Intellectual Property Rights
Part II
Dr. Saurabh Verma
PhD (IPR), PGDIPR
Assistant Professor
Department of Management Studies
NIT Silchar (Assam) 788010
Creation…………….
Protection………….
Commercialization……….
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Why
patent?
You can not derive commercial or
monitory value from it (e.g., license it
or sell it)
You cannot enforce any rights for the
publication (e.g., sue anybody for
infringement)
Somebody can take that same invention
and add few improvements and file a
patent and even get it
Your idea, which may have lot of
potential, can not now be developed into
your Intellectual Property, but it is
merely lying as a charity in public
domain
Prestige and ranking of institute as well
as Students can grow exponentially if it
protects its research efforts, which helps
in the placement of students as well
Patent (Indian Patent Act, 1970)
⮚ Derived from a word ‘Patene’ which means ‘to open’
⮚ It is a legal grant of monopoly rights for some fixed term to the
creators of new and useful invention in return of his disclosing the
invention.
⮚ Patents may be granted for both product and processes in all
technological fields.
⮚ The term for patent protection is 20 years from the date of filing
for both product as well as process Patents.
⮚ Patents are the territorial Rights
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Invention:
Sec.2(1)(J)
“Invention” means a new
product or process involving an
inventive step and capable of
industrial application
Indian
Patents
Act, 1970
Patentable subject matter
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
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Invention must relate to a
Process or Product or both
be new (Novel)
involve an inventive step
be capable of industrial
application
Should not fall under the
exclusions of Section 3 (a-k)
and Section 4
Novelty:
• Invention must not be
published in India or elsewhere
in prior public knowledge or
prior public use with in India
• Claimed/described before in
any patent specification in
India
Novelty
and
Inventive
Step
Inventive Step
• A feature of an invention that
involves technical advance as
compared to the existing
knowledge or
• has economic significance or
both, and
• makes the invention not
obvious to a person skilled
in the art
Section 3 exclusions
(Non Patentable Subject Matters)
Section 3(a)
Frivolous inventions
Inventions contrary to well established natural laws
Examples: a machine that gives more than 100% performance,
perpetual machine
Section 3(b)
Commercial exploitation or primary use of inventions, which is
contrary to:
public order or morality and/or
causes serious prejudice to health or human, animal, plant life or
to the environment.
Examples: addiction drug, gambling machine, drug to
suicide/inducing depression, device for auto theft, biological
warfare material or device, tobacco smoking, weapons of mass
destruction, terminator gene technology, embryonic stem cells.
Section 3 exclusions
(Non Patentable Subject Matters)
Section 3 (c)
mere discovery of a scientific principle or formulation of an
abstract theory or
discovery of any living thing or
discovery of non–living substance occurring in nature
Examples:
Einstein’s theorems on relativity; Newton’s Laws, Laws of
genetics, superconductivity, discovery of micro-organism, new
species of a frog, discovery of natural gas or a mineral.
Important: naturally occurring micro-organisms are NOT
patentable but Genetically modified microorganisms (GMOs) are
patentable.
Section 3 exclusions
(Non Patentable Subject Matters)
Section 3 (d)
The mere discovery of a new form of a known
substance which does not result in the enhancement
of the known efficacy of that substance
Explanation: For the purposes of this clause, salts, esters,
ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixture of isomers, complexes, combinations and
other derivatives of known substances shall be considered
to be the same substance, unless they differ significantly
in properties with regard to their efficacy.
Examples:
Polymorphs, Crystalline forms of known substances
Section 3 exclusions
(Non Patentable Subject Matters)
Section 3 (d):
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.
Examples:
Paracetamol for cancer,, new use of Aspirin for heart
ailments
Section 3 exclusions
(Non Patentable Subject Matters)
Section 3 (f)
Mere arrangement or re-arrangement or
duplication of known devices, each functioning
independently of one another in a known way
Examples: Fan with LED, a lunch box fitted with heater, an
umbrella with fan, a TV and radio in a single cabinet, a flourmill provided with sieving.
