INTELLECTUAL PROPERTY RIGHTS (IPR)

Dear friends
I have tried to give the details of IPR through a Q&A method

1. What are Intellectual Property Rights (IPR)?

IPR is a general term covering patents, copyright, trademark, industrial designs, geographical indications, protection of layout design of integrated circuits and protection of undisclosed information (trade secrets).

2. What are the legislations covering IPRs in India?

Patents: The Patents Act,1970 and was amended in 1999 and 2002. The amended Act after the amendments made in 2002 came in to force on May 20, 2003.
Design: A new Design Act 2000 has been enacted superseding the earlier Designs Act 1911. Trade Mark: A new Trademarks Act, 1999 has been enacted superseding the earlier Trade and Merchandise Marks Act, 1958. The Act came in force from September 15, 2003Copyright: The Copyright Act, 1957 as amended in 1983, 1984 and 1992, 1994,1999 and the Copyright Rules, 1958.Layout Design of Integrated Circuits: The Semiconductor Integrated Circuit Layout Design Act 2000. (Enforcement pending) Protection of Undisclosed Information: No exclusive legislation exists but the matter would be generally covered under the Contract Act, 1872.Geographical Indications: The Geographical Indication of Goods (Registration and Protection) Act 1999.

3 . Who are responsible for administration of IPRs in the country?

Patents, designs, trademarks and geographical indications are administered by the Controller General of Patents, Designs and Trademarks which is under the control of the Department of Industrial Policy and Promotion, Ministry of Commerce and Industry. Copyright is under the charge of the Ministry of Human Resource Development. The Act on Layout Design of Integrated Circuits. Will be implemented by the Ministry of Communication and Information Technology.

4. What is a patent?

A patent in an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law. Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available only for a limited period of time. However, the use or exploitation of a patent may be affected by other laws of the country which has awarded the patent.
These laws may relate to health, safety, food, security etc. Further, existing patents in similar area may also come in the way. A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or licensed. As the right is conferred by the State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime. The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries.

5. What is expected from patentee as an obligation to the state?

A patentee must disclose the invention in a patent document for anyone to practice it after the expiry of the patent or practice it with the consent of the patent holder during the life of the patent.

6. What are the conditions to be satisfied by an invention to be patentable?

An invention must satisfy the following three conditions of :
(i) Novelty (ii) Inventiveness (Non-obviousness) (iii) Usefulness

Novelty : An invention will be considered novel if it does not form a part of the global state of the art. Information appearing in magazines, technical journals, books, newspapers etc. constitute the state of the art. Oral description of the invention in a seminar/conference can also spoil novelty. Novelty is assessed in a global context. An invention will cease to be novel if it has been disclosed in the public through any type of publications anywhere in the world before filing a patent application in respect of the invention. Prior use of the invention in the country of interest before the filing date can also destroy the novelty. Novelty is determined through extensive literature and patent searches. It should be realized that patent search is essential and critical for ascertaining novelty as most of the information reported in patent documents does not get published any where else.

Inventiveness (Non-obviousness) : A patent application involves an inventive step if the proposed invention is not obvious to a person skilled in the art i.e., skilled in the subject matter of the patent application. The prior art should not point towards the invention implying that the practitioner of the subject matter could not have thought about the invention prior to filing of the patent application. Inventiveness cannot be decided on the material contained in unpublished patents. The complexity or the simplicity of an inventive step does not have any bearing on the grant of a patent. In other words a very simple invention can qualify for a patent. If there is an inventive step between the proposed patent and the prior art at that point of time, then an invention has taken place. A mere 'scintilla' of invention is sufficient to found a valid patent.

Usefulness: An invention must possess utility for the grant of patent No valid patent can be granted for an invention devoid of utility.

7. How is invention defined in the Indian Patent Act which can qualify for grant of a patent?

Invention means a new product or process involving an inventive step and capable of Industrial application.Inventive step means a feature that makes the invention not obvious to a person skilled in the artCapable of Industrial application means that the invention is capable of being made or used in an industryHowever, inventions claiming substance intended for use, or capable of being used, as food or as medicine or drug or relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and inter-metallic compounds) are not patentable. Only process claims are allowed in such cases.Meaning of chemical process would also include the biochemical, biotechnological and microbiological process.

