Chapter-1 A

UNIT - I
Introduction and
Patents
1
Objectives of teaching IPR
• To equip, students with the fundamental
knowledge and techniques essential for the
understanding of law, science and policy of
Intellectual property right regime.
• To identify, the strengths and weakness in the
law with special reference to India and the
enforcement machineries available for
protection of Intellectual Property Right.
2
Objectives of teaching IPR
• To acquaint the students of Intellectual
Property Right about the global concerns,
International mood and the national policy in
relation to Intellectual Property Right.
• To acclimatize the students about the Indian
Legislation to protect Intellectual Property
Right in India and elsewhere.
3
What is Intellectual Property ?
• Rights resulting from Intellectual activity in the
industrial, scientific, literary, or artistic fields.
• Intellectual Property : Industrial property and
copyright law.
• Three kinds of property : (i) Movable property
(ii) Immovable property (iii)Intellectual property
4
IPR
Intellectual Property is characterized as :
• Information which can be incorporated in
tangible objects at the same time in an
unlimited number of copies at different
locations anywhere in the world.
• The property is not in those copies but in the
information reflected in those copies.
5
IPR
• The need for international protection of intellectual property became
evident when foreign exhibitors refused to attend the International
Exhibition of Inventions in Vienna in 1873 because they were afraid
their ideas would be stolen and exploited commercially in other
countries.
• 1883 marked the birth of the Paris Convention for the Protection of
Industrial Property, the first major international treaty designed to help
the people of one country obtain protection in other countries for their
intellectual creations in the form of industrial property rights, known as:
–inventions (patents)
–trademarks
–industrial designs
6
IPR
• The Paris Convention entered into force in 1884 with 14 member
States, which set up an International Bureau to carry out
administrative tasks, such as organizing meetings of the member States.
• In 1886, copyright entered the international arena with the

Berne Convention for the Protection of Literary and Artistic
Works. The aim of this Convention was to help nationals of its member
States obtain international protection of their right to control, and
receive payment for, the use of their creative works such as:
– novels, short stories, poems, plays;
– songs, operas, musicals, sonatas; and
– drawings, paintings, sculptures, architectural works.
7
IPR
• Like the Paris Convention, the Berne Convention set up an
International Bureau to carry out administrative tasks. In 1893,
these two small bureaux united to form an international
organization called the United International Bureaux for the
Protection of Intellectual Property (best known by its French
acronym BIRPI).
• A decade later, following the entry into force of the
Convention Establishing the World Intellectual Property Organ
ization
, BIRPI became WIPO, undergoing structural and
administrative reforms and acquiring a secretariat answerable
to the member States.
8
IPR
• Convention Establishing the World Intellectual Property
Organization : This convention was held at Stockholm on
July 14, 1967 and as amended on September 28, 1979 . The
agenda of this convention was to establish an organization that
administrate IPR .The objectives of the Organization are:
– to promote the protection of intellectual property
throughout the world through cooperation among States
and, where appropriate, in collaboration with any other
international organization.
– to ensure administrative cooperation among the Unions.
9
IRP-WIPO
• The predecessor to WIPO was the BIRPI (Bureaux Internationaux Réunis pour la Protection
de la Propriété Intellectuelle, French acronym for United International Bureaux for the
Protection of Intellectual Property), which had been established in 1893 to administer the
Berne Convention for the Protection of Literary and Artistic Works and the Paris Convention
for the Protection of Industrial Property
• WIPO was formally created by the Convention Establishing the World Intellectual Property
Organization, which entered into force on April 26, 1970. Under Article 3 of this Convention,
WIPO seeks to "promote the protection of intellectual property throughout the world." WIPO
became a specialized agency of the UN in 1974. The Agreement between the United Nations
and the World Intellectual Property Organization notes in Article 1 that WIPO is responsible
• WIPO’s cooperation for development program is closely interwoven with governmental and
intergovernmental cooperation, including WIPO’s agreement with the World Trade
Organization (WTO), whereby WIPO assists developing countries in the implementation of
WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights
10
IRP-WIPO
• The Agreement marked a transition for WIPO from the mandate it inherited in 1967 from
BIRPI, to promote the protection of intellectual property, to one that involved the more
complex task of promoting technology transfer and economic development.
• Our mission is to promote innovation and creativity for the economic, social and cultural
development of all countries, through a balanced and effective international intellectual
property system.
• The World Intellectual Property Organization (WIPO) is the United Nations agency dedicated
to the use of intellectual property (patents, copyright, trademarks, designs, etc.) as a means of
stimulating innovation and creativity.
• They promote the development and use of the international IP system through:
 Services - Run systems which make it easier to obtain protection internationally for patents,
trademarks, designs and appellations of origin; and to resolve IP disputes.
 Law - Help to develop the international legal IP framework in line with society’s evolving
needs.
 Infrastructure - Build collaborative networks and technical platforms to share knowledge and
simplify IP transactions, including free databases and tools for exchanging information.
 Development - Build capacity in the use of IP to support economic development.
11
IRP-WTO
• The World Trade Organization (WTO) is an organization that intends to supervise and
liberalize international trade. The organization officially commenced on 1 January 1995 under
the Marrakech Agreement, replacing the General Agreement on Tariffs and Trade (GATT),
which commenced in 1948. The organization deals with regulation of trade between
participating countries; it provides a framework for negotiating and formalizing trade
agreements, and a dispute resolution process aimed at enforcing participants' adherence to
WTO agreements, which are signed by representatives of member governments and ratified by
their parliaments.
• The WTO's predecessor, the General Agreement on Tariffs and Trade (GATT), was established
after World War II in the wake of other new multilateral institutions dedicated to international
economic cooperation – notably the Bretton Woods institutions known as the World Bank and
the International Monetary Fund.
• The GATT was the only multilateral instrument governing international trade from 1946 until
the WTO was established on 1 January 1995. Despite attempts in the mid-1950s and 1960s to
create some form of institutional mechanism for international trade, the GATT continued to
operate for almost half a century as a semi-institutionalized multilateral treaty regime on a
provisional basis.
12
IPR-WTO`s Agenda
Among the various functions of the WTO, these are regarded by analysts as
the most important:
• It oversees the implementation, administration and operation of the covered agreements.
• It provides a forum for negotiations and for settling disputes.
• Additionally, it is the WTO's duty to review and propagate the national trade policies, and
to ensure the coherence and transparency of trade policies through surveillance in global
economic policy-making.
• Another priority of the WTO is the assistance of developing, least-developed and low-
income countries in transition to adjust to WTO rules and disciplines through technical
cooperation and training.
• The WTO is also a center of economic research and analysis: regular assessments of the
global trade picture in its annual publications and research reports on specific topics are
produced by the organization. Finally, the WTO cooperates closely with the two other
components of the Bretton Woods system, the International Monetary Fund (IMF) and
the World Bank.
13
IPR-TRIPS
• Stands for : Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
• The extent of protection and enforcement of IPR varied widely around the world; and as intellectual
property became more important in trade, these differences became a source of tension in
international economic relations. New internationally-agreed trade rules for intellectual property
rights were seen as a way to introduce more order and predictability, and for disputes to be settled
more systematically.
• The Uruguay Round achieved that. The WTO’s (TRIPS Agreement) is an attempt to narrow the
gaps in the way these rights are protected around the world, and to bring them under common
international rules. It establishes minimum levels of protection that each government has to give to
the intellectual property of fellow WTO members.
• The agreement covers five broad issues:
– how basic principles of the trading system and other international intellectual property
agreements should be applied
– how to give adequate protection to intellectual property rights
– how countries should enforce those rights adequately in their own territories
– how to settle disputes on intellectual property between members of the WTO
– special transitional arrangements during the period when the new system is being introduced.
14
Types of IPR
• patent
• copyright
• trademark
• industrial design
• integrated circuit topography
• plant breeders rights
• trade secret
15
• Intellectual Property is that property which is
created by human intelligence or mental
labour and it is mostly in intangible form even
though it can be reproduced in tangible form.
But in the recent past many new forms of IP
have come into existence as shown below:
16
17
• IP has loosely been defined as a product of
mind. Indeed, it is any property consisting of
movable or immovable things wherein the
owner may use his property as he wishes and
nobody else can lawfully use his property
without his permission. It is simply the
resulting outcome of human intelligence.
18
Protection of IP
• It is essential to protect IP so that nobody else can enjoy the fruits of
other’s efforts. The IP of a person can best be protected if he keeps it
out of the eyes and knowledge of the world. There are several ways to
protect this IP. Like any other property, IP is not absolute. As such no
private person can enjoy an exclusive right of IP without the control
and regulation by the Government.
• Therefore appropriate national legislations govern the IPR. The World
Summit on Information Society (WSIS) held in Geneva in December
2003 also reaffirmed that the protection of IPR is important to
encourage innovation and creativity in the Information Society. It also
concurrently agreed that the sharing and strengthening of global
knowledge can be enhanced by removing barriers to equitable access
to information and by facilitating access to public domain information.
19
Intellectual property Rights
• IPR is the creation of human mind. Potential efforts of human
beings lead to intellectual outcomes which in turn have
considerable value in economy. Right associated with intellectual
property which gives protection is referred to as IPR .
• IPR can generally be defined as the rights given to persons over
the creations of their minds. They usually give the creator an
exclusive legal right over the use of his/her creation for a certain
time and
• Thus protect the owner against unauthorized copying . IPR
usually protects ideas or information of commercial value, playing
a crucial role in the information market. As per TRIPS the
different types of IPRs are:
20
IPR
• Patents: A government granted and secured legal right to prevent
others from practicing.
• Copyrights and related rights : A set of property rights vested in
the owner of a protected work.
• Geographical Indications: Place names used to identify products
with particular characteristics as they come from specific places.
• Industrial Designs : Features conceived in the authors’ intellect
regarding pattern, ornament etc, applied to an article and not the
article itself.
• Trademarks : Identification symbol used in the course of trade to
enable the purchasing public to distinguish one trader’s goods
from the similar goods of other traders.
21
IPR
• Layout Designs of Integrated Circuits : Layout designs in accordance with the provisions
of the IPIC (the Treaty of Intellectual Property in Respect of Integrated Circuits),
negotiated under the auspices of WIPOin 1989.
• Trade Secrets (undisclosed information) : Protection must apply to secret information
that has commercial value and that has been subject to reasonable steps to keep it secret.
According to World Intellectual Property Organization(WIPO),IPRs include “rights relating to:
• Literary, artistic and scientific work
• Performance of performing artists, phonograms and broadcasts
• 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 other rights resulting from intellectual
activity in the industrial, scientific, literary or artistic fields”.
22
• The general treaty on the international
scientific discoveries(1978) defines a scientific
discovery as “ the cognition of phenomena,
properties or laws of the material universe not
hitherto recognized and capable of
verification”
23
Differences
• There are major differences between IPR and other property rights.
IPR are rights over intangible property or property incorporeal.
• Physical property get exhausted when consumed whereas the use of
IP does not exhaust the same; rather it enhances the value of the
property.
• Consequently, IP is one which can be economically used by many. So IP
must be expressed in some discernible way for enabling it to be
protected. Unlike a physical object, an intellectual property like an
idea for invention, a piece of music or a trademark cannot be
protected against other person’s use of them by simply possessing the
object.
• Hence the necessity of enacting intellectual property laws distinct
from conventional laws protecting personal property.
24
Copyrights
• Copyright stands for legal right to prevent others from copying an existing work of
an individual. It is such a right exclusively given for a definite period of time to the
originator (author or creator) of intellectual work such as publication, or an article
or a literary work for sale or any other use.
• In other words, copyright is a set of property rights vested in the owner of a
protected work which covers published and unpublished literary, scientific and
artistic works, etc.
• Copyright broadly include : Literary works; Musical works; Dramatic works;
Audiovisual works; Pantomimes and Choreographic works; Photographic works;
Sound recordings; Broadcast; Architectural works; Sculpture; Drawing; etc.
• Recently an expression called“neighbouring rights” has been added to the concept
of copyrights which cover the following three typesof rights:
• The rights of performing artists in their performance
• The rights of producers of phenograms in their phenograms
• The rights of broadcasting organizations in their radio and television broadcasts
25
Patents
26
Patent
Patent is a monopoly right granted by the State to an inventor for a limited
period,
in respect of the invention, to the exclusion of all others.
What can be protected by Patents?

