2.

2 Copyrights and Related Rights

‗Copyrights‘ refer to the legal rights provided by law to the

original creator of the work in the fields of literature and computer
software. The ‗Related Rights‘ encompass the author‘s work in the
fields of dramatics, sound recording, film/video recordings,
paintings, architecture, etc. Copyrights and Related Rights are one
of the categories of IP and governed by the Copyright Act, 1957 of
India. This Act provides rights of reproduction, communication to
the masses, adaptation and translation of the work.
The words ‗author‘ and ‗work‘ need to be understood from the
perspective of Copyrights. The term ‘author’ refers to an individual
who develops the content (of work). The author can be a writer
(literary work), computer programmer (software), composer
(musical work), producer (cinema films, sound recording),
photographer (photos). The term ‘work’ is a task undertaken in the
fields of literature, dramas, music, artistic, cinematograph film and
sound recording.
2.2.1. Classes of Copyrights
In India, following classes of Copyrights exist:
 Literature: Books, Essays, Research articles, Oral speeches,
Lectures, Compilations, Computer programme, Software,
Databases.
 Dramatics: Screenplays, Dramas.
 Sound Recordings: Recording of sounds regardless of the
medium on which such recording is made e.g. a Phonogram and
a CD-ROM.
 Artistic: Drawing, Painting, Logo, Map, Chart, Photographs,
Work of Architecture, Engravings, and Craftsmanship.
 Musical: Musical notations, excluding any words or any action
intended to be sung, spoken or performed with the music. A
musical work need not be written down to enjoy Copyright
protection.
 Cinematograph Films: ‗Cinematograph Film‘ is a visual
recording performed by any medium, formed through a process

45
 and includes a sound recording. For example, Motion Pictures,
TV Programmes, Visual Recording, Sound Recording, etc.
2.2.2. Criteria for Copyright
To qualify for Copyright protection, a work must exist in some
physical (or tangible) form. The duration of the existence of the
physical form may vary from a very short period to many years.
Virtually any form of expression which can be viewed or listened to
is eligible to qualify as Copyright. Even hurriedly scribbled notes
for an impromptu speech are considered copyrightable material.
The Copyright work has to be expressed by the creator in his
frame of thought. In other words, the work has to be original i.e. the
author created it from independent thinking void of duplication.
This type of work is termed as an Original Work of Authorship
(OWA). It may appear similar to already existing works but should
not be the same. The original work may lack quality or quantity or
aesthetic merit or all these parameters; still, it will pass the test of
copyrightable work.
In addition to originality for the work, Copyright protection also
requires at least some creative effort on the part of the author.
There is no minimum limit for the extent of creativeness. It is a
subjective matter. The minimal level of creativity needed for
Copyright protection depends on the judgment of the evaluator
(adjudicated by the Office of Registrar of Copyright). As an
example, mere changing the dimensions of a book will not be
granted Copyright protection. Similarly, an address book of
alphabetically arranged telephone numbers does not qualify for
Copyright protection as it involves a straightforward alphabetical
listing of phone numbers rather than a creative selection of listings.
2.2.3. Ownership of Copyright
The Copyright laws clearly state the ownership of Copyright.
 The person who created the work is considered as the first
(original) holder (owner) of the Copyright.
 In case the author is an employee and has been contracted to do
the work by a proprietor (of the company/firm/society
/organization, etc.), the owner of the Copyright shall be the
proprietor.
46
 The government will be the primary owner of the government
work in the absence of any kind of arrangement.
 The person delivering a speech is the first owner of the
Copyright.
To obtain permission to use copyrighted material, a request for
the same should be made to the legal owner (of the copyrighted
material), which could be the original author, the legal heir (in case
of the death of the author), publisher, etc. The request must mention
the following:
 Title, author and/or editor, and edition.
 Precise material to be used.
 The number of copies.
 The purpose of the material e.g. educational, research, etc.
 Form of distribution e.g. hard copy to classroom, posted on the
internet.
 Whether the material is to be sold e.g. as part of a course pack.
2.2.4. Copyrights of the Author
The Copyrights of the creator/author are legally protected under
Section 14 of the Copyright Act, 1957. The content (i.e. work)
created by the author cannot be used or published by anyone
without the author‘s consent. Copyrights provide exclusive rights to
the author in the areas of publication, distribution, and usage. A
Copyright owner enjoys two types of rights i.e. Economic Rights
(or Proprietary Rights) and Moral Rights (or Personal Rights).
Economic Rights are associated with financial benefits accruing
from the sale of copyrights. As per the Act, Copyright owners can
authorize or prohibit:
 Reproduction of the work in any form, including printed
publications or sound recordings.
 Distribution of copies of the work.
 Public performance of the work.
 Broadcasting/communicating the work to the public.

47
 Translating the work into other languages.
 Adaptation of the work, such as converting a novel into a
screenplay.
Moral Rights include ‗Right of Paternity‘ and ‗Right of Integrity‘.
The ‗Right of Paternity‘ - even if the Copyright has been licensed to
another party, the original author of the work retains the right to
claim authorship i.e. the name of the author/s will remain even
though Copyrights have been transferred to another party e.g. a
book publisher. The ‗Right of Integrity‘- the original author has the
right to prevent misuse of the work e.g. alterations/additions/
deletions in work resulting in misrepresentation of the said work or
harming the honor and reputation of the author.
It is pertinent to mention that for a work, there can be more than
one rights holders, for instance, a musical sound recording has many
rights holders, such as the lyricist, music composer, singer,
musicians and sound recorders.
2.2.5. Copyright Infringements
As per the Copyrights Acts, 1957, the following acts are
regarded as an infringement of Copyrights:
 Making copies for sale or hire or selling or letting them for hire
without permission.
 Permitting any place for the performance of owned work (in
public) where such performance constitutes an infringement of
Copyright.
 Distributing infringing copies for trade or to such an extent to
affect the interest of the owner of the Copyright prejudicially.
 Public exhibition of infringing copies for trade purposes.
 Importation of infringing copies.
 Translating a work without the permission of the owner.
2.2.6. Liability of Owner of an Auditorium/Hall
The owner of an auditorium/hall is liable for punishment if he
knowingly allows his premises to be used for communication of
illegal copyright material (songs, music, dramas, etc.) to the public.

48
 If a person permits for profit any place to be used for
communicating the work to the public, where such communication
establishes an infringement of the Copyright unless he was not
aware of and had no reasonable ground for believing that such
communication to the public would be an infringement of Copyright,
he will be deemed to have committed an offence under the Copyright
Act.
2.2.7. Copyright Infringement is a Criminal Offence
According to Section 63 of the Copyright Act, 1957, if any
person knowingly infringes the Copyright, he qualifies for the
criminal offence. The punishment awarded for the infringement (of
Copyright) is imprisonment for six months with the minimum fine
of ₹ 50,000/-. In case of a second and subsequent conviction, the
minimum punishment is imprisonment for one year and a fine of
₹ 1,00,000. There is a dedicated IP division to deal with Copyright
cases. Also, there is a Copyright Board constituted by the Central
Government in 1958 to adjudicate certain claims about Copyright.
2.2.8. Copyright Infringement is a Cognizable Offence
A police officer (rank of a sub-inspector or higher) can
confiscate the infringed Copyright material without issuing a
warrant and produce the same in the court of law.
2.2.9. Fair Use Doctrine
Any person not possessing a valid license from the owner of the
Copyright is not entitled to exploit the said work. However, Section
52 of the Copyright Act, 1957, provides for certain exceptions to the
infringement of Copyright. As per the rule of law, Copyrighted
materials cannot be used by anybody without the proper consent of
the legal owners (of the Copyright).
However, limited use of Copyrighted materials for teaching and
research purposes is legally permitted, under ‗The Fair Use
Doctrine‘, which comprises of the four-part test:
 The character of the use - use of the work is purely
educational, non-profit and personal.
 Nature of the work - The use of work is factual in nature and
not imaginative.

49
 Amount of the portion to be used - permission is not needed if
only a small portion of Copyright protected material is to be
used. However, this parameter is debatable now.
 Impact of use on the value of the Copyrighted material - If a
small portion of the work is copied and is not affecting the
author‘s economic and moral rights, it will be excused from the
infringement.
Detailed information on the examples of the Fair Use Doctrine can
be accessed from the official website (http://copyright.gov.in/
exceptions.aspx). A few examples are listed below:
 If the Copyrighted work is used for personal use i.e. studies or
research.
 Quotation mentioned in the Copyrighted work.
 Reporting of current events in the media, such as newspapers,
magazines or radios/television.
 Reproduction of the work by teachers or scientific researchers.
 Performance is free of charge by government officials in the
performance of their duties e.g. reproduction of any work for a
judicial proceeding or a report of a judicial proceeding.
 Use of any work prepared by the Secretariat of a Legislature.
 Use of the work in a certified copy made or supplied in
accordance with any law for the time being in force.
 Making three or less than three copies of a book (including a
pamphlet, sheet of music, map, chart or plan).
 Bonafide religious ceremony, including a marriage function.
2.2.10. Copyrights and Internet
The twenty-first century is an era of digitization. The
Copyrighted data is quickly transmitted via the internet. This
method of data transmission has brought amendments to the existing
Copyright laws. One should be careful of Copyright/fair use
principles when downloading material from the internet. There is
growing concern about the ability to pull Copyrighted material from
the internet without permission. Note that material may have been
placed on the internet without the author‘s permission.

50
 In general, posting material on the internet by the Copyright
owner gives an internet user the right to use that material for his
personal use, but he cannot use the work for commercial purposes.
Electronic distribution of a Copyrighted work should mention the
statement that ―This work is protected by Copyright laws and is
provided for educational instruction only. Any infringing use may
be subject to disciplinary action and/or civil or criminal liability as
provided by law”.
As per Section 2(o) of the Copyright Act, 1957, ‗Literary Work‘
includes computer programmes, tables and compilations, including
computer databases. It is mandatory to supply ‗Source Code‘ and
‗Object Code‘ along with the application for registration of
Copyright.
2.2.11. Non-Copyright Work
The works not under the jurisdiction of Copyrights are as follows:
 The ideas, concepts, and principles themselves cannot be
protected under Copyright, only the form in which they are
expressed can be copyrighted.
 Facts, such as scientific or historical discoveries, are not
copyright protected. Any fact a person discovers in the course of
research cannot be Copyright protected. For example, an author
of a book on ‗Buddhism‘ takes ten-fifteen years to gather all the
necessary materials and information for his work. At a great
expense, the author travels to various museums, libraries and
excavations sites. However, after the book is published, anyone
is free to use the underlying facts, provided they express the
information on their own.
 Copyright does not protect titles, names, slogans, short phrases,
short word combinations, methods, or factual information.
 Certificates are not considered as Copyrightable subject matter
as there is not much scope for creativity.
 Digitally created works and Copyrighted works transformed
into a digital format and placed on the internet are Copyright
protected.
 The Copyright registration for a website, as a whole, is not
possible. However, different components/rudiments of a website
51
 can be granted Copyright registration e.g. computer
programmes/software, compilations including computer
databases (‗literary works‘); photographs, paintings, diagram,
map, chart or plan (‗artistic works‘); and works consisting of
music including graphical notation of such work (‗musical
works‘). However, a separate application for each component of
work has to be filed for seeking Copyright registration.
 A computer or mobile App qualifies for Copyright registration.
An Application is a complete, self-contained computer program
that is designed to perform a specific task. An App usually has
dynamic content and is designed for user interaction. It may be
used directly or indirectly in a computer or handheld electronic
device.
 If someone swipes your picture/song/video from the internet
and uses it for their purposes, it is a Copyright infringement. By
the way - the same is true if you nick some else‘s material for
your purposes.
2.2.12. Copyright Registration
It is not necessary to register a work to claim Copyright. Once a
work is created via any medium, the work receives automatic
Copyright safety. In other words, there is no formal request to be
submitted to the office of the Copyright, for acquiring Copyright.
Copyright registration does not confer any rights. It is merely a
prima facie proof of an entry in respect of the work in the Copyright
register maintained by the Registrar of Copyrights. The certificate of
registration serves as prima facie evidence in a court in cases of
disputes relating to ownership or creation of Copyright, financial
matters, transfer of rights, etc. It is advisable that the author of the
work registers for Copyright for better legal protection. In India,
Copyrights matters, including Copyright registration, are
administered under the Copyright Act, 1957 and Copyrights Rule,
2013. Below mentioned are prominent forms for copyright
registration (https://copyright.gov.in/).

52
 FORM – XIV
Application for Registration of Copyright

To

The Registrar of Copyrights,

Copyright Office,
BoudhikSampada Bhawan, Plot No. 32,
Sector 14, Dwarka, New Delhi-110078
Phone: 011-28032496

Sir,

In accordance with section 45 of the Copyright Act, 1957 (14 of 1957), I hereby
apply for registration of Copyright and request that entries may be made in the
Register of Copyrights as in the enclosed statement of Particulars‘ sent
herewith.
I also send herewith duly completed the statement of further particulars relating
to the work.
In accordance with rule 70 of the Copyright Rules, 2012, I have sent by pre-paid
registered post copies of this letter and of the enclosed statement(s) to the other
parties concerned, as shown below:

Names and addresses of the parties Date of Dispatch

1 2

The prescribed fee has been paid, as per details below:

Communications on this subject may be addressed to:
I hereby declare that to the best of my knowledge and belief, no person, other
than to whom a notice has been sent as per paragraph 2 above has any claim or
interest or dispute to my Copyright of this work or to its use by me.
I hereby verify that the particulars given in this Form and the Statement of
Particulars and
Statement of Further Particulars are true to the best of my knowledge, belief and
information and nothing has been concealed therefrom.
List of enclosures:

Yours faithfully

(Signature of the Applicant)

Place: ………………….
Date: ……………………
Source: https://copyright.gov.in/frmDownloadPage.aspx

53
 STATEMENT OF PARTICULARS
S.No. Attributes Details
1. Registration number (To be filled in the Copyright
Office)
2. Name, phone, email, address and nationality of the
applicant
3. Nature of the applicant‘s interest in the Copyright
of the work
4. Class and description of the work
5. Title of the work
6. Language of the work
7. Name, address and nationality of the author and, if
the author is deceased, the date of his decease
8. Whether work is published or unpublished
9. Year and country of first publication and name,
address and nationality of the publishers
10. Years and countries of subsequent publications, if
any, and names, addresses and nationalities of the
publisher
11. Names, address and nationalities of the owners of
the various rights comprising the Copyright in the
work and the extent of rights held by each, together
with particulars of assignment and licenses, if any
12. Names, addresses and nationalities of other
persons, if any, authorized to assign or license the
rights comprising the Copyright
13. If the work is an ―artistic work‖, the location of the
original work, including name, address and
nationality of the person in possession of the work.
(In the case of an architectural work, the year of
completion of the work should also be shown)
14. If the work is an ‗artistic work‘ which is used or is
capable of being used in relation to any goods or
services, the application shall include a certificate
from the Registrar of Trade Marks in terms of the
proviso to sub-section (1) of section 45 of the
Copyright Act, 1957.]

54
 15. If the work is an ―artistic work‖ whether it is
registered under the Designs Act 2000. If yes give
details.
16. If the work is an ―artistic work‖ capable of being
registered as a design under the Designs Act 2000,
whether it has been applied to an article though an
industrial process and , if yes, the number of times
it is reproduced.
17. Remarks, if any
Place:(Signature of the Applicant)
Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx

55
 STATEMENT OF FURTHER PARTICULARS
(For Literary, including Software, Dramatic, Musical and Artistic
Works only)

S.No. Attributes Details

1. Is the work to be registered
a) An original work?
b) Translation of a work in the public domain?
c) A translation of a work in which Copyright
subsists?
d) An adaptation of a work in the public domain?
e) An adaptation of a work in which Copyright
subsists?

2. If the work is a translation or adaptation of a work in

which Copyright subsists:
a) Title of the original work.
b) Language of the original work.
c) Name, address and nationality of the author of
the original work and, if the author is deceased,
the date of his decease.
d) Name, address and nationality of the publisher,
if any, of the original work.
e) Particulars of the authorization for a translation
or adaptation including the name, address and
nationality of the party authorizing.
3. Remarks, if any.
Place: (Signature of the Applicant)

Date:
Source: https://copyright.gov.in/frmDownloadPage.aspx

56
2.2.13. Judicial Powers of the Registrar of Copyrights
The Registrar of Copyrights has the powers of a civil court
when trying a suit under the Code of Civil Procedure in respect of
the following matters:
 Summoning and enforcing the attendance of any person and
examining him on oath.
 Requiring the discovery and production of any document.
 Receiving evidence on affidavit.
 Issuing commissions for the examination of witnesses or
documents.
 Requisitioning any public record or copy thereof from any court
or office.
 Any other matters which may be prescribed.
A duly filled application (Form XIV) is submitted to the
Copyright Office at the following address: The Registrar of
Copyright, Plot no. 32, Boudhik Sampada Bhawan, Sector 14,
Dwarka, New Delhi - 110075. The application can be submitted by
post or online registration through the ‗E-filing facility‘
(www.copyright.gov.in). Any person who is either an author of the
work or assignee of the concerned work can file an application for
Copyright.
Usually, it takes around 2-3 months to get the work registered
by the Copyright Office. After applying, there is a mandatory
waiting period of 30 days. If any person has any objection to the
claim/s made in the application, he can contact the office of the
Registrar of Copyrights. After giving an opportunity of hearing to
both the parties, the Registrar may decide the case in favour or
against the author of the work. Once the objections (if any) are
cleared, the application is evaluated by the examiners. If any
doubts/queries are raised, the applicant is given ample time (around
45 days) to clear these objections. The elements included in
Copyright filing to grant are depicted below in the flow chart:

57
Figure 2.6: Flow chart for the process of Copyright registration.

Source: https://copyright.gov.in/frmWorkFlow.aspx (slightly modified)

58
 Table 2.5: Important forms pertaining to Copyrights.

S. No. Name of Form Form No.

Application form for registration of
1. Form-XIV
Copyright
Application form for registration of
2. Form-XV
changes in particulars of Copyright
3. Registration of a Copyright Society Form-VIII
Application form for the relinquishment
4. Form-I
of Copyright
Source: http://Copyright.gov.in/frmformsDownload.aspx

2.2.14. Fee Structure

For each work, a separate application form needs to be
submitted, along with the requisite fee. The fee is not reimbursable
in case the application for registration is rejected.
Table 2.6: Fee structure for Copyrights.
Attribute Fee (₹ )
For an application for registration or Copyright 500/- per
Literary, Dramatic, Musical or Artistic work work
For an application for registration of Copyright in
5,000/-
a Cinematograph Film
For an application for registration of Copyright in
2,000/-
a Sound Recording
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 2,000/-
relation to any goods or services
Making any change in Literary, Dramatic,
200/-
Musical or Artistic work
Provided that in respect of a Literary or Artistic
work which is used or is capable of being used in 1,000/-
relation to any goods or services

59
 For an application for registration of change in
particulars of Copyright entered in the Register 2,000/-
of Copyrights in respect of Cinematograph Film
For an application for registration of changes in
particulars of Copyright entered in the Register 1,000/-
of Copyrights in respect of Sound Recording

For an application for prevention of importation

of infringing copies per place of entry 1,200/-

Source: http://Copyright.gov.in/frmFeeDetailsShow.aspx

2.2.15. Copyright Symbol

It is not necessary to place the Copyright symbol © with your
name and ‗year created‘ near your published or printed materials -
but if you do, it‘s easier to nail someone for infringement on your
Copyright if you go to court. The important things which may be
mentioned as a Copyright mark on Copyright creation are:
 The Copyright symbol © (the letter C in a circle), or the word.
‗Copyright‘, or the abbreviation ‗Copr.‘
 In the case of compilations or derivative works incorporating
previously published material, the year with the date of the first
publication of the compilation or derivative work should be
mentioned. The year date may be omitted for pictorial, graphic,
sculptural work, greeting cards, postcards, stationery, jewellery,
dolls and toys.
 The name or the abbreviation by which the name can be
recognized of the owner of the Copyright, or a generally known
alternative designation of the owner can be mentioned.
 The elements for sound recordings generally require the same
three elements, except the symbol is ℗ (the letter P in a circle)
instead.
2.2.16. Validity of Copyright
In general, the validity of Copyright is for 60 years. This period
starts either from the year after the death of the author (in case of

60
literature, dramatic, musical and artistic works) or from the date of
publication of the work (in case of cinematograph films, sound
recordings, photographs, posthumous publications, works of
government and works of international organisations).
2.2.17. Copyright Profile of India
A comparative five years (2015-20) study revealed a gradual
increase in the number Copyright applications in the first four years
of the study, with a maximum number of applications (21,905)
recorded in the 2019-20 period (Fig. 2.7). The number of
applications examined was maximum (34,388) in 2017-18.
However, it tapered down to 22,658 in 2018-19 and 19,460 in 2019-
20. A similar trend was observed in the number of Copyright
registrations, with a peak (19,997) observed in 2017-18.

