Intellectual Property Rights ( IPRs )
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“ Every great and commanding movement in the
annals of the world is the triumph of enthusiasm.
Nothing great was ever achieved without it.”
– Ralph Waldo Emerson
“ The joy of learning is as indispensible to study
as breathing is to running.”
– Simone Weil
“Only as high as I REACH, can I GROW ;
Only as far as I SEEK, can I GO ;
Only as deep as I LOOK, can I SEE ;
Only as much as I DREAM, can I BE.”
– Karen Ravn
Intellectual Property Rights ( IPRs )
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“ IP (Intellectual Property) is what an organization’s
community knows in the aggregate
and what its people can do.”
– John Palfrey, ‘Intellectual Property Strategy’,
(Cambridge, MA, The MIT Press, 2012), @ pg. 17
“ The future of the nation depends on no small part in the
efficiency of the industry, and the efficiency of the
industry, in no small part, in the protection of
Intellectual Property Rights.”
– Justice Richard Posner, US Supreme Court, 1993
“The secret of business success is not who you know.
It’s WHAT you know.”
– A Wall Street Journal Advertisement
IPRs is the heart of the “Knowledge world”
“Money is what fuelled the industrial society. But in the
informational society, the fuel, the power is knowledge.
One has come to see a new class structure divided by
those who have information and those who must function
out of ignorance. This new class has its power not from
money, not from land, but from knowledge.”
John Kenneth Galbraith
Apple, Microsoft and Google are three of the biggest
technology innovators in the world today! …
Apple created the personal computer, i-tunes, the iPod, touchscreen
phones and tablets. Microsoft wrote the operating system that
underpinned the mass uptake of the PC, and then developed the Office
products that most of us use everyday, including Word, Outlook, Excel
and PowerPoint. Google invented the all encompassing search system,
adword advertising, and developed the Android operating system that
underpins the majority of smartphones sold today.
Microsoft website claims : “For more than 40 years Microsoft has been
making big, bold bets on the future of technology. By investing more
than $11 billion in research and development annually, we continue to
expand the possibilities of computing and converged technologies.”
… “ Microsoft has developed a powerful revenue stream by licensing
the proprietary patents it holds on the android technology.
It has begun licensing android technology to mobile phone
manufacturing companies , for royalty which goes into billions
of dollars.”
– John Ribeiro, “Microsoft signs two new patent licensing deals covering
Android, Chrome.” (July 12, 2012) , available @ http://
infoworld.com/d/mobile-technology/microsoft-signs-two-new-patentlicensing-deals-coverning-android-chrome-197353
… “ IP has played a crucial role in the market capitalization
of Microsoft, with 90% of it s capitalization coming from
its IP alone.”
– Weston Anson & Donna Suchy, “Intellectual Property Valuation:
A Primer for Identifying and Determining Value”
(American Bar Association 2005) @ P. 232
… In the early 1990s, IBM was struggling and was sustaining loses
close to US$15 billion. In year 1992 alone, it lost close to US$8 billion.
… To bring down the losses and to make money, IBM decided to take
advantage of its vast patent portfolio. … IBM began licensing its
various IP assets to various companies in return for royalty-payments.
… This strategy proved to be a turnaround success, and within a decade,
IBM earned more than US$1 billion just from royalties from the
‘Licensing of patents’, alone.
Rodney Ryder & Ashwin Madhavan, ‘Intellectual Property and
Business : The Power of Intangible Assets’ Sage Publications,
2014 Edition, at pg. 4
Have you not heard the amazing ‘rags-to-riches’
story of Colonel Harland Sanders ? …
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Colonel Harland Sanders has become a world-known figure by
marketing his unique reputed recipe: his: “ finger lickin good ”
Kentucky Fried Chicken ( KFC ).
By 1964, Colonel Sanders had 600 franchisees selling his trademark
chicken. At this time, he sold his company for US$2 million, but
remained as a spokesperson. … In 1976, the Colonel was ranked as the
world’s second most recognizable celebrity! … Its amazing how the
man started at the age of 65, when most people retire, … to build a
global empire from ‘franchising’ his unique recipe of fried chicken!
@ www.yourstory.com , 25 July, 2012
Have you not heard the amazing success story of IIT-Delhi
grads: Vijay Thadani and Rajendra Pawar ? …
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… Because traditional universities and educational institutions could not
cope with the exploding demand, computer education spilled over onto
the marketplace. … Two young entrepreneurs from IIT Delhi: Vijay
Thadani and Rajendra Pawar, saw in the 1980s what the government did
not. They realized that the world was changing and no one would be
employable without computer skills. India had a huge and growing
appetite for IT professionals and our schools and colleges were only
creating an army of unemployables. … They stepped into the vacuum,
set up the National Institute of Information Technology ( NIIT ), and
began to offer computer lessons in the bazaar. …….
