Intellectual Property Rights

Department of Software Engg.,

Delhi Technological University

Dr. Ishu Tomar

DELHI TECHNOLOGICAL UNIVERSITY 1

PATENTS

DELHI TECHNOLOGICAL UNIVERSITY 2

 PATENT
DEFINITION :
A patent is a set of exclusive rights granted by the government of India to an
inventor for a limited period of time, excluding others from making, using,
selling, or importing the patented product or process producing that product for
these purposes.

PATENTEE :
A person to whom the patent is granted.

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 OBJECTIVES OF PATENT
❖ To provide protection of the creativity of creators.
❖ To promote the creativity of new creators.
❖ To accelerate the technological and industrial development of the countries.

❖ To provide the exclusive right to the invention and afford protection against
unauthorized use of the invention by third parties.

❖ Understand the meaning of specifications.

❖ To encourage inventions by promoting their protection and utilization

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 Type of PATENTS

❖ Utility Patents
❖ Design Patents
❖ Plant Patents
❖ Innovation Patents
❖ Provisional Patents

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 Type of PATENTS
➢ Utility Patents- Available for processes, machines, articles of manufacture, or
compositions of matter that are deemed new, useful and non-obvious. The traditional subject
matter of patents covers tangible, technical inventions, such as improvements to client-server
systems, motors, radios, computer chips and various technical product features.

➢ Patents for business methods: Eg- A method for completing a credit card transaction
without the need for the physical presence of the credit card.

➢ Design Patents- to protect ornamental (non-functional) designs. Apple’s Patent D 604,305

covering the design of its iPhone interface

➢ Provisional Patents- A temporary patent application to protect an invention while work is

in progress (may be filed).
• Must be “completed” within 12 months by the filing of a complete application.
• The legal requirements for a provisional application may be less than those for a complete application, for example, it is not necessary to include
claims in a provisional.

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 Role of Patent System

 Encouragement for Improvement of Technology

 Providing Reward as Exclusive Rights for disclosure
 Making profits or earning Royalty through putting the Invention into
Practice
 Transferring into public property after expiry of term or cessation of
Patent

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 Patent Document

Bibliographic Information Technical Information

Date of Filing & Publication  State of Art

 Name & Address of Applicant  Description

 Title, Classification, Abstract,  Drawings

Drawing, Formula etc.
 Corresponding Priority Application  Claim(s)
/Patent

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 Patent System Introduced in 1856
Comprehensive Patents & Designs Act,
1911
PROVIDES

 Uniform Term of Patent for 16 Years

 No Discrimination on Nature of Invention

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 Basics of The Patents Act 1970
Reduce Term (7 Years)
Drug and Food

 Differential Term of Patent

Full Term (14 Years)
Other Inventions

 Restriction of Product Patent

 Product Patent Not Allowable on Drug, Food &
Chemical Produced by Chemical Process

 Process Patent Allowable on Any Kind of Inventions

 Compulsory License & License of Right with More Grounds

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 Effect of The Patents Act, 1970
 Substantial Development of Public Sector and Small Scale Unit
 Increases Collaborative Research in National Laboratories
 Reduces Activity of Multi-National Companies
 Criticized by Multi-National Companies for Narrow Protection

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Applications of Patents by Indians & Foreigners
Year Indians Foreigners Total
1993-1994 1266 2603 3869
1994-1995 1741 3589 5330
1995-1996 1606 5430 7036
1996-1997 1661 6901 8562
1997-1998 1926 8229 10155
1998-1999 2247 6707 8954
1999-2000 2206 2618 4824
2000-2001 2179 6324 8503
2001-2002 2371 8221 10592
2002-2003 2620 8846 11466
2003-2004 3218 9395 12613
2004-2005 3630 13836 17466
2006-2007 6252 22610 28862
2008-2009 6161 30651 36812

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 INVENTION

Novel Inventive Step Application

Product / Process Non-obvious Industrial

Obviousness: Open to the eye or mind and perfectly evident to a person

thinking on the subject.

