions:

 Reasonable requirements of the public with respect to the patented invention

have not been satisfied, or
 Patented invention is not available to the public at a reasonably affordable
price, or
 Patented invention is not worked in the territory of India.

Under the Indian Patent Act, the reasonable requirements of the public are deemed not to have been
satisfied where:

 The patentee refuses to grant a license or licenses on reasonable terms; and

  A trade or industry is prejudiced; or
 Demand for the patented article has not been met to an adequate extent; or
 A market for exportation of the patented article manufactured in India is not
being supplied or developed; or
 The establishment or development of commercial activities in India is
prejudiced.
 The patentee imposes a condition on the patented invention;

Non-working of the patent in the territory of India;

 Working of the patented invention in India on a commercial scale is prevented

by the importation from abroad.
 Section 146 (2) of the Indian Patent Act requires every patentee and licensee
to provide information on the extent to which the patented invention has
been worked on a commercial scale in India.
 Relevant information is submitted by patentees and licensees with Form 27. It
is required to be filed every calendar year, within three months of the end of
each year. The Information includes the following: Whether the invention has
been worked; If not worked, the reasons for non-working, and steps being
taken to work the invention; If worked, quantum and value of the patented
product; If manufactured in India; Whether imported from other countries,
giving details of the countries concerned; Licenses and sub-licenses granted
during the year;

Whether the public requirement has been met, at a reasonable price either partly, adequately or to
the fullest extent.

 Failure to supply such information creates a presumption of non-working and

may contribute in grant of a compulsory license. It is also a punishable offence
and invites a fine which may extent up to 10 lakh (13,361.84 USD, at Rs. 74.84
to a USD). Knowingly furnishing false information is an offence punishable
with imprisonment up to six months, a fine or both.

Under section 92(1) of Indian Patent Act, a compulsory license can be granted Suo moto by the Central
Government in circumstances of:

 National emergency; or
 Extreme urgency; or
 In ease of public non-commercial use.

Under Section 100 of the Indian Patent Act, compulsory license can be issued by the Government on a
patented drug for use by the Government. The Bombay High Court in the case of Garware Wall Ropes
Ltd. Vs. A.I. Chopra and Konkan Railway Corp. allowed third party agencies to use a patented invention
on behalf of the Government.
Judicial pronouncement :

Bayer Corp. v. Natco Pharma

The following case illustrates license sought for Nexaver® used in the treatment of advanced liver and
kidney cancer in 2012, India’s first ever compulsory license was granted by the Indian Patent Office to
Natco Pharma for generic production of Bayer Corp’s Nexaver® (Sorafenib Tosylate), a life-saving
medicine used for treating liver and kidney cancer. Bayer sold this drug at a very high rate with one
month’s worth of treatment costing around Rs. 2.8 Lakh (3,737.89 USD, at Rs. 74.84 to a USD). Natco
Pharma offered to sell the drug for Rs. 9000 (120.15 USD, at Rs. 74.84 to a USD) making it affordable for
general public. Thus, all the three conditions of Section 84 of the Indian Patent Act were fulfilled.

BDR Pharmaceuticals v. Bristol-Myers Squibb

The following case illustrates licence sought for Sprycel® which is used in cancer treatment on March 4,
2013 the Controller rejected BDR Pharmaceuticals’ (BDR) application for a compulsory license for the
cancer drug Sprycel®. The controller stated that BDR failed to make a prima facie case for the grant of
compulsory license. Specifically, the Controller found that BDR had made no credible attempt to procure
a license from the patent holder and the applicant had not acquired the ability to work the invention to
public advantage. Thus, the compulsory license was denied.

4. “A monopoly of the patent is the reward of the inventor. Explain the salient Features of the
Patent Act, 1970 in the light of the above statement.

Ans:

Patent Act, 1970 also provided patent holder with numerous rights in order to protect and promote their
invention. Act establishes that on request, patents shall be granted for inventions in all fields of
technology, provided that they are new, not obvious to the person skilled in the art from the state of the
art, and susceptible of industrial application. Salient features of patent act, 1970 are as follows:

1. Dual Patent Types:

Inventors can obtain both product and process patents, granting them exclusive rights to the end
product and the method of production. This dual protection encourages comprehensive safeguarding of
inventive concepts.

2. Term of Patent:

The 20-year term provides inventors with an extended period of exclusivity, fostering innovation by
offering a reasonable timeframe for inventors to capitalize on their creations before they become
publicly available.