… They were so successful that they could not cope with the exploding
demand. Since they did not have the resources to expand rapidly across
the country, they hit upon the idea of franchising their NIIT schools. …
… Today, the computer-education wing of NIIT has more than 3,500
centers as ‘franchisees’ spread across 35 nations, making NIIT, :
‘the world’s largest private provider of professional computer education ! ’ …
- Gurcharan Das, ‘India Unbound ’, Penguin Books, 2002 Edition,
@ pgs. 284-50, … & … www.franchiseindia.net
… Likewise, …. Restaurant-food companies such as McDonalds,
KFC, Dominos Pizza, Subway, Dunkin Donuts, Taco Bell, BaskinRobbins, or even apparel / fashion-garment companies such as Levis,
Wrangler, Arrow, … Indian apparel-manufacturer: company Arvind
Mills & its apparel-brands, etc., … all grew exponentially by adopting
the IP-model of business know as of franchising-contracts which
facilitates them to allow the starting of innumerable physical stores
across the globe by franchisees who are ready to invest in a proven
reputed brand name ( trademark (tm) ).
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… Trademarks are also useful in extending commercial benefits
even beyond the life of a patent. The case of ‘Aspirin’ provides
a good example. Developed in 1897 by Felix Hoffman, a
research chemist working with Bayer Company in Germany, the
drug was patented in 1899 by the Bayer Company . Knowing
that patens have a limited duration, the Bayer Company
embarked upon promoting a trademark for its new product.
When the ‘Aspirin’ patent expired, the company continued to
benefit from the sale of aspirin through its established and
registered trademark: ‘Aspirin ®’.
- Klaus Jennewein,, ‘Intellectual Property Management : The Role of
Technology-Brands in the Appropriation of Technological Innovation’,
Physica-Verlag – A Springer Company, 2005 Edition, @ pg. 51.
“IP is the biggest asset class on the planet in terms of value,
estimated to be at leastUS$5.5 trillion in the US alone.”
– Rodney Ryder & Ashwin Madhavan, ‘Intellectual Property and
Business : The Power of Intangible Assets’ Sage Publications,
2014 Edition, at pg. 2
… the scope of IP as a wealth creator , is huge ! …
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… Let’s understand: the nexus / connect between the terms:
‘Property ’ & ‘Law ’ …..
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“Property and law were born together, and die
together. Before laws were made, there was
no property, take away laws and property ceases.”
Jeremy Bentham, ‘Theory of Legislation’
As we begin our exciting journey-of-knowledge,
let’s briefly, yet more closely, examine and focus on the word:
‘ Property ’
… what are ‘the Images’ that come to your mind when
you see / read this word: ‘Property’ ? …
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… we still remain with the word: ‘Property’, but will
relook at this word from another angle / aspect …
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Mr. Rishay Gupta ,
has bought a car …..
Ms. Aishani Chatterjee has been
gifted a house by her Father …..
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For the car and the house to become the legal property of
Mr. Rishay Gupta and Ms. Aishani Chatterjee respectively, then
the car as well as the house must have three legal features / legal
Characteristics / legal properties.
… Only then – the car and house , will become
their respective property in the eyes of law.
Which / What are these three legal features /
legal characteristics of property ? …
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Legal attributes of ‘Property’
 Ownership
 Possession , &
 Transfer / assignment
Differences between ‘physical / tangible property’ and
‘intellectual / notional / intangible property’
…. The advent of Intellectual Property (IPRs) ….
…. when necessity became
the mother of invention ….
… there was a ‘problem’ and Intellectual Property (IPRs)
came about as a ‘solution’ to this problem! …
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… so, let’s look at ‘WHAT WAS This Problem’ ? …
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We are in the time zone of the 1850s. …
Mr. Gaurav Kumawat, a manufacturer of writing
instruments, in the course of his research on ‘new product
development’, develops a new ‘ink-flow system’, which is
integral to the functioning of any ‘fountain pen.’ Mr. Gaurav’s
invention of the new ‘ink-flow system’ is novel, and is also
hitherto = unknown.
However, Mr. Gaurav now finds that his competitor:
Mr. ‘Mischevious’ Mayank Gupta is now copying his
(Ameet’s) invention for commercial gain! ….
(1) What can Mr. Gaurav Kumawat do about it ?
(2) Does Mr. Gaurav have any legal remedy against such
violation of his intellectual efforts by Mr. Mayank Gupta?
“What is it that we want to protect ? ….
… First is the brilliant invention: the idea, the notion that
makes a new product and the insight that makes a whole
new industry. … The second thing that we want to protect
is the investment and the hard work. This is the ‘pick-&shovel’ engineering that turns the idea, the prototype,
into a reliable, distributable, maintainable, documented,
supportable product.”