Figure 2.7: Copyrights profile (India) for the period 2015-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.2.18. Copyright and the word ‘Publish’

A work is considered published when it is in the public domain
on an unrestricted basis. For example, a person writes an article
called ‗Life in Himalayas‘ and distributes it to a few individuals
and/or societies/organizations with a restriction not to disclose the
contents of the article. ‗Life in Himalayas‘ has not been ―published‖

61
in the Copyright sense. If the author removes the condition of non-
disclosure or posts of this article on the internet (i.e. public domain),
it would be considered as published. It is to be noted that both
published and unpublished works can be registered under
Copyright.
2.2.19. Transfer of Copyrights to a Publisher
The original authors of the Copyrighted work may not have the
wherewithal to widely publicise their work. Usually, they transfer
their rights to publishers for financial benefits, which could be a
one-time lump sum amount or royalties or a combination of the two.
However, transferring Copyrights unconditionally to the publishers
(or anybody else) may have some repercussions for the owner of the
Copyright. A publisher may prevent author/s from displaying their
articles on the institute‘s websites. The new owner of Copyright
may not even allow the author to revise his work. In other instances,
a publisher might print an insufficient number of hard copies and
also does not show interest in uploading the soft copy of the work
on the internet. Hence, one must be careful in signing an agreement
with the publishers. The author may not transfer all the legal rights
bestowed upon him as an author. An agreement may be signed
permitting only the print and sale of hard copies by the publishers
while retaining digital rights for the said work. An author may also
put a time limit for the printing and sale of the books/articles, etc.
Before the digital era, authors used to rely completely on
publishers for the dissemination of their work. However, in the
internet era, the dependency on publishers has almost diminished.
The author is in a position to bypass the publishers and bring his
work in to the public domain. But this freedom cannot be enjoyed
by those who are already under the publishing contract.
Even though the author has completely and exclusively licensed
out his work, the Copyright Act has a provision under ‘termination
of transfer’ to reclaim his Copyright. Under this provision, certain
Copyright agreements can be terminated after 35 years of the
agreement. This statutory termination right applies even though it is
not incorporated in the agreement. It is strongly advised that authors
must apply their mind while signing the Copyright agreement.

62
2.2.20. Copyrights and the Word ‘Adaptation’
In the world of Copyright, the word ‗Adaptation‘ signifies the
creation of a similar work based upon contemporary work. The
Copyright Act defines the following actions as adaptations:
a) Transformation of a dramatic work into a non-dramatic work.
b) Changing a literary or artistic work into a drama.
c) Re-arrangement of a literary or dramatic work.
d) Depiction through pictures of a literary or dramatic work.
e) The making of a cinematograph film of a literary or dramatic or
musical work.
2.2.21. Copyrights and the Word ‘Indian Work’
‗Indian work‘ means a literary, dramatic or musical work provided
 The author of the work is an Indian citizen.
 The work is first published in India.
 In the case of an unpublished work, at the time of the making of
the work, the author of the work was a citizen of India.
2.2.22. Joint Authorship
‘Work of Joint Authorship‘ means a work produced by the
collaboration of two or more authors in which the contribution of
one author is not distinct from the contribution of the other author or
authors.
2.2.23. Copyright Society
Many a time, authors and other owners of Copyrights are either
unable or lose track of all the uses of their work, including the
collection of royalties, infringement issues, etc. To overcome these
hurdles, Copyright Societies have cropped up. As per Section 33 of
the Copyright Act, 1957, a Copyright Society is a registered
collective administration society formed by authors and other
owners of the Copyright. Society can perform the following
functions:
 Keep track of all the rights and infringements related to their
clients.

63
 Issue licences in respect of the rights administered by the
society.
 Collect fees in pursuance of such licences.
 Distribute such fees among owners of Copyright after making
deductions for the administrative expenses.
A Copyright Society can be formed by a group of seven or more
copyright holders. The term of registration of a Copyright Society is
for five years. The registered Copyright Societies in India are:
 Society for Copyright Regulation of Indian Producers for Film
and Television (SCRIPT) 135 Continental Building, Dr. A.B.
Road, Worli, Mumbai 400 018, (for cinematograph and
television films).
 The Indian Performing Right Society Limited (IPRSL), 208,
Golden Chambers, 2nd Floor, New Andheri Link Road, Andheri
(W), Mumbai- 400 058 (for musical works).
 Phonographic Performance Limited (PPL) Flame Proof
Equipment Building, B.39, Off New Link Road, Andheri
(West), Mumbai 400 053 (for sound recordings).
2.2.24. Copyright Board
The Copyright Board is a regulatory body constituted by the
government, to perform judicial functions as per the Copyright Act
of India. The Board comprises of a Chairman and members (2-14)
to arbitrate on Copyright cases. The Chairman of the Board is of the
level of a judge of a High Court. As per the Act, the Board has the
power to:
 Hear appeals against the orders of the Registrar of Copyrights.
 Hear applications for rectification of entries in the Register of
Copyrights.
 Adjudicate upon disputes on the assignment of Copyrights.
 Grant compulsory licences to publish or republish works (in
certain circumstances).
 Grant compulsory licence to produce and publish a translation of
a literary or dramatic work in any language after seven years
from the first publication of the work.

64
 Hear and decide disputes as to whether a work has been
published or about the date of publication or the term of
Copyright of a work in another country.
 Fix rates of royalties in respect of sound recordings under the
cover-version provision.
 Fix the resale share right in original copies of a painting, a
sculpture or a drawing and original manuscripts of a literary or
dramatic or musical work.
2.2.25. Copyright Enforcement Advisory Council (CEAC)
In 1991, the Government set up a CEAC to review the progress
of enforcement of the Copyright Act periodically and advise the
Government regarding measures for improving the enforcement of
the Act. The term of the CEAC is three years. The CEAC is
reconstituted periodically after the expiry of the term.
2.2.26. International Copyright Agreements, Conventions and
Treaties
Any creative work is not protected and enforced automatically
worldwide because Copyright laws are territorial by nature i.e.
Laws are valid only in the country in which they have been created.
To secure protection to Indian works in foreign countries, the author
needs to apply separately to each country or through dedicated
international ‗Conventions on Copyright and Neighbouring (related)
Rights‘, provided a country is a member of such Conventions. India
is a member of the following Conventions:
 Berne Convention for the Protection of Literary and Artistic
Works, 1886. (https://www.wipo.int/treaties/en/ip/berne/).
 Universal Copyright Convention, 1952.
(http://www.unesco.org/new/en/culture/themes/creativity/creati
ve-industries/copyright/universal-copyright-convention/).
 Rome Convention for the Protection of Performers, Producers
of Phonograms and Broadcasting Organizations, 1961.
(https://www.wipo.int/treaties/en/ip/rome/).
 Multilateral Convention for the Avoidance of Double Taxation
of Copyright Royalties, 1979.
(https://treaties.un.org/doc/Treaties/1979/12/19791213%2009-
65
 00%20AM/Ch_XXVIII_01_ap.pdf).
 Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement, 1995.
(https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm).
In India, Copyrights of foreign authors, whose countries are
members of the Berne Convention for the Protection of Literary and
Artistic Works (1888), Universal Copyright Convention (1952) and
the TRIPS Agreement (1995) are protected through the International
Copyright Order.
2.2.27. Interesting Copyrights Cases
David vs. Macaques, Indonesia, 2011 - In 2011, a UK-based
photographer David Slater put his camera on a tripod in the wildlife
sanctuary to click the photograph of Macaques monkeys. The
Macaques were very curious about the equipment and they found
the flashlight fascinating. One monkey clicked a selfie photograph
which became very famous and legally controversial on the matter
of Copyright. Theoretically, the monkey is the holder of Copyright
as he clicked the photo. Practically, David Slater was the claimant
of the Copyright. The dispute entered judicial quarters between
People for the Ethical Treatment of Animals (PETA) and David
Slater. Now, the settlement has been concluded. The photographer
i.e. David Slater withholds the Copyright of the picture for having a
substantial contribution, but he would pay 25% of the royalty share
to the wildlife sanctuary where the monkey lives (https://www.
wipo.int/ wipo_magazine/en/2018/01/article_0007.html).
‘Happy birthday to you’ case law - According to the Guinness
World Records, 1998, it is the most recognized song in the English
language. The melody of ‗Happy Birthday to You‘ originates from
the song ‗Good Morning to All‘, which has traditionally been
attributed to American Sisters, namely Patty Smith Hill and Mildred
J. Hill, in 1893. The sisters composed the melody of ‗Good Morning
to All‘ to make it more interesting for the children. In 1935, Summy
Company registered the Copyright on the Piano Setting on the Song.
In 1999 Warner/Chappell acquired the company and started taking
royalty for the happy birthday song and earned a huge amount.
After mediation by the Federal court, Warner Music, through its
publishing subsidiary Warner/Chappell, agreed to pay the settlement

66
to a class of ‗thousands of people and entities‘ who had paid licensing
fees to use the song since 1949 because only the melody was registered
and not the lyrics. Now the song is in the public domain.
Amitabh Bachchan to lose Copyrights over his father’s works in
2063 - Father of renowned actor Mr. Amitabh Bachchan, (late)
Shree Harivansh Rai Bachchan was a noted poet and Hindi writer.
His most famous work was Madhushaala (1935). He was the
recipient of the Sahitya Akademi award and the Padma Bhushan. He
also did Hindi translations of Shakespeare‘s Macbeth and Othello.
He passed away on 18th January 2003, at the age of 95. As per the
Copyright Act, 1957, the rights over his work will be completed in
the year 2063 (rights remain with the author for his lifetime plus 60
years).

67
2.5 Geographical Indications

In every country, there are certain regions famous for their

traditional knowledge/heritage in various sectors, such as
agriculture, food products, textiles, etc. People from far-off places
used to travel to buy these products. For example, Christopher
Columbus sailed from Spain to import world-famous spices from
India. British people travelled to Arabian countries to import
Arabian horses for siring fast running horses for commercial gains.
Similarly, China silk and Dhaka Muslin have been in great demand
from times immemorial. The reputation of these products was built
upon and painstakingly maintained by the experts/masters of
respective geographical locations. The know-how of these reputed
products was passed onto future generations. With the passage of
time, a specific link between the goods produced and geographical
location evolved, resulting in the growth of Geographical
Indications (GI).
A GI is defined as a sign which can be used on products
belonging to a particular geographical location/region and possesses
qualities or a reputation associated with that region. In GI, there is a
strong link between the product and its original place of production.
2.5.1. Acts, Laws and Rules Pertaining to GI
In India, GI was introduced in 2003 and is governed under the
‗Geographical Indications of Goods (Registration & Protection)
Act, 1999‘ and the Geographical Indications of Goods (Registration
& Protection) Rules, 2002.
2.5.2. Ownership of GI
The ownership/holders of GI (registered) can be of the
producers, as a group/association/ cooperative society or association
or in certain cases, government.
2.5.3. Rights Granted to the Holders
 Right to grant the license to others - The holder has the right
to gift, sell, transfer/grant a license, mortgage or enter into any
other arrangement for consideration regarding their product. A

90
 license or assignment must be given in written and registered
with the Registrar of GI, for it to be valid and legitimate.
 Right to sue - The holder of GI has the right to use and take
legal action against a person who uses the product without his
consent.
 Right to exploit - The holder of GI can authorize users with
exclusive right to use goods for which the GI is registered.
 Right to get reliefs - Registered proprietors and authorized
users have the right to obtain relief concerning the violation of
such GI products.
2.5.4. Registered GI in India
GI products registered in India belong to the domains of
handicrafts, agricultural, food stuffs, alcoholic beverages, etc. The
first GI tag was granted in 2004 to Darjeeling Tea and the latest
being Kashmir Saffron and Manipur Black rice (Chakhao) in May
2020. A total of 370 GI have been registered in India till May 2020.
(http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Appl
ication_Register_10-09-2019.pdf). Nearly 58% of these belong to
handicrafts, followed by agriculture (30%). Other categories belong
to food stuff, manufacturing, and natural goods. In the Handicraft
category, Tamilnadu holds the maximum number (21) of GI
followed by Uttar Pradesh (20) and Karnataka (19). A few standout
GI are mentioned in table 2.11:
Table 2.11: List of popular GIs registered in India.
GI Type State
Darjeeling Tea Agriculture West Bengal
Mysore Silk Handicraft Karnataka
Kashmir Pashmina Handicraft Jammu & Kashmir
Banaras Brocades and
Handicraft Uttar Pradesh
Sarees
Naga Mircha Agriculture Nagaland
Tirupathi Laddu Foodstuff Andhra Pradesh
Punjab, Haryana,
Phulkari Handicraft
Rajasthan
Basmati Agriculture India
Source: http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/GI_Application
_Register_10-09-2019.pdf

91
 International countries, such as Thailand, France, Portugal,
Italy, Mexico, Peru and the United Kingdom, have also filed GI in
India e.g. Champagne (wine) of France and Scotch Whisky of the
United Kingdom.
2.5.5. Identification of Registered GI
Registered GI products are granted a tag, which is printed on the
registered products. The tag confirms the genuineness of the product
in terms of its production (by set standards) and location of
production. Non-registered GI products cannot use/exploit this tag.
By and large, GI tags represent the place of origin (of the product)
along with cultural and/or historical identity e.g. Darjeeling Tea,
Mysore Silk, Tirupathi Laddu, etc.
In India,GI tags are issued by the Geographical Indication
Registry under the Department for Promotion of Industry and
Internal Trade, Ministry of Commerce and Industry. The head of GI
registry is at Geographical Indications Registry Intellectual Property
Office Building, Industrial Estate, G.S.T Road, Guindy, Chennai -
600032.
GI registered products can be grown/produced in any part of the
world using standards laid down by the GI Registry. However, these
products cannot be labelled as GI as they are not produced/
manufactured in a specific geographical location, as mentioned in
the official records maintained by the GI Office of GI. For example,
plants of Darjeeling Tea can be grown in any part of India. But the
tea leaves of these plants cannot be sold under the brand name of
Darjeeling Tea, as the concerned plants were not grown in the soil
and climate of the Darjeeling area.
2.5.6. Classes of GI
GI certified goods are classified under 34 different classes, such
as Class 1 is for chemicals used in industry, science, photography,
agriculture, horticulture and forestry; unprocessed artificial resins,
unprocessed plastics; manures; fire extinguishing compositions;
tempering and soldering preparations; chemical substances for
preserving foodstuffs; tanning substances; adhesives used in
industry. Class 33 is for alcoholic beverages (except beers) and
Class 34 is related to tobacco, smokers‘ articles, matches. More

92
details can be extracted from the official website of CGPDTM
Office
(http://www.ipindia.nic.in/writereaddata/images/pdf/classification-
of-goods.pdf).
2.5.7. Non-Registerable GI
For GI registration, the indications must fall within the scope of
section 2(1) (e) of GI Act, 1999. Being so, it has to also satisfy the
provisions of Section 9, which prohibits registration of a GI
mentioned below:
 The use of which would be likely to deceive or cause
confusion.
 The use of which would be contrary to any law.
 Which comprises or contains scandalous or obscene matter.
 Which comprises or contains any matter likely to hurt the
sentiments of society.
 Religious susceptibilities of any class or section of the citizens
of India.
 Which are determined to be generic names or indications of
goods and are, therefore, not or ceased to be protected in their
country of origin or which have fallen into disuse in that
country.
2.5.8. Protection of GI
The IP rights to GI are enforced by the court of law of the
concerned country. The GI registration of a product has certain
advantages. It enables to identify pirated/non-genuine stuff,
provides more commercial value to the product, and also
strengthens the case if it reaches the judicial courts. The two
common methods of protecting a GI are:
Sui generis systems (i.e. special regimes of protection) and
under certification or collective mark systems. Many countries,
including India to protect GI by using the sui generis system. This
decision was taken after the TRIPS agreement (1995) and an option
was given to the countries to choose either TRIPS standards or the
sui generis system. This was decided by considering the fact that
every country has different legislation and geographical structures &

93
resources. Therefore, this system is not uniform in all countries and
varies according to the jurisdiction and legislation of the particular
country.
2.5.9. Collective or Certification Marks
Certification marks aim to certify the products comply with
specific quality standards irrespective of their origin. These
standards include permitted materials and manufacturing methods.
Therefore, the purpose of certification marks is to distinguish
certified goods from non-certified ones. Collective marks are owned
by associations ensuring compliance with the agreed standards.
Collective marks signify that a good or service originates from a
member of a particular association. The Collective mark is used by
cooperating enterprises that have agreed to comply with defined
quality standards for goods or services that share common
characteristics.
2.5.10. Enforcement of GI Rights
The rights to GI protection are typically enforced by the court of
law. The sanctions provided could be civil (injunctions restraining
or prohibiting unlawful acts, actions for damages, etc.), criminal, or
administrative.
2.5.11. Procedure for GI Registration
Prior to filing an application for registering GI, it is prudent to
search whether the concerned GI is already protected or not. This
can be done by using search engines created by WIPO
(https://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp where
‗Search of Appellations of Origin and Geographical Indications‘
both can be conducted.
Additionally, WIPO has created a directory of all IP offices of
its member countries. The registered GI of any country can be
searched by accessing the website of the respective country
(https://www.wipo.int/directory/en/urls.jsp). The list of registered
GI in India can be accessed from the official website of CGPDTM
http://www.ipindia.nic.in/writereaddata/Portal/News/367_1_Registe
red_GI.pdf.
Once the prior search for registered GI is done, the applicant has
to file an application. The application for GI can be forwarded by an
94
individual or an organization or authority of people established
under Indian law. The application in a prescribed format is
submitted to the Registrar, Geographical Indications along with the
prescribed fee
(http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-
rules.pdf). In the application, the applicant needs to mention the
interest of the producers of the concerned product. The application
should be duly signed by the applicant or his agent with all the
details about the GI that how its standard will be maintained. The
submission of three certified copies of the map of the region where
the GI belongs is mandatory.
Once the application is filed at GI Registry, the Examiner will
scrutinize the application for any deficiencies or similarities. If the
examiner finds any discrepancy, he will communicate the same to
the applicant, which is to be replied within one month of the
communication of the discrepancy. Once the examiner is satisfied
with the response/s, he files an examination report and hands over
the same to the Registrar. Once again, the application is scrutinized.
If need be, the applicant is asked to clear any doubts/objections
within two months of the communication otherwise, the application
will be rejected. After getting a green signal from the Registrar, the
application is published in the official Geographical Indication
Journal (http://www.ipindia.nic.in/journal-gi.htm) for seeking any
objections to the claims mentioned in the application. The
objections have to be filed within four months of the publication. If
no opposition is received, the GI gets registered by allotting the
filing date as the registration date. Initially, GI is registered for ten
years but is renewable on the payment of the fee.
2.5.12. Documents Required for GI Registration
 Details about the applicant‘s name, address and particulars.
 Application form GI-1A.
 Statement about the designated goods being protected under GI.
 Class of goods.
 Affidavit to establish the claim of genuinely representing the
interest of the producers.
 Characteristics of GI.
 The special human skill required (if any).
95
 Figure 2.12: Flow chart for the process of GI registration.

Source: https://www.researchgate.net (slightly modified)

The important forms to file GI in India under various classes are

mentioned below:

Table 2.12: Important application forms related to GI.

Form Requisite Fee
Title
No. ( )
Application for the registration of a
Geographical Indication for goods included 5000
in one class.
Application for the registration of a
GI-1 Geographical Indication for goods included 5000
in one class from a Convention country.
A single application for the registration of a
5,000 for each
Geographical Indication for goods in
class
different classes.

96
 A single application for the registration of a
5,000 for each
Geographical Indication for goods in
class
different classes from a Convention country.
Notice of opposition to the registration of a
1,000 for each
Geographical Indication or an opposition or
class
an authorised user.
GI-2
Form of counter-statement. 1,000
Application for extension of time for filing
300
notice of opposition.
Application for the registration of an
authorised user of a registered Geographical 500
Indication.
GI-3
Request for issuance of a registration
100
certificate as an authorised user.
For renewal of an authorised user. 1000
Renewal of the registration of a Geographical
Indication at the expiration of the last 3,000
registration.
Application for restoration of a Geographical 1000 plus
GI-4 Indication or an authorised user removed applicable
from the Register. renewal fee
Application for renewal within six months
from the expiration of last registration of 3,500
Geographical Indication.
Application for registration of a Geographical
GI-8 1000
Indications agent.
Application for cancellation of an entry in the
GI-10 300
Register or to strike out goods.
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_27_1_gi-rules.pdf

2.5.13. GI Ecosystem in India

India is among the geographically and traditionally rich countries.
The scope of generating GI products in India is enormous. These
products can contribute to the economic development of a particular
region or society. However, till June 2021, a total of 370 GI have
been registered in India, which is much below its potential
(https://ipindia.gov.in/writereaddata/Portal/Images/pdf/GI_Applicati
on_Register_10-09-2019.pdf). Figure 2.13 represents the statistics
for GI (filed, and registered) for the period 2010-20. Maximum
number (148) of GI were filed in 2011-12 whereas, minimum
number (17) was observed in 2015-16. Not much change in the

97
number of GI registrations was observed during the period 2010-20.
Each year the number hovered around in the twenties, with
maximum registrations (34) seen in 2016-17.
Figure 2.13: GI profile (India) for the period 2010-20.