3. Examination on Request:
The on-request examination system allows inventors to control the timing of the examination process.
This flexibility ensures that inventors can align the examination with their development timelines and
business strategies.

4. Pre-Grant and Post-Grant Opposition:

Pre-grant opposition enables third parties to scrutinize and raise concerns about a pending patent
application before it is granted, promoting a robust evaluation process. Post-grant opposition offers a
mechanism for corrective action even after the patent is granted.

5. Fast Track Mechanism:

The fast track mechanism expedites the appeals process, providing a swift resolution to disputes. This
not only saves time and resources for all parties involved but also contributes to maintaining the
integrity of the patent system.

6. Protection of Bio-diversity and Traditional Knowledge:

Legal provisions for protecting bio-diversity and traditional knowledge emphasize the importance of
respecting indigenous practices and ecological diversity. This ensures that patents do not inadvertently
lead to the exploitation of natural resources or traditional wisdom.

7. Publication and Early Publication:

The mandatory publication after 18 months ensures transparency and knowledge sharing within the
scientific and technological community. Early publication provisions allow inventors to disclose their
inventions sooner, potentially accelerating collaborative efforts and advancements in the field.

8. Substantially Reduced Time-Lines:

The emphasis on streamlined processes with reduced time-lines aims to minimize delays in patent
processing. This efficiency benefits inventors by providing quicker protection for their inventions and
facilitates a more dynamic and responsive patent system.

9. Section 3(d) – Enhanced Efficacy:

Section 3(d) of the Indian Patent Act places emphasis on enhanced efficacy as a requirement for
patentability. This provision prevents the grant of patents for mere incremental improvements, ensuring
that new inventions bring substantial improvements in efficacy.

10. Compulsory Licensing (Section 84):

The Indian Patent Act incorporates provisions for compulsory licensing, allowing the government to
grant licenses for the production of patented inventions in certain situations. This serves public interest,
ensuring that essential inventions are made available at reasonable prices.

11. Working of Patents (Section 146):

Patentees are obligated to submit information regarding the working of their patented inventions in
India. This provision helps ensure that patented technologies are actively utilized and contribute to the
economic development of the country.
 12. Patentability Criteria (Section 2(1)(j)):

The Act specifies the criteria for patentability, including novelty, inventive step, and industrial
applicability. This provides a clear framework for evaluating whether an invention meets the necessary
requirements for patent protection.

13. Exclusive Marketing Rights (EMR) for Pharmaceuticals (Section 24A):

The Indian Patent Act, under Section 24A, provides for the grant of exclusive marketing rights to the
original patentee of pharmaceutical products for a certain period. This is particularly relevant in the
context of protecting the rights of pharmaceutical innovators.

14. Research Exemption (Section 107A):

The Act includes a research exemption, allowing researchers to conduct experiments and experiments
without infringing on patent rights. This supports scientific progress by enabling research activities even
in areas covered by existing patents.

15.;National Biodiversity Authority (NBA) Consultation:

In cases where inventions involve biological resources and associated traditional knowledge,
consultation with the National Biodiversity Authority (NBA) is required. This ensures compliance with
regulations aimed at protecting biodiversity and traditional knowledge.

15. Parallel Imports (Section 107A):

The Act permits parallel imports, allowing the importation of patented products without the patentee’s
consent under certain conditions. This contributes to competition and affordability, particularly in the
pharmaceutical sector.

These additional points highlight specific provisions within the Indian Patent Act, 1970, showcasing
the multifaceted nature of the legislation and its commitment to balancing the interests of inventors,
public health, and economic development.

5. 3. (a) What is the object of Patent?

(b) Explain the patentable and non-patentable inventions under the Patent Act, 1970.

c) Discuss patentability of artificial intelligence ?

Ans:

OBJECTIVES OF PATENT
The object of patent law is to encourage scientific research, modern technology and industrial progress.
Patent protection is designed to encourage inventors and disclosure of details of new inventions.
However the objectives of patents are classified as:

1. To encourage Inventor- If an individual puts efforts in inventing something it can be patented, he

has provision that stops other from copying through patent.
2. To protect inventor’s interest- protecting inventor interest allows the law to protect the
goodwill and financial gain of inventor.
3. Encourage research and development- Inventor gets recognition for his work and at the same
time it is protected, and thus he gets motivated and that eventually leads to technical and
financial growth of society.
4. To ensure fair trade practices- Providing protection and monopoly rights law indirectly
stimulates fair trade practices.