Section 4 exclusion
(Non Patentable Subject Matters)
Inventions falling within Section 20 (1) of the Atomic
Energy Act, 1962 are not patentable
Example:
Inventions relating to compounds of Uranium,
Beryllium, Thorium, Plutonium, Radium, Graphite,
Lithium and more as notified by Central Govt. from
time to time.
TYPES OF PATENTS
Patent means, the grant by a government of the country
to one or more individuals for a limited period of time,
the exclusive rights of making, selling or using the
invention for which a patent has been granted and also
the right to, by the holders of such a right, for
authorizing others to do so, under license. In practice, it
is a negative right, which prevents others from using the
invention without the legal consent of the patent
holder(s)
There are four major types of Patents:
⚫ Standard Patent
⚫ A Patent of Addition
⚫ Utility Model Patent
⚫ New use Patent
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Jurisdiction of a granted patent
So, What is World patent? Is it true or a
misconception?
⚫ Patents are valid only in the territorial
jurisdiction of a country, which means that a
patent granted in India is valid only within the
territorial boundaries of India and not valid in
any other country.
⚫ In case an inventor wishes to seek protection in
other countries he has to apply in that country
for patent protection, follow their rules and
regulations and secure a patent grant for his
product or process in that country.
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Another important point
It is extremely important to note that once a patent has
been granted in anyone country in the world, it
becomes prior art and consequently is deemed to be in
the public domain, in all other countries where the
patent application, was not filed within the time
stipulated that is 12 months from the date of filing the
patent application in anyone country, unless a
convention application /PCT application is filed within
12 months.
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Sources of Patent Information
Information on Indian and foreign patents is available
at
⚫ The patent information system (PIS) in Nagpur.
⚫ NRDC in New Delhi,
⚫ The
Patent Facilitation Center (PFC) of the
Department of Science and Technology,
⚫ The National Information Center (NIC), New Delhi,
⚫ The Patenting Cell of CSIR, etc.
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What is Prior Art Search
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Why
Prior Art
Search?
To know existing art in the field of your invention
Who
Where
What
When
How
Patent and Non-Patent Literature:
research papers, studies, landscapes, review
articles, manuscripts, thesis etc.
patents form a rich repertoire of scientific and
technical information.
E.g., more than 50% patents are reproducible i.e.
their results can be reproduced in a laboratory
Only 15-20% research papers have reproducible
research
80% of world’s new knowledge is available in
patent documents
Where to
search?
Many public and paid databases available for patent
searching
Paid databases like Orbit, Thomson Innovation,
Relecura
Public databases handled by various governments such
as in USA, Europe, Japan, India, Malaysia, UK, Canada
etc.
Important search databases
http://patft.uspto.gov US Patent Office – Only US
http://worldwide.espacenet.com/?locale=en_EP
European Patent Office – has records of patents filed
in major countries including China and Japan
Google Patents – EP, PCT, US
http://www.google.com/patents
Patentscope – from WIPO http://patentscope.wipo.int/search/en/search.jsf
Free Patents Online – www.freepatentsonline.com
www.ipindia.nic.in (more recently-INPASS)
Patent Application
Patent Application is a scientific as well as legal
document.
Main parts of patent application include
Title – Generally up to 20-25 words
Field of the invention – To point to the examiner about
the general field of art – and particular as well. For
example general field being automobile or automobile
engines, specific field being spark plugs etc.
Patent Application
Background or Description of Prior Art – This
section to describe prior art to your invention. To give
examiner where the prior art falls short and lacks, and
what are the disadvantages/limitations of the prior art
Summary of the invention: A brief technical
description of your invention goes here. Mechanisms,
various embodiments, examples etc., do not form part
of summary.