– Robert Spinrad, Xerox Corp., … Quoted in Robert P. Benko’s
‘Protecting Intellectual Property Rights’, (Washington D.C.,
American Enterprise Institute for Public Policy Research, 1987)
… The following students of Section ‘A’ – DCP 2022-24 MBA
Batch, IMT-Dubai – are gifted with creative talent in the
literary, and artistic arts and crafts – …….
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… Mr. Gaurav’s problem was not an isolated experience of / for
inventors / manufacturers: be they small-time individuals or
even huge companies! … similar issues vexed not only
engineers / manufacturers, but also all ‘creators of creative
works’, such as: writers, poets, music composers, artists, ….
… All of them faced the ‘same’ Problem / Issue, which was:
“How to legally & effectively prevent others / competitors from
copying their intellectual inventions / intellectual creations ? ”
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“That he, the Inventor,
ought to be both compensated and rewarded
will not be denied. It will be a gross immorality
of the law to set everybody free to see ( or use) a
person’s work without his consent, and without
giving him an equivalent.”
– John Stuart Mill ( 1848 )
The concept of ‘Notional property’
and the need to evolve legal regimes
for the protection of such notional /
intellectual property …….
… the First & Second Industrial Revolutions (1760 to 1960)
– the age of radical innovation & industrial change …
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… Pressures were put by inventors: big & small, by
manufacturers, trade guilds, artists, writers and artisans
mainly in medieval Europe , to provide some sort of legal
protection for their intellectual efforts and creative ideas …
… Ruling monarchies were expected to frame and adopt a form
of legal system to protect inventions and creative ideas …
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… the beginnings of IPRs – light at the end of the tunnel ! ….
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… One of the first known references to intellectual property
protection dates to 500 B.C. when : “chefs were granted
year-long monopolies for creating culinary delights in the
Greek colony of Sybaris.” …
Quoted by Athenaeus , ‘The Deipnosophists’,
translated by G. Burton Gulick, 348-349
… the first statutes ( state-made law) that bought about IPRs &
the IP system – Anglo-Saxon (England & America) ! ….
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… The earliest statutory law to establish IP law for the first
time were the British: the Statute of Monopolies (1624)
and the Statute of Anne (1709). … Though changes have
been made over the ages, these two laws formed the basis of
the Anglo-American law of patents, copyright and trade
secret law. …
Adam D. Moore, ‘Intellectual Property and Information Control:
Philosophic Foundations and Contemporary Issues’,
London: Transcription, pp. 11.
… However, the major watershed in the emergence of IPRs & IP
system came through collective global efforts – through
International Conventions, Conferences & Treaties ….
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… The IP system was to receive its strongest boost through
global efforts which stemmed from ‘International
Conventions / Conferences / Treaties’ which called for
deliberations and debate facilitated through conferences on
global platforms. These first major global efforts to establish
IP law through International Conventions, forked and
focused on two emerging areas of IP law :
(a) Conventions for the protection of industrial property ;
&
(b) Conventions for the protection of literary, artistic and
musical creations
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International Conventions: a global call for the need to
protect Intellectual Property –
1.
The Paris Convention for the Protection of Industrial
Property, 1883 ; 1967
2.
The World Intellectual Property Organisation (WIPO)
Convention (1967)
3.
4.
The Berne Convention for the Protection of Literary and Artistic
Works, 1886 ; 1971
The Universal Copyright Convention (Geneva, 1952), &
(Paris, 1971)
5.
The Hague Agreement of International Deposit of Industrial
Designs, 1960
6.
Patent Cooperation Treaty, 1970 , … also known as ‘the PCT ’
7.
Madrid Agreement Concerning the International Registration of
Marks, 1979
8.
Lisbon Agreement for the Protection of Appellations of Origin
and their International Registration, 1979
9.
UPOV International Convention for the Protection of New
Varieties of Plants, 1991
10. Convention on Biological Diversity (June 5, 1992),
Rio de Janeiro
… and then, the most important of them all :
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… and then came, the most important of them all :
11. Trade Related Aspects of Intellectual Property Rights
( The TRIPS Agreement ) signed on April, 15, 1994,
Marrakesh [Morocco], by a global body known as GATT
is the most comprehensive multilateral agreement on
intellectual property (IP), aimed at harmonizing all IP-laws,
worldwide. The TRIPS Agreement is being administered
by the WTO ….
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… As a lawyer, a law-professor, and a law-student myself,
I have come across several definitions of ‘IPRs’. … In in my
opinion, the best definition of ‘Intellectual Property Rights
(IPRs)’, is the one given by my Professor , Advocate &
good friend:
Prof. Shri. R. Muralidharan Sir
“Intellectual Property Rights (IPRs) are the laws /
legal systems which govern / regulate the use
and commercial exploitation of creations
of the human mind.”