TO WHOM IT IS OBVIOUS
 A skilled technician acquainted with techniques
 Inventors
 Experts
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 Patentable & Not Patentable Inventions
▪ Industrially useful compounds - patentable

▪ Theoretically interesting compounds Not Patentable

▪ Useful intermediates for the preparation of other compounds – patentable

▪ Non-obvious compounds – patentable

▪ New process for manufacturing known compounds Patentable

▪ Known process for manufacturing new compounds Patentable

▪ Improvements in known processes Patentable

▪ Method of treatment Not Patentable

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 Not Patentable Inventions
 Frivolous or contrary to well-established natural laws
 Contrary to law or morality or injurious to public health
 Scientific principle or formulation of abstract theory
 New property or use of known substance
 Mere use of known process, machine or apparatus
 Substance by mere admixing
 Mere arrangement/rearrangement/duplication of known devices
 Method of agriculture/horticulture
 Method of treatment of human beings, animals
 Plants & Animals in whole or any part other than microorganisms
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 Not Patentable Inventions

 Mathematical/Business method/Computer program per se/Algorithms

 Mere scheme/Rule/Method of performing mental Act/ Playing game
 Presentation of information
 Topography of integrated circuits
 Invention on traditional knowledge/Aggregation or duplication of known
properties of traditionally known components
 Related to atomic energy

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 When to File a Patent Application ?
❑ Filing should be made immediate after the invention is developed for
commercial working
❑ Delay in filing may involve certain risks
• Other invention of substantially same nature may take the advantage
of priority, depriving the true and first inventor
• An inadvertent publication of invention by inventor or others may
damage the novelty of invention
❑ Patent should be filed before any kind of publication or commercial
using or communication to others

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 Filing Procedure & Formalities
 Applicant  True & first inventor or assignee or legal representative separately or jointly

 Application  One application in prescribed form (duplicate) for one invention in appropriate
jurisdiction with prescribed fee
 Information &  Abroad filing & status of filing in Undertaking prescribed form (duplicate)

 Declaration of  Filing complete specification after Inventorship provisional specification or filing

convention application
 Priority  Certified copy of basic application in Document convention country

 Provisional/Complete Specification (duplicate)

 Power of Attorney (Where applicable)
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 Jurisdiction for Filing Patent Applications
Head Office (Kolkata)

Branch Office (Delhi) Branch Office (Mumbai) Branch Office (Chennai)

Haryana, Punjab, Delhi, Maharashtra, Gujarat, Andhra Pradesh (AP), Kerala, Tamil
Himachal Pradesh (HP) Madhya Pradesh (MP) Nadu, Karnataka, Pondicherry
Jammu & Kashmir (J&K) Goa, Daman & Diu (UT) (UT), Laccadive, Minicoy &
Rajasthan, Chandigarh (UT) Dadar & Nagar Haveli (UT), Amindivi Island (UT)
Uttar Pradesh (UP), Chattisgarh
Uttarakhand

Rest of States and Union Territories (UT)

Kolkata
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 Contents in Specification
 Provisional Specification
 Description of essential features of invention
 Need not include claims & manner of performing invention

Advantage
 Provisional protection from early stage of invention
 Cognating of two or more provisional specifications & constitute one final
complete specification during different stages of invention
 Complete Specification
Field of invention (Title)  Prior art/state-of-art
Setting for invention  Object of invention
Statement of invention  Statement of Drawings (if any)
Description with Ex. Set of claims  Abstract
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 Prior Art
 Prior knowledge from the publication both in Patent and Non- patent
literature
 Required to establish novelty and non-obviousness of invention
 Information given in prior document must be sufficient to enable the
instructed reader to perceive and understand discovery without making
further experiments
 Not mandatory in specification
 Advantage:
➢ Better understanding of invention by way of finding out
lacuna in Prior Art
➢ Setting up the invention by removing the defects
➢ Improvements over Prior Art
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 Patent Search
 Essential before filing a patent application

 To draft the complete specification, particularly in the prior art portion

 To justify the invention is novel and non-obviousness

 To face the future opposition, if entered

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 Access to Technical Information
 Non-Patent Literature Search
 Patent Search

Where to get Search Materials ?