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.5.14. Additional Information

2.5.14.1. Generic GI - When a GI-certified product becomes more
popular by the name of the origin of the place, it is termed as
Generic GI. For example, Camembert Cheese. Camembert is the
name of the place in France where this special cheese is produced.
In food places, merely saying the word Camembert denotes
Camembert cheese.
2.5.14.2. Homonymous GI - When two or more products, which
have been granted GI status, are spelled or pronounced alike, but
their source of origin is different (usually in different countries),
such GI are termed as Homonymous GI. One of the examples of the
homonymous GI is a wine named ‗Rioja‘, which is a GI for wine
produced in two countries (Argentina and Spain). In such a case, the
applicants (of GI) need to prove different characteristics of their
products. People may get confused if two Homonymous GI are
being sold at the same place. It is better that additional information
(source of origin of product) be mentioned on these products so as
to prevent consumers from being misled.
2.5.14.3. Difference Between GI and Appellation of Origin - In the
case of an appellation of origin, the link with the place of origin is
98
very strong. The quality or characteristics of a product protected as
an appellation of origin must result exclusively or essentially from
its geographical origin. This generally means that the raw materials
should be sourced from the place of origin and that the processing
of the product should also take place there. In the case of GI, a
single criterion attributable to the geographical origin is sufficient,
be it quality or another characteristic of the product or even just its
reputation. For example, Tirupathi Ladoo is GI, whereas Roquefort
Cheese tastes the way it does because it is matured in a certain way
in the caves of Roquefort is an Appellation of Origin.
2.5.14.4. Difference Between GI, Trademark and Traditional
Knowledge - Generally, people get confused with GI, Trademark
and Traditional Knowledge. GI identifies a product/good as
originating from a specific place. Trademark products/goods/service
originate from a particular industry/institute/organization/society,
etc. A Trademark is identified by an arbitrary sign, whereas GI has
the name of the geographical area. Finally, a Trademark can be
assigned or licensed to anyone, anywhere in the world, whereas GI
is linked with a specific geographical territory.
Products identified as GI are often the result of traditional
processes and knowledge carried forward by a community in a
particular region from generation to generation. Similarly, some
products identified by a GI may embody characteristic elements of
the traditional artistic heritage developed in a given region, known
as traditional knowledge (also termed as traditional cultural
expressions). This is particularly true for tangible products, such as
handicrafts, made using natural resources and having qualities
derived from their geographical origin.
2.5.14.5. International Agreements for GI Administered by WIPO
- The international organization WIPO has a dedicated search engine,
namely WIPO Lex (https://wipolex.wipo.int/en/ legislation/
results?countryOrgs=IN&subjectMatters=5), which has incorporated
IP Laws, including that of GI of all member countries. Below
mentioned are the international agreements administered by WIPO:
 Madrid Agreement (1891) for the International Registration of
Marks (https://www.wipo.int/madrid/en/).

99
 Nice Agreement (1957) for the International Classification of
Goods and Services for the Registration of Marks
(https://www.wipo.int/classifications/nice/en/).
 Lisbon Agreement (1958) for the Protection of Appellations of
Origin (International Registration https://www.wipo.int/treaties
/en/registration/lisbon/).
Every signatory member has to follow the guidelines of these
agreements. Also, it is mandatory for the members to show the
classification of goods in their official documents.
2.5.14.6. Famous Case Law: Banglar Rasogolla Vs. Odisha
Rasagola - Rasagolas is a very popular dessert in India. It is thought
to have originated in the eastern part of India. In November 2017,
the West Bengal State Food Processing and Horticulture
Development Corporation Limited registered ‗Banglar Rasogolla‘
as a GI. However, the legal battle for GI registration started when
objections to this GI registration were lodged by the State of
Odisha, claiming that Rasagolas originated at Jagannath temple in
Puri, Odisha. An application was filed in High Court in February
2018 to remove the registration of GI status of ‗Banglar Rasogolla‘.
Meanwhile, in July 2018 ‗Odisha Rasagola‘ was also granted GI tag
by the GI Registry, GoI. As per the court verdict,
a) ‗Rasogolla / Rasagola‘ is a general term, which any person can
use in his trade and business.
b) The words ‗Odisha Rasagola‘ and ‗Benglar Rasogolla‘ can
only be used by authorized users ‗under the law.
Hence, neither Bengal nor Odisha has a monopoly on the word
Rasagola. However, no person or society or company can use the
label ‗Banglar Rasogolla‘ or ‗Odisha Rasagola‘, without written
consent from the authorized users.

100
2.6 Trade Secrets

Trade Secret, a form of IP, deals with a practice or a process of

a company that is generally not known outside the company. The
confidential secret provides the company a commercial advantage
over its rivals and is often a product of internal R&D. Trade Secret
document comprises of technical information involving
manufacturing processes, experimental research data, formulas,
recipes, software algorithms, and commercial information
comprising of marketing strategies and a list of product/process
recipients. The document may also have a combination of elements,
each of which by itself is in the public domain, but where the
combination, which is kept secret, provides a competitive
advantage.
2.6.1. Criteria for Trade Secret
For a product/process to qualify as a Trade Secret, the
information should have, at least, the following criteria:
 Should be of commercial value.
 Secret information should not be in the public domain. It should
be known to a limited group of people.
 Legal owner/s of the secret must ensure taking reasonable steps
to keep the secret information and agreements (if any)
confidential.
The unauthorized acquisition, use or disclosure of such secret
information in a manner contrary to honest commercial practices by
others is regarded as an unfair practice and a violation of the Trade
Secret protection.
2.6.2. Registration and Protection Time of Trade Secrets
Contrary to the other forms of IP, a Trade Secret protection has
no time period. Many Trade Secrets are more than 100 years old. In
addition, there is no formal registration procedure/form to be
followed/filled for maintaining a Trade Secret. In simple terms,
Trade Secrets are protected without registration. Also, there is no
annual renewal fee for keeping the Trade Secret, as a secret.

101
2.6.3. Rights Associated with Trade Secrets
The owner of the Trade Secret has the legal right to use the
secret for economical and branding gains, as long as the secret does
not come in the public domain. The owner has the right to sell the
secret to anybody for any length of time, as decided by a mutual
confidential/non-disclosure agreement. No third person/company
can exploit the trade secret without the consent of the rightful owner
of the Trade Secret.
2.6.4. Enforcement of Trade Secrets
If somebody acquires the secret through illegal means or
indulge in dishonest use of a Trade Secret acquired through a legal
agreement, the rightful owner can approach the court for seeking an
injunction and/or claim financial damage accrued as a result of
dishonest commercial practice. In some countries, criminal
penalties can be awarded in case of a Trade Secret violation.
As per the guidelines of the Paris Convention (1883) (Article
10bis of the Convention for the Protection of Industrial Property),
each member nation has to provide strong protection against unfair
competition. In India, there is no specific legislation for
defending/protecting Trade Secret.
It is possible that a person/company independently develops a
process/technology/product, etc. which is already a Trade Secret. A
Trade Secret product may be developed using a novel technology or
by reverse engineering. In such a case, there is no violation of Trade
Secret protection. The newly developed process/technology can also
claim Trade Secret rights.
2.6.5. When to Apply for Trade Secret Protection
In case of an innovation, there are no specific guidelines
whether to opt for a Patent or Trade Secret. However, Trade Secret
is preferred when:
 Innovation does not qualify the criteria set for patenting.
 Trade secret is an attractive proposition provided the
information can be kept secret for more than 20 years i.e. time
period of patent.

102
 Innovation is concerned with the manufacturing process (and
not a novel product).
2.6.6. Precautionary Measures to be Taken by Enterprises /
Organizations
Trade Secrets are quite common in the industrial sector. The
enterprise needs to take all the necessary steps to keep its Trade
Secrets away from the public domain. The steps include:
 The confidential information of the trade secret should be in the
hands of only a few extremely reliable persons.
 Signing agreements (confidentiality, non-disclosure and non-
compete contracts) with employees/business partners. In case
of employees, the agreement should remain in play for a certain
period of time after he has either retired or left the company.
There are three sets of circumstances for which proceedings for theft
may arise:
 Where an employee comes into possession of secret and
confidential information in the normal course of his work and
passes that information to an unauthorized person.
 Where an unauthorized person (such as a new employee)
provokes such an employee to provide him with such
confidential information.
 Where, under a license for the use of know-how, a licensee is in
breach of a condition, either expressed in any agreement or
implied from conduct, to maintain secrecy in respect of such
know-how and fails to do so.
2.6.7. Important Information about Trade Secrets
 Features of software, such as code and the ideas and concepts
reflected in it, can be protected as Trade Secrets.
 Trade Secrets are not subject to being ―infringed,‖ as with
Patents and Copyrights, but are subject to theft.
 In India, there is no specific legislation regarding Trade Secrets.
However, these are governed under Section 27 of ‗The Indian
Contract Act, 1872

103
 (http://uputd.gov.in/site/writereaddata/siteContent/indian-
contract-act-1872.pdf).
 Trade Secrets can be protected lifelong until it is disclosed in
the public domain.
 Trade Secrets are important for the companies, which are
surviving on them and any unauthorized use is known as ‗unfair
protection‘.
2.6.8. Disparity between Trade Secrets and Patents
In general, all Patents can be registered as Trade Secret, but all
Trade Secrets cannot be patented as patenting criteria are quite
stringent. For example, certain commercial information or
manufacturing processes are not sufficiently inventive, thus
patenting route is not viable, but it qualifies for a Trade Secret.
It is also possible that an innovation qualifies to be patentable
but still registered as a Trade Secret because a Patent is granted for
20 years, whereas Trades Secret has an unlimited shelf life. Also,
there is no registration cost for protecting Trade Secret and it comes
into force with immediate effect.
But, Trade Secret has its own pitfalls. The level of protection
granted to Trade Secrets is not as strong as that of Patents. The
commercialization of Trade Secrets is difficult as the real value of
Trade Secrets cannot be assessed unless the whole process of
manufacturing is revealed (i.e. cost of the ingredients, production
plant, etc.).
2.6.9. Renowned Trade Secrets
2.6.9.1. Coca-Cola - the formula for Coca-Cola is one of the go-to
examples of a Trade Secret. According to a company representative,
the original formula is written on a piece of paper stored in a bank
vault. Only ‗a small handful‘ of people know the formula at any
time.
The recipe for Coca-Cola was invented by an American bio-
chemist (John Stith Pemberton) in 1886 while developing an
alternative to morphine to cure people from depression, anxiety and
pain. Shortly before his death, he sold the recipe to an American
businessman, Asia Griggs Candler, in 1888 and earned a massive

104
amount of money out of it. Though Mr. Pemberton successfully
created the recipe for coca-cola, a non-alcoholic drink, but his
addiction to drugs made him bankrupt.
2.6.9.2. Google Algorithm - In the current era, Google's search
algorithm is recognized as the world's most important Trade Secret.
We all use ‗Google Search‘ in order to find an answer to any query.
It is really mind-boggling how the Google Search engine brings
desired information in a matter of few seconds.
2.6.9.3. WD-40 - ‗Water Displacer - 40th attempt‘ is the world‘s best
known household spray-lubricant used for removing corrosion, sap,
tar and adhesives from various surfaces to cleaning tools and
equipment. It was invented by an American, Norm Larsen, in 1953.
Nearly 80% of the US people have used this commodity. The
formula for WD-40 has been kept in a bank vault. The company
mixes the substance in three different locations. These mixtures are
shipped to manufacturing partners for final mixing and marketing.
2.6.9.4. Kentucky Fried Chicken (KFC) - One of the most famous
Trade Secrets originated around the middle of the 20th century from
a white-suited Colonel Harland Sanders, who created a recipe for a
tasty chicken coating that contained 11 herbs and spices - a Trade
Secret. The original, handwritten copy of the recipe is hidden in a
safe in Kentucky, USA and only a few select employees, bound by a
confidentiality contract, know the recipe. For further protection, two
separate companies blend a portion of the mixture, which is then run
through a computer processing system to standardize for blending.
A few other well-known Trade Secrets are Dr. Pepper (non-
alcoholic, fizzy drink), Listerine (for treatment of allergies, pimples,
psoriasis, and insect bites), Lena Blackburne's Baseball Rubbing
Mud (for roughing the surface of base-ball) and McDonald‘s Big
Mac Special Sauce Recipe.

105
 CHAPTER – 1
INTRODUCTION TO INTELLECTUAL
PROPERTY

Intellectual Property (IP) is a special category of property

created by human intellect (mind) in the fields of arts, literature,
science, trade, etc. Since IP is a novel creation of the mind, it is
intangible (i.e. invisible and indivisible) in nature and differs from
the tangible property, such as land, house, gold and car with which
we are quite familiar. Intellectual Property Rights (IPR) are the
privileges accorded to the creator/inventor (of IP) in conformance
with the laws. These rights are given to the creator/inventor in
exchange for revealing the process of creation/invention in the
public domain. The inventor is conferred with the special rights to
use, sell, distribute, offering for sale and restricting others from
using the invention without his prior permission.The
aforementioned rights do not apply to the physical object (e.g. book
or computer or mobile phone) in which the creation may be
embodied but attributed to the intellectual creativity.
Broadly, IP comprises of two branches i.e. ‗Copyrights and
Related Rights‘ and ‗Industrial Property Rights‘. ‗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 softwares/databases. The ‗Industrial Property
Rights‘ refer to the Patents, Trademarks, Trade Services, Industrial
Designs and Geographical Indications. The salient features of all the
above-mentioned categories are discussed in the ensuing chapters.
1.1. Role of IP in the Economic and Cultural Development
of the Society
Creativity being the keystone of progress, no civilized society
can afford to ignore the basic requirement of encouraging the same.
The economic and social development of a society is largely
dependent on creativity. The protection provided by the IPR to the
creators/innovators is in fact an act of incentivization for
encouraging them to create more and motivates others to create new
1
and novel things.
However, if IPR is practised rigidly, it may have a negative
impact on the progress of society. For example, compliance with the
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
Agreement has affected the farming community as they are unable
to store seeds for the next crop. Multinational companies regulate
the price of seeds, which is generally beyond the reach of a majority
of the farmers.
To circumvent the negative impact of IPR, certain laws,
exceptions and limitations associated with IPR have been enacted to
maintain a balance between the interests of the creators/inventors
and the community. For example, farmers‘ rights under the
Protection of Plant Varieties and Farmers‘ Rights (PVP&FR) Act,
2001 entitles them to many privileges, such as ‗Rights on seeds’
provides rights to the farmers to save seeds, use seeds and share,
exchange or sell seeds to other farmers and ‗Right to protection
against accusations of infringement’ protects the farmers from
infringement and other legal accusation levied upon them due to his
legal ignorance in using other‘s plant varieties. The use of
copyrighted material for education and religious ceremonies is
exempted from the operation of the rights granted in the Copyright
Act. Similarly, a patent can be revoked in favour of compulsory
licensing by the government during an emergency or a natural
calamity. In addition, if an invention/creation is not in the interest of
society, it is not registered by the government for grant of any rights
associated with IP. For example, cloning of human embryos is
banned for IP protection, and so is the creation of super microbial
pathogens, which can play havoc with human lives.
In addition, India is enriched with massive biodiversity and
genetic resources and their use is embodied in what is referred to as
Traditional Knowledge (TK). However, the use of such knowledge
and resources are not limited to local contexts as many innovations
relate to and draw on them. Therefore, the main issue of concern is
to protect TK and genetic resources, which are rapidly coming
under the governance of sometimes conflicting IPR policies. To
derive maximum benefit from them, the establishment of adequate
legal infrastructure and enforcement is required. With initiatives like
‗Make in India‘, ‗Atmanirbhar Bharat‘ and supporting local

2
homegrown brands, and easy as well as accessible approach to
patents and trademarks registration, it is possible to reap the benefits
of our resources.
1.2. IP Governance
Since IP is an integral component of human society, each and
every nation has dedicated agencies for laying out the guidelines,
implementation and enforcement of IP related matters. In India,
many organizations/agencies deal with various aspects of IP. The
governance of all categories of IP, except the Plant Variety and
Farmers‘ Rights Act, is carried out by the Department for Promotion
of Industry & Internal Trade (DPIIT) under the aegis of Ministry of
Commerce and Industry, GoI. There are a few other dedicated
organizations/departments established by the government to
promote patent-ecosystem (patent awareness, patent filing and
patent commercialization) in India e.g. Technology Information
Forecasting and Assessment Council (TIFAC), National Research
Development Corporation (NRDC) and Cell for IPR Promotion and
Management (CIPAM), etc.
In order to create a hassle-free exchange of IP related activities
amongst all the nations, it is imperative to have minimum standards
of rules and regulations pertaining to all aspects of IP including
rights, empowerment, exceptions, etc. To achieve this goal, the
United Nations (UN) has established an organization called the
World Intellectual Property Organization (WIPO). This agency is at
the forefront of imparting knowledge about IP and governs
international filing and registration of IP through various Conventions
and Treaties like Paris Conventions, Patent Cooperation Treaty
(PCT), Rome Convention, Berne Convention, etc.
1.3. IP as a Global Indicator of Innovation
IP, especially patents, is considered as one of the important cogs
in assessing the innovation index of a nation. The global ranking
organizations always have IP or a subset of IP as one of the
parameters for understanding and grading the Science, Technology
and Innovation (STI) ecosystem of a nation. For example, the
Scimago (publically available online portal which ranks journals
and countries based on the data taken from Scopus) 2020 report

3
ranked India at 4th position in the parameter of a number of
‗Research Publications‘, and 50th position in the parameter of
‗Intellectual Property Rights‘. The global ranking can be improved
by sensitizing the teaching and scientific communities about the
importance of IP and creating infrastructure for the same in the
institutes of higher learning.
1.4. Origin of IP
Though there is no official record of the origin of IP, it is
believed that a rudimentary form of IP was being practised around
500 Before the Common Era (BCE) in Sybaris, a state of Greece.
The natives of Sybaris were granted a year‘s protection for using
their intellect to create ―any new improvement in luxury.‖
A practical and pragmatic approach for IP governance started
taking shape in medieval Europe. In 1623, Britain passed an
Intellectual Property Legislation which entitled guilds (association
of artisans or merchants) to create innovations and bring them to
market for trade purposes. However, this legislation brought a lot of
resentment amongst the public, and thus was replaced by the
‗Statute of Monopolies‘, which gave the rights to the original
creator/inventor for 14 years. Another legislation, ‗Statute of
Anne‘, was passed by the British parliament in 1710. This
legislation aimed at strengthening copyrights by providing rights to
the authors for recreation and distribution of their work. The work
could also be renewed for another 14 years. By the end of the 18 th
century and the beginning of the 19th century, almost every country
started laying down IP legislation to protect their novel inventions
and creations.
1.5. History of IP in India
1.5.1. Patents
The history of the Indian patent system dates back to the pre-
independence era of British rule. The first patent related legislation
in India was Act VI of 1856, adapted from the British Patent Law of
1852. The objective of this legislation was to encourage the
inventions of new and useful manufactures. The rights conferred to
the inventor were termed as ‗Exclusive Privileges‘. In 1859, certain
amendments were made to the Act, such as:

4
  Grant of exclusive privileges to useful inventions.
 Increase of priority time from 6 months to 12 months.
 Exclusion of importers from the definition of the inventor.
The world’s first patent was granted in 1790 to Samuel Hopkins
in USA for the "making of pot ash and pearl ash by a new
apparatus and process". In India, the first patent (known as
‘Exclusive Privileges’ at that time) was awarded in 1856 to a civil
engineer, George Alfred DePenning from Calcutta, for his
invention, ‘An Efficient Punkah Pulling Machine’.
A few years later, it was felt that ‗Designs‘ could also pass the
criteria of the invention and thus should be included in the Patent
Act. The new Act was rechristened as ―The Patterns and Designs
Protection Act‖ under Act XIII of 1872. This Act was further
amended in 1883 (XVI of 1883) to include the provision of
protection for ‗Novelty‘ in the invention.
At the beginning of the 20th century, all the earlier Acts related
to inventions and designs were done away with the introduction of
‗The Indian Patents and Designs Act, 1911‘ (Act II of 1911). As per
this Act, the governance of patents was placed under the
management of the Controller of Patents. In the next three decades,
many amendments were introduced for reciprocal arrangements
with other countries for securing priority dates. These amendments
dealt with;
 Use of invention by the
government.
 Patent of Addition.
Priority Date:
 Enhancing the term of the
The date on which the first
patent from 14 years to 16
application for the invention
years.
is filed, whether it is
 Filing of ‗Provisional provisional or with complete
Application‘ and submission specifications.
of ‗Complete Application‘
within 9 months from the date
of filing the application.
After India got independence in 1947, many patent experts felt
the need to review the Indian Patents and Designs Act, 1911,

5
keeping the national interest (economic and political) in mind. A
dedicated committee, chaired by a renowned Justice Bakshi Tek
Chand (retired Judge of Lahore High Court), was constituted in
1949 to review the advantages of the patent system. The committee
submitted a plethora of recommendations, including:
 Misuse of patents rights needs to be prevented.
 There must be a clear indication in the Act that food, medicine
and surgical and curative devices should be made available to the
masses at the cheapest rate by giving reasonable compensation to
the owner of the patent.
 Amendments in Sections 22, 23 and 23A of the Patent and
Design Act, 1911 on the lines of the UK Patent Act.
These recommendations were introduced in the Act XXXII of
1950. Two years later, another amendment (Act LXX of 1952) was
made to provide compulsory licencing of patents related to food,
drugs and chemicals killing insects and microbes. Based on these
amendments, a bill was presented in the parliament in 1953 but was
rejected.
In 1957, the central government constituted yet another
powerful committee under the chairmanship of Justice N.
RajagopalaAyyangar to seek inputs for further strengthening the
Indian Patent Law. The committee submitted its report to the
government in 1959. It comprised of two segments addressing a)
General aspects of the patent laws, and b) Bill rejected back in 1953.
The revised patent legislation was submitted to the Lok Sabha in
1965. After many hiccups, clarifications and modifications the
Patents Act, 1970 (http://www.ipindia.nic.in/writereaddata/Portal/
IPOAct/1_31_1_patent-act-1970-11march2015.pdf) was introduced,
superseding all the previous laws related to the patents. However,
the Indian Patents and Designs Act of 1911 remained applicable for
designs only till 1994.
In 1995, India signed the TRIPS Agreement and got a transition
period of 10 years (1995-2005) to make domestic laws compatible
with the international treaty. In 1999, The Patents (Amendment)
Act, 1999 was introduced providing for the filing of applications for
‗Product Patents‘ in the areas of drugs, pharmaceuticals and
agrochemicals (earlier, only ‗processes‘ were protected under the