Patent protection applies to inventions only. For an invention to be
patentable it must be:
– An process, machine, manufacture or composition of matter or an

improvement to such that is:
• Novel
• Useful, and
• Non-obvious
According to the Indian Patent Act, a patentable invention is defined as
“a new product or process involving an inventive step and capable of industrial
application.”
27
Patent
• “Novelty” means that:
– at least one aspect of the invention is novel
– the invention is a combination of known elements not
previously seen together
– new use for an existing product
• “Nonobvious” means that:

Is the invention “obvious” based on what has already been
done or is there a degree of “inventiveness” or “cleverness”
involved?
28
Patent
Why patent be given?
• If the invention is commercially utilized, the patent ensures just reward in terms
of money and recognition for the inventor, for all the time and effort, knowledge
and skills, money and other resources invested to come up with the invention.
• For the society, commercial exploitation of an invention means newer and better
products, higher productivity, and more efficient means of production.
• Further research and development on the patented technology..
A patent system encourages technological innovation and dissemination of

technology. This in turn stimulates growth and helps the spread of prosperity and
better utilization of resources.
29
Patent
Is patent territorial or international?
Patent is granted by a State and hence has territorial applicability. That is, it is valid
only in the country, which grants the patent. There is no mechanism to obtain a global
patent and you Have to apply separately in all the countries where you want the
invention to be protected.
What about Patent Cooperation Treaty (PCT) of WIPO ?

There were 123 countries, party to the PCT as on October 15, 2003. India joined the
PCT on December 7, 1998. Under the PCT, one international application for patent on an
invention can be filed in any country party to the PCT, designating other PCT countries
where the patent is sought. The effect of it is that the patent in a designated state, when
granted, will have the same priority date as for the first international application. However,
in each designated country, a separate application for patent is to be filed as per the
requirements of that country. Each country has to examine the application independently
for granting a patent.
30
Patent
• The law relating to patents in India is governed by Indian Patents Act, 1970 as
amended by Patents (Amendment) Act, 1999 and Patents (Amendment) Act, 2002,
which came into force with effect from May 2, 2003. In our discussion, we will refer
to this act as the Indian Patents Act (IPA).
Prior art or state of the art.