8. What are the types of inventions which are not patentable in India?

An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations:
i. an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
ii. an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human , animal or plant life or health or to the environment;
iii. the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
iv. the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
v. a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
vi. the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
vii.a method of agriculture or horticulture;
viii.any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
ix. plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
x. mathematical or business method or a computer program per se algorithms
xi. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
xii.a mere scheme or rule or method of performing mental act or method of playing game;
xiii. a presentation of information
xiv. topography of integrated circuits
xv. an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components
xvi. inventions relating to atomic energy

9. When should an application for a patent be filed?

Filing of an application for a patent should be completed at the earliest possible date and should not be delayed. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority by the applicant. Delay in filing an application may entail some risks like (i) other inventors might forestall the first inventor by applying for a patent for the said invention (ii) there may be either an inadvertent publication of the invention by the inventor himself/herself or by others independently of him/her.

10. Can a published or disclosed invention be patented?

No, publication of an invention in any form by the inventor before filing of a patent application would disqualify the invention to be patentable. Hence, inventors should not disclose their inventions before filing the patent application. The invention should be considered for publication after a patent application has been filed. Thus, it can be seen that t11ere is no contradiction between publishing an inventive work and filing of patent application in respect of the invention.

11. What is considered as the date of patent?

The date of patent is the date of filing the application for patent (whether provisional or complete). The term of the patent is counted from this date.

12 . What is the term of a patent in the Indian system?

Term of the patent is 20 years from the date of filling for all types of inventions

13. How does one keep a patent in force for the full patent term?

A patent has to be maintained by paying the maintenance fees every year. If the maintenance fees is not paid, the patent will cease to remain in force and the invention becomes open to public. Anyone can then utilize the patent without the danger of infringing the patent.

14 .What are the essential patent documents to be generated and submitted by a potential patentee?

There are two types of patent documents usually known as patent specification, namely
(i) Provisional Specification and (ii) Complete Specification

Provisional Specification
A provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. Although, a patent application accompanied with provisional specification does not confer any legal patent rights to the applicants, it is, however, a very important document to establish the earliest ownership of an invention. The provisional specification is a permanent and independent scientific cum legal document and no amendment is allowed in this. No patent is granted on the basis of a provisional specification. It has to be a followed by a complete specification for obtaining a patent for the said invention. Complete specification must be submitted within 12 months of filing the provisional specification. This period can be extended by 3 months. It is not necessary to file an application with provisional specification before the complete specification. An application with complete specification can be filed right at the first instance.

Complete Specification
Submission of complete specification is necessary to obtain a patent The contents of a complete specification would include the following
1. Title of the invention.
2. Field to which the invention belongs .
3. Background of the invention including prior art giving drawbacks of the known inventions & practices.
4. Complete description of the invention along with experimental results.
5. Drawings etc. essential for understanding the invention.
6. Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.

15. What are the criteria for naming inventors in an application for patent?

The naming of inventors is normally decided on the basis of the following criteria:
i. All persons who contribute towards development of patentable features of an invention should be named inventor(s).
ii. All persons, who have made intellectual contribution in achieving the final results of the research work leading to a patent, should be named inventor(s).
iii. A person who has not contributed intellectually in the development of an invention is not entitled to be included as an inventor.
iv. A person who provides ideas needed to produce the ‘germs of the invention’ need not himself / herself carry out the experiments, constructs the apparatus with his/her own hands or make the drawings himself/herself. The person may take the help or others. Such person who have helped in conducting the experiments, constructing apparatus or making the drawings or models without providing any intellectual inputs are not entitled to be named inventors.Quite often difficulties are experienced in deciding the names of inventors. To avoid such a situation, it is very essential that all scientists engaged in research should keep factual, clear and accurate recorded of daily work done by them in the form of diary. The pages in the diary should be consecutively numbered and the entries made be signed both by the scientists and the concerned leader.