6
Patent Act). The new Patent Act also included provisions for the
grant of Exclusive Market Rights (EMRs) for the distribution and
sale of pharma products on fulfilment of certain conditions.
The second amendment to the 1970 Act was made through the
Patents (Amendment) Act, 2002 (Act 38 of 2002). This Act
introduced new Patent Rules, 2003, thus replacing the earlier
Patents Rules, 1972. The major amendments were:
 The protection term of 20 years for all inventions from the date
of filing.
 Scope of non-patentable inventions including Traditional
Knowledge expanded.
 Disclosure of source and geographical origin of biological
material made compulsory.
 Provisions concerning convention countries simplified.
 Establishment of Appellate Board.
 Compulsory license provisions strengthened.
 Simplification of procedures.
 Harmonization with Patent Cooperation Treaty (PCT)
provisions.
With the rapidly changing scenario of IPR at a global level, a
need was felt to further amend the Patent Act, 1970. The highlight
of the Patents (Amendments) Act 2005 were:
 Product patent for inventions in all fields of technology.
 New forms of known substances excluded to prevent
evergreening of the patent.
 Rationalization of the opposition procedure.
 Introduction of pre-grant opposition by representation.
 Introduction of post-grant opposition.
 Compulsory license for export purposes.
 Compulsory license for manufacture.
 Extension of grace period from 6 months to 12 months for filing
a patent, if published in government exhibition.
India is a member of all prominent Conventions and Treaties
related to the facilitation of the inventors for international filing and
7
protecting the rights over the inventions globally. The important
international agreements to which India is a signatory party are
TRIPS Agreement (1995), Paris Convention (1883), PCT (1970)
and Budapest Treaty (1977) and many more.
1.5.2. Copyrights and Related Rights
The concept of copyrights started way back in the 15th century.
However, the actual need for copyrights law was felt only after the
invention of printers and copiers. Before the invention of printers,
writing could be created only once. It was highly laborious and the
risk of errors was involved in the manual process of copying by a
scribe. During the 15th and 16th centuries, printing was invented and
widely established in Europe. Copies of ‗Bibles‘ were the first to be
printed. The government had allowed the printing of the documents
without any restrictions, but this led to the spreading of a lot of
governmental information. Subsequently, the government started
issuing licenses for printing.
The evolution of copyrights law in India occurred in three
phases. First, two phases were enacted during the British Raj. In the
first phase, the concept of copyrights was introduced in 1847
through an enactment during the East India Company‘s regime. The
term of copyrights was for the lifetime of the author plus seven
years after death. Unlike today, copyrights in work were not
automatic. The registration of copyright was mandatory for the
enforcement of rights under the Act. The government could grant a
compulsory license to publish a book if the owner of the copyright,
upon the death of the author, refused to allow its publication.
In the second phase Indian legislature, under the British Raj,
enacted the Copyright Act of 1914 based on the Imperial Copyright
Act (1911) of the UK. An Act for criminal sanction for an
infringement was introduced.
The third phase of the copyrights regime was witnessed post-
independence. The Copyright Act 1957 was enacted, superseding
the Indian Copyright Act, 1914, in order to suit the provisions of the
Berne Convention (1886). The 1957 Act has been amended six
times (1983, 1984, 1992, 1994 and 1999, 2012), to comply with
WIPO Copyright Treaty (WCT), 1996 and WIPO Performances and
Phonograms Treaty (WPPT), 1996.

8
 Most of the amendments in copyright laws were in the digital
environment, such as penalties for circumvention of technological
protection measures; rights of management information; liability of
internet service provider; introduction of statutory licenses for the
cover versions (the cover version is re-recording or re-composition
of the original song by other artists or composers and is also termed
as a remake, cover song, revival, etc.) and broadcasting
organizations; ensuring the right to receive royalties for authors and
music composers; exclusive economic and moral rights to
performers; equal membership rights in copyrights societies for
authors and other right owners and exception of copyrights for
physically disabled to access any works. India is an active member
of nearly all significant international Conventions/Treaties related to
Copyright Law e.g. the Berne Convention as modified in Paris in
1971, the Universal Copyright Convention (1951), the Rome
Convention (1961), WCT, WPPT and (TRIPS, 1995).
1.5.3. Trademarks
The first statutory law related to Trademarks (TM) in India was
the Trade Marks Act, 1940, which was carved out from the Trade
Marks Act, 1938 of the UK. It was followed by the incorporation of
provisions of TM stated in the Indian Penal Code, Criminal
Procedure Code and the Sea Customs Act. Later on, Trade Marks
Act, 1940 was rechristened as Trade and Merchandise Marks Act,
1958. Nearly four decades later, this Act was repealed by the Trade
Marks Act, 1999. The need for this occurred to comply with the
provisions of the TRIPS. It is the current governing law related to
registered TM.
1.5.4. Geographical Indications
India, as a member of WTO, enacted the Geographical
Indications of Goods (Registration and Protection) Act, 1999.
It came into force with effect from 15th September 2003.
Geographical Indicators have been defined under Article 22 (1) of
the WTO Agreement on TRIPS.
1.5.5. Trade Secrets
Although India has no specific Trade Secrets Laws, Indian
courts have upheld Trade Secrets protection under various statutes,

9
including contract law, Copyright law, the principles of equity and
the common law action of breach of confidence (which in effect
amounts to a breach of contractual obligation).
1.5.6. Semiconductor Integrated Circuits and Layout Designs
In the 21st century, Information Technology (IT) has
revolutionized the economic and societal growth of the world
economy. The rapid and tremendous scientific advancements in the
field of IT resulted in the creation of a new class of IP called the
Layout-Design of the Semiconductor Integrated Circuits. Various
organizations, including WTO and TRIPS Agreement laid down
rules and regulations regarding the protection of Semiconductor
Integrated Circuits and Layout Designs (SICLD) India being a
member of the WTO also passed an Act called the SICLD Act,
2000. This Act is TRIPS compliant and fulfils the conditions of the
TRIPS agreement (Articles. 35 to 38) concerning the protection of
SICLD.
1.5.7. Plant Varieties
Till 1970s, not much emphasis was laid on patentable matter
originating from animals and plants. However, microbes and
microbial products/processes were patentable. To include all kinds
of biological materials under the ambit of patent laws, a decision to
enact a new sui generis law under the International Convention for
the Protection of New Varieties of Plants (UPOV, 1978) and
UPOV, 1991 was taken. These decisions were taken to address
environmental and public interest concerns.
The Indian Patents Act, 1970 excludes ―plants and animals in
whole or any part thereof other than microorganisms‖ from
patentability. To comply with the mandate of Article 27.3 (b) of
TRIPS, India adopted the PPV&FR Act, 2001 as a sui generis
regime protecting not only new plant varieties but also farmers‘
rights.
1.5.8. Traditional Knowledge
It is the ancient and indigenous knowledge held by any
community or a group of people. In olden times it was not recorded
anywhere and was available only in oral form. So, Traditional
Knowledge (TK) was verbally passed on to future generations. TK

10
is not limited to a particular field. It covers a wide area, such as the
use of plants or their extracts for medical treatments, a traditional
form of dance, particular techniques used for hunting, craft
knowledge/skills and so on. Though there is no official record but
some forms of TK find appearance in the culture, stories, legends,
folklore, rituals, songs, etc. Previously, there was no mechanism
available to protect TK, but now, it has been recognized as IPR
under TRIPS Agreement. The Government of India has created a
digital library termed as Traditional Knowledge Digital
Library (TKDL) as a repository of 2,50,000 formulations of various
systems of Indian medicine.
1.5.9. Industrial Designs
A design is a creation of the human mind, which is appealing to
the eyes and attracts the attention of the viewers. The need to protect
Industrial Designs (ID) was recognized in the 18th century and the
Indian legislation enacted the ‗Patterns and Designs Act‘ in 1872 for
the first time. The Act was enacted to protect the rights over the
creation of the designs and novel patterns by the inventors. The Act
was replaced by the British Patents and Designs Act in 1907, which
later became the basis for the Indian Patents and Designs Act, 1911.
In 1970, a separate Act was enacted for the patent, i.e. the Patent
Act, 1970. The Indian Patents and Designs Act, 1911, remained in
force for designs only. Finally, in the year 2000, a dedicated Act for
the ID was passed, which came into force in 2001.
1.5.10. Biodiversity Conservation
Biodiversity is an inseparable part of human livelihood. The
mention of protecting biodiversity can be found in the times of
Chandragupta and Ashoka. In those eras, the trees and forest were
classified, such as reserved category. In 1927 the ‗Indian Forest Act‘
and later on the ‗Wildlife Protection Act, 1972‘ was enacted to
provide legal protection to biodiversity. In 1988, the ‗National
Forest Policy‘ was passed, which brought revolutionary changes in
the conservation and management of biodiversity. The Acts and
policies in force to protect the environment and biodiversity in India
include Mining and Mineral Development Regulation Act, 1957;
Water (prevention and control of pollution) Act, 1974; Forest
Conservation Act, 1980; Biological Diversity Act, 2002; Scheduled

11
Tribes and other Traditional Forest Dwellers (recognition of rights)
Act, 2006; National Biodiversity Action Plan, 2009; National
Environment Policy, 2006 and a few more.
1.6. Major Amendments in IP Laws and Acts in India
In order to fill the gaps existing in the IP Laws and Acts and
also to introduce new guidelines/directions based on the current
scenario (socially and politically), each nation keeps on updating the
concerned IP Laws and Acts. Some of the salient amendments made
in Indian Laws and Acts on IPR are mentioned below:
Table 1.1: History of Laws and Acts pertaining to intellectual
property in India.
S.No. Year Historical Proceedings

Patents

1. 1856 The Act VI of 1856 on the protection of

inventions based on the British Patent Law of
1852.
2. 1859  Rights renamed as ‗Exclusive Privileges‘.
 Time for the priority increased from
6 months to 12 months.
3. 1883  The Patterns and Designs Protection Act
 Introduction of novelty in the invention.
 A grace period of 6 months for the disclosure
of the invention.
4. 1911  Renamed as ‗The Indian Patent and Design
Act‘ and brought under the management of
‗Controller of Patents‘.
5. 1930  Introduction of Patent of Addition.
 Government can use the invention if required.
 The term of patent protection increased from
14 to 16 years.
6. 1945  Filing of the provisional specification to
secure the priority date.
 Provision of submitting complete
specifications within 9 months.

12
7. 1949 Dedicated Committee formed under the
leadership of Justice Bakshi Tek Chand for
reviewing patent system as per the national
environment.
8. 1950  A working statement needs to be submitted at
the Patent Office.
 Endorsement of the Patents with the words
‗License of Right‘ on the application made by
the government so that the Controller could
grant the license.
9. 1952  Provision of ‗Compulsory License‘ in the
areas of food, medicine and insecticide
germicide.
 Process for producing substance or any
invention relating to surgical or curative
devices.
10. 1965 After incorporation of the recommendation
submitted by the committee formed in 1949, a
new bill was introduced in Lok Sabha but was
not cleared.
11. 1967  Again submitted to Parliamentary Committee.
 1911 Act remained applicable for Designs.
12. 1970  The Patent Act, 1970 passed by the
Parliament Committee.
13. 1972 The Patent Act, 1970 came into force with the
introduction of patent rules.
14. 1995 TRIPS Agreement was signed by India and got
transition period 1995-2005 to make domestic
laws compatible with TRIPS.
15. 1999  Introducing the provisions for receiving the
applications for the product patent in the field
of pharmaceuticals and agro-chemicals (mail
box)*.
 Provisions for the grant of EMRs for
distribution and sale of pharma products on
fulfilment of certain conditions.
 Grant of EMR subject to certain conditions.
* after the amendments (1999) the product

13
 patents related to the pharmaceuticals and agro-
chemicals were kept on hold for examination till
2005. It is called a mailbox or black box.
16. 2002  The uniform 20-year term of the patent for all
inventions.
 Disclosure of source and geographical origin
of biological material made compulsory.
 Establishment of Appellate Board.
 Compulsory License provisions strengthened.
17. 2003  The Patents Rules, 2003 were introduced.
18. 2005  Product patent for inventions in all fields of
technology including food, drug, chemicals
and microorganisms.
 New forms of known substances excluded in
order to prevent the ever-greening of the
patent.
 Introduction of the pre-grant opposition.
 Introduction of post-grant opposition.
 Extension of grace period to 12 months.
Copyrights and Related Rights
19. 1847  The concept of Copyrights in India was
introduced.
 Validity - Lifetime+7 years but not more than
42 years in total.
20. 1914 Copyright Act, 1914 was introduced based on the
Imperial Copyright Act, 1911 of UK.
21. 1957 Copyright Act, 1914 was replaced with
Copyright Act, 1957 with minor modifications.
22. 1984 Penalty on second and subsequent conviction.
23. 1994 Registration of Copyright Society made
mandatory.
24. 2012  To comply with international Treaties for
copyrights protection in the digital
environment.
 Right to receive royalties for authors and
music composers.
 Exception of copyrights for physically

14
 disabled persons to access any work.

25. 2013 Copyrights Rules, 2013 introduced.

Trademarks
26. 1940 Trademarks Registry established in India.
27. 1958 The Trade and Merchandise Marks Act, 1958
enacted as per TRIPS Agreement.
28. 1999 Amended to avoid duplicity and ensure securing
proprietors‘ trade and goodwill.
29. 2002 Trademarks Rules introduced.
30. 2010  Amended to comply with Madrid Protocol for
international filing.
 Provision for filing opposition of the
registration within 4 months.
31. 2013 Trademarks Rules introduced.
Geographical Indications
32. 1999 Being a member of the World Trade
Organization (TRIPS), GI of goods (Registration
and Protection) Act was introduced.
33. 2002 The Geographical Indications of Goods
(Registration and Protection) Rules, 2002 was
introduced.
34. 2003 The Geographical Indications of Goods
(Registration & Protection) Act came into force.
Designs
35. 1872 Patterns and Designs Protection Act introduced
for the protection of new patterns and designs.
36. 1888 Amended as Invention and Design Act, 1988 for
the protection of new inventions and designs.
37. 1911 Renamed as The Indian Patent and Design Act.
38. 2000 Design Act, 2000 was introduced; separated from
the Indian Patent and Design Act.
39. 2001 Design Rules, 2001 introduced.

15
 Semiconductor Integrated Circuits Layout Design (SICLD)
40. 2000 Semiconductor Integrated Circuits Layout Design
(SICLD) Act 2000 introduced as a signatory of
WTO.
41. 2001 SICLD Rules introduced.
Protection of Plant Varieties and Farmers' Rights (PPV&FR)
42. 1970 The Patent Act, 1970 excluded plants and
animals in whole or in any part from patentability
(in 1999 amendments).
43. 1991 Enactment of protection of new varieties of
plants on sui generis basis on the lines of UPOV.
44. 2001 In line with TRIPS Agreement enactment of
PPV&FR Act was introduced.
Biological Diversity
45. 2002 The Biological Diversity Act, 2002 introduced on
the lines of the Convention on Biological
Diversity (CBD, 1992).
46. 2003  Establishment of National Biodiversity
Authority.
 Designation of repositories under the
Biological Diversity Act.
47. 2004 Biological Diversity Rules introduced.
Source: http://www.ipindia.nic.in/history-of-indian-patent-system.htm

16
 CHAPTER-2
CATEGORIES OF INTELLECTUAL
PROPERTY

Intellectual Property (IP) is a vast field comprising of

technology-led inventions, work of artisans, novel Industrial
Designs, unique brands of commercial items, and Traditional
Knowledge being practised continuously over centuries for the
production of goods (carpets, textiles, food products, etc.). In order
to understand the extensive field of IP, it has been divided into
various categories. In India, these categories include Patents,
Copyright and Related Rights, Trademark, Trade Secrets, Industrial
Designs, Geographical Indications and Semiconductor Integrated
Circuits Layout Designs. Each of these categories is described in the
following sections.

2.1. Patents

A patent is an exclusive right granted

Invention is the
for an innovation that generally provides a
creation of a new
new way of doing something or offers a
idea or concept.
new technical solution to a problem. The
Innovation is the
exclusive right legally protects the
process of translating
invention from being copied or reproduced
an invention into
by others. In return, the invention must be
commercial entity or
disclosed in an application in a manner
widespread use.
sufficiently clear and complete to enable it
to be replicated by a person with an
ordinary level of skill in the relevant field.
2.1.1. Conditions for Obtaining a Patent Protection
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

17
 the world. In other words, the innovation is a) not in the
knowledge of the public, b) not published anywhere through
any means of publication and c) 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 a) a technical advancement over the existing
knowledge, b) possesses economic significance and, c) 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.

2.1.2. To Patent or Not to Patent an Invention

Once an invention has been developed, the inventor has to
decide whether to exploit the invention for personal benefits as
provided by the statutory laws of the country or put it in the public
domain. By and large, the inventor prefers the former option. Only a
miniscule of inventions are placed in the public domain without
claiming any benefits. In the latter case, anybody can exploit the
innovation for commercial or societal benefit without paying any
money to the inventor.
If the owner of an invention wishes to seek monetary gains, he
can choose from either of the two options, i.e. patenting or Trade
Secret. If the inventor is absolutely sure of maintaining the secrecy
of invention for a very long period (maybe 100 years or more) and
the probability of reverse engineering of the technology is nil or
very low, then the ‗Trade Secret‘ category is preferred. If the
invention has a short life span or can be kept secret only for a small
period of time (a couple of years or so) or the probability of reverse
engineering is high once the invention is in the public domain, then
the ‗patent‘ category is preferred.
2.1.3. Rights Associated with Patents
As per the Court of Law, a patent owner has the right to decide
who may or may not use the patented invention. In other words, the
patent protection provided by the law states that the invention
cannot be commercially made, used, distributed, imported, or sold
by others without the patent owner's consent. The patent owner may
permit other parties to use the invention on mutually agreed terms.
As a matter of fact, the patent rights are negative rights as the owner
18
is restricting others from using the patent in any manner without his
prior permission. The patent holder may choose to sue the infringing
party to stop illegal use of the patent and also ask for compensation
for the unauthorized use.
2.1.4. Enforcement of Patent Rights
Enforcement is the process of ensuring compliance with laws,
regulations, rules, standards and social norms. Patent rights are
usually enforced by the judicial courts. The Court of Law has the
authority to stop patent infringement. However, the main
responsibility for monitoring, identifying and taking action against
infringers of a patent lies with the patent owner.
2.1.5. 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. penicillins (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
penicillins 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.
2.1.6. Non-Patentable Matters
In the ‗Patent Act, 1970, there are some exclusions (product and
processes) that cannot be patented, such as:
19
 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, 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 programmes, mathematical
calculations, online chatting method, method of teaching,
method of learning a language as they are the subject matter of
Copyright Act. 1957.
 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.
2.1.7. Patent Infringements
Once the patent is granted to the applicant, he owns the right to
use or exploit the invention in any capacity. 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:

20
 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:
 Interlocutory/interim injunction.
 Damages or accounts of profits.
 Permanent injunction.
It is pertinent to mention that the Central government always
holds the rights (Section 100 of the Patent Act, 1970, Rule 32 of the
Patent Rules, 2003) to use the invention in the case of national
emergency or other circumstances of extreme urgency after
notifying the owner.
2.1.8. Avoid Public Disclosure of an Invention before Patenting
Generally, an invention that has been either published or
publicly displayed cannot be patented, as the claimed invention will
lose the ‗Novelty‘ criterion. However, under certain circumstances,
the Patents Act provides a grace period of 12 months for filing a
patent application from the date of its publication in a journal or
presentation in a reputed scientific society or exhibition.
Sometimes, disclosure of an invention before filing a patent
application is unavoidable, e.g. selling your invention to a potential
investor or a business partner who would like to know complete details
of the invention in order to judge its commercial value. In such a case,
it is advisable to sign a Non-Disclosure Agreement (NDA) or any other
confidential agreement to safeguards your interest.
2.1.9. Process of Patenting
In India, the process of grant of a patent is a lengthy procedure
that may take anywhere 3-4 years or more. The major steps involved
in this process are listed in figure 2.1.

21
 Figure 2.1: Flow chart of major steps involved
in the grant of a patent.

Filing of Application with IPO

https://ipindiaonline.gov.in/ePatentfiling/goForLogin/doLogin

Publishing

Examination

Grant of the Patent

2.1.9.1. 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 has to check
whether or not his invention already exists in the public domain. For
this, he 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.
Conducting a prior art search before filing the patent has
advantages as it averts infringement, tracks research and
development and provides access to detailed information on the
invention. The prior art search is carried out on the parameters such
as novelty, patentability, state of the art, infringement, validity and
freedom to operate. The commonly used databases for prior art
search fall in two categories i.e. Patents Databases and NPL.

22
Patents’ Databases
 Indian Patent Advanced Search System
(InPASS- http://ipindiaservices.gov.in/publicsearch/).
 Patentscope(WIPO- https://www.wipo.int/patentscope/en/).

