RESEARCH METHODOLOGY & IPR – BRMK557 2024-25

MAHARAJA INSTITUTE OF TECHNOLOGY MYSORE

BELAWADI, SRIRANGAPATNA Taluk, MANDYA-571477
Department of Computer Science and Business System
(Academic Year – 2024-25)
Important Questions Module 3
Semester: 5th
Subject Name: Research Methodology and IPR Subject Code: BRMK557
Staff Name: Dr. Honnaraju B
1. What types of inventions are eligible for patenting, and which matters are
considered non-patentable?
Answer:
INVENTIONS ELIGIBLE FOR PATENTING
• Patents may be granted for inventions/technologies in any field, ranging from a
paper clip or ballpoint pen to a nanotechnology chip or a Harvard mouse (mouse with
cancer genes).
• It is a general belief that patents are awarded only to major scientific
breakthroughs. But, it is not true.
• In fact, the majority of patents are granted to inventions displaying an improvement
over the existing invention.
• For example, many patents can be awarded to a single molecule e.g. penicillin‘s (an
antibiotic that kills microbes) and its derivatives. The derivatives are made by making
subtle changes in the structure of the penicillin resulting in new/improved properties,
such as acid stability or temperature stability or killing a wide range of microbes
(germs). The new antibiotic molecules, known as second, third or fourth generation
penicillin‘s can also be patented.
• In our daily life, we use many patented items, such as toothbrush, toothpaste,
shoes, pen, eyeglasses, textiles, mobile phones, wrist watch, bicycle, scooter, car,
television, cold drinks, beverages and many more.
• It is not uncommon that many products contain several inventions (patents) e.g.
the laptop computer involves hundreds of inventions working together. Similarly,
cars, mobile phones and televisions have many patented components.

NON-PATENTABLE MATTERS
In the Patent Act, 1970, there are some exclusion (product and processes) that cannot
be patented, such as:
• Invention contrary to public morality - a method for human cloning, a method
for gambling.
• Mere discovery - finding a new micro-organism occurring freely in nature, laws of
gravity.
• Mere discovery of a new form of a known substance - use of aspirin for heart
treatment. Aspirin was patented for reducing fever and mild pains.
• Frivolous invention - dough supplemented with herbs, merely changing the taste
of the dough, 100 years calendar, and bus timetable.
• Arrangement or rearrangement - an umbrella fitted with a fan, a torch attached to
a bucket.
• Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 - inventions
relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium,
Graphite, Lithium and more as notified by the Central Government from time to time.
• Literary, dramatic, musical, artistic work - books, sculptures, drawings,
paintings, computer programmer, mathematical calculations, online chatting method,
method of teaching, method of learning a language as they are the subject matter of
Copyright Act. 1957.

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• Topography of integrated circuits - protection of layout designs of integrated

circuits is provided separately under the Semiconductor Integrated Circuit Layout
Designs Act, 2000.
• Plants and animals - plants and animals in whole or any part including seeds,
varieties and species and essentially biological processes for the production or
propagation of plants and animals are excluded from the scope of protection under
patents.
• Traditional knowledge - an invention which in effect is traditional knowledge or
which is an aggregation or duplication of known properties of traditionally known
components are also excluded.

2. Explain the major steps involved in the process of filling patent applications
using a flow chart.
Answer:
The major steps involved in this process are listed in figure

• While the process of patenting includes – Prior art search, Choice of Application
to be Filed, Patent Application Forms, Jurisdiction of Filing Patent Application,
Publication, Pre-grant Opposition, Examination, Grant of a Patent, Validity of Patent
Protection, Post- grant Opposition

PRIOR ART SEARCH

• Before an inventor embarks upon the patent filing process, he has to ensure that
his invention is novel as per the criterion for the grant of a patent. For this, he/she has
to check whether or not his invention already exists in the public domain.
• For this, he/she needs to read patent documents and Non-Patent Literature
(NPL), scientific journals/reports/magazines, etc.

CHOICE OF APPLICATION TO BE FILED

Once a decision has been made to patent the invention, the next step is, what
kind of application needs to be filed i.e. provisional patent application or complete
(Final) patent application - generally, the provisional patent application is preferred
for the following reasons:
• It is cheaper, takes less time, and involves fewer formalities.
• Any improvements made in the invention after the filing of the provisional
application can be included in the final application. In other words, the
provisional application does not require complete specifications of the
inventions. The application can be filed even though some data is yet to be
collected from pending experiments.