###

What inventions are patentable:

An invention relating either to a product or process that is new, involving an inventive step and capable
of industrial application can be patented. Provided the invention is not falling under the categories of
inventions that are non- patentable under section 3 and 4 of the Patent Act.

Patentable subject matter in India

Invention must-

 Relates to a process or a product or both

 Be new (Novel)
 Involves an inventive step
 Be capable of industrial application
 Not fall under Section 3 and 4

Patentability requirements of an invention-

 Newness or novelty
 Inventive step or non-obviousness requirement
 Capable of Industrial application
 Enabling

Newness or novelty requirement

Sections 2(1)(l) and 2(1)(j) of the Patents Act highlight the difference between a new invention and an
invention. A ‘new invention’ is defined as:

Any invention or technology which has not been anticipated by publication in any document or used in
the country or elsewhere in the world before the date of filing of a patent application with complete
specification, i.e., the subject matter has not fallen in the public domain or that it does not form part of
the state of the art.

An Invention is said to be novel if all elements of a claim of the invention are not anticipated by a single
prior art that is published, or used or known to the public.

Inventive step or non-obviousness

The inventive step, also known as the non-obviousness test for your innovative idea.

An inventive step is said to be present in your invention when it has a technical advance as compared to
the existing knowledge (that is state of the art of your field of the invention) or it has economic
significance or you invention has both such that it makes your invention non-obvious to a person skilled
in the art.

Industrial application or utility

Section2(1)(ac) capable of industrial application”, in relation to an invention, means that the invention is
capable of being made or used in an industry;

Industrial application means invention is capable of being made or used in any kind of industry. This is
also known as usefulness, a patented invention should be able to be produced on a large scale that is it
could be created, used and repeated.

If the product or processes satisfies in the above conditions, then that product or processes can be
patentable under the Indian Patent Act, 1970.

Inventions that are not patentable :

*Section 3 And 4 Of The Indian Patent Act

Section 3 and Section 4 of the Patent Act is highly debatable and deals with the list of exclusions that are
non-patentable that do not satisfy the above conditions. Following are not the “inventions” under the
meaning of this act:

A) Inventions that are frivolous and contrary to natural laws.

Inventions which are frivolous or contrary to well established natural laws.

Example– Inventions that are against the natural laws that are any machine giving 100% efficiency, or
any machine giving output without an input cannot be considered as obvious and cannot be patented.

b) Inventions which go against public morality

Inventions in which the primary or intended use or commercial exploitation of which could be contrary
to public order or morality (that is against the accepted norms of the society and is punishable as a
crime) or which causes serious prejudice to human, animal or plant life or health or to the environment.
Example– As in Biotechnology, termination of the germination of a seed by inserting a gene sequence
that could lead to the disappearance of butterflies, any invention leading to theft or burglary,
counterfeiting of currency notes, or bioterrorism.

c) Inventions that are a mere discovery of something that already exists in nature.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any
living or non-living substances occurring in nature.

Explanation– Mere discovery of something that is already existing freely in nature is a discovery and not
an invention and hence cannot be patented unless it is used in the process of manufacturing an article or
substance. For instance, the mere discovery of a micro-organism is not patentable.

Landmark Cases of Non-patentable Inventions

In Bilski V. Kappos,

This case deals with the Patentability of a business method. In this case, Bilski and Warsaw applied for
the patent on hedging risks on commodities trading but their patent got rejected by the US Supreme
Court on grounds that an abstract idea cannot be patented.

(d) The mere discovery of a form already existing in nature does not lead to enhancement
of efficacy.

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.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form,
particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known
substance shall be considered to be the same substance, unless they are significantly different in terms
of efficacy.

The mere discovery of any new property or use of a known substance is not patented unless it is of
greater efficiency than the original substance hence, the mere incremental innovation does not fall
under the gamut of patenting.

Case laws

In Glochem Industries Ltd vs Cadila Healthcare Ltd14,[2]

The Bombay High Court held that “Section 3 (d) consists of all fields including the field of pharmacology.
Further, in this case, the court held that “the test to decide whether the discovery is an invention or not?
It is on the patent applicant to show that the discovery has resulted in enhancement of known
therapeutic efficacy of the original substance and if the discovery is nothing other than the derivative of
a known substance, then, it must be shown that the properties in derivatives are significantly different in
terms of efficacy. So under this sub-section, the very discovery of a new form of a known substance
which does not result in the enhancement of the known efficacy of that substance will not be treated as
an invention.
In Novartis Ag v. Union of India

The Supreme Court of India said that “mere discovery of an existing substance would not amount to the
invention”. The Supreme Court of India further, in this case, held that for pharmaceutical patents apart
from tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy
for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify”.

e) Mere admixing of mixtures leading in the aggregation of properties are non-

patentable.