16 What is the nature of information needed while consulting a patent attorney?

As an inventor one should share the complete invention with a patent attorney in the same manner as a patient confides in a doctor. A s a doctor may not be able to write a correct prescription without knowing the details of the disease/problem, a patent attorney may not be able to draft a good specification in the absence of details about the invention. Following points should be kept in mind while discussing with the attorney:
i. Provide complete details of the invention including failures, if any, on the way to the invention.Do not feel bad if attorney asks you questions like where did you get the idea from or did you copy the idea from somewhere or are you keeping other inventors working with you on the inventorship or have you published the invention or disclosed it in a seminar/conference or have you displayed the invention in an exhibition? A patent document is a techno-legal document, hence all precautions are to be taken right from the first step. Provides right answers and you may even show your laboratory note book/log book to the attorney. This will help the attorney / agent to explain the inventive step in a precise manner and draft a good specification and associated claims.
ii. Explain the central theme of the invention and novelty, inventiveness and utility of the invention.
iii. Share all the prior art documents in your possession with the attorney.
iv. If you have developed an improved version of your competitor's product/process, admit it and be totally honest. This would help the attorney in drafting precise claims and avoid excessive claims, which might be struck down immediately or at a later date.
v. A detailed description of the best way of putting the invention into practical use, results of your tests and trials, etc., including all failures and defects should be given to the attorney.
vi. Alternative ways of using the invention, and the substitutes or parts of it i.e., will one chemical compound do as well as any other in the process?
vii.It may be worth drafting the patent widely enough to cover less satisfactory alternatives as well so as to prevent rivals from marketing a less satisfactory competing product which because of its defects might bring the whole genre of product into disrepute or which may be cheap.
viii. Both after an initial search and during the course of the filing and grant of a patent application, it is important to respond quickly and accurately to queries which the patent attorney may have. Thus the client should keep the patent attorney informed of any new developments in the field of invention carried by the patentee or some one else.

17 . What is opposition under the Indian Patents Act 1970?

After the Patent Office has examined an application and found it in order forgrant of a patent, it publishes the title pf the invention, name of the inventor(s) and the applicant(s), abstract of the invention, drawings and claims in the Gazette of India, Part III Section 2, for interested parties to oppose the grant of the patent. An application for opposition may be filed at the concerned Patent Office branch within four months of the date of the issue of the concerned gazette. An extension of one month is possible; a request for extension has to be made within the first four months. Typed or photocopies of the specification together with photocopies of the drawings, if any, can be obtained from the Patent Office, Calcutta or the concerned branch office on payment of the prescribed fees. One would like to oppose if the idea of the accepted application infringes upon one's invention/existing patent, if the coverage of the proposed patent is very wide which may be detrimental to one's research or if the idea is not novel and so on.

18. What is the cost of filing a patent application in India?

The Government fee for filing a patent application (complete/provisional) in India is Rs.750/- for individuals and Rs.3,000/- for legal entities. An applicant is now required to make a request for examining the patent application within 48 months of filing of the application. In case of applications filed before May 20, 2003 examination request has to be made within the 48 months of filing of the application or within 12 months from May 20, 2003 whichever is shorter. An individual has to pay Rs.1,000/- as examination fee and Rs.3,000/- for legal entities. A sealing fee of Rs.1,500/- for individuals and Rs.5,000/- for legal entities has to be paid at the time of grant (sealing) of patent.

19. What is the distinction between a patented invention and know how?

The law does not require that the information disclosed in the patent specification be sufficient for commercial exploitation of the invention. Thus, patent usually will not disclose sufficient information for commercialization. Know how on the other hand, covers all information necessary to commercialize the invention e.g. setting up a production plant. Such information would include, for example, details of the production methods, the design drawings etc. It is this know how which is traded while transferring technology. Know how is always kept as a trade secret and not shared with public. Know how is not protected through patents as most of it is non-patentable matter and one does not take patent on the remaining parts to avoid public disclosure. A know how developed around an existing patent and commercialized subsequently may be an infringement of the patent unless the patentee has agreed to commercialization on mutually agreed terms.

