UNIT 6

INTELLECTUAL PROPERTY
RIGHTS
 PATENT LAWS
Meaning of patent
 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
 Firstly, the invention must be novel, meaning thereby that the Invention must not be in existence.
 Secondly, the Invention must be non- obvious, i.e. the Invention must be a significant improvement to the
previous one; mere change in technology will not give the right of the patent to the inventor.
 Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the Invention must not
be solely used in any illegal work and is useful to the world in a bonafide manner.
 History of Patent

 The first step of the patent in India was Act VI of 1856

 The Indian Patent and Design Act, 1911 repealed all previous acts
 The Patents Act 1970, along with the Patent Rules 1972, came into force on 20 April 1972, replacing the
Indian Patent and Design Act 1911.
 The Patents Act, 1970 was amended by the Patents (Amendment) Act, 2005 regarding extending product
patents in all areas of technology including food, medicine, chemicals and microorganisms.
 Paris Convention
 Berne Convention
What can be patented?
Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding what can be patented in India. There
are certain criteria which have to be fulfilled to obtain a patent in India. They are:
 Patent subject:
The most important consideration is to determine whether the Invention relates to a patent subject matter. Sections 3 and 4 of the Patents Act list
non-patentable subject matter. Unless the Invention comes under any provision of Section 3 or 4, it means that it consists of a subject for a patent.
 Novelty:
Innovation is an important criterion in determining the patent potential of an invention. Under Section 2(l) of the Patent Act, a novelty or new
Invention is defined as “no invention or technology published in any document before the date of filing of a patent application, anywhere in the
country or the world”. The complete specification, that is, the subject matter has not fallen into the public domain or is not part of state of the art”.
Simply, the novelty requirement basically states that an invention that should never have been published in the public domain. It must be the newest
which have no same or similar prior arts.
 Inventive steps or non-clarity:
Under Section 2(ja) of the Patents Act, an inventive step is defined as “the characteristic of an invention that involves technological advancement or
is of economic importance or both, as compared to existing knowledge, and invention not obvious to a person skilled in the art.” This means that the
invention should not be obvious to a person skilled in the same field where the invention is concerned. It should not be inventive and obvious for a
person skilled in the same field.
 Capable of industrial application:
Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the invention is capable of being made or used in an industry”. This basically
means that the Invention cannot exist in the abstract. It must be capable of being applied in any industry, which means that it must have practical
utility in respect of patent.
 Rights of Patentee
 Right to exploit patent: A patentee has the exclusive right to make use, exercise, sell or distribute the
patented article or substance in India, or to use or exercise the method or process if the patent is for a
person. This right can be exercised either by the patentee himself or by his agent or licensees. The
patentee’s rights are exercisable only during the term of the patent.
 Right to grant license: The patentee has the discretion to transfer rights or grant licenses or enter into
some other arrangement for a consideration. A license or an assignment must be in writing and registered
with the Controller of Patents, for it to be legitimate and valid. The document assigning a patent is not
admitted as evidence of title of any person to a patent unless registered and this is applicable to assignee
not to the assignor.
 Right to Surrender: A patentee has the right to surrender his patent, but before accepting the offer of
surrender, a notice of surrender is given to persons whose name is entered in the register as having an
interest in the patent and their objections, if any, considered. The application for surrender is also
published in the Official Gazette to enable interested persons to oppose.
 Right to sue for infringement: The patentee has a right to institute proceedings for infringement of the
patent in a District Court having jurisdiction to try the suit.
 Obligations of patentee
 Government use of patents: A patented invention may be used or even acquired by the Government, for its use only; it is
to be understood that the Government may also restrict or prohibit the usage of the patent under specific circumstances.
In case of a patent in respect of any medicine or drug, it may be imported by the Government for its own use or for
distribution in any dispensary, hospital or other medical institution run by or on behalf of the Government. The aforesaid
use can be made without the consent of the patentee or payment of any royalties. Apart from this, the Government may
also sell the article manufactured by patented process on royalties or may also require a patent on paying suitable
compensation.
 Compulsory licenses: If the patent is not worked satisfactorily to meet the reasonable requirements of the public, at a
reasonable price, the Controller may grant compulsory licenses to any applicant to work the patent. A compulsory license
is a provision under the Indian Patent Act which grants power to the Government to mandate a generic drug maker to
manufacture inexpensive medicine in public interest even as a patent in the product is valid. Compulsory licenses may
also be obtained in respect of related patents where one patent cannot be worked without using the related patent.
 Revocation of patent: A patent may be revoked in cases where there has been no work or unsatisfactory result to the
demand of the public in respect of the patented invention.
 Invention for defence purposes: Such patents may be subject to certain secrecy provisions, i.e. publication of the
Invention may be restricted or prohibited by directions of Controller. Upon continuance of such order or prohibition of
publication or communication of patented Invention, the application is debarred for using it, and the Central Government
might use it on payment of royalties to the applicant.
 Restored Patents: Once lapsed, a patent may be restored, provided that few limitations are imposed on the right of the
patentee. When the infringement was made between the period of the date of infringement and the date of the
advertisement of the application for reinstatement, the patent has no authority to take action for infringement.
 Procedure of Patent
Step 1: Write about inventions (idea or concept) with each and every detail.
 Collect all information about your Invention such as:
 Field of Invention
 What does the Invention describe
 How does it work
 Benefits of Invention
 If you worked on the Invention and during the research and development phase, you should have some call
lab records which are duly signed with the date by you and the concerned authority.