Prof. & Adv. Shri. R. Muralidharan,
Visiting Faculty, National Law School of India, Bangalore
Content of Intellectual Property Rights ( IPRs )
1
2
3
4
5
6
7
8
9
10
Patents
Industrial Designs
Trademarks
Copyrights
Copyright in Computer programmes
Geographical Indication of Goods ( GI )
Trade Secrets
Traditional Knowledge Systems ( TKS )
Internet – Domain Name Disputes
Semiconductor integrated circuits & its layout
designs
A simple instrument such as a Fountain
Pen can have a judicious mix of
a variety of IPRs. ……
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… the ‘next 3 Slides’ – ‘The Three Important IP CoreConcept Slides’ – are of paramount importance in
our understanding of Intellectual Property Rights (IPRs)
and the purpose & legal rationale of the IP system. …
… If we can understand well the ‘next 3 Slides’, then we
will take our first steps to becoming passionately fond
of and to ‘fall-in-love with the Subject: IPRs’ ! …….
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Nature of Industrial Property System /
Classification of Intellectual Property Rights
Statutory IPRs
Common Law IPRs
1. The IPR owes its origin
to statute.
2. Registration is compulsory.
Patents
Designs
1. The IPR independent of
statute.
2. Registration is optional ,
but desirable.
Trademarks
Patents Act , 1970 Designs Act , 2000 TM Act , 1999
Copyrights
Copyrights Act , 1957
Purpose of IPR Protection
All Intellectual Property rights ( IPRs ) confer some
type of monopoly.
The central idea of any IPR system is to provide the
creator of intellectual property = ‘a monopoly period
of exclusive commercial use of the IPR.’
The purpose IPR protection:(1) The ‘Disclosure Theory ’ ; (2) The ‘Incentive Theory’
“Patents add fuel to the fire of genius”
– Abraham Lincoln
To demystify ‘Copyright © Law’ ……
“ One of the most difficult things for any IPR system is to explain
clearly: the concept of copyright law ! ”
– Mark Twain
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“ Next came the patent laws. These began in England in 1624, and in this
country with the adoption of our Constitution . Before then, any man
(might) instantly use what another man has invented , so that the
inventor had no special advantage from his own invention. The patent
system changed this, secured to the inventor for a limited time, exclusive
use of his inventions , and thereby added the fuel of interest to the fire of
genius in the discovery and production of new and useful things.”
– Abraham Lincoln,
Lecture: ‘Discoveries, Inventions & Improvements ’ (22 Feb 1860),
Quoted in John George Nicolay & John Hays (eds.) ‘Complete Works of Abraham
Lincoln’ (1894) Vol. 5, 113. In Eugene C. Gerhart ‘Quote It Completely! ’ (1998) 802
…. all radical evolving technologies, when they first
arrive, are known as : ‘ Disruptive Technologies ’ ….
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“ Every now and then, a technology comes along that is
so profound, so universal, that its impact will change
everything. It will transform every institution in the world.
It will create winners and losers. It will change the way we
do business, the way we teach our children, the way we
learn, the way we behave and the way we communicate
and interact as individuals. …”
Louis Gerstner , Chairman, IBM
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“ Technology evolves irrespective of our desires.
Its onward march leaves us in the lurch;
haunted by memories of things we used to do. …”
Stuart Jeffries, © 2007 Guardian Newspapers
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… During those moments when he celebrated the ‘Invention
of Electric Bulb’, never once did my Achachen (Father) ever
think of its inventor: Thomas Alva Edison, who in year 1879,
invented the first electric light bulb …..
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… During those moments when me and my brothers amazed at
the ‘Invention of Television’, never once did we ever think of
its Scottish inventor: John Logie Baird, who in year 1925,
demonstrated the world’s first monochrome television, and
then called it: ‘Televisor ’ …..
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… During the ‘hardworking’ decades of the 1960s, 70s & 80s,
while our teachers / professors completed their classes, their
hands and clothes would be painted with chalk powder after
writing on the ‘Invention of the Chalk Board’, never once did
they ever know its inventor was : James Pillans, Headmaster and
Geography-Teacher at Old High School, Edinburgh, who in
1801, is credited to inventing the first modern blackboard, when
he hung a large piece of slate on the classroom wall …..
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… Whenever we professors write with marker on the
‘Invention of White Board / Dry-Erase Board’, we never ever
know of its inventor/s : Marvin Heit, who in 1950s, … or was
it: Albert Stallion, who in the 1960s, … both of whom: two
stories abound, have been credited to have invented the White
Board / Dry-Erase Board, which has become commonplace in
the modern day classroom! …..
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… Whenever they ‘ romance 24/7 ’, youngsters of this generation,
may never heard of the ‘Inventor of the ‘short message service
(sms)’, was tech-pioneer from Finland: Matti Makkonnen, who
is known as: ‘The Reluctant Father of sms ’ , … and who left
this world on June 30, 2015 …..