 Books, Journals, Patent Specifications
 Electronic Database in CD-ROMs
 Website of different foreign Patent Offices
 Website of Indian Institutions e.g. TIFAC, CSIR etc.
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 PROCEDURE
Patent Application filed at Appropriate Patent Office
Notified at the end of 18 months

Substantive Examination
on request within 48 months from
First Application

12 months from FER to meet Official Requirements

Refused & No Pre-grant representation U/S 25(1) Granted
Appeal to IPAB Allowed Notified in Official Journal
Rejected Post Grant Opposition

Opposition decided
Appeal to IPAB in favour or against applicant

Rejected Allowed DELHI TECHNOLOGICAL UNIVERSITY 24

 Publication of the Application-
• Normally every patent application is published after 18 months of filing the application
and objections are invited.

• The patent application shall not be open to the public for eighteen months after the
date of filing, or the date of priority, whichever is earlier.

• The Controller may issue directions to prohibit or restrict such publication.

• In the case of secrecy direction, the application will be published when the secrecy
directions cease to operate.

• The publication will include the particulars of the date of application, number of
applications, name and address of the applicant and an abstract.

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 Examination of the Application
• Examination is taken up only if the applicant or any other interested person makes a
request in the prescribed manner for such examination within 48 months from the date
of filing of the patent application.

• If such request is not made within the prescribed time, the patent application is treated as
withdrawn.

• When the patent application is in respect of an invention for a chemical substance used
as an intermediate in the preparation of a medicine or drug including insecticides etc.
used for protection or preservation of plants, the request for examination has to be made
within a period of 12 months.

• or within 48 months from the date of the application whichever is later.

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Acceptance and Advertisement of Complete Specifications

• Once the complete specification is accepted, the Controller notifies the

applicant and also advertises it in the Official Gazette.

• From the date of advertisement of the acceptance of the complete

specification and until the date of sealing of the patent, the applicant will have
the like privileges and rights as if a patent for the invention had been sealed
on the date of advertisement.

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 Opposition to the Grant of Patent-
Any person interested in opposing the grant of patent may give notice to the Controller of such
opposition within 4 months from the date of advertisement of the acceptance on the grounds like:-

1. The invention was wrongfully obtained by the inventor/applicant.

2. The invention, as claimed in any claim of the complete specification has been anticipated in a
specification filed for another patent earlier.

3. The invention as claimed in any claim was publicly known/used in India before the priority date
of the claim.

4. The subject of the patent is not an invention, within the meaning of the Act.
5. The information furnished is false.
6. The geographical origin of biological material is not disclosed or falsely disclosed.
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Grant and Sealing of Patent-
➢ Where the application for a patent along with complete specification has been
accepted either without opposition.

➢ After the opposition, a patent shall be granted if the applicant makes a request in
the prescribed manner for a grant of patent.

➢ The request has to be made within six months from the date of advertisement of
the acceptance of the complete specification.

➢ The patent so granted shall be sealed with the seal of the patent office and the date
of sealing of the patent shall be entered in the register.

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 Opposition to Grant of Patent
 Grant Notification

 Opponent enters within twelve months

Grounds of Opposition
(1) Wrongful obtaining (2) Prior publication (3) Prior claiming
(4) Prior public knowledge and use in India (5) Obviousness
(6) Not an invention or not patentable invention (7) Insufficiency
(8) Information regarding foreign filing not filed or false
(9) Convention application not made within 12 months
(10) Not disclosed or wrongly mentioned source/geographical origin
(11) Anticipated by knowledge, oral/otherwise

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 Criteria for Grant
 Not opposed through Pre-grant Representation [Sec 25(1)]

 Opposed but decided in favour of the applicant

 Not refused (U/S 15)