For example, an inventor in England was denied the patent for an improved design of
a ballpoint pen just because he had published its details prior to filing the patent
application and hence the invention did not qualify on the ground of novelty.
31
Patent
• Something that is already known is not patentable. An
invention is deemed to be new on the priority date if it
does not form part of the state-of-the-art i.e., part of the
knowledge available to the public. Priority date is usually
the date on which the applicant for patenting his
invention first makes the application.
• Prior written or oral disclosure of the invention or any
other way of making the knowledge available in a public
manner before the date of filing of the patent application
makes the invention a part of the prior art or state of the
art.
32
Advantages Of A Patent To
The Public
• Knowledge of invention adds to scientific
background forming base for further research.
• Reasonable assurance for commercialization.
• Patent- open to public for use

– After its term expires
Or
– When it ceases to be in force
33
Different Ways Of Dealing With An Invention
• Make it public for free use by public(like publishing in the

journal) Or
• Work the invention in SECRECY without PATENTING
it (like coco-cola composition)
Or
• Work the invention OPENLY without PATENTING it
(directly put it in the market)
Or
• EXPLOIT the invention on the basis of a PATENT (like
Rank Xerox )
34
Case study - Rank Xerox
• In 1956 the Rank Organisation was looking for a product to sit alongside a
small business it had making camera lenses. Thomas Law, who was the head
of the business, found his answer in a scientific magazine he picked up by
chance. He read about an invention that could produce copies of documents
as good as the original. Mr Law tracked down the backers, an obscure
photographic-supply company in Rochester, New York, named Haloid.
• Haloid and Rank subsequently formed an affiliate called Rank Xerox (Rank
put up £600,000 for a 50% stake in Rank Xerox). This arrangement paved the
way for Xerox factories in Great Britain and a sales and distribution system
that brought Xerox machines to the European market. As photocopying took
the world by storm, so did Rank’s profits. According to Graham Dowson,
Rank’s Managing Director in 1956, it was “a stroke of luck that turned out to
be a touch of genius … “ If Tom Law had not seen that magazine, we would
not have known about xerography – or at least not before it was too late.
35
The Patents Act, 1970 on 'Inventions not
patentable' reads as:
What is Not Patentable?
The main categories, which do not qualify for patentability under the IPA are:
• An invention, whose use could be contrary to the public order or morality or which causes
serious prejudice to human, animal or plant life or health or to the environment.
For example, a new type of gambling machine
• Inventions relating to atomic energy. This is so because the Central Government has the sole
responsibility for the development of atomic energy and for obvious reasons will not like its
programmes to be hampered by patent claims.
36
Patent
• The mere discovery of a scientific principle or the formulation of an abstract theory.
For example, a discovery merely unveils a hidden thing; it does not involve an act that makes
it useful; it is therefore not an invention and hence not patentable.
Similar reasoning applies to the formulation of an abstract theory.
• Discovery of any living thing or non-living substances or objects occurring in nature;
• A substance obtained by a mere admixture of the components, or a process of producing such

mixture;
• An invention which is frivolous or which claims anything obviously contrary to well

established natural laws.
For example, an invention that claims a perpetual motion machine will not be patentable
because the claim would be contrary to well-established laws of nature.
37
Patent
• Mere arrangement or rearrangement or duplication of known devices, each functioning
independently of one another in a known way without changing the end results;
• An invention which in effect is traditional knowledge;
• A mathematical or business method or a computer programme per-se or algorithms.
Besides these rather obvious items the following items are also not inventions within
the meaning of the Patents Act, as a matter of policy and are therefore, not patentable:
• A method of agriculture or horticulture;
• Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings and animals;
• Plants and animals in whole or part thereof other than micro-organisms;
38
Patent
• Seeds and biological processes for production of plants and animals;
The following two categories belong to different fields of intellectual property and are
not subject matter of patents:
• A literary dramatic, musical or artistic work including cinematographic work and television
productions (covered by copyright);
• Topography of integrated circuits (separate field).
In the case of substances falling within certain categories no claim for patenting the
substance can be entertained; however, claims for the methods or processes of
manufacture of these substances can be patented. Such categories of substances are:
• Substances which could be used as food or medicine or drug;
• Substances prepared or produced by chemical processes (which include biochemical,

biotechnological and microbiological process).
39
Patent
However a claim for patenting a substance can be entertained if the substance itself is
intended for use as medicine or drug – excepting chemical substances which are
ordinarily used as intermediates in the preparation or manufacture of any medicines.
Computer programmes and microorganisms have emerged as two special Categories
where patent protection is increasingly sought.
Under the Indian law, computer programmes are protected under the Copyright Act,
1957; they are not entitled to protection through patents. However, the British law
recognizes that under certain circumstances Computer programme can be patented.
Such will be the case when a computer programme enables the computer to carryout
a system that produces a required result. A computer so programmed is a modified
equipment to operate in a new way and as such the computer, along with the
programme is patentable.
40
Patent
In 1980, the US Supreme Court granted a patent to Dr. Ananda Chakraborty for a
genetically engineered bacterium, which could degrade oil spills. It did not exist in
nature. It satisfied the criteria of novelty, non-obviousness and utility for a patentable
invention. For the first time in history a living entity, the engineered microorganism,
was accorded the status of a product. In the same year, the US Patent office granted a
patent to Dr. Stanley Gohen and Dr. Herbert Boyer for the method and composition
for replication of exogenous genes in micro organisms though the criterion of
Nonobviousness was not considered in many countries as clearly satisfied
It may be mentioned here that patent protection involving living entities bristles
With serious ethical and legal issues and even the USA could not grant patent
protection to the creation of the animal clone that resulted in the birth of Dolly, the
cloned sheep.
41
History of Indian Patent System
• 1856 : THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS BASED ON THE BRITISH PATENT
LAW OF 1852. CERTAIN EXCLUSIVE PRIVILEGES GRANTED TO INVENTORS OF NEW
MANUFACTURERS FOR A PERIOD OF 14 YEARS.
• 1859 : THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES CALLED EXCLUSIVE PRIVILEGES
(MAKING. SELLING AND USING INVENTIONS IN INDIA AND AUTHORIZING OTHERS TO DO SO
FOR 14 YEARS FROM DATE OF FILING SPECIFICATION).
The first legislation in India relating to patents was the Act VI of 1856. The objective of this
legislation was to encourage inventions of new and useful manufactures and to induce
inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of
1857 since it had been enacted without the approval of the British Crown . Fresh legislation
for granting ‘exclusive privileges’ was introduced in 1 859 as Act XV of 1859. This legislation
contained certain modifications of the earlier legislation, namely, grant of exclusive privileges
to useful inventions only and extension of priority period from 6 months to 12 months. This
Act excluded importers from the definition of inventor. This Act was based on the United
Kingdom Act of 1852 with certain departures which include allowing assignees to make
application in India and also taking prior public use or publication in India or United Kingdom
for the purpose of ascertaining novelty.
42
•1872 : THE PATENTS & DESIGNS PROTECTION ACT.
In 1872, the Act of 1859 was consolidated to provide
protection relating to designs. It was renamed as “The
Patterns and Designs Protection Act” under Act XIII of
1872. The Act of 1872 was further amended in 1883 (XVI
of 1883) to introduce a provision to protect novelty of the
invention, which prior to making application for their
protection were disclosed in the Exhibition of India. A
grace period of 6 months was provided for filing such
applications after the date of the opening of such
Exhibition.
43
• 1883 : THE PROTECTION OF INVENTIONS ACT.