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… Which invention is considered to be – the
‘World’s most radical, disruptive invention’ ? …
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… And whenever we amaze and accomplish many things
when using the world’s most disrupting technology: the
‘Invention of the Internet’, … we rarely think of British
scientist: Tim Berners Lee, who in March of 1989, while
working for CERN, the European Organization for Nuclear
Research, … freely gave to the world: the invention of the
‘world-wide-web (www)’ …..
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… when we often amaze at these radical, lifestylechanging INVENTIONS of Disruptive Technologies,
we rarely know, leave alone think / applaud those
brilliantly creative INVENTORS, who were the brain
behind these radical, disruptive inventions! ….
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PATENTS
What is a Patent ?
A patent is a monopoly right granted to a person who has
invented a new and useful article or an improvement of an
existing article or a new process of making an article.
It consist of an exclusive right to manufacture the new
article invented or manufacture an article according to the
invented process for a limited period. After the expiry of
the duration of the patent, anybody can make use of
the patent.
… one of the most fulfilling moments in my 21-year
teaching career, came on March 29 & 30, 2006, at
Vellore Institute of Technology (VIT) …….
… I was in a team of four lawyers invited to do a two-day
‘Seminar on IPRs / IPR-Awareness ; 2005 & Beyond’ …
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… my memorable encounter with prodigiously talented
20-year old: Ms. Shruti Dhawan, then student of Second-Year,
B.Tech, at Vellore Institute of Technology ( VIT ) ….
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... but since you do not know Ms. Shruti Dhawan, then let’s
have one of our very own: Mr. Himanshu Sonber : student of
Section ‘A’ of DCP 2022-24 MBA Batch, IMT-Dubai …
Mr. Himanshu , a very creative engineer, invents a unique
hand-held device / gadget, which initially started off as a
functional TV-remote …
Gradually, using his creative ideas, Mr. Himanshu is able to
add more functions to this hand-held device, and gives it the
name: ‘Multi-Utility-Remote (MUR)’ …….
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The (MUR)’ which, initially started-off as a ‘TV-Remote’,
but with the addition of other new utilities, the hand-held
device has now become a ‘multi-functional-gadget.’
Mr. Himanshu’s invention of the new ‘Multi-Utility-Remote
(MUR)’ is both: novel, and is also hitherto = unknown.
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Mr. Himanshu Sonber wishes to apply for a patent for his
invention of the new ‘MUR’, and makes an Application
before the Office of Controller of Patents, Delhi.
What are the legal procedures / legal tests which
his invention will have to successfully pass, in order
for Mr. Himanshu Sonber to obtain a patent ?
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… But before we go into the ‘legal procedures’ the ‘legal
tests’ that Mr. Himanshu Sonber / Ms. Shruti Dhawan will
have to pass in order to obtain a patent, lets first Answer this
Question:
“ Is there a concept of ‘Global Patent’ ? ” …
Or
“ What is meant by the concept of ‘Global Patent’ ? ” …
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… the object of the Patent Cooperation Treaty (1970) was
originally intended to facilitate the ‘Global Patent’ …
However, due to lack of mandated minimum consensus, the
‘Global Patent’ concept was abandoned. … Patent still
remains to this day: a ‘territorial right.’ …. Instead, the biggest
gain of the PCT is that the PCT has enabled ‘Multiple-Filing’
of Patents across PCT-member nations.
Thus, by filing an ‘International Patent Application’ it is now
possible to simultaneously seek patent protection for an invention
– in each / any of the PCT-Contracting nations.
… But before we go into the ‘legal procedures’ the ‘legal
tests’ that Mr. Himanshu Sonber / Ms. Shruti Dhawan will
have to pass in order to obtain a patent, we must answer
yet another very crucial Question –
“ What is the main reason WHY Mr. Himanshu Sonber /
Ms. Shruti Dhawan are applying for a patent? ” …
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… the First Test for Obtaining Patent …
… the ‘first test’ is actually not a ‘test’, but is more: of a
‘procedure’, where this procedure is invariably done officially
through the Office of ‘Controller of Patents.’ … However the
same ‘procedure’ can also be done, even online, and by / through
private initiative. …
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Application for ‘Patent Search’
……. Patent Offices worldwide are digitally linked, …..
The ‘Patent Search’ facility is a roving online search of
filing data to verify whether any Patent Application for
similar invention has been filed anywhere …….
However, the results of the ‘Patent Search’ is not legally
conclusive, and is therefore open to legal challenge at later
time / later stages! …
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… the First Test for Obtaining Patent …
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Definition of ‘Invention’
“Invention” Section 2 (j) of Patents Act, 1970 :“invention” means any new and useful –
(a) Art , process , method or manner of manufacture ;
(b) Machine , apparatus , or other article ;
(c) Substance produced by manufacture and includes
any new and useful improvement of any of them.