20. Is a patent granted in one country enforceable in other countries?

No. There is nothing like a global patent or a world patent. Patent rights are essentially territorial in nature and are protected only in a country (or countries) which,has (have) granted these rights. In other words,-for obtaining patent rights in different countries one has to submit patent applications in all the countries of interest for grant of patents. This would entail payment of official fees and associated expenses, like the attorney fees, essential for obtaining patent rights in each country. However, there are some regional systems where by filing one application one could simultaneously obtain patents in the member countries of a regional system; European Patent Office is an example of a similar system.

21. Does grant of a patent in one country affect its grant or refusal in another country?

Each country is free to grant or refuse a patent on the bases of scrutiny by its patent office. This means that granting a patent in one country of the Union does not force other countries to grant the patent for the same invention. Also, the refusal of the patent in one country does not mean that it will be terminated in all the countries.

22. What is 'mail box' provision?

TRIPS requires that countries, not providing product patents in respect of pharmaceuticals and chemical inventions have to put in a mechanism for accepting product patent applications w.e.f. 1 January 1995. Such applications will only be examined for grant of patents, after suitable amendments in the national patent law have been made. This mechanism of accepting product patent applications is called the "mail box" mechanism.

23. What is an EMR?

TRIPS requires that member countries of the WTO not having provision in their laws for granting product patents in respect of drugs and agrochemical, must introduce Exclusive Marketing Rights (EMR) for such products, if the following criteria are satisfied:
1. A patent application covering the new drug or agrochemical should have been filed in any of the WTO member countries after 1 January, 1995;
2. A patent on the product should have been obtained in any of the member countries (which provides for product patents in drugs and agrochemical) after 1 January 1995;
3. Marketing approvals for the product should have been obtained in any of the member countries;
4. A patent application covering the product should have been filed after 1 January 1995 in the country where the EMR is sought;
5. The applicant should apply seeking an EMR by making use of the prescribed form and paying requisite fee.
EMR is only a right for exclusive marketing of the product and is quite different from a patent right. It is valid up to a maximum period of 5 years or until the time the product patent laws come into effect.

24. Does India have provision for grant of EMR?

Yes. The necessary amendment to: the Patents Act, 1970 came into force on 26 March 1999. The provision is applicable with retrospective effect from 1 January 1995.

25. What is industrial property?

Industrial property includes:
(a) Patents (b) Utility models (c) Industrial designs (d) Trademarks, service marks and trade names (e) Indication of source or appellations of origin (this is same as the geographical indications adopted in TRIPS);

26. Are there any differences in the filing of patent applications in respect of microbiological inventions and other inventions?
An inventor is required to deposit the strain of a microorganism in a recognized depository which assigns a registration number to the deposited microorganism. This number needs to be quoted in the patent application. Obviously a strain of microorganism is required to be deposited before filing a patent application. It may be observed that this mechanism obviates the need of describing a microorganism in the patent application. Further, samples of strains can be obtained from the depository for further working on the patent. There are many international depositories in many countries, which are recognized under the Budapest Treaty.

27 What is the system for protecting microbiological inventions and microorganisms?

The Indian Patent Act has no specific provision for patenting of microorganisms and microbiological processes. However, as a matter of practice microorganisms per se are not patentable in India. (However, a recent decision of the Kolkata High Court has held that microbiological processes are patentable in India). In order to meet the obligation under TRIPS. India is required to introduce a patenting of microorganisms. Draft laws in this regards have been formulated. It may, however, be noted that many countries allow both process and product patents in regard to microbiological inventions and microorganism per se. all such countries allow patenting of genetically modified microorganisms but a few also allow patenting of naturally occurring microorganisms if isolated from nature for the first time and if other conditions of patentability are satisfied.