• 1888 : CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT.
In the year 1883, certain modifications in the patent law were made in
United Kingdom and it was considered that those modifications should
also be incorporated in the Indian law. In 1888, an Act was introduced
to consolidate and amend the law relating to invention and designs in
conformity with the amendments made in the U.K. law.
44
• 1911 : THE INDIAN PATENTS & DESIGNS ACT.
The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced
all the previous Acts. This Act brought patent administration under
the management of Controller of Patents for the first time. This Act
was further amended in 1920 to enter into reciprocal arrangements
with UK and other countries for securing priority. In 1930, further
amendments were made to incorporate, inter-alia, provisions
relating to grant of secret patents, patent of addition, use of
invention by Government, powers of the Controller to rectify
register of patent and increase of term of the patent from 14 years
to 16 years. In 1945, an amendment was made to provide for filing
of provisional specification and submission of complete specification
within nine months.
45
1911 : THE INDIAN PATENTS & DESIGNS ACT.
After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective.
It was found desirable to enact comprehensive patent law owing to substantial changes in political and
economic conditions in the country. Accordingly, the Government of India constituted a committee under
the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 t o
review the patent law in India in order to ensure that the patent system is conducive to the national
interest. The terms of reference included—
• to survey and report on the working of the patent system in India;
• to examine the existing patent legislation in India and to make recommendations for improving it,
particularly with reference to the provisions concerned with the prevention of abuse of patent rights;
• to consider whether any special restrictions should be imposed on patent regarding food and medicine;
• to suggest steps for ensuring effective publicity to the patent system and to patent literature, particularly as
regards patents obtained by Indian inventors;
• to consider the necessity and feasibility of setting up a National Patents Trust;
• to consider the desirability or otherwise of regulating the profession of patent agents
• to examine the working of the Patent Office and the services rendered by it to the public and make suitable
recommendations for improvement; and
• to report generally on any improvement that the Committee thinks fit to recommend for enabling the
Indian Patent System to be more conducive to national interest by encouraging invention and the
commercial development and use of inventions.
46
1911 : THE INDIAN PATENTS & DESIGNS ACT.
• The committee submitted its interim report on 4th August, 1949 with recommendations for
prevention of misuse or abuse of patent right in India and suggested amendments to sections
22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts
1919 and 1949. The committee also observed that the Patents Act should contain clear
indication to ensure that food and medicine and surgical and curative devices are made
available to the public at the cheapest price commensurate with giving reasonable
compensation to the patentee.
• Based on the above recommendation of the Committee, the 1911 Act was amended in
1950(Act XXXII of 1950) in relation to working of inventions and compulsory
licence/revocation. Other provisions were related to endorsement of the patent with the
words ‘licence of right’ on an application by the Government so that the Controller could
grant licences. In 1952 (Act LXX of 1952) an amendment was made to provide compulsory
licence in relation to patents in respect of food and medicines, insecticide, germicide or
fungicide and a process for producing substance or any invention relating to surgical or
curative devices. The compulsory licence was also available on notification by the Central
Government. Based on the recommendations of the Committee, a bill was introduced in the
Parliament in 1953 (Bill No.59 of 1953). However, the Government did not press for the
consideration of the bill and it was allowed to lapse.
47
1972 : THE PATENTS ACT (ACT 39 OF 1970)
CAME INTO FORCE ON 20TH APRIL 1972.
• In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar
Committee to examine the question of revision of the Patent Law and advise
government accordingly. The report of the Committee, which comprised of two parts,
was submitted in September, 1959. The first part dealt with general aspects of the
Patent Law and the second part gave detailed note on the several clauses of the
lapsed bills 1953. The first part also dealt with evils of the patent system and solution
with recommendations in regards to the law. The committee recommended retention
of the Patent System, despite its shortcomings. This report recommended major
changes in the law which formed the basis of the introduction of the Patents Bill,
1965. This bill was introduced in the Lok Sabha on 21st September, 1965, which
however lapsed. In 1967, again an amended bill was introduced which was referred to
a Joint Parliamentary Committee and on the final recommendation of the Committee,
the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far
as the patents law was concerned. However, the 1911 Act continued to be applicable
to designs. Most of the provisions of the 1970 Act were brought into force on 20 th
April 1972 with publication of the Patent Rules, 1972.
48
1999 : ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999)
CAME INTO FORCE FROM 01-01-1995.
• The 1972 Act remained in force for about 24 years without any
change till December 1994. An ordinance effecting certain changes
in the Act was issued on 31 st December 1994, which ceased to
operate after six months. Subsequently, another ordinance was
issued in 1999. This ordinance was subsequently replaced by t he
Patents (Amendment) Act, 1999 that was brought into force
retrospectively from 1 st January, 1995. The amended Act provided
for filing of applications for product patents in the areas of drugs,
pharmaceuticals and agro chemicals though such patents were not
allowed. However, such applications were to be examined only after
31-12-2004. Meanwhile, the applicants could be allowed Exclusive
Marketing Rights (EMR) to sell or distribute these products in India,
subject to fulfilment of certain conditions.
49
2002 : THE PATENTS (AMENDMENT) ACT 2002 CAME INTO
FORCE FROM 2OTH MAY 2003
The second amendment to the 1970 Act was

made through the Patents (Amendment) Act,
2002 (Act 38 0f 2002). This Act came into
force on 20 th May 2003 with the introduction
of the new Patent Rules, 2003 by replacing the
earlier Patents Rules, 1972.
50
2005 : THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM Ist
JANUARY 2005
The third amendment to the Patents Act 1970

was introduced through the Patents
(Amendment) Ordinance, 2004 w.e.f. 1 st
January, 2005. This Ordinance was later
replaced by the Patents (Amendment) Act
2005 (Act 15 Of 2005 ) on 4 th April, 2005
which was brought into force from 1-1-2005.
51
Major Changes Introduced by The 2005
Amendment
• The 2005 Amendment amended many
provisions of the Act; these amendments were
absolutely necessary for India to meet its
obligation under TRIPS Agreement. Some of
important amendments are discussed below -
52
Amendment
• Extension of product patent protection to all fields of
technology
The most prominent and controversial change of the 2005
Amendment has been the deletion of section 5 of the Act,
thereby paving the way for product patents in the area of
pharmaceutical and other chemical inventions. Section 5
of the Act (as it stood after the 2002 amendments) had
provided that, in the case of inventions being claimed
relating to food, medicine, drugs or chemical substances,
only patents relating to the methods or processes of
manufacture of such substances could be obtained.
53
Amendment
• No Swiss Claims and Expansion of Exclusion under Section 3(d)
A ‘Swiss Claim’ is a claim for patent wherein the use of a substance or

composition that has already been used for a medical purpose is intended
or specified to be used for a new medical purpose. Section 3(d) as
amended by the 2005 Amendment clarifies that mere discovery of a new
form of a known substance, which does not result in the enhancement of
the known efficacy of that substance is not an invention and therefore not
patentable. 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
substances are to be considered to be the same substances, unless they
differ significantly in properties with regard to efficacy.
54
Amendment
• Software Patentability
Section 3(k) of the Patents Act, 1970 excluded “a computer
programme per se” from the scope of patentability. This exclusion
met with conflicting interpretations at the patent office, with some
examiners granting patents to software combined with hardware or
software with a demonstrable technical application of some sort.
The 2004 Ordinance therefore qualified this exclusion by stating that
software with a “technical application” to industry or when
“combined with hardware” would be patentable. Owing to vigorous
opposition from the free software movement, this provision was
removed from the 2005 Act. The earlier position under the Patents
Act, 1970 that a computer programme per se is not patentable now
prevails.
55
Amendment
• Deletion of the provisions relating to Exclusive Marketing Rights (EMRs)
Section 21 of 2005 Amendment deleted the Chapter IV-A of the Act. The
1999 Amendment inserted this chapter in the Act to provide that
applications claiming pharmaceutical inventions would be accepted and
put away in a mailbox, to be examined in 2005. These applications are
commonly referred to as ‘mailbox applications’. This amendment was in
pursuance of a TRIPS obligation aimed at preserving the novelty of
pharmaceutical inventions in those developing and least developed
country (LDC) members that did not grant product patents for
pharmaceutical inventions in 1995[12]. By virtue of this ‘mailbox facility’,
applications would be judged for ‘novelty’ on the basis of the filing date
and not with reference to 2005, the year in which product patents were
first incorporated into the patent regime.
56
To obtain an EMR, the following conditions must be
fulfilled:
a) The product must be patentable, that is, it must be an invention as per