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… the Second Test for Obtaining Patent …
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Non-Patentable Inventions
Inventions that cannot be patented :( Sections 3, 4, 5 of Patents Act )
Indian patent law excludes inter alia, the following inventions
from patentability –
1
2
3
4
5
6
7
Contrary to law and morality
Frivolous
Mathematical formulae or abstract theory ,
Living organisms per se ,
Methods of agriculture and horticulture ,
Substances obtained by mere admixture ,
Any process for the medical , surgical , and curative
functions for plants and human beings, so as to render
them free of disease .
8 Plants and animals in whole or any part thereof
…including seeds, varieties and species and essentially
biological processes for production or propagation of plants
and animals ;
9 A mathematical or business method or a computer program
per se or algorithms ;
10 A mere scheme or rule or method of performing mental
act or method of playing game ….
… Section 4 of Patents Act …
‘No invention shall be granted in respect of any invention
relating to atomic energy, falling within sub-section (1) of
Section 20 of the Atomic Energy Act, 1962 (33 of 1962)’
… the very ‘controversial’ Section 5 of Patents Act …
… In the 1950s & 60s, it was found that most life-saving drugs /
medicines were patented monopolies of foreign MNC pharma
companies …
So, in order to allow Indians access to cheap & affordable
medicines, the Indira Gandhi Congress Government introduced
Sec. 5 in the Patents Act , which was exclusive only to Indian patent
law…….
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Process and Product Patents
Inventions where only the methods or process of manufacture
are patentable ( Section 5 ) :‘In the case of inventions relating to food , medicine , drug or
substances prepared or produced by chemical processes , only
process patents and no product patents can be granted.’
… Among the nations of the world, only India had Sec. 5. …
… What was the rationale of having Sec.5 in Patents Act ? ….
… the Third Test for Obtaining Patent …
… the ‘make-OR-break-stage’ …
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Patent Specifications / Patent Claims
Patent Specifications / Claims ( Sections 9 & 10 ) :In the patent specifications / claims, the Patent-Applicant
must clearly specify –
1 The position of “the PRIOR ART ”
2 The position of “the PRESENT ART ”
3 How the Present Art has ‘inventive step / steps’ and how
the Present Art has elements of usefulness and novelty visà-vis the Prior Art.
© copyright 2022, reserved with: Sebastian Tharakan, The Businesslawlecturer
… we have reached the phase of ‘Gateway to a Patent’, also
known as the ‘make-OR-Break-Stage’ in the life of a Patent
Application …
… Often, the inventor engages professional expertise
to help draw up / prepare the ‘Patent Specifications’ ……
… The Applicant-inventor often first files: ‘Provisional
Specifications’, with the view to obtain ‘priority date’, in
which case, ‘Complete Specifications’ should be filed
within a period of 12 months (15 months with extension)
Patent Specifications / Patent Claims must have ‘clarity’ and
‘simplicity’, i.e., must be ‘easy-to-understand’ … So, WHAT
is the ‘Test of Simplicity’ of Patent Claims / Specifications ?
… the ‘Test of Simplicity’ …
… the essential work of Patent-Agents / Patent-Examiners
in the Indian Patent Offices ….
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The Test of Simplicity =
‘A person: reasonably skilled in the field of technology,
on a single reading of the Patent Claims, must be able to
understand / work / operate the Invention.’
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… the Fourth Test for Obtaining Patent …
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 Who may apply for patent? ( Sections 6 & 134 )
… Sec. 6(1) Patents Act – … states that :
‘(1) an application for a patent for an invention may be made by
any of the following persons:
(a) by any person claiming to be the true and first inventor of
the invention ;
(b) by any person being an assignee of the person claiming to be
the true and first inventor in respect of the right to make such an
application
(c) by the legal representative of any deceased person who
immediately before his death was entitled to make such an
Application.
‘6(2) An application under sub-section (1) may be made by
any of the persons referred to therein either alone or
jointly with any other person.’
( bold emphasis : deliberate & mine! )
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… the Fifth & Final Test for Obtaining Patent …
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 Opposition to grant of patent ( Section 25 )
There are three consequences to filing ‘Opposition Petition’ …
© 2022, Sebastian Tharakan, The Busineslawlecturer

Grant and Sealing of patent ( Section 43 )
Mr. Himanshu Sonber / Ms. Shruti Dhawan
become : ‘patentee’ !
© 2022, Sebastian Tharakan, The Busineslawlecturer
 Term of patent ( Section 53 ) … globally uniform 20 years …
… ‘Gratitude’ – the Indian Way! …..
 Rights / Duties of a patentee ( Section 48 )
1
2
To commercially exploit the patent
To assign the patent or grant license to others for use of patent
… Patent Law mandates that the patent shall not remain idle! …,
that the patentee must either use the patent himself / herself, OR
should allow others to use the patent. …. WHY this law? ….