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• A provisional application allows you to secure a priority date for the patent
applied.

PATENT APPLICATION FORMS

• As per the Patent Act, 1970 (Section 39) and the Patents Rules, 2003 (Rule 7,
54, 135 and sub rule (1) of rule 20, the application for the grant of patent is
filed using Form-1 and Form-2.
• The information sought in Form-1 is general in nature i.e. Title of Application,
Names of Applicant(s) and Inventor(s), Type of Application (Ordinary,
Convention, PCT-NP (PCT- National Phase), Divisional, Patent of Addition,
etc.).
• Whereas Form-2 seeks technical information and whether to file the
provisional application or complete the application. For Provisional
Application, only Description of the Invention and the Abstract is to be
furnished. Whereas, Complete Application requires Description of the
Invention, Abstract, Claims and the manner in which invention have to be
performed.
• The Claims of the patent are a very crucial part of the specifications because
they define the actual boundary of the invention.
• Claims specify what is actually claimed by the invention and what is being
sought to be protected. It clearly describes what the patent does and does not
cover

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PUBLICATION
• Once the patent application has been filed at the Regional Patent Office, the patent
application is kept secret for 18 months in the Patent Office.

• After the expiry of 18 months (from the date of filing of the application or the priority
claimed date, whichever is earlier), the application is published in the Official Journal
of Patent Office (http://www.ipindia.nic.in/journalpatents.html).
• The purpose of publishing the application is to inform the public about the invention.
The publication of an application is a mandatory step.

PRE-GRANT OPPOSITION
• If anybody has an objection to the invention claimed in the patent application,
he/she can challenge the application by approaching the Controller of Patents within
6 months from the date of publication. It is termed as Pre-grant Opposition.
• Depending on the outcome of the case, the patent application may be rejected or
recommended for the next step, i.e. patent examination.
• Although the patent application is kept secret for 18 months, but under special
circumstances, this period can be reduced when the patentee/applicant plans to sell
or license the patent or seek an investor).
• For this, the applicant has to fill a Form-9 and submit it to the Controller General.

EXAMINATION
• Patent examination is a critical step in the process of grant of a patent. All the
important criteria (novel, inventive step, etc.) are scrutinized by the professionals
depending on the content of the invention.
• Usually, the examiner raises certain queries/doubts which need to be addressed by
the inventors. Once the examiner is satisfied with the answers received from the
inventors, the application is recommended for the grant of a patent.
• It is pertinent to mention that a patent application is not examined automatically
after clearing the publication stage. The applicant or his representative has to make a
request for examination of the patent by filing Form-18A and submitting the same
within 48 months from the date of filing of the application

GRANT OF PATENT
• After fulfilling all the requirements for the grant of a patent, including all
objections/queries raised by the Patent Examiner and the public at large, the patent
is granted to the applicant.

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• The granted patent is published in the Official Journal of the Patent Office.
• This journal is published every Friday and contains information related to patent
applications published under section (u/s) 11A, post-grant publication, restoration of
patent, notifications, list of non-working patents and public notices issued by the
Patent Office.

3. Explain the different types of patent applications.

Answer:
• Provisional Application - A patent application filed when the invention is not fully
finalized and some part of the invention is still under experimentation. Such type of
application helps to obtain the priority date for the invention.
• Ordinary Application - A patent application filed with complete specifications and
claims but without claiming any priority date.
• PCT Application - An international application filed in accordance with PCT. A
single application can be filed to seek patent protection and claim priority in all the
member countries of PCT.
• Divisional Application - When an application claims more than one invention, the
applicant on his own or to meet the official objection on the ground of plurality may
divide the application and file two or more applications. This application divided out of
the parent one is known as a Divisional Application.
• Patent of Addition Application - When an invention is a slight modification of the
earlier invention for which the patentee has already applied for or has obtained a
patent, the applicant can go for Patent of Addition, if the modification in the invention
is new. Benefit - There is no need to pay a separate renewal fee for the Patent of
Addition, during the term of the main patent. It expires along with the main patent.
• Convention Application - If a patent application has been filed in the Indian Patent
Office and the applicant wishes to file the same invention in the one or more Convention
countries (e.g. Paris Convention) by claiming the same priority date on which
application was filed in India, such an application is known as Convention Application.
The applicant has to file Convention Application within 12 months from the date of
filing in India to claim the same priority date.