Section 2 of the Patents Act 1970, and must not fall under the non-
patentable products listed in Sections 3 and 4, such as products derived
from traditional knowledge or atomic energy-related products.
b) The invention must have been made in India or in a WTO Convention
country. If made in a convention country, the invention must have been:
(i) Filed on or after January 1, 1995, and
(ii) Before getting a patent in India, the applicant must have obtained such
a patent in the Convention country.

c) If the invention has been made in India,
(i) The application for patent for the method or process of production of
such a substance should have been filed on or after January 1, 1995, and
(ii) The patent must have been granted on or after the date of filing of such
EMR.
57
Amendment
• Compulsory Licensing Regime
Section 84 of The Act provides for the grounds on and procedures by
which, a compulsory license will be granted. The 1999 Amendment adds
an entire chapter to the Patents Act on the working of patents,
compulsory licenses, and revocation of licenses. After this amendment,
the grounds on which a compulsory license will be granted are:

a. Reasonable requirements of the public with respect to the patented
invention have not been satisfied; or,
b.The patented invention is not available to the public at a reasonably
affordable price; or,
c. The patented invention is not worked (i.e. not used or performed) in the
territory of India.
58
In respect to the 2005 Amendment following amendments have been made in respect of compulsory licencening regime -
a) Automatic Compulsory Licences for Mailbox Applications

The 2005 Amendemt provides that in the case of those
mailbox applications that result in the grant of a patent, an
automatic compulsory licence would issue to those generic
companies that made a ‘significant investment’ and were
‘producing and marketing’ a drug covered by the mailbox
application prior to 2005.Such licence is subject to a payment
of a ‘reasonable royalty’. However, no specific yardstick is
provided to determine ‘reasonableness’ and this term is likely
to lead to disputes in coming years.
59
b) Compulsory Licences for Exports
In order to incorporate what is commonly referred to as the Paragraph 6 Decision,

the Ordinance introduced section 92A, which provides for compulsory licences to
enable exports of pharmaceutical products to those countries with no manufacturing
capacity of their own. Unfortunately, this suffered from a handicap - the provision
required that the exporter obtain a compulsory licence from the importing country as
well. In the process, the provision failed to cater to those situations where there was
no patent in such importing country and no requirement for obtaining a compulsory
licence there. The 2005 Amenment therefore seeks to rectify this by adding that an
exporter can resort to section 92A where the importing country “has by notification
or otherwise allowed importation of the patented pharmaceutical products from
India”.

60
c) Procedural Changes
The general compulsory licensing procedure under
Chapter XVI states that in most cases, a compulsory
licensing application can be entertained only if
negotiations towards a voluntary licence have not
borne fruit within a reasonable time period. In order
to prevent patentees from dragging on voluntary
negotiations to the detriment of applicants, the Act
caps a ‘reasonable’ period of negotiations at six
months.
61
Other Amendments
There are many changes brought by the 2005 Amendment in the provisions of the Act, that can be summarized as
follows -
a) The 2005 Amendment amend the definition of “New Invention”,“Inventive Step” and insert a new entry of
“Pharmaceutical Substances” in the definition clause.
b) Provision of 'acceptance of specification' and its advertisement have been deleted.

c) Modification in the provisions relating to opposition procedures with a view to streamlining the system by having
both Pre-grant and Post-grant opposition in the Patent Office.

d) Application for patent will be published in Official Journal. At that time opposition can be made on limited
grounds but hearing is not mandatory.

e) After grant of patent, opposition can be made within 12 months.

f) Suit for infringement of patent cannot commence before date of publication of publication of the application.

g) Penalties enhanced substantially.

h) Strengthening the provisions relating to national security to guard against patenting abroad of dual use
technologies.

i) Rationalisation of provisions relating to time-lines with a view to introducing flexibility and reducing the
processing time for patent applications, and simplifying and rationalising procedures.
62
Who can Apply for Patent & How?
If the inventor is employee of an organization, the inventions made during
the employment would be patentable in the name of the employee.
However, the ownership of the patent (i.e. rights of using, manufacturing,
selling etc.) will be dependent on the terms of contract between the
employee and employer. It is a common practice in the R&D
organizations to keep the ownership rights with the employer though the
patent is in the employee’s (inventor’s) name.
• Filing a Patent Application (Provisional and Complete Specification )
• Request for Examination
• priority date
• Publication of the Application( after 18 months w.r.t date of filling or date
of priority which one is the earliest)
• Opposition to the Grant of Patent(with in 4 month)
• Examination of the Application(request with 12-48 months of filling)
• Grant and Sealing of Patent(on request)
63
Complete specification
• Title
• Preamble of the invention
• Technical field
• Background of the invention
• Objects of the invention
• Statement of the invention
• Brief description of the drawings
• Detailed description of the invention
• Claims and
• Abstract.
RVCE, 2017-18 IPRE, VI Sem 64
OPPOSITION TO THE GRANT OF PATENT
(pre-grant )
• It formed part of the prior-art on the date of application and could be
anticipated; or
• The specification does not clearly and sufficiently describe the invention or
the method by which it is to be performed; or
• The applicant has not disclosed the necessary information or has furnished
false information in any material particular; or
• In the case of convention application (an application filed in India following
a patent application for the same invention made in a convention country),
the application was not made within 12 months of the filing of the first
application; or
• The complete specification does not disclose or wrongly mentions the

source or geographical origin or biological origin of biological material used
for the invention.
65
(post-grant )
• The invention was wrongfully obtained by the
inventor/applicant; or
• The invention, as claimed in any claim of the complete

specification has been anticipated by or published in an earlier
patent or any other publication; or
• The invention as claimed in any claim was publicly

known/used in India before the priority date of the claim; or
• The invention is obvious and does not involve any inventive
step; or
• Specification does not sufficiently and clearly describe the
invention, or the method to perform it; or
66
(post-grant )
• The subject of the patent is not an invention, within the meaning of the Act;
or

• The information as required by the controllers regarding corresponding
patent applications filed in other countries as furnished is false; or

• Geographical origin of biological material is not disclosed or falsely
disclosed; or

• In the case of a convention application, the application was not made in the
prescribed time; or

• The invention as claimed is anticipated having regard to the knowledge oral
or otherwise available within a local or indigenous community in India or
elsewhere.
67
Rights of a Patentee
• Right to exploit the patent
• Right to assign and license (A license or an assignment to be valid must be in
writing and registered with the Controller of Patents.)
• Right to surrender(The Controller, before accepting the offer of surrender will
advertise the same so as to give an opportunity to the interested parties to oppose
the offer of surrender.)
• Rights before sealing
• Right to apply for “patents of addition”
• Rights to make a convention application
• Right to be issued duplicate patent
• Right to sue for infringement
• Right to be supplied copies and certificates
68
Limitations on Patentee’s Rights
• Use by government :Any patented product or process or a product made using
patented process may be used by or on behalf of the Government for its own use
only - an invention is said to be used for the purposes of Government if it is
made, used, exercised or vended for the purposes of the Central Government,
State Government or a Government undertaking;
• Use for experiment, research and teaching: A patented article or article made
by use of patented process may be used by any person for experiment, research
or for imparting instructions to pupils; not withstanding the rights of the patentee.
• In case of a patent in respect of any medicine or drug, the medicine or drug may
be imported by the Government for its own use or for distribution in any
dispensary, hospital or other medical institution maintained by or on behalf of the
Government.
69
Acquisition of patents and inventions by Central Government
• If the Central Government is satisfied that it is