Step 2: It must involve a diagram, drawing and sketch explains the Invention
 Drawings and drawings should be designed so that the visual work can be better explained with the
invention work. They play an important role in patent applications.

Step 3: To check whether the Invention is patentable subject or not.

 Not all inventions can be patentable, as per the Indian Patent Act there are some inventions which have not
been declared patentable (inventions are not patentable).
 Step 4: Patent Discovery
 The next step will be to find out if your Invention meets all patent criteria as per the Indian Patent Act-
 The invention must be novel.
 The Invention must be non- obvious.
 The Invention must have industrial applications.

Step 5: File Patent Application

 If you are at a very early stage in research and development for your Invention, then you can go for a provisional
application. It offers the following benefits:
 Filing date.
 12 months time for filing full specification.
 Lesser cost
 After filing a provisional application, you secure the filing date, which is very important in the patent 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 the 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: Request for Examination

 The patent application is scrutinized only after receiving a request for an RFE examination. After receiving this request, the
Controller gives your patent application to a patent examiner who examines the patent application such as the various patent
eligibility criteria:
 Patent subject
 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 objections
 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:
 Once all patent requirements are met, the application will be placed for the grant. The grant of a patent is
notified in the Patent Journal, which is published periodically.
 Inventions Not Patentable in India
For an invention to be patentable in India, the invention must be a new product or process, involving an
inventive step and capable of being made or used in an industry. Further, the invention must also meet certain
criteria pertaining to novelty, inventive step and industrial applicability to be patentable
 Frivolous or Misleading Inventions
An invention which is frivolous or which claims an inventions obviously contrary to well established laws
cannot be patented.
 Inventions Contrary to Public Order or Morality
Any invention having a primary or intended use which would be contrary to public order or morality or which
would cause harm to human, animal or plant life or health or to the environment is not a patentable invention.
 Mere Discovery of a Scientific Principle or Abstract Theory
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any
living thing or non-living substance occurring in nature is not a patentable invention. A mere claim for
discovery of scientific principle is not considered to be an invention, but such a principle when used with a
process of manufacturing a substance or an article may be considered to be an invention.
 Mere Discovery of a New Form of a Known Substance
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 is not an invention.
 Substance Obtained by a Mere Admixture
A substance obtained by a mere admixture resulting only in the aggregation of the properties of the
components thereof or a process for producing such substance is not an invention. However, an admixture
resulting in synergistic properties is not considered as mere admixture, e.g., a soap, detergent, lubricant and
polymer composition etc, and hence maybe patentable.
 Arrangement or Re-arrangement or Duplication of Known Devices
The mere arrangement or re-arrangement or duplication of known devices each functioning independently
of one another in a known way is not an invention.
 Method of Agriculture or Horticulture
Any method of agriculture or horticulture is not an invention.
 Process for Medicine, Curative or Treatment of Human Being
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 is not a patentable invention. However, patent maybe
obtained for surgical, therapeutic or diagnostic instrument or apparatus. Also the manufacture of prostheses
or artificial limbs are patentable.
 Plants and Animals
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 are not
patentable inventions. Only, a genetically modified microorganisms may be patentable subject to other
requirements of patentability.
 Mathematical or Business Model or a Computer Programs
A mathematical or business method or a computer programme per se or algorithms are not inventions and
hence not patentable.
 Copyright Act, 1957