 Granted with Serial Number & Simultaneous Notification in

Official Journal

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 Term of Patent
 Twenty years for any invention from date of patent

Date of Patent
 Date of application filed in India (Ordinary Application)
 International Application date in Receiving Office (PCT Application)

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 Rights of Patentee

 Use, Exercise, Sell or Distribute of Article/Substance from Date of

notification but after grant of Patent
 Use or Exercise the method/process of manufacturing Article/Substance
from the Date of notification but after the grant of Patent
 Use or Exercise the product & method for Mail Box Application from the
grant of Patent
 Right to sue for infringement

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Documents To Be Submitted Along With Patent Application
➢ Application Form in duplicate (Form 1) Provisional or Complete Specification
(Form 2)
➢ In case of provisional specification the complete specification must be filed within
12 months.
➢ Drawing in duplicate if necessary
➢ Abstract of invention in duplicate Information of Undertaking listing the no., filing
date & current status of each foreign patent application. (Form 3) in duplicate
➢ Priority Document
➢ Declaration of Inventorship (Form 5)
➢ Power of Attorney if filed through patent agent (Form 26)
➢ Fees to be paid in Cash/Cheque/DD.
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 Patent Application Forms And Guidelines
The list of forms that have to be submitted are

➢ Form 1 : Application for grant of patent

➢ Form 2 : Provisional / complete specification
➢ Form 3 : Statement & undertaking under section 8
➢ Form 5 : Declaration as to inventorship
➢ Form 9 : Request for publication
➢ Form 18 : Request for examination of application for patent

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 Patent Forms with Descriptions
➢ Form 1 : Application for grant of patent
In this form, one has to furnish information such as name and address of the
inventors, name and address of the applicant, information corresponding to prior
patent application which any authorized entity has filled & some declarations among
other information.

➢ Form 2 : Provisional / complete specification

The patent specification can be provisional or a complete patent specification
depending on the type of patent application one is filling. The number of sheets and
claims is to be counted and the appropriate fee is calculated. While counting the
sheets, even the drawing sheets will have to be taken into account.

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➢ Form 3 : Statement & undertaking under section 8
It is used to furnish information and action relating to patent applications filed in other
countries for the current invention.

➢ Form 5 : Declaration as to inventorship

Application used to declare the inventors of the subject matter sought to be protected using
the current patent application.

➢ Form 9 : Request for publication

By filling this form, one can generally have the patent specification published within 1
month from filling this form.

➢ Form 18 : Request for examination of application for patent

This form can be filled within 48 months from priority date.
The patent office will not consider a patent application for examination unless this form is
filled. Hence, if one wishes to expedite the patenting process filing of form 9 & 18 at an early
stage is advised.
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 IMPORTANT FEES IN DIFFERENT PROCEEDINGS
(Amount in Rupees)

Individual Legal Entity

➢ Application for Grant of Patent 1000 4000
➢ Request for Examination of Application 2500 10000
➢ Request for Publication 2500 10000
➢ Substitution of Applicant 500 2000
➢Notice of Opposition 1500 6000
➢ Restoration of Lapsed Patent 1500 6000
➢ Renewal Fees (for 20 years) 48000 192000

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 TYPES OF PATENT APPLICATIONS
➢ Provisional application
➢ Ordinary or Non-provisional application
➢ Convention application
➢ PCT international application
➢ PCT national phase application
➢ Patent of addition
➢ Divisional application

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➢ Provisional Application
A provisional application, also known as a temporary application, is
filed when an invention is under experimentation and isn’t finalized.
Moreover, it is a preliminary application which is filed before the
patent office for claiming priority, as the Indian Patent Office follows
the ‘First to File’ system.

➢ Ordinary or Non-Provisional Application

This type of application is filed if the applicant doesn’t have any
priority to claim or if the application is not filed in pursuance of any
preceding convention application.