Unpaid
 Espacenet(EU- https://worldwide.espacenet.com/patent/).
 USPTO(USA- https://www.uspto.gov/).
 Google Patents Advanced Search
(https://patents.google.com/advanced).
 Orbit Intelligence
(https://www.questel.com/business-intelligence-software/
orbit-intelligence/).

Paid
 Derwent Innovation
(https://clarivate.com/derwent/solutions/derwent-innovation/).
 PROQUEST
(https://about.proquest.com/search/?searchKeyword=patent+).

Non-Patent Literature (NPL)

 Scholarly publications: Handbooks, Textbooks, Withdrawn
Patents, Encyclopedias, Journals (IEEE, Research Gate,
Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s
PubMed, Conference Proceedings, Technical Reports, Public
Conferences, etc.
 Industry/trade publications: Industry reviews and public
disclosures (Social media, YouTube, Books, Magazines,
Datasheets, Blueprints, etc.).
 Others: Newspapers, Websites, Technology blogs,
Researchers‘ websites, etc.
Although, majority of NPL data is available freely on the public
forum, some of the journals are paid and can be accessed after
paying the subscription. Major Patent Offices such as the United
States Patent and Trademark Office's (USPTO), European Patent
Office (EPO), Japan Patent Office (JPO), etc. are maintaining in-
house NPL databases to make patents examination more effective.
2.1.9.2. 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:

23
 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.
However, it is mandatory to file the complete patent application
within one year of the filing of the provisional application;
otherwise, the application stands rejected.
2.1.9.3. 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 (Fig. 2.2) and Form-2 (Fig. 2.3). 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
has 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. The Claims are usually expressed as a declaration
of technical particulars articulated in legal terms. Claims can be
classified into two types a) Independent Claims (stand alone claim) and
b) Dependent Claims (dependent on independent claim). The Claims
must be drafted precisely and carefully in order to seek patent
protection and also to protect the invention against potential infringers.
Below mentioned are two important forms Form-1 and Form-2 for
filing the patent application (http://www.ip india.nic.in/writeread
data/Portal/IPORule/1_10_1_patents-amend ments-rules-2005.pdf).
24
 Figure 2.2: Form-1 (application for the grant of a patent).
"FORM 1 (FOR OFFICE USE ONLY)
THE PATENTS ACT 1970 (39 of 1970) and
THE PATENTS RULES, 2003
APPLICATION FOR GRANT OF PATENT
(See section 7, 54 and 135 and sub-rule (1) of rule 20)
Application No.
Filing date:
Amountof Feepaid:
CBR No:
Signature:
1. APPLICANT'S REFERENCE /
IDENTIFICATION NO. (AS ALLOTTED BY
OFFICE)
2. TYPE OF APPLICATION [Please tick (1 ) at the appropriate category]

Ordinary ( ) Convention ( ) PCT-NP ( )

Divisional ( ) Patent of Divisional ( ) Patent of Divisional ( ) Patent of
Addition ( ) Addition ( ) Addition ( )

25
3A APPLICANT(S)
Name in Full Nationality Countryof Address of the Applicant
Residence

House No.
Street
City
State
Country
Pin code
3B CATEGORY OF APPLICANT [Please tick ( ) at the appropriate category]

Natural Person ( ) Other than Natural Person

Small Entity ( ) Start-up ( ) Others ( )
4. INVENTOR(S) [Please tick (1 ) at the appropriate category]

Are all the inventor(s)

same as the applicant(s) Yes ( ) No ( )
named above?

If "No", furnish the details of the inventor(s)

26
 Country of
Name in Full Nationality Address of the Inventor
Residence
House No.
Street
City
State
Country
Pin code
5. TITLE OF THE INVENTION
IN/PA No.
6. AUTHORISED REGISTERED Name
PATENT AGENT(S)
Mobile No.
Name
Postal Address
7. ADDRESS FOR SERVICE OF APPLICANT Telephone No.
IN INDIA Mobile No.
Fax No.
E-mail ID

27
 8. IN CASE OF APPLICATION CLAIMLNG PRIORITY OF APPLICATION FILED IN
CONVENTION COUNTRY, PARTICULARS OF CONVENTION APPLICATION

Application Name of the Title of the IPC (as classified in the

Country Filing date
number applicant invention convention country)

9. IN CASE OF PCT NATIONAL PHASE APPLICATION, PARTICULARS OF INTERNATIONAL

APPLICATION FILED UNDER PATENT CO-OPERATION TREATY (PCT)

International application number International filing date

10. IN CASE OF DIVISIONAL APPLICATION FILED UNDER SECTION 16, PARTICULARS OF

ORIGINAL (FIRST) APPLICATION
Original (first) application No. Date of filing of original (first) application
11. IN CASE OF PATENT OF ADDITION FILED UNDER SECTION 54, PARTICULARS OF MAIN
APPLICATION OR PATENT

Main application/patent No. Date of filing of main application

28
 12. DECLARATIONS
(i) Declaration by the inventor(s)
(In case the applicant is an assignee: the inventors) may sign herein below or the applicant may upload the
assignment or enclose the assignment with this application for patent or send the assignment by post/electronic
transmission duly authenticated within the prescribed period).
I/We,the above named inventor(s) is/are the true & first inventor(s) for this Invention and declare that the
applicant(s) herein is/are my/our assignee or legal representative.
(a) Date
(b) Signature(s)
(c) Name(s)
(ii) Declaration by the applicant(s) in the convention country
(In case the applicant in India is different than the applicant in the convention country: the applicant in
the convention country may sign herein below or applicant in India may upload the assignment from the
applicant in the convention country or enclose the said assignment with this application for patent or send the
assignment by post/electronic transmission duly authenticated within the prescribed period)
I/we, the applicant(s) in the convention country declare that the applicant(s) herein is/are my/our assignee or
legal representative.
(a) Date
(b) Signature(s)
(c) Name(s) of the signatory
Source: http://www.ipindia.nic.in

29
 Figure 2.3: Form-2 (provisional/complete specifications).
FORM 2
THE PATENT ACT 1970
(39 of 1970)
&
The Patents Rules, 2003
PROVISIONAL/COMPLETE SPECIFICATION
(See section 10 and rule 13)
1. TITLE OF THE INVENTION
2. APPLICANT(S)
(a) NAME:
(b) NATIONALITY:
(c) ADDRESS:
3. PREAMBLE TO THE DESCRIPTION
PROVISIONAL COMPLETE

The following specification The following specification

describes the invention. particularly describes the
invention and the manner in
which it is to be performed.
4. DESCRIPTION (Description shall start from next page)
5. CLAIMS (not applicable for provisional specification. Claims
should start with the preamble — ‗l/we claim‘ on separate page)
6. DATE AND SIGNATURE (to be given at the end of last page of
specification)
7. ABSTRACT OF THE INVENTION (to be given along with
complete specification on separate page)
Note: -
 Repeat boxes in case of more than one entry.
 To be signed by the applicant(s) or by authorized registered patent
agent.
 Name of the applicant should be given in full, family name in the
beginning.
 Complete address of the applicant should be given stating the postal
index no. /code, state and country.
 Strike out the column which is/are not applicable
Source: http://www.ipindia.nic.in

30
2.1.9.4 Jurisdiction of Filing Patent Application - India has four
offices for filing patent applications (Table 2.1). The applications
can be filed only in one of the offices based on the applicant‘s
residence or domicile or place of business or origin of the invention.
These are termed as jurisdictions to file patents.
Table 2.1: Jurisdiction to file a patent in India.

Region States Address

Haryana, Himachal Intellectual Property Office
Pradesh, Punjab, Building
Rajasthan, Uttar Plot No. 32, Sector 14,
Pradesh, Uttarakhand, Dwarka,
Northern Delhi and the Union New Delhi-110078
Territory of Phone: 011-28032491
Chandigarh, Jammu Fax: 011-28034301
and Kashmir and Email: delhi-patent@nic.in
Ladakh.
patent Office Intellectual
Andhra Pradesh,
Property Building
Karnataka, Kerala,
G.S.T. Road, Guindy,
Tamil Nadu, Telangana
Chennai-600032
Southern and the Union
Phone: 044-22505242
Territories of
Fax: 044-22502066
Pondicherry and
Email: chennai-
Lakshadweep
patent@nic.in
BoudhikSampada Bhawan,
Maharashtra, Gujarat,
Antop Hill,S. M. Road,
Madhya Pradesh, Goa
Mumbai - 400 037.
and Chhattisgarh and
Phone: 022- 24153651,
Western the Union Territories of
24148165
Daman and Diu &
Fax: 022-24130387
Dadra and Nagar
Email: mumbai-
Haveli
patent@nic.in

31
 Intellectual Property Office
Building,
CP-2 Sector V, Salt Lake
City
Rest of Kolkata-700091
Remaining States Phone: 033-23679101,
India
033-23671987
Fax: 033-23671988
Email: kolkata-
patent@nic.in
Source: http://www.ipindia.nic.in/jurisdiction-of-patent-offices.htm

For a foreign applicant, the address for service in India or place

of business of his patent agent determines the appropriate Patent
Office for filing a patent application. In the case of joint
applications, all the applicants are bestowed with equal rights and
consideration.
2.1.9.5. 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/journal-
patents.htm). The purpose of publishing the application is to inform
the public about the invention. The publication of an application is a
mandatory step.
2.1.9.6 Pre-grant Opposition - If anybody has an objection to the
invention claimed in the patent application, he 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.

32
 Although the patent application is
kept secret for 18 months, but under Patentee: A person/
special circumstances, this period can Organization who
be reduced when the patentee/applicant owns the patent
(granted)
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.

2.1.9.7 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.
2.1.9.8. Grant of a 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. 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.

33
 Figure 2.4: Flowchart for the process of filing a patent
application.

Source: https://www.invntree.com/ (slightly modified)

2.1.9.9. Validity of Patent Protection - The patent protection is

granted to an applicant for a limited period, generally 20 years,
starting from the date of filing of the application. Once a patent is
granted for an invention in India, the next vital step is to ensure that
it is renewed annually by paying Patent Renewal Fee as per Section
53, Rule 80 of the Indian Patents Act, till the expiry of the patent
grant period. Non-payment of Patent Renewal Fee might result in
the cancellation of the patent.
In some countries, patent protection may be extended beyond 20
years. The extension aims to compensate for the time expended on
the administrative approval procedure before products can be put on
the market. The time taken for this procedure means that the patent
owner may sometimes not be able to benefit from his right for a
considerable period after the grant of the patent.
2.1.9.10. Post-grant Opposition - Once the patent has been granted
by the Patent Office, it still can be challenged by anyone within one
year from the date of publication of the grant of the patent. The

34
granted patent can be challenged either via a Patent Office or in a
Court of Law. These bodies may invalidate or revoke a patent upon
a successful challenge by the interested party on the grounds
mentioned below:
 The applicant for the patent wrongfully obtained the invention
or any part of the invention.
 The invention claimed has been published before the priority
date.
 The invention claimed was publicly known/used before the
priority date.
 The invention claimed is obvious and does not involve an
inventive step.
 The subject of the claim is not patentable as per Chapter II of
the Patent Act, 1970.
 The details/specifications of the invention do not sufficiently
and clearly describe the invention.
2.1.10. Commercialization of a Patent
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:
 The patent owner has a decent job e.g. university professor and
has no desire or aptitude to exploit the patent on his own.
 The patent owner may not have the necessary manufacturing
facilities.
 The manufacturing facility is not able to meet the market
demand.
 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 licence or deal with the
35
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. In
an Exclusive Licence, 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 Licence, 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 fulfilment of
following conditions:
 Reasonable requirements of the public concerning the patented
invention have not been satisfied.
 The patented invention is not available to the public at a
reasonable price.
 The patented invention is not worked in the territory of India.

2.1.11. Need for a Patent Attorney/Agent

In general, applicants can prepare their patent applications and
file them without assistance from a patent attorney. However, given
the complexity of patent documents, it is advisable to seek legal
assistance from a patent attorney/agent when drafting a patent
application. Furthermore, the legislation of many countries requires
that an applicant, whose ordinary residence or principal place of
business is outside the country, be represented by an attorney or
agent qualified in the country (which usually means an agent or
attorney who resides and practices in that country).
2.1.12. Can a Worldwide Patent be Obtained
There is no such term as ‗Universal Patent‘ or ‗World Patent‘ or
‗International Patent‘ as the patent rights are territorial. An
application for a patent must be filed with a Patent Office of the
36
country in which one wishes to seek patent protection.
Unfortunately, this option becomes laborious, cumbersome, time-
consuming and expensive if one wishes to file a patent application
in many countries. To ease out this issue, many Regional Offices
have been established which receive patent applications on behalf of
a group of nations e.g. European Patent Office and African Regional
Intellectual Property Organization. A single application is sufficient
to cover many nations that are members of a particular regional
office/organization. However, if one wishes to seek patent
protection in several countries worldwide, it is preferred to file an
international patent under the Patent Cooperation Treaty (PCT). The
only condition is that the applicant‘s country should be a member of
PCT. India, along with over 190 nations, is a member of PCT.
2.1.13. Do I Need First to File a Patent in India
Yes, in general, Indian residents are required to file the patent
application first in India. Subsequently, they may file for patent
protection in other countries. But for this, prior approval is needed
from the Patent Office. However, this approval can be waived off
under the following circumstances:
 The applicant is not an Indian resident.
 If 6 weeks have expired since the patent application was filed in
India by an Indian resident.
 If two or more inventors are working on an invention in a
foreign country and one of the inventors is an Indian resident.
The invention does not have a potential market in India and
hence does not wish to file the patent in India. In such a
scenario, the Indian resident has to seek Foreign Filing
Permission (FFP) from an Indian Patent Office.
 In case of international collaboration, if one part of the invention
originated in India and the inventor is an Indian resident, he has to
seek permission to file the patent outside India.
 If the invention is related to defense or atomic energy or utility
model, the inventor/s needs to seek permission from the Indian
Patent Office because inventions related to these domains are
not the subject matter of patentability in India.

37
2.1.14. Patent Related Forms
There are over 30 patent-related forms. Some of them are
mentioned below.
Table 2.2: List of important patent application forms.

Form No. Title of Form

1 Application for a grant of a patent

2 Provisional/Complete specifications

7 Notice of opposition on grant of a patent

7A For filing a representation opposing grant of a patent

17 Application for compulsory license

18 Request for examination of the application for patent

21 Request for termination of compulsory license

22 Application for registration of patent agent

27 Statement regarding the working of the patented

invention on a commercial scale in India

30 Miscellaneous form to be used when no other form is

prescribed
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-
Patents-Rules-2003-Updated-till-23-June-2017.pdf

2.1.15. Fee Structure

As per the patent Act, 1970 and The Patents Rules (1972), the
requisite fee has been specified based on the type of form/s to be
submitted to the Office (Table 2.3). Electronically filed applications
are 10% cheaper than physical filing.

38
 Table 2.3: Fee for obtaining a patent via electronic filing.
Small entity Others alone
alone or or with
Natural
with a natural
Item person/
natural person/
startup
person startup/
( )
/startup small entity
( ) ( )
Provisional/Complete
1,600 4,000 8,000
Specifications
Request for Early
2,500 6,250 12,500
Publication
Request for Examination 4,000 10,000 20,000
Express Request For
5,600 14,000 28,000
Examination
Renewal Fees (Annually)
3rd to 6th Year 800 2,000 4,000
6th to 10th Year 2,400 6,000 12,000
11th to 15th Year 4,800 12,000 24,000
16th to 20th year 8,000 20,000 40,000
Source: http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/ 1_11_1/
Fees.pdf

2.1.16. Types of Patent Applications

 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.

39
 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. The
priority date for all the divisional applications will be the same
as that of the main (the Parent) Application (Ante-dating).
 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.
2.1.17. Commonly Used Terms in Patenting
There are certain terms that are commonly used in the field of
patenting, as listed in table 2.4.
Table 2.4: Commonly used terms in the domain of patenting.
S. No. Term Definition
1. Inventor Creator of an invention
Organization/individual/industry that files
2. Applicant
a patent application or applies for a patent
A person/organization who owns the
3. Patentee
patent (granted)
Organization/individual/industry which
4. Licensee obtains a license of the patent from the
Patentee for commercialization purpose

40
 A person in whose name patent has been
5. Assignee
assigned legally
The applicant is paying the annuity
6. In force (renewal fee) for the patent to keep it alive
(Active Patent)
The selling of a patent to an
Working of individual/party for commercial
7.
a Patent exploitation is called as working of a
patent

Patent Patent specification is a written

Specification description of the invention and the way
8.
of representation and process of making
and using the same
A ‗Priority Right‘ or ‗Right of Priority‘ is
Priority
9. a time-limited right, activated by the first
Right
filing of an application for a patent
The claimed date on which the first
10. Priority Date
application for the invention is filed
Claims can be defined as the scope of the
protection conferred by a patent, or the
Patent protection sought in a patent application.
11.
Claims The purpose of the claims is to define
which subject matter is protected by the
patent
National An application filed to obtain patents in
12. Phase different countries simultaneously based
Application on a single International/PCT application
The revocation means cancellation of the
Patent patent due to certain reasons, such as lack
13.
Revocation of patentability or wrongfully obtaining a
patent
Once a patent has been ceased (e.g. due to
Restoration non-payment of the fee) it can be restored
14.
of Patent within a permitted period by paying the
requisite fee

41
 Patent Cooperation
UNIT 4 PATENT COOPERATION TREATY Treaty (PCT) and Patent
Law Treaty (PLT)
(PCT) AND PATENT LAW TREATY
(PLT)
Structure

4.1 Introduction
Objectives
4.2 Basic Objectives of PCT
4.3 The Functioning of the PCT System
Filing an International Application
International Search
International Publication
International Preliminary Examination
National Phase
4.4 Advantages of the PCT System
Advantages for the Patent office
Advantages for the Applicant
Advantages for the National Economy and Industry
4.5 Provisions of the Patent Law Treaty (PLT) and the Regulations
4.6 Summary
4.7 Terminal Questions
4.8 Answers and Hints
Appendix A : PCT Contracting States as on July 1, 2004
Appendix B : Text of PCT
Appendix C : Text of PLT
Appendix D : How Does the PCT Work?

4.1 INTRODUCTION

The national patent system requires the filing of individual patent applications for
each country for which patent protection is sought, with the exception of the regional
patent systems such as the African Intellectual Property Organization (OAPI) system,
the Harare Protocol system established in the framework of the African Regional
Industrial Property Organization (ARIPO), the Eurasian patent system and the
European patent system. Under the traditional Paris Convention route, you can claim
the priority of an earlier application, for applications filed subsequently in foreign
countries but such later applications must be filed within l2 months of the filing date
of the earlier application. This involves the preparation and filing of patent
applications within one year of first filing for all countries in which the protection for
invention is sought. This means expenses for translation, patent attorneys in the
various countries and payment of fees to the patent offices, all at a time when you
generally do not know whether you are likely to obtain a patent or whether the
invention is really new compared with the state of the art.

Filing of patent applications under the national system means that every single patent
office with which an application is filed has to carry out a formal examination of
every application filed with it. Where patent offices examine patent applications as to
substance, each office has to make a search to determine the state of the art in the
technical field of the invention and has to carry out an examination as to patentability.

The principal difference between the national patent system and the regional patent
systems such as those mentioned above is that a regional patent is granted by one
patent office for several States. Otherwise, the procedure to be followed is the same in
all the cases.
5
International Patent In order to overcome some of the problems involved in the national system, in
System
September 1966, the Executive Committee of the International (Paris) Union for the
Protection of Industrial Property invited BIRPI (the predecessor of WIPO) to
undertake urgently a study of solutions to reduce the duplication of the effort both for
applicants and national patent offices. In the following years, a number of BIRPI
meetings prepared drafts and a Diplomatic Conference held in Washington, D.C., in
June l970 adopted a treaty called the Patent Cooperation Treaty. The Patent
Cooperation Treaty or PCT entered into force on January 24, 1978, and became
operational on June 1, l978, with an initial 18 Contracting States.

The progress of the PCT demonstrates the certainty that many more countries,
developing as well as developed, will become party to the PCT in the years ahead and
that its use, evidenced by the number of applications filed, will continue to increase
significantly. The list of PCT member countries as of July 1, 2004 is given in
Appendix A. The complete text of patent cooperation treaty is given in Appendix B.
The Regulations under PCT can be accessed on the following web address:
http://www.wipo.int/pct/en/texts/pdf/pct_regs.pdf

To harmonize and streamline formal procedures in respect of national and regional

patent applications and patents, the Patent Law Treaty (PLT) was adopted on June 1,
2000 at a Diplomatic Conference in Geneva. With a significant exception for the
filing date requirements, the PLT provides maximum sets of requirements which the
office of a Contracting Party may apply. It may not lay down any other formal
requirements in respect of matters dealt with by this Treaty.

Any State which is party to the Paris Convention for the Protection of Industrial
Property or which is a member of WIPO may become party to the PLT. In addition,
any intergovernmental organization may become party to the Treaty under some
conditions.

The complete text of the Patent Law Treaty is given in Appendix C.

Objectives

After studying this unit, you should be able to:

• understand difficulties faced in filing separate national patents;

• explain the objectives of PCT;
• list the actions taken to achieve these objectives;
• describe different phases of patent filing under PCT;
• explain the steps of application processing under PCT filing;
• explain the advantages of PCT system;
• describe the provisions of PLT; and
• state the advantages of PLT.