 The Copyright Act, 1957, governs the law pertaining to copyright in India.
 Copyright is a type of intellectual property right.
 Authors who have original works such as works of literature (including computer programs, tables,
collections, computer datasets, expressed in words, codes, schemes, or in any other context, along with
a device readable medium), dramatic, musical, and artistic works, cinematographic films, and audio
recordings are all awarded copyright safeguards under Indian law.
The major goals of this copyright law are twofold:
 First, to guarantee authors, musicians, painters, designers, and other creative individuals the right to their
creative interpretation;
 to guarantee the original expression of writers, songwriters, designers, artists, and other creatives, as
well as film and sound recording producers, who risked their money to present their works to the public. and
 second, to enable others to openly develop upon the concepts and knowledge made available by a work. A
work’s knowledge and suggestions can be freely expanded upon by others, thanks to copyright legislation
Subject matter of copyright
All subject matters protected by copyright are called ‘works’. Thus
according to Section 13 of The Copyright Act 1957, it may be subjected
for the following works:
 Original Literary Work,
 Original Dramatic work,
 Original Musical work,
 Original Artistic Work,
 Cinematography films, and
 Sound recordings.
 Original Literary Work
It is the product of the human mind which may consist of a series of
verbal or numerical statements, not necessarily possessing aesthetic
merit, capable of being expressed in writing, and which has been
arrived at by the exercise of substantial independent skill, creative
labor, or judgment.

 Original Dramatic Work

According to the Copyright Act,1957, the dramatic work includes any
piece for recitation, choreographic work or entertainment in dumb
shows, the scenic arrangement or acting form which is fixed in
writing
 Original Musical Work
According to the Copyright Act, 1957, musical work means any work
consisting of music and includes any graphical notion of such work, but
does not include any words or any action intended to be sung, spoken or
performed with the music. In order to qualify for copyright protection,
a musical work must be original.

 Original Artistic Work

According to the Copyright Act, 1957, artistic work includes any
painting, sculpture, drawing, or engraving photograph of any work
possessing artistic qualities. However, it also includes the architecture
and artistic craftsmanship of such works.
 Cinematographic Films
According to the Copyright Act,1957 cinematographic films includes any
work of visual recording and a sound recording accompanying such
visual recording and the expression cinematograph shall be construed
as including any work produced by any process analogous to
cinematographic including video films.

 Sound Recording
According to The Copyright Act, 1957, sound recording suggests a
recording of sounds from which that sound may be produced regardless
of the medium on which such recording is made or the method by
which the sounds are produced.
Rights of the copyright holder

Economical rights:
In the case of original literary, musical, and dramatic work:
 Right to reproduce;
 Right to issue copies;
 Right to perform at public;
 Right to make cinematography and sound recording;
 Right to make any translation;
 Right to adaptation; and
 Right to do any other activities related to the translation or adaptation.
Section 57 of The Copyright Act,1957 recognize two types of moral rights which
are:

 Right to paternity– which incorporates the right to assert the authorship of the
work, and the right to forestall others from claiming authorship of his work;
and
 Right to integrity- which incorporates right to restrain, or claim of damages in
respect of any distortion, modification, mutilation, or any other act relates to
the said work if such distortion, multiplication or alternative act would be
prejudiced to claimant honor or name.
Remedies for infringement of copyright
1. Civil remedies
2. Pecuniary remedies
3. Criminal remedies
 Exceptions – Fair Dealings
 For private and personal use including research,
 For criticism and review,
 For reporting of current events or issues including lectures in public,
 For broadcasting in cinematographic films or by posting photographs,
 For reproduction and reporting of any judicial proceeding,
 For reproduction, or publication of any kind of work prepared by the secretariat of a legislature,
 For reproduction of any kind of work in a certified copy made or supplied accordance with any law,
 For reading and recitation of any literary or dramatic work in the public domain,
 For publication of any non-copyright matter bonafide intended for the use of educational institutes, and
 For recording any sound by the owner of the right in the work.
 Establishment of copyright boards and offices
The Copyright Act of 1957 also makes provisions for the establishment of a copyright board to assist in
resolving copyright-related issues and a copyright office, which comes under the jurisdiction of the
Registrar of the Copyright, for the registration of books and other “works” of art.

 The establishment of an office to be known as the Copyright Office for Act purposes is provided for
under Section 9 of the Copyright Act, 1957.

 The Copyright Board was established under Section 11 of the Copyright Act of 1957.
Licensing of Copyright

 A copyright license gives a person or entity (“licensee") the authorization to

use a work from the copyright owner, usually in exchange for payment.
 The copyright owner may be the author of the work, a publisher, or a music
label.
 Negotiate the license terms: Negotiate the license terms with the copyright
owner, such as the duration of the license, the territory where the license is
valid, and the fees payable.
 Exploiting the Copyright
 Ownership will remain with owner
 Monetary benefits
 Giving permission only
Voluntary Licensing

In voluntary licensing the owner of the copyright can grant any interest in the rights
to another person by way of license in writing by him or his duly authorized agent. If
the license is relating to copyright in any future work, the license shall take effect
only when the work comes into existence.