4. What strategies are involved in the commercialization of a patent?

Answer:
• The patent owner may grant permission to an individual/organization/industry to
make, use, and sell his patented invention. This takes place according to agreed terms
and conditions between the involving parties.
• A patent owner may grant a license to a third party for the reasons mentioned below:
o The patent owner has a decent job e.g. university professor and has no desire
or aptitude to exploit the patent on his own.
o The patent owner may not have the necessary manufacturing facilities.
o The manufacturing facility is not able to meet the market demand.
o The patent owner wishes to concentrate on one geographic market; for other
geographical markets, he may choose to license the patent rights.
• Once the patent is granted, the patentee (person holding the rights to the patent)
enjoys the exclusive rights to use the patented invention.
• Only the patentee has the right to license or deal with the patent for any
deliberations. Although, the validity of the granted patent is for 20 years (from the date
of filing a patent application), but the patentee is required to furnish information
(Form-27), on an annual basis relating to the commercialization/selling of the patent.
It is called as Working/Licensing of the Patent.
• The licensing of a patent can be exclusive or non-exclusive.

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• In an Exclusive License, the patent is sold to only one individual/organization for a

fixed time period. During this time period, no other person or entity can exploit the
relevant IP except the named licensee.
• In Non-Exclusive License, a patentee can sell his patent rights to as many
individuals/parties as he likes. If the patentee is not able to commercialize his patent
within three years from the date of the grant of a patent, any person may submit an
application to the Controller of Patents for grant of Compulsory Licensing (of the
patent), subject to the fulfillment of following conditions:
o Reasonable requirements of the public concerning the patented invention have
not been satisfied.
o The patented invention is not available to the public at a reasonable price.
o The patented invention is not worked in the territory of India.

5. Describe Intellectual Property Rights (IPR) and list its types.

Answer:
Broadly, IP comprises of two branches i.e. Copyrights and Related Rights and
Industrial Property Rights.
o Copyrights and Related Rights refer to the creative expressions in the fields of
literature and art, such as books, publications, architecture, music, wood/stone
carvings, pictures, portrays sculptures, films and computer-based
software‘s/databases.
o The Industrial Property Rights refer to the Patents, Trademarks, Trade Services,
Industrial Designs and Geographical Indications
• Copyright: Copyright is the right bestowed on the owner or creator in relation to
publication, and distribution of a piece of writing, music, picture or related works.
Copyright also applies to technical contents such as software, datasheets and related
documents.
• Patents: A patent is a legal record that bestows the holder the exclusive right over
an invention as per the claims, in a limited geographical domain and for a limited
duration by thwarting possible interested parties from any form of manufacture, use
or sale of the product or outcome of the invention
• Trademarks: A trademark is a sign that suitably differentiates the owner‘s goods or
services from those of others
• Trade services: Any services in relation to trade or any trade related financing,
lending or other financial accommodation provided(or to be provided) by the bank,
including but not limited to issuance/amendment of letter of credit, document arrival
under letter of credit, application for negotiation and inquiries etc.,
• Industrial Designs: An industrial design protection is related to certain specific
ornamental shapes associated with products whose duplication the owner may wish
to prevent
• Geographical Indications: A geographical indication (GI) is a name or sign used on
products which corresponds to a specific geographical location or origin. Items that
meet geographical origin and quality standards may be endorsed with a government-
issued stamp which acts as official certification of the origins and standards of the
product.

6. Define the term patent and what are the conditions that must be met for
obtaining patent protection?
Answer:
• A patent is an exclusive right granted for an innovation that generally provides a
new way of doing something or offers a new technical solution to a problem.
• The exclusive right legally protects the invention from being copied or reproduced by
others.

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There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be
fulfilled for a product or a process to qualify for the grant of a patent. The criterion encompasses:
• Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent
application is new and not known to anybody in the world. In other words, the
innovation is
o not in the knowledge of the public,
o not published anywhere through any means of publication and
o not be claimed in any other specification by any other applicant.
• Inventive step - Not obvious to the person (s) skilled in the art. The
innovation is
o a technical advancement over the existing knowledge,
o possesses economic significance and,
o not obvious to a person skilled in the concerned subject.
• Capable of industrial application - For the benefit of society. The invention
is capable of being made or used in any industry.