4.2 BASIC OBJECTIVES OF PCT

As its name suggests, the Patent Cooperation Treaty is an agreement for international
cooperation in the field of patents. It is often spoken of as being the most significant
advance in international cooperation in this field since the adoption of the Paris
Convention for protection of industrial property. It is, however, largely a treaty for
rationalization and cooperation with. regard to the filing, searching and examination
of patent applications and the dissemination of the technical information contained
therein. The PCT does not provide for the grant of international patents. The task of
and responsibility for granting patents remains exclusively in the hands of the patent
offices of, or acting for, the countries where protection is sought. The PCT does not
compete with but, in fact, complements the Paris Convention. Indeed, it is a special
6
agreement under the Paris Convention open only to States which are already party to Patent Cooperation
Treaty (PCT) and Patent
that Convention. Law Treaty (PLT)

The principal objective of the PCT is, to improve on the previously established means
of applying in several countries for patent protection for inventions. This acts both in
the interests of the users of the patent system and the offices which have responsibility
for administering it.

To achieve its objective, the PCT:

• establishes an international system which enables the filing, with a single patent
office (the receiving office), of a single application (the international application)
in one language having effect in each of the countries party to the PCT which the
applicant names (designates) in the application;

• provides for the formal examination of the international application by a single

patent office, the receiving office;

• subjects each international application to an international search which results in a

report citing the relevant prior art (mainly published patent documents relating to
previous inventions) which may have to be taken into account in deciding whether
the invention is patentable;

• provides for centralized international publication of international applications with

the related international search reports, as well as their communication to the
designated offices;

• provides an option for an international preliminary examination of the

international application, which gives the applicant and subsequently the offices
that have to decide whether or not to grant a patent, a report containing an opinion
as to whether the claimed invention meets certain international criteria for
patentability.

The procedure described above is commonly called the international phase of the
PCT procedure. The national phase pertains to the last part of the patent granting
procedure, which is the task of the designated offices, i.e., the national offices of, or
acting for, the countries which have been designated in the international application.
In PCT terminology, a reference to national office, national phase or national fees
includes the reference to the procedure before a regional patent office.

In more developed countries with a greater number of patent applications, patent

offices have been struggling for years with heavy workloads (leading to delays) and
with questions of how best to allocate resources, so as to ensure that the patent system
yields the greatest return from the available manpower. Under the PCT system, by the
time the international application reaches the national office, it has already been
examined as to form by the receiving office, been searched by the International
Searching Authority and possibly examined by an International Preliminary
Examining Authority. These centralized procedures of the international phase thus
reduce the workload of the national patent offices.

Further main objectives of the PCT are to facilitate and accelerate access by industry
and other interested sectors to technical information related to inventions and to assist
developing countries in gaining access to technology.

SAQ 1 Spend
4 min.
Under what situation would you explore the choice of filing an application under
PCT?

7
International Patent
System 4.3 THE FUNCTIONING OF THE PCT SYSTEM

4.3.1 Filing an International Application

Any national or resident of a PCT Contracting State can file an international

application. You can file the International applications with the national office, which
will act as a PCT receiving office. In addition, the International Bureau can act as a
receiving office as an option for nationals and residents of all PCT Contracting States.

An international application has the effect, as of the international filing date, of a

national application in those PCT Contracting States which you designate for a
national patent in your application. It has the effect of a regional patent application in
those PCT Contracting States which are party to a regional patent treaty, providing
they are designated for a regional patent (that is, an ARIPO patent, a Eurasian patent,
a European patent or an OAPI patent).

The PCT prescribes certain standards for international applications. An international

application which is prepared in accordance with these standards will be acceptable,
so far as the form and contents of the application are concerned, to all the PCT
Contracting States, and no subsequent modifications because of varying national or
regional requirements (and the cost associated therewith) will become necessary. No
national law may require compliance with requirements relating to the form or
contents of the international application different from or additional to those which are
provided for by the PCT.

Only a single set of fees is incurred for the preparation and filing of the international
application and they are payable in one currency and at one office, the receiving
office. Payment of national fees to the designated offices is delayed. The national fees
become payable much later than for a filing by the traditional Paris Convention route.

The fees payable to the receiving office for an international application consist of
three main elements:

• the transmittal fee, to cover the work of the receiving office;

• the search fee, to cover the work of the International Searching Authority; and
• the international fee, to cover the work of the International Bureau.

An applicant who is a natural person and who is a national of and resides in a State
whose per capita national income is below a certain level, based on income figures
used by the United Nations for determining its scale of assessments for contributions
to it, is entitled to a sizable reduction of certain PCT fees, including the international
fee. If there are several applicants, each must satisfy the above-mentioned criteria.

The language in which an international application can be filed depends upon the
requirements of the receiving office with which the application is filed and of the
International Searching Authority which is to carry out the international search. The
main languages in which international applications may be filed are Chinese, English,
French, German, Japanese, Russian and Spanish. Other languages also accepted, so
far, are Danish, Dutch, Finnish, Norwegian and Swedish.

The receiving office, after having accorded an international filing date and made a
formal check, sends a copy of the international application to the International Bureau
of WIPO (the record copy) and another copy (the search copy) to the International
Searching Authority. It keeps a third copy (the home copy). The receiving office also
collects all the PCT fees and transfers the search fee to the International Searching
Authority and the international fee to the International Bureau.

8
4.3.2 International Search Patent Cooperation
Treaty (PCT) and Patent
Law Treaty (PLT)
Every international application is subjected to an international search, that is, a high
quality search of the patent documents and other technical literature in those
languages in which most patent applications are filed (English, French and German,
and in certain cases Chinese, Japanese, Russian and Spanish). The high quality of the
international search is assured by the standards prescribed in the PCT for the
documentation, staff qualifications and search methods of the International Searching
Authorities, which are experienced patent officers that have been specially appointed
to carry out international searches by the Assembly of the PCT Union (the highest
administrative body created under the PCT) on the basis of an agreement to observe
PCT standards and time limits.
The following offices have been appointed to act as International Searching
Authorities: the Australian Patent office, the Austrian Patent office, the Chinese Patent
office, the European Patent office, the Japanese Patent office, the Russian Patent
office, the Spanish Patent and Trademark office, the Swedish Patent office and the
United States Patent and Trademark office.
Each International Searching Authority is required to have at least the prescribed PCT
minimum documentation, properly arranged for search purposes, which can be
described in general as comprising the patent documents, as from 1920, of the major
industrialized countries, together with agreed items of non-patent literature. The
International Searching Authority, in making the search, must make use of its full
facilities, i.e., the PCT minimum documentation and any additional documentation it
may possess. The obligation to consult at least the PCT minimum documentation
guarantees a high level of international searching.
The results of the international search are given in an international search report,
which is normally made available to you as an applicant by the fourth or fifth month
after the application is filed. The citations of documents of relevant prior art in the
international search report enable you to calculate your chances of obtaining a patent
in or for the countries designated in the international application, and to decide
whether it is worthwhile to continue to seek protection for the invention in the
designated States.
An international search report which is favourable, that is, in which the citations of
prior art would appear not to prevent the grant of a patent, assists you in the
subsequent prosecution of the application before the designated offices. If a search
report is unfavourable, you have the opportunity to amend the claims in the
international application to better distinguish the invention from the state-of-the-art or
to withdraw the application before it is published.
The international search report assists designated offices, in particular offices which
do not have technically qualified staff and an extensive collection of patent documents
arranged in a manner suitable for search purposes, in examining applications and
otherwise evaluating the inventions described.
The International Searching Authority sends the international search report to the
applicant and to the International Bureau. The International Bureau includes the
search report in the international publication of the international application and sends
a copy to the designated offices.

4.3.3 International Publication

International publication serves two main purposes:

• to disclose to the public the invention i.e., in general, the technological advance
made by the inventor; and
• to set out the scope of the protection which may ultimately be obtained.
9
International Patent
System
The International Bureau publishes a PCT pamphlet which contains a front page
setting out bibliographic data furnished by the applicant, together with data such as
the International Patent Classification (IPC) symbol assigned by the International
Searching Authority, the abstract and also the description, the claims, any drawings
and the international search report. If the claims of the international application have
been amended, the claims are published both as filed and as amended. International
publication occurs, in general, l8 months after the priority date of the international
application.

The pamphlet is published in the language of the international application as filed, if

that language is Chinese, English, French, German, Japanese, Russian or Spanish. If,
however, the international application is published in Chinese, French, German,
Japanese, Russian or Spanish, the title of the invention, the abstract and the
international search report are also published in English. If the international
application has been filed in any other language, it is translated and published in
English.

The publication of each pamphlet is announced in the PCT Gazette, which lists the
published international applications in the form of entries reproducing data taken from
the front pages of the pamphlets. Each issue of the PCT Gazette also contains a
Classification Index, allowing the selection of the published international applications
by technical fields.

These publications, the pamphlet and the PCT Gazette, are distributed free of charge
by the International Bureau on a systematic basis to all PCT Contracting States. They
are now also available in CD-ROM format in searchable form. To the public, they are
supplied on request, against payment of a fee.

4.3.4 International Preliminary Examination

Once you receive the international search report as an applicant, you can make a
specific request for international preliminary examination by filing a demand in which
the designated States are elected. This enables you to obtain an opinion as to whether
the claimed invention meets any or all of the criteria of patentability, i.e. whether it
appears to be novel, whether it appears to involve an inventive step and whether it
appears to be industrially applicable. A fee for international preliminary examination
is due when a demand is filed with the International Preliminary Examining
Authority, together with a handling fee to cover the work of the International Bureau.
Applicants from certain States are entitled to a sizable reduction of the handling fee.

As in the case of the International Searching Authorities, the International Preliminary

Examining Authorities are appointed by the Assembly of the PCT Union. The offices
which have been appointed are the same as those appointed as International Searching
Authorities, with the exception of the Spanish Patent and Trademark office. The
results of the international preliminary examination are given in a report which is
made available to the applicant and the elected offices (which are the offices of, or
acting for, the elected States) through the International Bureau, which is also
responsible for translating the report into English, if required by any elected office.
The opinion on the patentability of the invention, on the basis of the international
criteria provides the applicant with an even stronger basis for calculating the chance of
obtaining a patent, and the elected offices have a better basis for their decision
whether to grant a patent. In countries where patents are granted without examination
as to substance, the international preliminary examination report will provide a solid
basis for parties interested in the invention (e.g., for licensing purposes) to evaluate
the validity of such patents.

10
Usually upon publication of the international application (but at the latest by the end Patent Cooperation
Treaty (PCT) and Patent
of the 19th month after the priority date), the International Bureau communicates the Law Treaty (PLT)
international application to the designated offices. The copy communicated will be
used for the subsequent prosecution of the international application before those
offices since the PCT is only a system for filing and not for granting patents. Patent
granting is the exclusive task and responsibility of the designated offices. In practice,
more than half of these offices have waived the weekly communications of copies of
published international applications and receive, instead, a free-of-charge complete
collection on CDROM of all such applications. A CD-ROM workstation is also
provided by the International Bureau. The main advantages of the CD-ROM format
are rapid access via computer and the limited storage space required. In any case, a
designated office is entitled to receive, upon specific request, copies (on paper) of the
international applications, and of related documents, in which it is designated.

When an international patent application has been filed, the national procedures in
relation to the majority of the designated offices are delayed until the end of the 30th
month from the priority date (there are some exceptions;—even longer delays are
available before some offices). The delay normally gives you 18 months more before
you have to fulfil the national requirements than if you do not use the PCT. This
additional time can be very useful for evaluating the chances of obtaining patents and
of exploiting your invention commercially in the various designated countries, and for
assessing both the technical value of your invention as well as the continued need for
protection in those countries.

4.3.5 National Phase

After having received an international search report and, where appropriate, an

international preliminary examination report, and after having had the possibility of
amending the application, you are now in a good position to decide whether there is a
chance of obtaining patents in the designated States. If you see no likelihood, you can
either withdraw the application or do nothing. In the latter case, the international
application will lose the effect of a national application and the procedure will
automatically come to an end. In such a case you have saved yourself of great
expense, namely, the costs involved in filing separate national applications under the
traditional Paris Convention route. You have not paid for applications and translations
for the national offices, you have not paid fees to those offices, and you have also not
appointed local agents: all this is required under the traditional Paris Convention route
within l2 months from the priority date, and must be done without having the basis for
evaluating the likelihood of obtaining a patent, which is afforded under the PCT by
the international search report and, optionally, the international preliminary
examination report.

Where you decide to continue the procedure, and only in that event, you must pay the
prescribed national fees to the designated (or elected) offices and, if required, furnish
to these offices translations of the international application into their official language.
You may also have to appoint a local agent. Once national processing starts, the
normal national procedures apply, subject to specific exceptions arising out of the
PCT procedure, for example, matters of form and contents of the international
application, and the provision of copies of the priority document.

WIPO has published a PCT Applicant’s Guide. Volume I of this Guide contains
general information for users of the PCT, relating to the international phase; Volume
II contains information on the procedure before the designated and elected offices,
relating to the national phase. Further information is regularly published in the PCT
Gazette, (Section IV— Notices and Information of a General Character), and in the
PCT Newsletter, a monthly publication which contains up to date news about the PCT.
WIPO’s home page on the Internet includes the PCT Applicant’s Guide and the PCT

11
International Patent Newsletter as well as other information of a general nature on the PCT. The World
System
Wide Web address is: http://www.wipo.int

4.4 ADVANTAGES OF THE PCT SYSTEM

4.4.1 Advantages for the Patent office

More and more patent offices are having to consider how to employ their available
manpower to the greatest advantage. This is true because of the number of patent
applications which they must handle. In a country in the process of development, the
number will surely rise considerably in the future as a consequence of an increase in
the country’s industrial activity. Also the patent offices are being required to fulfil the
expanding role of providing technical advisory services to local industry, either in
terms of advising on available technologies or in connection with national research
and development activities. This responsibility comes because of available patent
documentation and technically trained staff. The PCT assists patent offices in meeting
these demands in various ways.

Patent offices can expect to employ their available manpower to handle more patent
applications, since those applications coming via the PCT have already been verified
with regard to compliance with formal requirements during the international phase.

Patent offices can save part of the cost of publishing. If the international application
has been published in an official language of the country, they can forgo publication
altogether. Countries having a different official language may limit themselves to
publishing only a translation of the abstract which accompanies international
applications. Copies of the full text of the international application could be supplied
upon request to interested parties.

The PCT does not affect the revenue of designated offices unless they decide
voluntarily to give a rebate on national fees in view of the savings they make through
the PCT, and in order to make the use of the international application route more
attractive to the applicant. In any case, the most profitable source of revenue for most
offices is from annual or renewal fees, which are not affected by the Treaty.

Examining patent offices benefit, in respect of most applications filed by foreigners,

from an international search report and an international preliminary examination
report. Their search costs are also thereby reduced.

Non-examining offices receive an application which has already been examined as to

form, which is accompanied by an international search report and possibly by an
international preliminary examination report. This will put the office, and the national
industry affected by a patent and/or interested in licensing, in a much better position
compared to the system of filing national or regional applications. National authorities
involved in approving licensing agreements likewise benefit from the greater value of
a patent granted on the basis of an international application.

Patent offices of States party to the Harare Protocol, to the Eurasian Patent
Convention or to the European Patent Convention which opt to close the national
route are not involved in the processing of international applications designating such
States. Choosing this option is therefore particularly advisable if the national patent
office is less well equipped than the regional office and is not prepared to receive and
process increasing numbers of applications.

12
4.4.2 Advantages for the Applicant Patent Cooperation
Treaty (PCT) and Patent
Law Treaty (PLT)
You may file your application in your own country (or, where applicable, with the
competent regional office, or with the International Bureau as receiving office) with
effect in foreign countries, and have more time to make up your mind as to those
foreign countries in which you wish to seek protection. In a typical case, you have
spent much less money in the stage prior to a granted patent than otherwise.

If you do not use the international procedure offered by the PCT, you must start
preparations for filing abroad three to six months before the expiration of the priority
period. You must prepare translations of the application and have them put into a
different form for each country. Under the PCT, you need to file only one application
(the international application), within the priority year, with effect in all States that
you designate, which may be filed until the last day of the priority year, may be
identical both as to language and form with your own national application.

The cost of further translation has to be met eventually, but not until eight (or 18)
months later than under a procedure which does not use the PCT, and only if you,
having evaluated the international search report and, where available, the international
preliminary examination report also, are still interested in the countries concerned. If
not, you can save all subsequent costs.

4.4.3 Advantages for the National Economy and Industry

International applications will be pursued in the national phase only if you believe,
after seeing the results of the international search and usually also the international
preliminary examination, that there are sound economical and technical reasons to do
so. Thus, patents granted on the basis of international applications will usually provide
a sounder basis for investment and transfer of technologies.

Technological progress is an essential factor of national economic development. It is

recognized that real technological progress cannot be achieved or cannot continue in a
country, however industrialized, without constant stimulation of domestic inventive
activities and at the same time importation (via licenses) of advanced technologies
from foreign countries. Since the PCT system greatly facilitates the obtaining of
patent protection on an international level, and since the patents granted through the
PCT route have been subjected to high-quality international search and usually also
international preliminary examination, more and more applicants are seeking patent
protection on an international level through the PCT, thus preparing the route for
technology transfer and licensing agreements.

With more licensed technology, foreign investment will be stimulated. And with more
advanced technologies and more investment, there will be increased levels of local
employment and the technical skills of the local work force will be enhanced. As the
level of economic and technological development rises, an increasing number of
nationals will use and greatly benefit from the PCT system when they seek patent
protection abroad for their inventions, thus aiding in the penetration of export markets
by local industry.

The economies of many developing countries are growing rapidly; more investment
and technology transfer in various areas, depending on the country concerned, are
needed, as well as the creation and modernization, locally, of certain types of
industries (manufacturers, etc.) and services. Since foreign investors and licensors are
relatively more interested in investing in and transferring technologies to a country
whose economy is growing and where production costs are relatively low, the PCT
will often serve as an indispensable part of the country’s strategy to foster its growing
economy and to promote the steady rise of its economic and technological level.

13
International Patent A further important advantage of the PCT for developing countries lies in its
System
information effect. It can be very difficult to obtain a complete picture of all the patent
documents published in many countries and many languages and of the most recent
state-of the-art resulting from them. Since many important inventions are the subject
of PCT applications, developing countries have, through the international publication
of these applications, early and easier access to modern technological information.
The access will be early, because international applications are published 18 months
after the priority date of the application. It will be easier, because the application will
be published in one of the most important languages and, where not in English, with
an English-language abstract, and because the international search report, published
together with the application, will make it easier to evaluate the technology disclosed
in the application. Patent offices of PCT Contracting States are entitled to receive, free
of charge, a copy of all published international applications, of the PCT Gazette, and
of any other publication of general interest published by the International Bureau in
connection with the PCT.

The PCT offers distinct advantages for developing countries participating in this
system of international patent cooperation and requires no payment of contributions.
That there is sufficient awareness of these advantages is confirmed by the impressive
number of developing countries already party to the Treaty.

4.5 PROVISIONS OF THE PATENT LAW TREATY (PLT)

AND THE REGULATIONS

Applications and Patents to Which the Treaty Applies

According to Article 3, the PLT applies to national and regional applications that are
applications for patents for invention, applications for patents of addition and
divisional applications for patents for invention or for patents of addition. These terms
are to be construed in the same sense as the corresponding terms in Article 2(i) of the
PCT. The PLT also applies to international applications for patents for invention and
for patents of addition filed under the PCT once the international applications have
entered into the national phase. It also applies to the time limits for the entry of
international applications into the national phase under PCT Articles 22 and 39(1).

As regards patents, the PLT applies to all patents for invention, and to patents of
addition, which have been granted by the office of a Contracting Party or by another
office on behalf of that Contracting Party.

Filing Date Requirements

The grant of a filing date is essential in view of deciding who has a priority to obtain a
patent in each country and of determining prior art and patentability of the invention.
It is also relevant to claiming a right of priority under the Paris Convention as well as
to the calculation of the term of patent protection.

Article 5 of the PLT sets up requirements for obtaining a filing date and procedures to
avoid loss of the filing date because of a failure to comply with other formality
requirements. In principle, the office of any Contracting Party shall accord a filing
date to an application on the basis of three simple elements. These are: (i) an
indication that what was filed is intended to be a patent application; (ii) indications
which identify the applicant and/or allow the applicant to be contacted; and (iii) a part
which on the face of it appears to be a description. A Contracting Party may, however,
accept evidence that establishes the identity of, or allows a contact to, the applicant in
the place of indications referred to in (ii) above, or accept a drawing in the place of a
part referred to in (iii) above. Further, for the purpose of obtaining a filing date, an

14
applicant may file a description in any language, although it may be needed to file a Patent Cooperation
Treaty (PCT) and Patent
translation later. Law Treaty (PLT)

Article 5 also provides for the rules to establish a filing date where a part of the
description or drawing is missing from the initially filed application, or where the
descriptions and/or drawings are replaced by a reference to another application.

Standardized Application and Forms

The PLT establishes a single internationally standardized set of formal requirements

for national and regional applications. In order to avoid having international double
standards, the formal requirements in respect of international applications under the
PCT are incorporated into the PLT, wherever appropriate. The provisions in this
respect are:

• In accordance with Article 6(1), the requirements relating to the form or contents
of international applications under the PCT, both concerning the international
phase and the national phase, are incorporated by reference into the PLT, with
minor exceptions.

• The contents of the request of an international application under the PCT are also
incorporated by reference into the PLT (Article 6(2)(a)).