necessary for public purpose to acquire an
invention for which a patent has been granted or an
application for patent has been filed, it can publish
a notification in the official Gazette and all rights
in respect of the invention stand transferred to the
Central Government. The Central Government will
be liable to pay compensation to the applicant or
the patentee as may be mutually agreed upon.
70
Compulsory licences
The IPA, provides for compulsory license of patent to a third party by the Controller,
on application made at any time after expiry of three years from the date of sealing of
the patent, on the following grounds:
• The reasonable requirements of the public with respect to the patented invention
have not been satisfied;
• The patented invention is not available to the public at a reasonably affordable price;
• The patented invention is not worked in India.
• The IPA also has special provision for compulsory licenses on notifications by the
Central Government in a case of national emergency, or of extreme urgency or of
public non-commercial use.
71
Compulsory licences
1. In deciding on the application, the controller is required to take
into account several factors including the nature of the invention,
the time which has elapsed since the sealing of the patent, the
measures taken by the patentee to make full use of the invention,
the ability of the applicant to work the invention to the public
advantage, and the applicant’s capacity to take capital risk
2. A compulsory license can be terminated on patentee’s request
when the circumstances in which the grant was made no longer
exist and are unlikely to recur. The holder of the compulsory
license can of course object to the application and the Controller
shall take into account that the licensee’s interest is not unduly
prejudiced.
72
Limitations on Patentee’s Rights
• Inventions for defense purposes
• Use in foreign vessels etc.
73
Duties and obligations of patentee
• If granted monopoly abused, Compulsory
licence to any person willing to work the patent
• Patent available to public at reasonable prices
• Restrained from making baseless and
unjustifiable threats for infringement of patent.
• Fail to send Periodical statements to controller
is punishable.
74
Revocation of Patents
For a patent under a compulsory licence, the Central Government or any
person interested can make an application after the expiration of two years
from the date of compulsory license for revocation of the patent. The grounds
for the revocation would be:
• The invention has not been worked in India.
• The reasonable requirements of the public have not been satisfied
• The invention is not available to the public at reasonable price.
The controller, after giving opportunities to the patentee to oppose the

application, may decide on revocation on merit.
75
A patent may be revoked in the following ways :
• Revocation in the public interest by the central government.
• Revocation of patents relating to atomic energy by the
controller.
• Revocation for non-working.
• Revocation by the high court on petition for failure to
comply with the requirements of the central government to
use the invention.
• Revocation by the high court on a petition by persons
interested on various specified grounds.
76
Grounds relating to the rights of patentee :
• The patentee is not entitled to the patent.
• The patentee had obtained the patent wrongfully.
• The patentee obtained patent by false suggestion or
representation.
• There was failure on his part to disclose information
regarding foreign applications.
• There was non-compliance with directions for secrecy.
• The amendment of specification was obtained by fraud.
77
Grounds relating to the description of invention:
• Insufficient description and non-disclosure of
best method of performing the invention.
• Unclear definition of the claims and claims not
fairly based.
78
Grounds relating to the invention and its quality:
• Subject of invention not patentable.
• Subject of claim not an invention.
• Prior secret use of the invention before the priority
date.
• Lack of novelty or anticipation.
• Obviousness or Lack of inventive-step.
• Invention is not useful or in utility.
• Invention, already subject matter of a grant.
79
TRANSFER OF PATENT
A patent is an exclusive property of the inventor and hence can be
transferred from the original patentee to any other person by

assignment, grant of licence, or operation of law
The IPA requires that an assignment, licence or a creation of any other

interest in a patent must be in writing, clearly specifying all the terms
and conditions governing the rights and obligations of the parties. This
document must be registered in the prescribed manner within the
prescribed time. The person getting such entitlement in a patent has to
apply in writing to the Controller for the registration of the title.
80
TRANSFER OF PATENT
• A patent may be transferred by the patentee
to another parson in the following ways:
 by granting a licence.
 by assignment.
 by transmission.
81
LICENCE
• The patentee is entitled to give licence of right
for making use of the patent to any person in
accordance with the procedure prescribed in
the patent act and rules. There are two types
of licences: (i) Compulsory licence.
(ii) Licence of right.
82
COMPULSORY LICENSING
·Non-working of invention in India is made
ground for Compulsory License .
·Also non-working of patent in India shall be a

ground for requesting the Controller to revoke
the Patent after two years from the date of first
compulsory license was granted .
83
• Reasonable requirement of public: failure to
manufacture in India is not to be considered for
this purpose. However, coercive licensing package
is to be considered for this purpose.
• Compulsory License shall be non-exclusive, non-

assignable and predominantly for Indian market.
84
COSORMPULY LICENSING
• While granting Compulsory Licence, except in case
of national emergency, extreme urgency, public
non-commercial use or anti-competitive practices
adopted by the patentee, Controller has to take
into account where the applicant (for compulsory
licence) has made efforts to obtain licence from
patentee on reasonable commercial terms and
conditions and whether such efforts have not
been successful within reasonable period.
85
• Any person who is interested may make, an
application to the controller, at any time after
the expiration of three years from the date of
sealing, praying for the grant of a compulsory
licence to work the patented invention.
86
• In such case, Controller may grant a compulsory
licence, provided he takes into account :
 Nature of invention and the measures already
taken by the patentee or the licencee to make full
use of the invention.
 Ability of the applicant to work the invention to
the public advantage
 Capacity of the applicant to undertake the risk in
providing capital and working the invention.
87
LICENSE OF RIGHT
· Provisions for “License of Right” (S: 86,87 & 88)
are omitted.
· These provisions provided that upon

application a patent would be endorsed with
“License of Right” if reasonable requirements
of the public were not met.
88
License of Right
· Also, patents for inventions capable of being
used as food/ medicine/ drug (and processes
for them) as well of chemical substance
(including alloys, optical glass etc) were
deemed with to be endorsed as “License of
Right” after a period of three years from the
date of expiry of the sealing of the patent.
89
Licence
A licence confers a privilege on another person through an agreement
to make, use or exercise the invention. The person to whom the
privilege is transferred is called the licensee. The licence agreement
does not transfer any interest in the patent. A licence merely transfers
a right in patent as compared to an assignment in which there is
transfer of interest.
There are three kinds of licences:
• Voluntary licence
• Statutory licence
• Exclusive licence
90
Licence
Voluntary licence
When the patentee, by a written agreement, empowers another person to make, use or exercise the
patented invention in a particular manner and on agreed terms and conditions it is called a voluntary
licence. The Controller of Patents and the Central Government do not have any role in such licence.
Statutory licence
When the licence is granted by the Controller and the Central Government as a compulsory licence it
Is termed as statutory licence. In this case, the terms and conditions of the licence agreement do not
depend upon the will of the patentee and the licensee.
Exclusive licence
In case of exclusive licence, the patentee confers exclusive right to make, use, sell or distribute the
patented invention to a particular person to the exclusion of all others. Such a person will hold an
exclusive licence in the patent. The exclusive licensee has the right to initiate infringement proceedings
against an infringer. The patentee has the right to impose certain restrictive conditions on the rights of
the licensee. But no such restrictions can be imposed which are against the public interest.
91
Licence
• Another mode of transmission of patent by
operation of law is provided where the Central
Government acquires a patent from the
patentee for public purpose.
92
Assignment
• An assignment means transfer of interest in the patent by the patentee to
another person in whole or in part valid over entire or a part of India. The
person to whom the right in patent is assigned is called the assignee and the
person who assigns the right is called the assignor.
There are three kinds of assignment
• Legal assignment(Register of Patents maintained by the Patent
Office as the proprietor of the patent)
• Equitable assignment(by a document (e.g. a letter), and not by an
agreement)
• Mortgage(When the patentee transfers the patent rights either wholly or in
part to the mortgagee to secure a specified sum of money, such assignment is
called mortgage. The patentee can get the patent re-transferred on refund of
the consideration money.)
93
TRANSMISSION
• When a patentee dies or becomes
insolvent/bankrupt or in case of a company, it
is dissolved, the patent may be transferred by
law. The legal process is called transmission of
the patent.
94
Public use of invention
• The public use and exercise of an invention
means a use and exercise in public, not by the
public.
• A licence may be express or implied or
statutory.
95
Infringement of Patent
• Patent infringement is the act of making, using, selling, or
offering to sell a patented invention, or importing a product
covered by a claim of a patent without the permission of the
patent owner. Further, you may be considered to infringe a
patent if you import items that are made by a patented method,
unless the item is materially changed by subsequent processes or
becomes a trivial and nonessential component of another
product. A person “infringes” a patent by practicing each
element of a patent claim with respect to one of these acts.
Further, actively encouraging others to infringe patents, or
supplying or importing components of a patented invention, and
related acts can also give rise to liability in certain cases.
96
INFRINGEMENT OF PATENT
The following acts of the defendant can amount to infringement:
• Colorable imitation of patented invention;