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… Let’s see – How can ‘others’ use your (patentee’s) patent ? …
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 Assignment / License / transmission
of patents ( Sections 68 – 70 )
 Compulsory License ( Sections 84 – 88 )
 Revocation of License on ground of non-use ( Sections 89 , 90 )
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
 Patenting of ‘Life Forms / Living Organisms’
The controversial case of –
Sydney A. Diamond v. Ananda Chakrabarty
447 (6) U. S. 303 ( 1980 )
… The ‘first’ and only case of
‘Compulsory Licensing of Patent in India’ …
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
… The First Case of ‘Compulsory Licensing of Patent’ in India …
German MNC pharma: Bayer holds Indian patent for the
chemotherapy drug ‘sorafenib tosylate’, sold under trade name:
‘Nexavar.’ On 09-03-12, the Controller of Patents issued the
first-ever compulsory license to Indian company: Natco Pharma
‘to manufacture an affordable generic version of ‘sorafenib
tosylate’, when Natco Pharma offered to price the drug @ Rs.8,800,
as against the sale price of Rs. 280,000, priced by Bayer for a monthly
dose. Under terms of the Compulsory Licence, Bayer got 6% royalty
on sales by Natco.’
An interesting case study of a legal problem …
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
Mr. Sreeraj Kommu has recently invented a new and
hitherto unknown auto-diesel engine, which has the potential
to improve fuel efficiency / mileage by 30% as compared to
existing auto-diesel engines. However, for some reason,
Mr. Sreeraj Kommu does not apply for a patent for his
new and radical invention.
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
A month later, a competitor : Mr. ‘Naughty’ Nikhil
Wadhawan, after secretly obtaining the drawings and
technical know-how of Mr. Sreeraj Kommu’s invention of
auto-diesel engine, chooses to manufacture a prototype of the
same invention, and then applies for a patent before the
Controller of Patents, Mumbai.
Mr. Sreeraj is neither aware of the Application for Patent
filed by Mr. Nikhil, nor about the lapse of the connected
Opposition Proceedings.
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
Subsequently a patent for the new auto-diesel engine has
been granted to Mr. ‘Naughty’ Nikhil by the Controller of
Patents, Mumbai. ….
Can Mr. Sreeraj Kommu ‘ file an Application to
Revoke / Cancel the Patent – already granted
to Mr. Nikhil Wadhawan by the Office of Controller
of Patents, Mumbai ?’
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
Yes, Mr. Sreeraj Kommu will be able to file:
‘Post-Grant Opposition Petition’ and will be able to
obtain an Order for ‘Revocation of Patent’, provided /
if only he: the original inventor: ( Mr. Sreeraj Kommu )
must be able to prove: ‘prior use’ …
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The growth of world / global trade …….
“ no country is an island
it simply has to trade! ” …
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The growth of world / global trade …….
“ no country is an island; it simply has to trade! ”
Ms. Emani Sai Tejaswini, an Indian cotton farmer, is a
producer of cotton, wholly for export to the USA ….
She will face competition from Ms. Riya Gupta, a
cotton farmer / citizen of USA ….
Two types of barriers / obstacles to global free trade:
(1) Tariffs, & (2) Non-Tariff Barriers [NTBs]
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
… the first global attempt to try and eliminate trade
barriers took place towards the fag-end of World
War II (WW-II) … where and when 730 delegates
from all 44 ‘Allied Nations’ met …
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
The New International Economic Order (NIEO)
The Bretton Woods System (1944)
‘United Nations Monetary & Financial Conference’
( Bretton Woods Conference )
@ Bretton Woods, New Hampshire, USA
(1) The International Monetary Fund [ IMF ]
(2) The International Bank for Reconstruction and
Development [ the World Bank ]
(3) The International Trade Organisation [ ITO ]
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
GATT and the Uruguay Round
The General Agreement on Tariffs & Trade (GATT):
In 1947, 23 nations met at Geneva, MTNs led to the establishment of GATT.
… GATT is a Legal Agreement between many nations to promote ‘Free
Trade’ through the anticipated elimination of trade barriers …
GATT’s mandate was to liberalise world / global trade
The ‘Super 301’ US action:
1984 Amendment to the U.S. Trade Act, 1974 (Sec. 301)
World reaction to Super 301:
Punta del Este, September 1986 – The Uruguay Round of GATT
Failure of Brussels Round 1990 of GATT ….
The ‘Dunkel Draft’ / Dunkel Draft Treaty ….
Arthur Dunkel, the DG of GATT prepares a compromise ‘Draft
Agreement’ for the GATT members, which will eventually lead to
a change in the world order …….
The New World Order: the World Trade Organisation
(WTO) is born …….
April 15, 1994: successful culmination of ‘The Uruguay Round’
at Marakkesh, Morocco; 28 important international agreements
signed …….
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
… Let’s now briefly examine 2 out of these 28 Agreements,
ratified at Marakkesh on April 14, 1994 ….
By one of these 28 Agreements, the world-body hitherto
known as the GATT, agreed to be renamed as the World
Trade Organisation (WTO), with a new Charter, and with
effect from ( w.e.f ) January 1, 1995.