• The PLT Rule 3(2) provides that a Contracting Party shall accept request forms
that are based on the PCT request form.

In addition to the request form, the Treaty provides for the establishment of several
additional Model International Forms that have to be accepted by all offices of
Contracting Parties (Article 8(3)). These Forms, which will be established by the
Assembly, relate to the following communications:

i) a power of attorney;
ii) a request for recordation of change in name or address;
iii) a request for recordation of change in applicant or owner;
iv) a certificate of transfer;
v) a request for recordation, or cancellation of recordation, of a license;
vi) a request for recordation, or cancellation of recordation, of a security interest; and
vii) a request for correction of a mistake.

By using the Model International Forms, that is, filling in a single form and filing it
with any office of a Contracting Party, applicants and other parties are assured that no
office may refuse the communication on the basis of non-compliance with formality
requirements.

Restriction on Mandatory Representation

The PLT allows a Contracting Party to require that an applicant, owner or other
interested person appoint a representative for the purposes of any procedure before the
office, except for certain limited procedures (Article 7(2)). These limited procedures
are:

i) the filing of an application for the purposes of the filing date;

ii) the mere payment of a fee;
iii) the filing of a copy of an earlier application for the purpose of establishing a filing
date where a part of the description or a drawing has been missing from the initial
filing;

15
International Patent iv) the filing of a copy of a previously filed application for the purpose of establishing
System
a filing date where the description and any drawings have been replaced by a
reference;
v) the issue of a receipt or notification by the office in respect of any procedure
under (i) to (iv).

Although an applicant or owner may carry out these permitted procedures vis-à-vis
patent offices in foreign countries without engaging any representative, in accordance
with Article 8(6) and Rule 10(2), a Contracting Party may require that the applicant or
owner nevertheless provide an address for correspondence and/or for legal service on
the territory of that country.

Restriction on Requiring Evidence

In order to reduce any unnecessary burden on applicants, the PLT provides that the
evidence in the support of formal contents of an application, declarations of priority or
the authentication of translations may only be required where the office has a
reasonable doubt as to the veracity of the indications or the accuracy of the translation
submitted by the applicant (Article 6(6)). Such a limitation with respect to evidence is
also applicable to the indications contained in other communications such as a power
of attorney (Rule 7(4)), a request for recordation of change in name or address (Rule
15(4)) etc.

However, concerning a request for recordation of change in applicant or owner and a

request for recordation, or cancellation of recordation, of a license or a security
interest, the PLT expressly allows a Contracting Party to require limited
documentation supporting the fact of such change or license, respectively.

As regards a signature, a Contracting Party may require evidence only where the
office has a reasonable doubt as to its authenticity (Article 8(4)(c)). Otherwise, the
office cannot require any attestation, notarization, authentication, legalization or other
certification of a signature (Article 8(4)(b)), except in the case of digital signatures
(Rule 9(6)).

Restriction on Requirements to Submit a Copy of an Earlier Application and

Translation thereof

Rule 4(3) prohibits a Contracting Party to require a copy or a certified copy of the
earlier application or the previously filed application if such earlier application or
previously filed application has been filed with the office of that Contracting Party.
The same applies to the cases where the office could obtain the copy or the
certification from other offices through a digital library which is accepted by that
office for that purpose. Further, Rule 4(4) provides that the office may require a
translation of the earlier application only where the validity of the priority claim is
relevant to the determination of whether the invention concerned is patentable.

Single Communication

The PLT allows an applicant or owner to consolidate a number of similar requests in

one communication under certain circumstances (Rule 7(2)(b)). For example, a
Contracting Party shall accept a single power of attorney if it relates to one or more
applications and/or patents of the same person.

16
Relief in Respect of Time Limits and Reinstatement of Rights Patent Cooperation
Treaty (PCT) and Patent
Law Treaty (PLT)
The PLT provides three types of relief procedures:

• The first is an extension of the time limit, for at least two months, where an
applicant or owner requests the extension prior to the expiration of the time limit
(Article 11(1)(i)).

• The second is an extension of the time limit, for at least two months, where an
applicant or owner requests the extension after the expiration of the unobserved
time limit (Article 11(1)(ii)).

• The third is continued processing (Article 11(2)).

A Contracting Party is not obliged to provide the first type of extension. However, it is
obliged to provide either the second type of extension or continued processing, if the
circumstances meet the requirements under the Treaty and the Regulations. Relief
under these provisions is limited to non-compliance with a time limit fixed by the
office for an action in a procedure before the office. It does not apply to time limits
fixed by legislation.

The PLT also provides safeguard provisions if you, as an applicant or owner, have
failed to meet a time limit and, as a consequence, have lost your rights with respect to
an application or patent unintentionally or in spite of all due care required by the
circumstances (Article 12). Reinstatement of rights shall be granted if a request to that
effect is made, and all the relevant requirements are complied with, in a time limit of
not less than two months from the date on which the reason of the non-compliance
with the time limit is removed, or of not less than 12 months from the expiration of
the missed time limit, whichever is shorter (Rule 13(2)). In contrast to the relief in
respect of time limits, reinstatement of rights is applicable to all time limits, including
time limits set by legislation.

Correction and Addition of Priority Claim and Restoration of Priority Right

As in the case of international applications under the PCT (PCT Rule 26bis), PLT
Article 13(1) and Rule 14(1) to (3) provide for the possibility of addition and
correction of priority claims for national/regional applications.

The PLT also provides for a remedy for the loss of a priority right due to innocent
non-compliance with related time limits in two cases. The first is, where an
application is filed after the expiration of the 12-month priority period, under certain
conditions, you are entitled to the restoration of the priority right if the failure to claim
a priority within 12 months occurred in spite of all due care taken by you, or was
unintentional and the circumstances meet certain conditions (Article 13(2)). The
application has to be filed, and a request for restoration should be made, in at least two
months from the date on which the priority period expired, but before the completion
of any technical preparation for publication of the application.

The second is, where you cannot submit a copy of an earlier application within 16
months from the priority date because of a delay in the office with which your earlier
application was filed. In order to safeguard you in such cases, Article 13(3) and Rule
14(6) and (7) provide for restoration of priority rights.

Paper and Electronic Communication

The goal of the PLT concerning paper and electronic filing is to facilitate the
implementation of electronic filing of applications and other communications, to the
advantage of both offices and their users, while ensuring the co-existence of both
paper and electronic communications at the global level. The principle under the PLT
17
International Patent is that any Contracting Party is neither obliged to accept the filing of communications
System
in electronic form or by electronic means (Article 8(1)(b)) nor obliged to exclude the
filing of communications on paper (Article 8(1)(c)).

Rule 8(1) provides that, in general, all Contracting Parties shall permit the filing of
applications and communications on paper until June 2, 2005. After that date, a
Contracting Party may implement full electronic filing (i.e., exclude paper filing), or it
may continue to accept paper. However, even after June 2, 2005, applicants can use
paper in all offices for the purposes of acquiring a filing date and complying with a
time limit.

Spend SAQ 2
5 min.
How PLT helps in simplifying the procedures before a patent office?

Let us now summarize the points covered in this Unit.

4.6 SUMMARY

• In order to overcome the difficulties faced in filing of national applications in all

the countries, where patent protection is sought, a single international filing
system was evolved under Patent Cooperation Treaty (PCT)

• PCT is not a patent granting authority.

• The filing under PCT involves two phases viz. International Phase and National
Phase.

• The International Phase involves

− International application filing;

− International search;
− International Publication; and
− International Preliminary Examination (optional)

• The National phase involves actual granting of patent by the national patent
offices of the designated countries.

• PCT system is advantageous for the applicants, patent offices as well as for
industrial and economic growth of the countries.

• To harmonize the procedures of national and regional patent applications, a Patent

Law Treaty (PLT) was adopted on June 1, 2000.

• Any country, party to the Paris Convention or member of WIPO can became party
to PLT.

• PLT simplifies the procedures before the patent offices.

• It also helps in avoiding loss of rights of applicants under certain condition.

4.7 TERMINAL QUESTIONS Spend 15 min.

1. Discuss the advantages of PCT for the applicant, the patent offices and general
public.
2. What are advantages of PLT?
3. How PLT helps in avoiding loss of rights of applicants?
18
 Patent Cooperation
4.8 ANSWERS AND HINTS Treaty (PCT) and Patent
Law Treaty (PLT)

Self Assessment Questions

1. When you want to protect your invention in several countries; when you wish to
evaluate your chances of protecting an invention before incurring major costs in
foreign countries; when you want to keep all of your options open for protecting
your invention while still investigating its commercial possibilities abroad and
when you want to obtain more reliable patent abroad, you may choose to file an
application under PCT.

2. The PLT simplifies the procedures before the patent office in the following ways:

i) For limited procedures, it is not necessary to appoint a representative before

the office;
ii) The evidence in support of formal content of application will be required only
in case of doubt about the veracity of indications;
iii) The evidence in support of signature is required only in case of doubt or in
case of digital signature:
iv) It is not necessary to provide copy of earlier application if it was filed in the
patent office of a contracting party;
v) In case of more applications from the same person, a single communication
regarding some requests (like power of attorney) is acceptable.

Terminal Questions

1. The procedure under the PCT has great advantages for the applicant, the patent
offices and the general public:

i) The applicant has up to 18 months more than he would in a procedure outside

the PCT to reflect on the desirability of seeking protection in foreign
countries, to appoint local patent agents in each foreign country, to prepare
the necessary translations and to pay the national fees. He is assured that, if
the international application is in the form prescribed by the PCT, it cannot be
rejected on formal grounds by any designated office during the national phase
of the processing of the application. On the basis of the international search
report or the written opinion, he can evaluate with reasonable probability the
chances of the invention being patented. The applicant has the possibility
during the international preliminary examination to amend the international
application to put it in order before processing by the designated offices;

ii) The search and examination work of patent offices can be considerably
reduced or virtually eliminated because of the international search report, the
written opinion and, where applicable, the international preliminary
examination report that accompany the international application;

iii) Since each international application is published together with an international

search report, third parties are in a better position to formulate a well-founded
opinion about the patentability of the claimed invention.

2. From the viewpoint of inventors, applicants and patent attorneys, standardization

and simplification of the formality requirements lead to a reduced risk of formality
errors, and thus will result in a less frequent loss of rights as well as in cost
reductions. They may rely on a familiar set of patent formalities in all countries
19
International Patent party to the PLT, since the incorporation of the PCT provisions regarding form or
System
content of an international application are known to applicants and patent
attorneys of many countries. Further, due to the possibility of correcting formality
mistakes before the offices and to the introduction of various procedures tending
to avoid the loss of rights, they may reduce a risk of loss of rights through failure
to comply with formalities.

On the other hand, by eliminating unnecessarily complicated procedures and

streamlining the whole process, offices may operate more efficiently, and
therefore cut their costs.

3. The PLT Provides procedures for avoiding unintentional loss of rights as a result
of failure to comply with formality requirements.

In case of exceeding the time limits unintentionally, the treaty provides for the
extension of time limits under certain conditions.

It also provides possibility of addition and correction of priority claims for

national/regional filing. This improves chances of obtaining patent.

PLT also allows restoration of priority rights, which may have been lost, under
certain conditions.

20
 Patent Cooperation
Appendix A: PCT Contracting States Treaty (PCT) and Patent
Law Treaty (PLT)

PCT Contracting States as on July 1, 2004

Name of State Date on which State Name of State Date on which State
followed by the became bound by the followed by the two- became bound by the
two-letter code PCT letter code PCT

Albania AL .....................……..4 October 1995 Guinea GN ...................…………27 May 1991

Algeria DZ 1 ....................... …....8 March 2000 Guinea-Bissau GW .......... ..12 December 1997
Antigua and Barbuda AG ........ 17 March 2000 Hungary HU 1 .................……….27 June 1980
Armenia AM 1 ............. …...25 December 1991 Iceland IS .................... ……….23 March 1995
Australia AU.................. ……...31 March 1980 India IN 1 .................. ……...7 December 1998
Austria AT .................... ……….23 April 1979 Indonesia ID 1 ............... …..5 September 1997
Azerbaijan AZ ............. …..25 December 1995 Ireland IE .................... ………..1 August 1992
Barbados BB ................. ……...12 March 1985 Israel IL........................ …………..1 June 1996
Belarus BY 1 ............... …...25 December 1991 Italy IT ...................... ………...28 March 1985
Belgium BE ............... ……..4 December 1981 Japan JP ..................... ………..1 October 1978
Belize BZ ....................………….17 June 2000 Kazakhstan KZ 1 ............ ...25 December 1991
Benin BJ................... ……….26 February 1987 Kenya KE ....................…………. 8 June 1994
Bosnia and Herzegovina BA 7 September 1996 Kyrgyzstan KG 1 ............ ...25 December 1991
Botswana BW..............………30 October 2003 Latvia LV .................. ……..7 September 1993
Brazil BR ....................…………. 9 April 1978 Lesotho LS .................. ……..21 October 1995
Bulgaria BG ..................………...21 May 1984 Liberia LR................... ………27 August 1994
Burkina Faso BF ............... …...21 March 1989 Liechtenstein LI ............... ……19 March 1980
Cameroon CM ............... ……24 January 1978 Lithuania LT ..................... ……….5 July 1994
Canada CA ................... ………2 January 1990 Luxembourg LU ................ ……30 April 1978
Central African Republic CF...24 January 1978 Madagascar MG .............. …...24 January 1978
Chad TD.................... ………..24 January 1978 Malawi MW ................. ……..24 January 1978
China CN .................... ……….1 January 1994 Mali ML .................... ………19 October 1984
Colombia CO ............... ……28 February 2001 Mauritania MR ................. ……..13 April 1983
Congo CG .................. ………24 January 1978 Mexico MX................... ………1 January 1995
Costa Rica CR ...............………3 August 1999 Monaco MC ................... ……….22 June 1979
Côte d’Ivoire CI ................ …….30 April 1991 Mongolia MN .................……….27 May 1991
Croatia HR ..................... …………1 July 1998 Morocco MA ................. ……..8 October 1999
Cuba CU1 ...................… ………..16 July 1996 Mozambique MZ 1 .............…….18 May 2000
Cyprus CY ..................... ………..1 April 1998 Netherlands NL 4 ................. …... 0 July 1979
Czech Republic CZ............. …..1 January 1993 Namibia NA .................. …….. 1 January 2004
Democratic People’s New Zealand NZ............. …. 1 December 1992
Republic of Korea KP ............ …...8 July 1980 Nicaragua NI................... ………6 March 2003
Denmark DK ............... …….1 December 1978 Niger NE..................... ………..21 March 1993
Dominica DM................……….7 August 1999 Norway NO 2 ................. ……..1 January 1980
Ecuador EC ...................………….7 May 2001 Oman OM 1 .................. …….26 October 2001
Egypt EG .................. ……...6 September 2003 Papua New Guinea PG ........... …14 June 2003
Equatorial Guinea GQ............. ….17 July 2001 Philippines PH ............... …….17 August 2001
Estonia EE .................………..24 August 1994 Poland PL 2 ................ ……25 December 1990
Finland FI 2 ................... …….. 1 October 1980 Portugal PT................ …….24 November 1992
France FR 1, 3 ................ ….. 25 February 1978 Republic of Korea KR.......... ...10 August 1984
Gabon GA .................. ………24 January 1978 Republic of Moldova MD1 25 December 1991
Gambia GM ................ …….9 December 1997 Romania RO 1 ................... ……..23 July 1979
Georgia GE 1 .............. …... 25 December 1991 Russian Federation RU1 .......… 29 March 1978

21
International Patent
System Name of State Date on which State Name of State Date on which State
followed by the became bound by the followed by the two- became bound by the
two-letter code PCT letter code PCT
Germany DE................. ……..24 January 1978 Saint Lucia LC 1 .............. …...30 August 1996
Ghana GH ................. ……...26 February 1997 Saint Vincent and
Greece GR .................……….. 9 October 1990 the Grenadines VC 1 ........... …..6 August 2002
Grenada GD ............... …...22 September 1998 Senegal SN .................. ……...24 January 1978
Serbia and Montenegro YU ... 1 February 1997 Togo TG .................... ……….24 January 1978
Seychelles SC ............... …...7 November 2002 Trinidad and Tobago TT ......... .10 March 1994
Sierra Leone SL................. …….17 June 1997 Tunisia TN 1 ............... …... 10 December 2001
Singapore SG ............... ……23 February 1995 Turkey TR .................... ………1 January 1996
Slovakia SK.................………. 1 January 1993 Turkmenistan TM 1 .......... . 25 December 1991
Slovenia SI .................... ………1 March 1994 Uganda UG ................……… 9 February 1995
South Africa ZA 1 .............. …. 16 March 1999 Ukraine UA 1 ............... …..25 December 1991
Spain ES .................. ……..16 November 1989 United Arab Emirates AE .........10 March 1999
Sri Lanka LK................ ……26 February 1982 United Kingdom GB 5 ........... 24 January 1978
Sudan SD ..................... ………..16 April 1984 United Republic of
Swaziland SZ ............…….20 September 1994 Tanzania TZ ............……...14 September 1999
Sweden SE 2 ................... ……… 17 May 1978 United States of America US6,724 January1978
Switzerland CH.............…….. 24 January 1978 Uzbekistan UZ 1 ............. ....25 December 1991
Syrian Arab Republic SY.......... ..26 June 2003 Viet Nam VN................……….10 March 1993
Tajikistan TJ 1 .............. …. 25 December 1991 Zambia ZM ..............……...15 November 2001
The former Yugoslav Republic Zimbabwe ZW.................. ……...11 June 1997
of Macedonia MK............ …...10 August 1995

Notes:
1) With the declaration provided for in Article 64(5).
2) With the declaration provided for in Article 64(2)(a)(ii).
3) Including all Overseas Departments and Territories.
4) Ratification for the Kingdom in Europe, the Netherlands Antilles and Aruba.
5) Extends to the Isle of Man.
6) With the declarations provided for in Articles 64(3)(a) and 64(4)(a).
7) Extends to all areas for which the United States of America has international responsibility.

22
2.7 Traditional Knowledge
Traditional Knowledge (TK) based on knowledge derived from
ancient roots are not conventionally protected under IP systems.
Most countries have developed a sui generis system for protecting
TK that is inclined towards the dissemination and preservation of
TK rather than legal protection associated with it. To protect the
spiritual identity and essence of TK in the community/country, means
of protection are not totally in tune with the current system of IP
protection. TK protection is a way to recognize traditional sources of
knowledge and to enable indigenous communities and governments
to have a say in the use of such TKs by others.
TK comprises know-how, knowledge, skills and practices that
are traditionally originated and are passed from generation to
generation in a community. TK is unique for a community and mark
as a cultural identity of the community. Some of the practical
examples of TK of India which have gained worldwide popularity
are Ayurveda, Unani, Medicinal Formulations (including
components, such as turmeric, neem, etc.).
TK is also linked to Traditional Cultural Expressions (TCEs),
commonly known as ‗Expressions of Folklore‘. It includes folklore
expression in the form of music, dance, art, designs, signs and
symbols, names, performances, architecture forms, ceremonies,
narratives and handicrafts and any other form of artistic/cultural
expressions. TK and TCE form a part of the heritage of the
traditional and indigenous community. Some of the prominent TCEs
of India include Bharatnatyam of Tamil Nadu, Kuchipudi of
Andhara Pradesh, Kalaaripayattu martial art of Kerala and many
other traditional practices.
2.7.1. Significance of TK
TK and TCE represent the face of the community and its people.
These people are given due credit and fair and equitable sharing of
the benefits arising from the commercial exploitation of TK and
TCE. The execution of the TK protection system led to the
revocation of Patents filed in the US and other countries on the
medicinal properties of turmeric, neem, amla, etc. which are very
well documented in Indian ancient texts.

106
2.7.2. Agreement on TK
The major agreements that shaped the development of the sui
generis system for the protection of TK are:
 ‗Convention on Biological Diversity (CBD), 1993‘ and the
‗Nagoya Protocol, 2010‘ deal with mechanisms to be followed
for accessing the genetic resources of any country and to
devise ways for fair and equitable sharing of benefits arising
from utilizing those genetic resources.
 International treaty on ‗Plant Genetic Resources for Food and
Agriculture‘ of the Food and Agriculture Organization (FAO),
2001.
 ‗International Union for the Protection of New Varieties of
Plants (UPOV), 1991‘.
 Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPS) through the ‗Doha Declaration, 2001‘ directed
TRIPS to include a perspective on the protection of TK in
alignment with CBD.
 ‗WIPO‘s Intergovernmental Committee (IGC) on Intellectual
Property and Genetic Resources, Traditional Knowledge and
Folklore, 2000‘ directed all member States to comply with the
protection of TK.
 Emerging need for awareness and protection of TCEs was
raised internationally through:
o ‗World Heritage Convention, 1972‘.
o The ‗UNESCO/WIPO World Forum on Protection of
Folklore, 1997‘.
o ‗Convention for the Safeguarding of Intangible Cultural
Heritage, 2003‘.
o ‗UNESCO Convention on the Protection and Promotion of
the Diversity of Cultural Expressions, 2005‘.
2.7.3. Protection of TK
India is the only country to set up an institutional mechanism
for the protection of TK. The TK documentation is undertaken by
107
the Council of Scientific and Industrial Research (CSIR), Ministry
of Science and Technology and Ministry of Ayurveda, Yoga and
Naturopathy, Unani, Siddha and Homeopathy (AYUSH) through
the creation of Traditional Knowledge Digital Library (TKDL) that
acts as a central repository of India‘s TK and has played a major
role in the cancellation and withdrawal of foreign patent
applications based on India‘s TK. The digital library is the major
source of documenting India‘s TK in the name of the traditional
community as TK holders. The documented TK in the name of TK
Holders (community/tribe/local government body/state government/
central government) acts as a tool to protect TK from any unlawful
rights over existing TKs and to get exclusive IP rights over such
TK. The Central, State, and local governments, on behalf of TK
holders, protect the TK by following approaches:
 Defensive protection includes a strategic process employed to
ensure that no third party gains any illegitimate IPR over TK.
 Positive protection covers acknowledgment of custodians of
TK; authorization to access TK; benefit-sharing;
misappropriation prevention by means of taking prior consent to
use TK and linking TK with GI and TCEs.
 India has taken various legislative and administrative measures
to ensure that the TK is protected and fair means of benefit-
sharing emerging out of TK is undertaken.