• Copying essential features of patented invention;
• Variation of non-essential features of patented invention;
• Chemical or mechanical equivalents.
The period of limitation for instituting a suit for infringement is 3 years from
the date of infringement. However, it is not necessary to send a notice of
infringement to the defendant before filing the suit for infringement.
97
• If the patent owner is able to prove
infringement, the court may order you to pay
monetary damages and/or stop infringing one
or more patent claims. A court can also find
that (1) you do not need a license to the patent
because you don’t practice the invention, (2)
one or more of the patent claims are not valid,
or (3) there are other reasons why the patent
owner is not entitled to prevail against you.
98
• The court may conclude that the patent claim is not valid if it is
shown that the claimed invention was disclosed in a prior patent
or patents, a book, a magazine, a newspaper, a television show
or movie, a webpage or other published work before the date of
the claimed invention. Also the court may conclude that the
patent claim is not valid if it is shown that the claimed invention
was offered for sale in this country or was disclosed to the public
more than one year before the application for the patent was
filed. In addition, the court could find the patent invalid because
it does not meet other statutory requirements, such as a
sufficient written description of the invention, or because it does
not describe subject matter that is patent eligible.
99
• Direct infringement
• Indirect infringement
• Time of infringement: The use of chemical
equivalents in place of the chemicals used in
the patented process will not avoid
infringement if the chemical equivalents, were
known at the time of specification. But if they
were not so known, the use of such chemical
equivalents will not infringe the patent.
100
• Remedy for infringement: An action for an
infringement of a patent must be instituted by
way of a suit in any direct court or a high court
having jurisdiction to try the suit.
101
• Who can file a suit ? Patentee, exclusive
licensee, compulsory licensee, an asignee and
a co-owner.
• Who may petition the high court ? Any person
interested, the central government, the
person making counter-claim in a suit for the
infringement of a patent.
102
Who may be sued?
An infringer, manufacturer, dealer, their
servents and agents, users of patented
articals, person threatening to infringe.
103
• Defences available to defendants:
I. Plaintiff is not entitled to sue for infringement.
II. The allegation of infringements is false.
III. There was permission or licence to use the invention.
IV. The claims alleged to be infringed are invalid.
V. The existence of a restrictive contract is declared unlawful.
VI. The act complained is covered within the scope of
innocent infringement or done after lapse of patent
VII.The alleged infringement of the patent which is not novel
or it is obvious.
104
• Reliefs that may be granted: The reliefs available to
a successful plaintiff in a suit for infringement
include:
I. An injunction.
II. Damages.
III. An account of profit.
IV. An order for deliver-up or destruction.
V. Certificate of validity.
VI. Costs.
105
Relief in Suit for Infringement
The patentee, on being successful in a suit for infringement is entitled to an
• Injunction
• damages or accounts,
• otherwise.
Injunction’ is a normal remedy, though discretionary on the part of the Court. It stops the
Infringement during the pendency of the proceedings.
‘Damages’ account for the loss in money terms suffered by the owner of the patent due to
infringement. ‘Accounts’ relates to the account of net profits earned by the defendant (infringer).
Damages and Accounts are alternative remedies; the owner can chose only one of them, not both.
‘Otherwise’ as a remedy is a general provision which authorizes the court to grant such other
reliefs as it may deem necessary for complete redressal of the complaint. For example, the court
may order that the infringing goods or materials and implements shall be seized, forfeited or
destroyed.
106
India’s plant variety protection and
Farmers’ Rights Act, 2001
The 1986 GATT Round, popularly known as the Uruguay Round, brought in new
elements into the trade discussion, especially relating to agriculture (Box 1). One of
the most controversial agreements of the Uruguay Round is that relating to the
granting of Intellectual Property Rights on biological materials embodied in the
Trade Related Intellectual Property Rights (TRIPS) chapter. TRIPS specifically
requires member nations to grant patents on microorganisms, non/biological and
microbiological processes as well as effective IPR protection for plant varieties.
TRIPS provides a choice for protecting plant varieties. Members may choose from
patents, a sui generis system or a combination of the two. Most developing
countries including India have decided not to have patents for plant varieties
and have chosen the sui generis option instead. The sui generis system
(translating roughly into self generating)means any system a country decides
on, provided it grants effective Plant Breeders’ Rights.
107
The Indian legislation succeeds in balancing the rights of Breeders and Farmers
and exploits the flexibility granted in TRIPS, in an intelligent manner. There are
clauses to protect the rights of researchers and provisions to protect the public
interest.
Breeders’ rights
• Breeders can claim IPR, provided their varieties are novel, distinct, uniform and
stable.
• This IPR comes as a Plant Breeders' Right - an exclusive right to produce, sell,
market, distribute, import or export the variety.
Scope of this right include
• Term of 18 years (trees and vines) and 15 years (extant varieties & other fields).
• Allows usage of variety for conducting research - Breeders' exemption .
• Discourages protection where contrary to public health.
• No protection for any genera or species involving genetic use restriction and
terminator technology.
108
Rights of researchers
Allows scientists and breeders to have free access to registered varieties
for research. The registered variety can also be used for the purpose of
creating other, new varieties. The breeder cannot stop other breeders from
using his/her variety to breed new crop varieties except when the registered
variety needs to be used repeatedly as a parental line.
109
The Patent Second Amendment Act, 2002
It is the Patent Second Amendment Act that makes distinct concessions to the
Biotechnology sector and the breeding of transgenic crops. According to this Act,
process patents will be allowed on microbiological, biochemical and biotechnological
processes. Meaning methods of genetic engineering, processes in the pharmaceutical
industry using microorganisms and related processes will be patentable.
what constitutes a patentable process ?