28. What is patent cooperation treaty (PCT)?

The patent cooperation treaty (PCT) is a multilateral treaty entered into force in 1978. Through PCT, an inventor of a member country (Contracting state of PCT can simultaneously obtain priority for his/her Invention in all/ any of the member countries, without having to file a separate application in the countries of interest , by designating them in the PCT application .India joined the PCT on December 7, 1998.

29 Who coordinates the activities of PCT ?

All activities related to PCT are coordinated by the World Intellectual Property Organization (WIPO) situated in Geneva.

30 What is the need for PCT ?

In order to protect your invention in other countries, you are required to file an independent patent application in each country of interest; in some cases , within a stipulated time to obtain priority in these countries .This would entail a large investment, within a short time, to meet costs towards filing fees, translation, attorney charges etc. In addition you are making an assumption which, due to the short time available for making the decision on whether to file a patent application in a country or not , may not be well founded .
Inventors of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate application in the countries of interest ; thus saving the initial investments towards filing fees, translation etc. In addition the system provides much longer time for filing patent application in member countries . The time available under Paris Convention for securing priority in other countries is 12 months from the date of initial filing. Under the PCT, the time available could be as much as minimum 20 and maximum 31 months. Further, an inventor is also benefited by the search report prepared under the PCT system to be sure that the claimed invention is novel. The inventor could also opt for preliminary examination before filing in other countries to be doubly sure about the patentability of the invention .


31 How are patent applications under PCT handled?

The patent office or any other office designated by each contracting state becomes a receiving office for receiving patent applications These applications are referred to International Searching Authorities (ISA) which usually the patent offices, appointed to carry out the patent search on a global basis. In case the receiving office is also an ISA, a separate referral is not required . There is also a provision to get a patent application examined by international preliminary Examining Authorities which, in most cases are ISA.

32.Which is the appropriate office in India in relation to international applications?

An international application can be filed in any of the Branch Offices of the Patent Office located at New Delhi, Chennai, Mumbai and Kolkata (Head Office). Any of these Offices shall function as receiving office, designated office and elected office for the purpose of international applications filed under the Treaty.
An international application shall be filed in the Patent Office which would process the application in accordance with these rules and the provision under the PCT.

33. Will an international application designating India be treated as an application for grant of patent under the 1970 Act?

Yes, an international application designating India shall be treated as an application for patent under the Act.

34. What is the cost of filing a PCT application?

The schedule of fees is given below for filing with International Bureau directly:
1. (a) Basic fee up to 30 sheets of a patent application
650 Swiss francs
(b) Basic fee for a patent application having more than 30 sheets;
650 Swiss francs plus15 Swiss francs for each sheet in excess of 30 sheets
2. (a) Designation fee if designation is less than 5 (Countries)
140 Swiss francs per designation
(b) Designation fee if designation is more than 5 (Countries)
700 Swiss francs
3. Handling fee
233 Swiss francs
4. Search fees are additionally payable
5 All fees payable are reduced by 75% for applications filed by any applicant who resides in a PCT Contracting State where the per capita national income is below 3000 US dollars. If there are several applicants, each must satisfy the criterion. It may be noted that no concessions are available in the national phase or regional phase applications; respective fees in these phases will have to be paid by the applicant.

35 Where do you pay the fees and in which currency?

All types of fees are payable at the receiving office and it is the responsibility of the receiving office to remit the search fees to the concerned office if the receiving office is not the search authority. Similarly, all other charges due to other agencies, would be remitted by the receiving office. The fees are payable in the currency acceptable to the receiving office as an Indian you can pay all the fees in Indian rupees.


36. Does India have any law for protecting new plant varieties?

Yes, India has enacted the New Plant Variety and Farmers Rights
Protection Act in 2001 which, in addition to meeting the technical features of UPOV, provides rights to farmers to use the seeds from their own crops for planting the next crop. Further, there are provisions for benefit sharing with farmers and penalty for marketing spurious propagation material.

I would like to thank the Tamilnadu State Council for Science & Technology and the Patent office Chennai for the above information.

This is for the benefit of the BUDDING ENTREPRENEURS