A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation of
the properties of the components thereof or a process for producing such substance is not considered
the invention.

Explanation- mere addition of mixtures is non-patentable unless this satisfies the requirement of
synergistic effect i.e., interaction of two or more substances or agents to produce a combined effect
greater than the separate effect.

f) Mere aggregation or duplication of devices working in a known way is not an

invention.

The mere aggregation or re-arrangement or duplication of known devices each functioning

independently of one another in a known way.

Explanation- mere improvement on something or combinations of different matters known before

cannot be patentable unless this produces a new result or article.

g) )Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture.

Explanation- a method of producing plants like cultivation of algae and mushrooms or improving the soil
is not an invention and cannot be patentable.

h) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in

human and animals are non-patentable.

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.

Explanation– those medicinal methods administering medicines orally or injecting it, surgical methods
like stitch free surgeries, curative methods as curing plaques etc does not fall under the ambit of the
invention and are non- patentable.

Case law

In Mayo Collaborative Services V. Prometheus Laboratories, Inc

In this case, the US Supreme Court said that “diagnostic and therapeutic methods (which includes the
treatment or cure of diseases) is not patentable as it claims a law of nature”.
 i) Essential biological processes for the production or propagation of animals and plants
is not an invention.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds,
varieties and species and essentially biological processes for production or propagation of plants and
animals.

j) Simple mathematical or business or computer programs are not an invention.

A mathematical or business method or a computer program per se or algorithms;

Explanation– any mathematical calculation, any scientific truth or act of mental skills any activities
related to business methods or algorithms (which are like the law of nature) cannot be patented.

k) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions.

Explanation– such activities like writings, painting, sculpting, choreographing, cinematographing all
these which are related to creativity cannot be patented and fall under the gamut of Copyright Act,
1957.

l) Mental act, rule or method is not an invention.

A mere scheme or rule or method of performing mental act or method of playing a game.

Explanation- playing a game such as chess, sudoku etc are not considered as inventions rather these are
mere brain exercises and hence are not patented.

m) Presentation of information is non-patentable.

Explanation- a mere presentation of information by tables, chars is not an invention and hence are not
patentable, for example, railway timetables, calendars etc.

n) The topography of integrated circuits is non-patentable

Such as semiconductors used in microchips are not patented.

o) Traditional Knowledge is not an invention.

An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known

properties of the traditionally known component or components.

Explanation- the traditional knowledge is know-how, skills, that is passed from generations to
generations of a community and is already known cannot be patented for example the antiseptic
properties of turmeric.

p) Atomic-Energy inventions are non -patentable.

Section 4 deals with inventions relating to atomic energy, that are also not patentable and that fall within
sub-section (1) of section 20 of the Atomic Energy Act, 1962.
###

Patentability Of Artificial Intelligence

The AI applications are modern-day machine learning functions and are of significant importance,
especially in the commercial AI sector. However, the question is, should AI be patentable?

Indian Patent System for AI-based inventions.

In India for patenting an AI technology one needs to follow the Computer-related Inventions (CRIs)
guidelines which exclude a computer programme or algorithms from being patented (under 3(k) of the
Indian Patent Act). At present these guidelines are focused on computers/algorithm/software based
inventions and also are used to examine AI based inventions.

To claim for patenting the inventions based on AI following are needed:

 Describe hardware (eg computer system, server, sensors etc.) along with AI
algorithms in your patent;
 Claim working method/process of the invention which uses AI; and
 Refrain from focussing directly on programming codes/algorithms of AI.

The word “Artificial Intelligence” can be seen in claims of the granted patents but it is to be noted that
this word is used to represent part of a system that utilizes data/commands provided by AI system.
However, no focus is made on the operating principle of AI.

Conclusion

India is a country that has understood the importance of strong patent systems for the growth of
industry and commerce to bring it at par with the modern world. With the promulgation of the Indian
patent act, there is an increase in the number of patent filing. Section 3 and 4 of this act (consisting of
inventions that cannot be patented) has been a filter that decides what falls in the ambit of inventions.
Only inventions that are new and useful are patented. Innovators and inventors are highly intrigued in
protecting their intellectual property.