7. What are Patent Infringements? Explain its two categories of Infringements.

Answer:
If anyone uses the invention without the prior permission of the owner, that act will be
considered an infringement of the invention. Infringements can be classified into two
categories
• Direct Infringement - when a product is substantially close to any patented product
or in a case where the marketing or commercial use of the invention is carried out
without the permission of the owner of the invention.
• Indirect Infringement - When some amount of deceit or accidental infringement
happens without any intention of infringement. If such an unlawful act has been

committed, the patentee holds the right to sue the infringer through judicial
intervention. Every country has certain laws to deal with such unlawful acts. Following
reliefs are made available to the patentee:
o Interlocutory/interim injunction.
o Damages or accounts of profits.
o Permanent injunction

8. Explain the following major steps involved in the process of patent

registration.
(i) Prior Art Search (ii) Choice of Application to be Filed
(ii) Pre-grant Opposition
Answer:
PRIOR ART SEARCH
• Before an inventor embarks upon the patent filing process, he has to ensure that
his invention is novel as per the criterion for the grant of a patent. For this, he/she has
to check whether or not his invention already exists in the public domain.
• For this, he/she needs to read patent documents and Non-Patent Literature (NPL),
scientific journals/reports/magazines, etc.
• The information lying in the public domain in any form, either before the filing of the
patent application or the priority date of the patent application claiming the invention,
is termed as Prior Art.

CHOICE OF APPLICATION TO BE FILED

Once a decision has been made to patent the invention, the next step is, what kind of
application needs to be filed i.e. provisional patent application or complete (Final)

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patent application - generally, the provisional patent application is preferred for the
following reasons:
• It is cheaper, takes less time, and involves fewer formalities.
• Any improvements made in the invention after the filing of the provisional
application can be included in the final application. In other words, the provisional
application does not require complete specifications of the inventions. The application
can be filed even though some data is yet to be collected from pending experiments.
• A provisional application allows you to secure a priority date for the patent applied.

PRE-GRANT OPPOSITION
• If anybody has an objection to the invention claimed in the patent application,
he/she can challenge the application by approaching the Controller of Patents within
6 months from the date of publication. It is termed as Pre-grant Opposition.
• Depending on the outcome of the case, the patent application may be rejected or
recommended for the next step, i.e. patent examination.
• Although the patent application is kept secret for 18 months, but under special
circumstances, this period can be reduced when the patentee/applicant plans to sell
or license the patent or seek an investor).
• For this, the applicant has to fill a Form-9 and submit it to the Controller General.

9. Name the four national bodies dealing with patent affairs.

Answer:
There are many departments/organizations/bodies dealing with various aspects of
patents, namely,
• The Indian Patent Office (IPO) - The Office of the Controller General of Patents,
Designs and Trade Marks generally known as the Indian Patent Office, is an agency
under the Department for Promotion of Industry and Internal Trade which administers
the Indian law of Patents, Designs and Trade Marks.
• Department for Promotion for Industry and Internal Trade (DPIIT) - DPIIT,
earlier known as the Department of Industrial Policy and Promotion (DIPP), under the
Ministry of Commerce and Industry, Govt. of India, is the apex IP body. It came into
existence in 1995 and is the main body for regulating and administering the industrial
sector.
• Technology Information, Forecasting and Assessment Council (TIFAC) - The
importance of undertaking technology forecasting and assessment studies on a
systematic and continuing basis was highlighted in the Government of India‗s
Technology Policy Statement (TPS) of 1983. Therefore in 1985, TIFAC was established
as an autonomous body, registered as a Society in 1988, under the Department of
Science and Technology. It is an important cog in filling a critical gap in the overall
Science and Technology system of India. Its mission is to assess the state-of-art of
technologies and set directions for future technological developments in India in
important socio-economic sectors
• National Research Development Corporation (NRDC) - NRDC, an enterprise of
Department of Scientific & Industrial Research (DSIR), Govt. of India, was set up in
1953 with a mandate to develop, promote and transfer/commercialize IP and
technologies emanating from Higher Education Institutes (HEIs), R&D research
laboratories/institutions and Public Sector Undertakings (PSUs). NRDC has a
repository of 2500 Indian technologies, filed over 1700 Patents and transferred about
5000 technologies in different sectors in India. It has also created a technology data
bank (http://fccollc.com/nrdclive/) containing information regarding technologies
available in various fields, such as electrical & electronics, mechanical, coil, mining,
biotechnology, healthcare, leather, etc.

9 Dept. of Computer Science and Business System (CS&BS) | MIT Mysore