Processes and methods for making plants resistant to disease and for increasing their
value or the value of their products, will be patentable.
110
Farmers’ rights
The farmer . . . ‘shall be deemed to be entitled to save, use, sow, resow,
exchange, share or sell his farm produce including seed of a variety
protected under this Act in the same manner as he was entitled before the
coming into force of this Act.; Provided that the farmer shall not be entitled
to sell branded seed of a variety protected under this Act.
Explanation: For the purpose of clause (iii) branded seed means
any seed put in a package or any other container and labelled
in a manner indicating that such seed is of a variety protected
under this Act.
111
Farmers’ Rights
Breeders wanting to use farmers’ varieties for creating (Essential Derived Variety)
EDVs cannot do so without the express permission of the farmers involved in the
conservation of such varieties. Anyone is entitled to register a community’s claim
and have it duly recorded at a notified centre. This intervention enables the
registration of farmer varieties even if the farmers themselves cannot do this due to
illiteracy or lack of awareness. If the claim on behalf of the community is found to be
genuine, a procedure is initiated for benefit sharing so that a share of profits made
from the use of a farmer variety in a new variety goes into a National Gene Fund.
Part of Farmers' act

• GURT (terminator) forbidden
• Protection against innocent infringement
• Exemption from fees
• Protection against bad seed
• Compulsory license
112
Biotechnology patents
The Dimminaco case was related to a process for the preparation of a live vaccine for
protecting poultry against Bursitis infection. The Controller of Patents had refused the
application for grant of patent on the ground that the vaccine involved processing of certain
microbial substances and contained gene sequence. The Controller had decided that the
said claim was not patentable because the claimed process was only a natural process devoid
of any manufacturing activity and the end-product contained living material.
The Hon’ble High Court held that the word “manufacture” was not defined in the statute
therefore, the dictionary meaning attributed to the word in the particular trade or business
can be accepted if the end product is a commercial entity. The court further held that there
was no statutory bar in the patent statute to accept a manner of manufacture as patentable
even if the end product contained a living organism. The court asserted that one of the most
common tests was the vendibility test. The said test would be satisfied if the invention
resulted in the production of some vendible item or it improved or restored the former
conditions of the vendible item or its effect was the preservation and prevention from
deterioration of some vendible product. The court further stated that the vendible product
meant something which could be passed on from one man to another upon transaction of
purchase and sale. In other words, the product should be a commercial entity.
113
Biotechnology patents
Patents (Amendment) Act, 2002 where biochemical, biotechnological and

microbiological processes were included within the scope of chemical processes for the
grant of patent. The definition of “invention” was also changed to “any new product or
process involving an inventive step and capable of industrial application” thereby
deleting the word “manner of manufacture” as mentioned in the earlier Act.
India joined the Budapest Treaty on the International Recognition of the Deposit of
Microorganisms for the Purposes of Patent Procedure on 17th December 2001.
Consequently, section 10 of the Act was amended in 2002 to provide for deposition of
the biological material and its reference in the patent application in case the invention
relates to a biological material which is not possible to be described in a sufficient
manner and which is not available to the public. The Patents Act, 1970 was amended by
the Patents (Amendment) Act, 2005 paving the way for the grant of product patents in
any field of technology including biotechnology with certain exceptions keeping in view
the national policy to protect the public interest. The Act, as amended, recognizes the
International Depository Authorities (IDAs) under the Budapest Treaty.
114
BIODIVERSITY
The Biological Diversity Act, 2002 (hereinafter referred to as BD Act) provides a

mechanism for access to the genetic resources and benefit sharing accrued
therefrom. It prescribes that obtaining IPRs from the utilization of biological
resources in India is subject to the approval of the National Biodiversity
Authority
To facilitate this access and benefit sharing and in order to prevent any
unauthorized use of the biological resources of India, in 2005 suitable amendments
were made , wherein disclosure of the source and geographical origin of the
biological material was made mandatory in an application for patent when the said
material is used in an invention. In addition, a declaration by the applicant
regarding the required permission from the competent authority was inserted .
115
TRADITIONAL KNOWLEDGE RELATED
INVENTIONS
SECTION 3(P)
According to Section 3 (p) of the Act, an invention which, in effect, is traditional
knowledge or which is an aggregation or duplication of known properties of
traditionally known component or components is not a patentable subject matter.
ILLUSTRATIVE EXAMPLE:
Claim: Serum of pigeon possessing the anti-paralysis activity.
Analysis: The use of pigeon serum for the treatment of paralysis (as it possess anti-
paralytic activity) is a traditional knowledge in India or is an aggregation or
duplication of known properties of traditionally known component. It is clearly
evident from D1 (Mahawar et al., “Animals and their products utilized as medicines
by the inhabitants surrounding the Ranthambhore National Park, India”, Journal of
Ethnobiology and Ethnomedicine, 2006, 2:46, see entire document especially Table I),
which discloses the use of pigeon blood for treating paralysis.
116
Patent rights on micro-organism
With effect from 20 May 2003 India has started granting patents in respect
of invention related to microorganisms, though India was not obliged to
introduce laws for patenting microorganisms per se before 31 December 2004.
Microorganisms patenting was earlier considered to be a product patent, the
period of protection was five years from the date of grant or, seven years from
the date of filing of application for patent.
Now grant of patents for microbiological inventions is for a period of 20
years from the date of filing. India (or developing countries) does not allow
patenting of microorganisms that already exist in nature as the same is
considered to be a discovery according to the provisions of the section 3(d).
But genetically modified versions of the same microorganisms that result in
enhancement of its known efficacies and process of syntheses of that
microorganisum are patentable. The grant of patent in respect to
microorganisms depends upon the regulations concerning the requirements for
the deposition of microorganisms under the Budapest Treaty of which India has
become a member, and accessibility of that microorganism from the
depositories.
117

Chapter-1 A

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UNIT - I

• In 1886, copyright entered the international arena with the

What can be protected by Patents?

– An process, machine, manufacture or composition of matter or an

• “Nonobvious” means that:

• Further research and development on the patented technology..

A patent system encourages technological innovation and dissemination of

What about Patent Cooperation Treaty (PCT) of WIPO ?

Prior art or state of the art.

• Reasonable assurance for commercialization.

• Patent- open to public for use

• Make it public for free use by public(like publishing in the

Similar reasoning applies to the formulation of an abstract theory.

• Discovery of any living thing or non-living substances or objects occurring in nature;

• A substance obtained by a mere admixture of the components, or a process of producing such

• An invention which is frivolous or which claims anything obviously contrary to well

• An invention which in effect is traditional knowledge;

• A mathematical or business method or a computer programme per-se or algorithms.

• Plants and animals in whole or part thereof other than micro-organisms;

• Topography of integrated circuits (separate field).

• Substances prepared or produced by chemical processes (which include biochemical,

• 1883 : THE PROTECTION OF INVENTIONS ACT.

The second amendment to the 1970 Act was

The third amendment to the Patents Act 1970

A ‘Swiss Claim’ is a claim for patent wherein the use of a substance or

a) The product must be patentable, that is, it must be an invention as per

a) Automatic Compulsory Licences for Mailbox Applications

In order to incorporate what is commonly referred to as the Paragraph 6 Decision,

• The complete specification does not disclose or wrongly mentions the

• The invention, as claimed in any claim of the complete

• The invention as claimed in any claim was publicly

• If the Central Government is satisfied that it is

• The patented invention is not worked in India.

• The invention has not been worked in India.

• The reasonable requirements of the public have not been satisfied

• The invention is not available to the public at reasonable price.

The controller, after giving opportunities to the patentee to oppose the

transferred from the original patentee to any other person by

The IPA requires that an assignment, licence or a creation of any other

·Also non-working of patent in India shall be a

• Compulsory License shall be non-exclusive, non-

· These provisions provided that upon

• Colorable imitation of patented invention;

what constitutes a patentable process ?

Part of Farmers' act

Patents (Amendment) Act, 2002 where biochemical, biotechnological and

The Biological Diversity Act, 2002 (hereinafter referred to as BD Act) provides a

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