MODULE-3 TRADE MARK

1. Define Trade Mark. Discuss its essential features by giving illustrations.

Ans:
Definition of Trade Mark:

A trademark is any word, name, symbol or device used to identify and distinguish goods and/or services
from those of others. Trademarks also indicate the source of the goods, even if that source is unknown
to the consumer.

Section 2(1)(i)(viii)(zb) in the Trade Marks Act, 1999 defines trademark as a mark which is:

 Capable of being represented graphically;

 Capable of distinguishing the goods or services of one person from those of
others;
 May include the shape of goods, their packaging and combinations of colours.

Section 2(1)(i)(viii)(zb)(i) in the Trademarks Act, 1999 mentions about registered trademarks for goods
and services and further states that the person has the right to use the mark as the proprietor.

Examples of trademarks include the Nike “Swoosh” symbol, the arched M for McDonald’s or the bitten
apple symbol for Apple computers, etc.

Apart from these, trademarks can be logos, aromas, sounds, personal brand names, slogans, smells, etc.
Even specific colours can be trademarked under specific brands, such as UPS Brown (also known as
Pullman Brown), Home Depot orange, Tiffany blue or John Deere green, etc.

A trademark is the characteristics or combinations of characteristics capable of distinguishing the goods

and/or services of one enterprise from those of other enterprises. Trademarks fall under the ambit of
intellectual property rights and are protected by national and international laws.

###

Essential features of Trademark

An ideal trade mark should be attractive to sound and appearance and suggest the quality of the
product. Most importantly an ideal trademark should be made in such a manner that it can be
distinctive from other trademarks of the same class and should be able to be registered and protected.
The following are the few attributes of a good trademark that should be considered before Trademark
Registration.

1. Comprehensive Definition:

A trademark encompasses various elements such as a device, heading, brand, label, ticket, signature,
word, letter, name, numeral, packaging, or a combination of colors.

2. Ease of Pronunciation and Spelling:

A good trademark should be simple to pronounce and spell, ensuring accessibility for the public.
Consider examples like “Google” or “Nike,” which are both easy to say and remember.

3. Memorability:
Memorability is crucial for a successful trademark. Memorable trademarks create lasting impressions.
For instance, “Coca-Cola” is memorable due to its unique combination of words and sounds.

4. Conciseness:

Lengthy and complicated trademarks are prone to being forgotten. Examples like “Apple” demonstrate
the effectiveness of short and straightforward trademarks.

5. Distinctiveness:

A trademark should possess inherent distinctiveness or acquire distinctiveness through use.

Distinctiveness ensures that the mark can be easily differentiated from others. “Xerox” is distinctive and
widely recognized in the photocopying industry.

6. Inventiveness and Uniqueness:

The most effective trademarks are often invented or coined words, or unique geometrical designs.
Consider brands like “Kodak” or the Nike “Swoosh” symbol, which are distinctive and unique.

7. Suggestiveness, not Descriptiveness:

Trademarks should suggest the quality or nature of the products rather than directly describe them. For
example, “Netflix” suggests a network of interconnected flicks, indicating a streaming service without
being overly descriptive.

8. Adherence to Legal Requirements:

A good trademark must comply with legal regulations. Ensure it is not barred under the Trade Marks Act,
particularly avoiding prohibited classes of trademarks. For instance, trademarks that are deceptive or
likely to cause confusion may be restricted.

Remember, a successful trademark not only meets these criteria but also effectively communicates
the essence of the brand to the target audience, fostering recognition and loyalty.

2. (a) Enumerate the powers and functions of Registrar of Trademark.

(b) ‘A’ is registered proprietor of trademark ‘M-SEAL’. ‘B’ adapted and used mark ‘SM-SEAL’
with all essential characters of trademark ‘M-SEAL’. Can ‘B’ be restrained from using the Mark?
Decide.

Ans:
3. Internet domain names are also entitled to protection as “Trademark’. Comment with the help
of decided cases.

4. The essence of Trade Mark has always been that it is a badge of originality”. In the light of the
above statement discuss Trade Mark and its function.

5. A)Explain Passing-Off action.

(b) What is the distinction between Passing Off and infringement of Trade Mark?
c) What is Anton Piller Order?