Compulsory Licensing

In India, the Indian Copyright Act, 1957, specifically Section 31, governs the
provisions for compulsory licensing. Under Section 31, if the copyright owner denies
republishing or performing the work, or refuses to allow the communication or
broadcasting of the work to the public, the Copyright Board can intervene
Assignment of Copyright

 The owner of the copyright of a work has the right to assign his copyright to any other
person. The effect of assignment is that the assignee becomes entitled to all the rights
related to the copyright to the assigned work
 For instance, in the case of making a complete movie – all the creative persons with
their idea turned into relevant works come to a producer, assign their rights that
subsist in their work in return for a royalty. These works are then summed up to form a
complete movie.
 Owner transfers his right to others through agreement
 Assignor and Assignee
 Full work or Part work
 Whole period – lifetime – collect royalty
 If time not mentioned then 50 years
 Mention territory – Indian
 Future work also
 Trade mark laws in India
 A trademark includes a name, word, or sign that differentiates goods from the goods of other enterprises.
 A trademark can be a logo, picture mark or a slogan
 The Indian Trademark law was enforced in 1940.
 After the enforcement of the trademark law, demand for protection of trademarks increased as there was
major growth in trade and commerce.
 The Trademark law was replaced with the Trademark and Merchandise Act, 1958.
 It provides better protection of trademark and prevents misuse or fraudulent use of marks on merchandise.
 The Act provides registration of the trademark so that the owner of the trademark may get a legal right for
its exclusive use.
 This previous Act got replaced with the Trademark Act, 1999 by the government of India by complying it
with TRIPS (Trade-related aspects of intellectual property rights) obligation recommended by the World
Trade Organization.
 The aim of the Trademark Act is to grant protection to the users of trademark and direct the conditions on
the property and also provide legal remedies for the implementation of trademark rights.
Types of Trademark
1. Service mark
A service mark is any symbol name, sign, device or word which is intentionally used in trade to recognize and
differentiate the services of one provider from others.
 Sponsorship
 Hotel services
 Entertainment services
 Speed reading instruction
 Management and investment
 Housing development services

2. Collective mark
A collective mark is used by employees and a collective group, or by members of a collaborative association, or
the other group or organization to identify the source of goods or services.
Example – CA is a collective trademark which is used by the Institute of the chartered accountant.
3. Certification mark
A certificate mark is verification or confirmation of matter by providing assurance that some act has been done
or some judicial formality has been complied with.
Certification marks are essentially trademarks that are used to certify that the goods or services on which they
are affixed comply with certain quality standards prescribed by a certifying entity. Such certifying entities, upon
the fulfilment of these quality standards, license the certification mark to be used
The certification mark, can be registered only in the name of a person who does not carry on the trade in the
goods of the kind certified or a trade of the provisions of services of the kind certified.

4. Trade dress
Trade dress is a term that refers to features of the visual appearance of a product or design of a building or its
packaging that denote the source of the product to customers
Absolute grounds for refusal of registration

It gives that a mark shall not be registered as trademarks if:

 It frauds the public or causes confusion.
 There is any matter to hurt religious susceptibility.
 There is an obscene or scandalous matter.
 Its use is prohibited.
 When can a person be considered as infringing a trademark
 A registered trademark is said to be infringed in case of the following situation:
 If the mark in dispute is identical with or deceptively similar to the registered trademark and is in relation to the same or
similar goods or services;
 If the identical or similar mark can cause confusion in the minds of general public to have an association with the registered
trademark
 If the registered trademark is used as a part of trade name or business concern for goods and services in respect of which
the trademark is registered
 If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest practices or is
detrimental to the distinctive character and reputation of the registered trademark.
 If the registered trademark is used in the material meant for packaging or labelling of other goods or as a business paper
without due authorization of the registered user.

According to Section 103, a person is said to be applying for a trademark wrongfully in the following conditions:
 If falsification of trademark has been committed;
 If any trademark has been falsely applied to goods and services;
 Makes, possesses or disposes of any instrument with the object and purpose of falsifying a trademark;
 Falsely indicates name of the country or place where the goods have been made or the name or address of the person who
is responsible for its manufacturing;