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A complete specification contains the following:
▪ Title
▪ The technical field of the invention
▪ Background of the invention
▪ Objects of the invention
▪ Statement of the invention
▪ A brief description of the drawings
▪ A detailed description of the invention
▪ Claims
▪ Abstract
▪ A preamble to the invention

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Convention Application

A convention application is filed for claiming a priority date based on the same or
substantially similar application filed in any of the convention countries.
To avail a status of convention, an applicant is required to file an application in the Indian
Patent Office within a year from the date of the initial filing of a similar application in the
convention country. To re-iterate in simpler terms, a convention application entitles the
applicant to claim priority in all the convention countries.

PCT International Application

As can be deciphered from its name, a PCT Application is an international application.

Though the application does not provide for the grant of an international patent, it paves the
way for a streamlined patent application process in many countries at one go. It is governed
by the Patent Corporation Treaty and can be validated in up to 142 countries. Filing this
application would protect an invention from being replicated in these designated countries.

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Apart from this, it renders the following other benefits:
• The application provides an International Search Report citing prior art, which discloses
whether or not the invention is novel.

• It provides an option for requesting an International Preliminary Examination Report, which is

a report that contains an option on the patentability of the invention.

• The aforementioned reports facilitate the applicant to make more informed choices early in the
patent process, as he/she can amend the application to deal with any conflicting material.

An applicant from India can file this application at:

• The Indian Patent Office (IPO), which acts as the receiving office.

• The International Bureau of WIPO(World Intellectual Property Organization) either after

availing a foreign filing permit from IPO or after six weeks and 12 months of filing an
application in India.

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❑ PCT National Phase Application
It is considered essential for an applicant to file a national phase application in each of the
country wherein protection is sought for. The time-frame for filing the same is scheduled
within 31 months from the priority date or the international filing date, whichever is earlier.
The time-limit could be enhanced through National Laws by each member country.

❑ Patent of Addition
o This application must be filed if the applicant discovers that he has come across an
invention which is a slight modification of the invention which has already been applied for
or patented by the applicant.
o It can only be filed if the invention doesn’t involve a substantial inventive step.
o A patent of addition is only granted after the grant of the parent patent, and hence no
separate renewal fee should be remitted during the term of the main patent.

❑ Divisional Application
An applicant may choose to divide an application and furnish two or more applications if a
particular application claims for more than one invention. The priority date for these
applications is similar to that of the parent application.

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 Patent Cooperation Treaty (PCT) System

 International Phase
 Filing of international application
 International search
 International publication in PCT gazette
 International preliminary examination

 National Phase
 Before designated office/elected office
 Decision on granting patent
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 Patent Cooperation Treaty (PCT)

✓
 Patent filing system


 Patent granting system

 International filing system

 Filing in single office in one language having effect in each

contracting state

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 Patent Cooperation Treaty (PCT)
Benefit of Filing International Application
BRAZIL

CANADA

FRANCE

DENMARK

 Seeking Protection Simultaneously

 More Decision Time to Enter National Phase
 Strength of Invention through Search and Examination
 Opportunity to have Foreign Counterparts
 90% Rebate in Fees for Natural Persons of India
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Elements to accompany International Application
Bibliography

 Request (Form PCT/RO/101) Fees Calculation Sheet

Check List

 Description with one or more claims

 Abstract
 Drawings (Where applicable)
 Fees
 Power of Attorney (PA) / General Power of Attorney (GPA)
(Where applicable)
 Requirement RO/IN : Three copies [Home copy (RO/IN),
Record copy (IB), Search copy (ISA)]
RO/IB : One copy

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 Where International Application to be Processed ?

The Patent Office, Kolkata

& its Branch Offices at Delhi,
Competent Chennai & Mumbai (RO/IN)
Receiving Office (RO)

International Bureau (RO/IB)

What Language to be Filed ?