By another of the 28 Agreements, the GATT / WTO mandated
that member-nations should ensure that their national IP
laws should comply with the all-IP encompassing TRIPS
Agreement.
The Agreement on Trade Related Aspects of Intellectual Property
Rights (TRIPS Agreement) is the most comprehensive international
legal agreement on IPRs and is a compendium of minimum standards
for the regulation by national governments of many forms of
intellectual property (IP) as will be applied to its own citizens as well
as its application to nationals of other WTO members.
The TRIPS Code of IP law defines and gives recognition to
different forms of IP, and calls upon member-nations to enact IP
laws in their nations, and while doing so, to ensure compliance with
the provisions of the TRIPS Agreement.
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The various Articles of the TRIPS Agreement mandate that
WTO-members should afford IP protection for gamut of IPRs
such as: patents, copyrights, industrial designs, trade marks,
geographical indications, new plant varieties, trade dress,
integrated circuit layout-designs, and undisclosed or
confidential information.
The TRIPS Agreement gave developing nations (such as our
India) a gestation period of 10 years to ensure compliance of
national laws with TRIPS Agreement. … Which means that by
January 1, 2005, all national IP laws of WTO member-nations
were to have become ‘TRIPS-compliant.’
The Code of the TRIPS Agreement consist of 76 Articles. …
So far as India was concerned, there was one particular
TRIPS Article which mandated India to make a major change
in its patent laws. …. The Article required India to change a
patent law which dominated the pharmaceutical industry in
India for almost 34 years …….
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
The TRIPS Agreement
 The radical Article 27 (1) of the TRIPS Agreement:-
‘ 1. Patents shall be available for all inventions , whether
products or processes, in all fields of technology, provided
they are: (1) new , (2) involve an inventive step and (3) are
capable of industrial application.’
…. After more than 34 years of the ‘drug-process-only-patent
law regime’, Indian Parliament passed The Indian Patents
(Amendment) Act, 2005, deleting / removing Section 5 from
the Indian Patents Act ……. in compliance with Art.27(1)
of TRIPS Agreement…… and thereby, bringing a ‘challenge’
to the Indian pharmaceutical sector ….
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
 Limitations to Article 27 (1)
 Legal sanctity of the TRIPS Agreement
Article 1(1) –
“Members shall give effect to the provisions of
this Agreement………..”
Article 51(c) of the Constitution of India –
“The State shall endeavour to…….
(c) foster respect for international law and treaty obligations in
the dealings of organised peoples with one another”
Case law on Patents
 Star Textile Engg. Works Ltd.
v.
James Mackie Holding Ltd.
1978 ( 3 ) IPLR 160 (Calcutta HC)
 Franz Xaver Huemer
v.
New Yash Engineers
AIR 1997 Delhi 79 [DB]
 M/s. National Research Development Corpn.
v.
M/s. Cilicon Ceremics
AIR 1998 Delhi 52
© 2022, Sebastian Tharakan
 Reckitt & Coleman of India Ltd. v. Godrej Hi Care Ltd.
2001 PTC 637
 Ram Narain v. Ambassador Industries
AIR 1976 Delhi 87
 Monsanto Company v. Coramandel Indag Products (P)Ltd.
AIR 1986 SC 712
 Abid Kangalwal v. Edgar Haddley Co. Ltd.
1984 PTC 234
 Hindustan Lever Ltd. v. Godrej Soaps Ltd.
1997 PTC 7 56
© copyright 2022, Sebastian Tharakan, The Businesslawlecturer
An Epilogue – A Tribute to the great law lecturers!
This Seminar is the fruit of the ideas, principles and commitment passed
on to me by Adv. Shri. R. Muralidharan, Ms. G. S. Srividya, Shri. K. C.
Gopalakrishnan, Shri. M. K. Ramesh, Dr. A. Jayagovind, Dr. S.V. Joga
Rao & Shri. S. Krishnaswamy – all faculty of National Law School of
India, Bangalore, who not only exposed me to the highest standards
of law, but also ignited within me – a spark of passion for the study of
Business Law, and a deep desire to always seek to learn more, and strive
to ever improve.
For having touched my life in so deep a manner through the quality of
their instruction, I salute and applaud them, and shall forever remain
indebted to them in gratitude.
Sebastian Tharakan
Advocate & Businesslawlecturer
IPRs is the heart of the “Knowledge world”
“Money is what fuelled the industrial society. But in the
informational society, the fuel, the power is knowledge.
One has come to see a new class structure divided by those
who have information and those who must function out of
ignorance. This new class has its power not from money,
not from land, but from knowledge.”
John Kenneth Galbraith
This is the END of this Seminar,
but only the BEGINNING of the
growing importance, recognition, and scope
for optimum commercial exploitation / better legal protection
of Intellectual Property Rights (IPRs)
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