108
Table 2.13: Initiative undertaken for TK protection by India.
S. No. Measures taken Protection of TK
Legislative Measures
National Biodiversity  Protection of genetic resources
Act of India that essentially covers
(https://indiacode.nic.i TK.
1. n/bitstream/12345678  Fair and equitable sharing of
9/2046/1/200318.pdf) benefits arising from TK.
 Prior consent and authorization
requirement for accessing TK.
Protection of Plant  Traditional plant varieties can be
Varieties and Farmers registered as Farmer‘s Variety.
Rights Act, 2002  Farmers right to equitable
2. (https://indiacode.nic.i sharing of plant variety and its
n/bitstream/12345678 related genetic resources.
9/1909/1/200153.pdf)
Indian Patent Act, Section 3(p) states ‗anything that is
1970 TK or duplicative of TK cannot be
(http://www.ipindia.ni patented in India‘.
3. c.in/writereaddata/Port
al/IPOAct/1_31_1_pat
ent-act-1970-
11march2015.pdf)
Scheduled Tribes and Section 3(1) (k) of the Act ‗Right of
Other traditional access to biodiversity and
Forest Dwellers community right to IP, and TK
(Recognition of Forest related to biodiversity and cultural
4.
Rights) Act, 2006 diversity‘ represents rights
(https://tribal.nic.in/FR associated with access of
A/data/FRARulesBoo biodiversity resources and TK of
k.pdf) tribal community in India.
Administrative Measures
Institutional set up  Prior permission required for
under National obtaining IPR based on
Biodiversity Act knowledge/resource obtained
(http://nbaindia.org) from India.
5.
a. National  Access regulation to
Biodiversity knowledge/resource by any
Authority foreign entity.

109
 b. State Biodiversity Access regulation to
Board knowledge/resource by any entity
c. Biodiversity Creation of Peoples‘ Biodiversity
Management Registers.
Committees
(BMCs)
Traditional Knowledge  Joint initiative of CSIR and
Digital Library Ministry of AYUSH, lists nearly
(TKDL); 3.6 lakhs formulation in TKDL.
(http://www.tkdl.res.in  Assets of traditional and
/tkdl/langdefault/com indigenous communities that
mon/Home.asp?GL=E comprise of a list of TK existing
ng) in India in the form of a digital
repository.
 Addresses the language barrier
by converting Indian tradition
texts like Ayurveda, Unani,
6.
Yoga, etc. in 5 different
languages (English, Spanish,
French, Japanese and German).
 TKDL has led to
withdrawn/rejection of nearly
230 applications in international
patent offices by giving prior art
evidence based on TK.
 Led to the formulation of State
level TK e.g. TKIK: Traditional
Knowledge Innovation, Kerala.
Traditional  It is an innovative, IT based
Knowledge Resource classification system in
Classification (TKRC) accordance with information
(http://www.tkdl.res.in existing in the ancient texts.
7.
/tkdl/langdefault/com  It led to the incorporation of 200
mon/TKRC.asp?GL=E sub-groups in the major group
ng) (A61K 36/00) of International
Patent Classification.
People‘s Biodiversity  An initiative undertaken by
Registers (PBR) BMCs in nearly 26 States of
8. (http://nbaindia.org/up India that has collated TK of that
loaded/pdf/PPT_PBRs particular state in one single
_Guidelines.pdf) register.

110
2.3 Trademark
In simple language, a Trademark (or Trade Mark) is a unique
symbol which is capable of identifying as well as differentiating
products or services of one organization from those of others. The
word ‗Mark‘ stands for a sign, design, phrase, slogan, symbol,
name, numeral, devise, or a combination of these. Essentially, the
Trademark is anything that identifies a brand to a common
consumer.
2.3.1. Eligibility Criteria
For goods/services to be legally classified as Trademark, they
need to pass the following conditions:
 Distinctiveness - The goods and services for which the
protection is sought should possess enough uniqueness to
identify it as a Trademark. It must be capable of identifying the
source of goods or services in the target market.
 Descriptiveness - The Trademark should not be describing the
description of the concerned goods or services. Descriptive
marks are unlikely to be protected under Trademark law.
However, descriptive words may be registered if they acquire
―secondary meaning‖, such as the brand name ‗Apple‘ is used
by a USA based multinational company that manufactures
electronic gadgets.
 Similarity to the prior marks - The mark should be unique
and should not be having similarity to the existing marks.
2.3.2. Who Can Apply for a Trademark
Any person who is a proprietor of the Trademark is eligible to
apply for registration of Trademark. The mark can be filed
collectively by two or more applicants and for that purpose, support
documents need to be submitted. An organization or association can
file for the collective mark and the same can be used by its
members. The most appropriate example for this mark is the
‗Reliance‘ symbol, which indicates all products falling under the
organization.

68
2.3.3. Acts and Laws
In India, Trademarks are governed under The Trademarks Act, 1999
(http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trad
e-marks-act.pdf).The Trademark rules are governed by Trademarks
Rules, 2002, (http://www.ipindia.nic.in/writeread data/Portal/IPO
Rule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf). The Acts and Rules
have been amended from time to time. The latest amendments were
done in 2010 and 2017 for Trademarks Acts and Trademarks,
respectively.The administration of matters pertaining to Trademarks
is carried out by the Office of CGDPDTM, GoI.
2.3.4. Designation of Trademark Symbols

TM
Represents that the Trademark is unregistered. This mark
can be used for promoting the goods of the company.
Represents that the Trademark is unregistered. This mark
SM
can be used for promoting brand services.
Represents a registered Trademark/Service. The applicant of
R
the registered Trademark is its legal owner.
2.3.5. Classification of Trademarks
Goods and Services under Trademarks are classified as per the
‗Nice Agreement‘ (1957) administered by WIPO. A total of 149
countries (84 state parties who are signatory to the Agreement and
65 additional states who are following this classification for the
Trademarks) and others (African Intellectual Property Organization,
African Regional IP Organization and Trademark Office of
European Union) are using the same Trademark classification.
Trademark classification comprises of 45 classes, out of which
34 are for goods and 11 are for services. (http://euipo.europa.eu/ec2/
static/html/nice-general-remarks-
en.html;jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.e
c2t1). Two examples of the classes are:
Class 1 is for Chemicals for use in industry, science and
photography, agriculture, horticulture and forestry; Unprocessed
artificial resins, unprocessed plastics; Fire extinguishing and fire
prevention compositions; Tempering and soldering preparations;
Substances for tanning animal skins and hides; Adhesives for use in
industry; Putties and other paste fillers; Compost, manures,

69
fertilizers; Biological preparations for use in industry and science.
Class 45 is for legal services; Security services for the physical
protection of tangible property and individuals; Personal and social
services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna
Agreement (1973) is an international classification of the figurative
elements of marks. The relevant Vienna code class can be
searched on the link: https://www.wipo.int/classifications/ nivilo/
vienna/index.htm?lang=EN#. The classification is used to divide all
figurative elements into categories (from 1 to 29), divisions (from 1
to 19) and sections (from 1 to 30). For example, the representation
of "a little girl eating" belongs to Category 2 (Human beings),
Division 5 (Children), Main Section 3 (Girls). If auxiliary sections
are used, the figurative element can be identified additionally with
the Auxiliary Section 18 (Children drinking or eating, Code A
2.5.18). The codification of this example will be then indicated as
2.5.3, 18 (main and auxiliary sections).
2.3.6. Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory,
registration provides certain advantages to the proprietor of the
Trademark, such as:
 Legal Protection – prevents the exploitation of the Registering
Trademark by other companies/organizations/individuals, without
proper authorization by the legal owner/s of the Trademark. In case
of legal suits, a registered Trademark can serve as a potent
evidence of the lawful proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use
it in any lawful manner to promote his business.
 Brand Recognition - products/ services are identified by their
logo, which helps create brand value over time. A strong brand
is a huge pull for new customers and an anchor for existing
customers. Registering a Trademark early and using it will
create goodwill and generate more business for the brand
owner.
 Asset Creation - registered Trademark is an intangible property
of the organization. It can be used for enhancing the business of

70
 the company as well as drawing new clients and retaining old
one by the account of brand identification.
To find out more about Registered Trademarks in India, one
may look at http://www.ipindia.nic.in/writereaddata/Portal/ Images/
pdf/well-known-trademarks-updated-newone.pdf.
It is pertinent to mention that no legal course of action can be
taken against the unlawful use of an unregistered Trademark. For
unregistered marks (sometimes known as ‗Common Law
Trademarks‘, which are defined as the law rights which generally do
not require formal registration for enforcement) action can be
brought against any person for the passing off goods or services as
the goods or services provided by another person. In such cases, the
unregistered Trademarks have to prove the establishment of
goodwill or reputation connected with the goods or service.
2.3.7. Validity of Trademark
In India, a registered Trademark is valid for 10 years. The
period can be extended every 10 years, perpetually. As per the
Indian Trademarks Act, the renewal request is to be filed in the form
‗TM-R‘ within one year before the expiry of the last registration of
the mark.
2.3.8. Types of Trademark Registered in India
Trademark can be a word that must be able to speak, spell and
remember. It is highly recommended that one should choose the
Trademark like invented word, created words, and unique
geographical name. One should refrain from Trademarks like
common geographical name, common personal name and the
praising words which describe the quality of goods, such as best,
perfect, super, etc. To ensure all these characteristics in a
Trademark, it is suggested to conduct a market survey to ensure if a
similar mark is used in the market. Following are some examples of
the registerable Trademarks:
 Any name including personal or surname of the applicant or
predecessor in business or the signature of the person e.g. the
Trademark ‗BAJAJ‘ is named after industrialist Mr. Jamnalal
Bajaj.

71
 A word having no relevance to the product/services e.g.
Trademark ‗INDIA GATE‘ is being used for food grains and
allied products.
 Letters or numerals or any combination thereof e.g. ‗YAHOO‘
is the abbreviation of the phrase ‗Yet Another Hierarchical
Officious Oracle‘. It has now become a worldwide famous
Trademark.
Table 2.7: Some of the famous examples of Trademarks.
S. No. Type of the Mark Mark Company/Firm
1. Distinctive General Word ‗Apple‘ IT Company
2. Fanciful Designation ‗Kodak‘ Photograph Film
Distinctive Personal
3. ‗Ford‘ Automotive
Names
Financial
4. Device ‗Udhaar‘
Technology
5. Number ‗4711‘ Perfume
Knitwear
6. Picture Allegator
Manufacturing
Drink it to
7. Slogan Soft Drinks
believe it
Note: Trademark Registry will object to yet to be registered Trademark if it is
similar in looks or sound to the ones already registered e.g. a keyword like
Ford can have the following terms that are similar sounding: Foard, Phord,
Fordd, Forrd. In case one wishes to carry out a search (identical as well as
similarity), one may use the free government portal http://ipindiaservices.
gov.in/tmrpublicsearch/frmmain.aspx.

2.3.9. Trademark Registry

In India, the operations of Trademarks are carried out from five
cities i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai. Each
city has been assigned a bunch of states (Table 2.8). The businesses
located in a particular state can only use the services of the assigned
Trademark Registration Office. In the case of foreign applicants,
jurisdiction is based on the location of the office of the applicant‘s
agent or attorney.

72
 Table 2.8: Territorial jurisdiction of Trademark
registration offices.
S. No. Office Location States
Maharashtra, Madhya Pradesh, Chhattisgarh
1. Mumbai
and Goa.
Gujarat and Rajasthan and Union Territories
2. Ahmedabad
of Daman, Diu, Dadra and Nagar Haveli.
Arunachal Pradesh, Assam, Bihar, Orissa,
West Bengal, Manipur, Mizoram,
3. Kolkata Meghalaya, Sikkim, Tripura, Jharkhand and
Union Territories of Nagaland, Andaman &
Nicobar Islands.
Jammu & Kashmir, Punjab, Haryana, Uttar
4. New Delhi Pradesh, Himachal Pradesh, Uttarakhand,
Delhi and Union Territory of Chandigarh.
Andhra Pradesh, Telangana, Kerala,
5. Chennai Tamilnadu, Karnataka and Union Territories
of Pondicherry and Lakshadweep Island.
Source: http://www.ipindia.nic.in/trade-marks.htm

2.3.10. Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark
has to fill an application. The proprietor may choose to hire an agent
to fill and submit the application on his behalf. Before applying, the
applicant needs to conduct a prior art search to ensure the
registration criteria.
2.3.10.1. Prior Art Search - Prior to applying for Trademark
registration, it is always prudent to check whether the intended
Trademark is already registered or not. Also, it is ascertained
whether the intended Trademark is not similar to the ones already
registered. The requisite search can be carried out using various
web portals, such as:
 Public search for Trademarks by CGPDTM
(https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx).
 WIPO‘s Global Brand Database

73
 (https://www3.wipo.int/branddb/en/).
 Trademark Electronic Search System (TESS).
(http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4805:za84
7u.1.1)
 MARKARIA Trademark Search Engine (https://trademark-
search.marcaria.com/en/asia/india-trademark-search).
 VAKIL Search (https://vakilsearch.com/trademark-
search/trademarks?search=bajaj).
Once the ‗prior art search‘ is over and the applicant is convinced
about the distinctiveness of the Trademark, he can proceed to fill the
application form for registration (TM-A). The application is filed at
the Trademarks Office subject to the jurisdiction of the applicant.
The steps involved in the registration process are as follows:
 After the prior art search has been conducted, the applicant can
apply for the registration on his own or with the help of a
certified agent.
 The application is assigned an application number within a few
days. The same can be tracked online at https://ipindiaonline.
gov.in/tmrpublicsearch/frmmain.aspx.
 The application is scrutinized by a professional examiner. If
everything is in order, the particulars of the application are
published in the official Trademark journal (http://www.ipindia.
nic.in/journal-tm.htm). Otherwise, he will send the objections to
the applicant for rectification. Based on the satisfactory response,
the examiner would recommend the revised application to be
published in the journal. If the application is rejected, the
applicant may approach the Intellectual Property Division to
challenge the rejection of an application by the examiner.
 Once the Trademark is published in the official journal, the
public has an opportunity to file an objection, if any, within 90
days. After hearing both the parties, the officer decides whether
to proceed further for the grant of Trademark or disallow the
grant of Trademark. In case of unfavourable outcome, the
applicant has the right to contest the decision in front of the
IPAB.

74
 Once the application has successfully completed all formalities,
a Trademark registration certificate is issued in the name of the
applicant.
Figure 2.8: Flow chart for the process of Trademark
registration.

Source: http://www.ipindia.nic.in/workflow-chart.htm (slightly modified)

One should keep in mind that while filing an application for the
registration of a Trademark, an English translation of the non-
English words has to be provided. If the applicant wishes to claim
the priority from an earlier-filed application, he has to provide
details like application number, filing date, country and
goods/services of that application.

75
 Table 2.9: Fee and forms related to Trademarks.
Form
Amount (₹ )
Entry No.
Contents
No. Physical
E-filing
Filing
Where the applicant is an
Individual / Start-up/Small 5,000 4,500 TM-A
1.
Enterprise.
In all other cases. 10,000 9,000
Opposition/Application for
Rectification of the
2. Register/Counter statement / 3,000 2,700 TM-O
Refusal or invalidation of a
Trademark.
For renewal of registration of a
3. 10,000 9,000 TM-R
Trademark.
On application to register a
subsequent proprietor in case of
4. 10,000 9,000 TM-P
assignment or transfer for each
Trademark.
Application for registration of
Registered User/Variation of
Registered User/Cancellation of
5. Registered Users and Notice of 5,000 4,500 TM-U
intention to intervene in
proceeding in
cancellation/variation.
Request for search and issue of
6. 10,000 9,000 TM-C
the certificate.
Application/Request for any
miscellaneous function in
7. respect of a Trademark 1000 9,000 TM-M
Application/
Opposition/Rectification.
On application for registration of
8. 5,000 4,500 TM-G
a person as a Trademark agent.
Source: http://www.ipindia.nic.in/form-and-fees-tm.htm

76
2.3.11. Important Queries/Facts About Trademarks
2.3.11.1. Can any correction be made in the application or register
Yes, The rectifications are possible, but the applicant has to ensure
that the corrections made in the Trademark do not alter its identity
significantly.
2.3.11.2. Can a registered Trademark be removed from the register
Yes, it can be removed if:
 Trademark was registered without any bona fide intention of
using it.
 If the Trademark is not being used for a continuous period of
5 years from the registration date or 3 months prior to filing
the application for registration.
 Registered Trademark was disallowed but inadvertently
existed in the official register.
 Trademark Registrar has the power to terminate a registered
Trademark on a suo moto basis.
2.3.11.3. Is the sound or smell registrable as a Trademark - Yes,
sound or smell is registrable as a mark, as long as it is distinct and
can be reproduced graphically. The Trademark, ‗4711 cologne‘ has
been registered as a chemical formula. The sound can be registered
as a Trademark, provided it can be recorded in MP3 format and
depicted graphically.
2.3.11.4. Can a registered user restrain the third party from using
an identical or similar mark which is not registered -
There is no clear cut answer for such situations. It depends on the
circumstances of the matter. But ordinarily, a registered user cannot
restrain the third party from using identical or similar marks if the
third party has been continuously using the mark concerning the
same goods or services from a date prior to the date of use of the
registered mark or date of registration.
According to the Trademarks Act, 1999, the rights and
protection in the form of remedies are not only to the registered
mark but also to the unregistered Trademarks. Although, a
registered Trademark has been given a statutory remedy under
section 28 of the Act, but 27(2) of the Act provides a remedy for an

77
unauthorized use of unregistered Trademark. Passing off is a
common law tort which is most commonly used to protect goodwill
that is attached to the unregistered Trademarks. The action of
passing off is available to both registered and unregistered
Trademarks, but a suit for infringement is available for only
registered Trademarks.
2.3.11.5. Seeking Trademark protection in a foreign country - To
file the Trademark in a foreign country, there are two options
available for the applicant. He can either file the Trademark
application with the Trademark Office of the country in which he
wishes to seek protection, or he can use WIPO‘s Madrid System
through which the registration can be filed in multiple countries by
claiming priority of one of the signatory countries. This priority has
to be claimed within six months of the first filing. The applicant can
file a single application for seeking protection in any number of
countries that are members of WIPO by paying a single set of fee.
List of jurisdictions that can be accessed through Madrid Protocol
for filing Trademark is available at http://www. wipo.i nt/
treaties/en/ShowResults.jsp?treaty_id=8.
2.3.12. Trademarks Statistics
Figure 2.9 represents the statistics for Trademarks (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 95%, 65% and 154% was observed in the parameters
of trademarks filed, examined and registered, respectively. Overall,
a gradual increase was seen in the number of TM filed, but a zig-zag
curve was observed for the TM examined for the period 2010-16.
The highest number of TM applications (5,32,230) were examined
in 2016-17 followed by dip (nearly two folds) in the following year
(2017-18). The following two years (2018-20) showed some
recovery, with 3,38,551 applications examined in 2019-20. In case
of TM registration, first, five years (2010-15) showed a downward
trend. But, a significant leap of nearly four-folds was observed in
the next year i.e. 2016-17. The maximum number of TM (3,16,798)
were registered in the year 2018-19.

78
 Figure 2.9: Trademarks profile (India) for the period 2010-20.
TM FILED TM EXAMINED TM REGISTERED

550000
532230
500000
450000
400000
# tRADE mARKS

338576 348918
350000 272974
283060 338551
300000 278170 306259 337541
316798
250000 210501 294172
179317 194216 200005 267861
183588 300913
200000 250070
202385 203086
150000 205065
168026
100000
115472 116263
50000
67873 65045
51765 44361 41583
0
2 0 1 0-11 2 0 1 1-12 2 0 1 2-13 2 0 1 3-14 2 0 1 4-15 2 0 1 5-16 2 0 1 6-17 2 0 1 7-18 2 0 1 8-19 2 0 1 9-20

YEAR

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

(https://dipp.gov.in/sites/default/files/annualReport-English2020-21.pdf)

2.3.13. International Treaties and Conventions

There is a provision to file an international application for the
Trademarks to seek protection in other Convention countries. The
rules and regulations to file international applications in Convention
countries are concluded under the following treaties and agreements
administered by WIPO.
 The Madrid Agreement for International Registration of Marks
(1891) (wipo.int/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods
and Services (1957).
(https://www.wipo.int/classifications/nice/en/index.html).
 The Trademark Law Treaty (TLT) (1994) (https://www.wipo.
int/ treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative
Marks
(https://www.wipo.int/classifications/vienna/en/preface.html).

79