RO / IN : Hindi or English
RO / IB : Any Language
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 Fees for International Application
Natural Person Legal Entity
 Transmittal Fee (RO/IN) ➢INR 2000 8000
 Fee for Priority Document & Transmission ➢INR 1000 4000
 Application Fee (IB) ➢US$ 1300* 1300

(For 30 pages Including PCT/RO/101 & Excluding GPA & Calculation Sheet)
Fee per sheet over 30: USD15*

PCT Easy – US $98 (Rebate)

 ISA / AT ➢ US $ 2515
 ISA / AU ➢ US $ 1397
 ISA / EP ➢ US $ 2485**
 ISA / CN ➢ US $ 307
 ISA / SE ➢ US $ 2485
 ISA / US ➢ US $ 2080

* 90%&**75% Rebate for Natural Person of Contracting States

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International Search & Preliminary Examination
Authorities
Austrian Patent Office (AT)
 Australian Patent Office (AU)
 Chinese Patent Office (CN)
 European Patent Office (EP)
 Swedish Patent Office (SE)
 United States Patent & Trade Mark Office (US)

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 Transfer of Patent
• A patent is an exclusive property of the inventor and hence can be transferred from
the original patented to any other person by assignment, grant of license, or operation
of law.

• The IPA requires that an assignment, license, or 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 Page.

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 Transfer of Technology

Patent Know-How

➢ The Patents Act, 1970 ➢ The Contract Act, 1872

➢ License Agreement ➢ Contractual License
(Exclusive/Non-exclusive)
➢ Compulsory License

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 Source of Patent Information
Patent information is made available to the public through a variety of databases. Each
database has complete coverage of all patent documents ever published worldwide.

• WIPO- Offer free online access to all international patents. (www.wipo.int.)

• Patent Search Services- (http://patent scope.wipo.int)

• Google Patents

• SciFinder Scholar

• Patent Offices

• British Library
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 Method of Search for Patent Information
The effective searching of patent documents and other sources of technology
information requires a solid knowledge of the technical field. The following search
criteria are used for searching the information using---

1. Keywords

2. Patent classification

3. Dates (priority date, application date, publication date, grant date.)

4. Name of applicant

5. Patent reference or identification no. (application no., publication no., patent no.)
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 Infringing the Right of Patent Holder
▪ Patent infringement is when someone makes, uses, sells, or imports a patented
product or process without the patent holder's permission. This can include copying
the entire product or process or encouraging others to infringe the patent.

▪ Infringement occurs when the patentee's rights are violated, involving the
unauthorised making, using, selling or distributing of the invention.

▪ Right to sue for Infringement: The patentee, their assignee, licensee, or agent has
the right to file a civil suit for infringement in a court not lower than the District
Court.

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 Infringement of Patent: Suit Limitation
▪ The Indian Limitations Act governs the period of limitation for bringing a suit
for infringement of a patent, which is 3 years from the date of infringement.

▪ If the patent has ceased to have an effect due to non-payment of the

renewal fee, then the patentee will not be entitled to institute the
proceedings for infringement.

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 Infringement of Patent
▪ Jurisdiction: Sec.104

➢ A Patent holder can file a suit in a district court or high court.

➢ According to Section 19 of the Civil Procedure Code, the patentee can bring the
suit for infringement in the court that has jurisdiction in the area where he/she
resides or carries on a business or personally works for the gain.

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 Remedies for Infringement
▪ Section 108 (1) of the Patents Act, 1970 provides for the Reliefs in suit for
infringement.

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

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 Remedies for Infringement
o Permanent injunction;
o Temporary/Interlocutory injunction;
o Ex-parte injunction;
o Damages or an account of profits;
o Seizure, forfeiture, or destruction of infringing products/goods and/or materials.

❖ Temporary Injunction/Interlocutory Injunction:

For the grant of temporary injunction in a suit for infringement, the court should consider:-
a. a prima facie case.

b. The balance of convenience.

c. Irreparable loss.

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 Role of Patent Attorney
Drafting of Specification
Possible equivalent variations
Broadest valid claim
Avoid any pitfall
Submission against Office Objections and Related Proceedings
To face Opposition Proceedings
Execution of Licence Agreement, Deed of Assignment and other
Legal Matters

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Questions???

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