Patent Application
Brief Description of Drawings – Here, the drawings
and illustrations are briefly described such as Figure 1 is
top view of machine X, or Figure 2 is flow of the process
as mentioned, etc.
Detailed description- The invention is described in
details. Various embodiments, variations of your
inventions may be listed along with data, examples,
advantages. Generally, the invention is described in
present tense, while the experimental data and
procedures in past tense.
Patents on PAPER CLIP
PATENT IN US 1896-97
PATENT IN US 1900-1901
PATENTS ON PAPER CLIP: Continuing
US PATENT GRANTED ON MARCH 15 2016
https://www.avantel.in/news-patent-277563.php
Source: https://company360.in/patent-registration-in-india
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Difference between old and new Patent Act
S. NO
INDIAN PATENT ACT 1970
INDIAN PATENT(AMENDMENT) ACT 2005
1
Grant only process patent
Product and process patent both
2
Duration of process patent is 7 years
Uniform protection period is 20 years
3
Provide automatic compulsory licence
Permits compulsory licence on merit basis,
under ‘right to licence’ without consent
depending upon the case and patent holder is
of right holder
heard
No system for the protection of plant
Sui-generis for protection of plant varieties.
4
varieties in India
5
Does not allow protection on life forms
Protects microorganisms
6
Importation of drug does not qualified
Equal protection to drugs imported or
for ‘working in India’ so, no protection
manufactured locally
Burden of proof for infringement of
Burden of proof for process patent lies on
process patent lies with the plaintiff
defendant/infringer
7
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What is Compulsory Licensing

Compulsory licensing is when a government allows
someone else to produce a patented product or process
without the consent of the patent owner or plans to
use the patent-protected invention itself.

It is one of the flexibilities in the field of patent
protection included in the WTO’s agreement on
intellectual property — the TRIPS (Trade-Related
Aspects of Intellectual Property Rights) Agreement.
Nexavar, Bayer v/s NATCO
 The first compulsory license was issued to NATCO
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
Pharmaceuticals.
The CL was granted for the anti-cancer drug
Sorafenib a patented product of Bayer sold under
the brand name of Nexavar.
The rational for the grant of compulsory license for
Nexavar was in line with section 84 of Indian patent
act 1970.
NATCO approached Bayer for a voluntary licensing
on reasonable terms; by “paying 3 per cent royalty
amount of net sales”.
Bayer refused to grant a voluntary license to
NATCO.
The Section 84 of the act states that, any generic
drug manufacturer can approach the patent owner
for voluntary CL after completion of 3 years of
patent grant on reasonable terms on three basic
issues
1. Reasonable requirement of the public has not met,
it was reported that the drug is accessible to only 2
percent of the patient.
2. The patented product is not available to the public
at a reasonable price as Bayer charge Rs. 2,80,000
for a month long therapy, and
3. The invention is not worked in India.
Some Important Patents
⮚ Adding Machine
⮚ Calculator
⮚ Computer
⮚ Automobile
⮚ Printing Press
⮚ Incandescent Lamp
⮚Elevator
⮚ Fertilizer
⮚ Lock
⮚ Radio
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⮚ Air Conditioning
⮚ Anesthesia
⮚ Camera
⮚ Instant
Photography
⮚ Motion Picture
⮚Telephone
⮚Telegraph
⮚Television
⮚Typewriter
Heated Butter Knife
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Lower Drawer Forming Step for Reaching Up
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Helmet that keeps your hairstyle intact
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Source: WIPO Statistics Database, March 2022
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Source: WIPO Statistics Database, March 2022
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Source: WIPO Statistics Database, March 2022
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Source: WIPO Statistics Database, March 2022
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Source: WIPO Statistics Database, March 2022
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Source: WIPO Statistics Database, August 2019
Source: WIPO Statistics Database 03/2021
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PATENT FEE (Figures are in INR)
Sr.
No.
Description
Natural
Persons
(Individual
Inventors)
Small
Entity
Other
then
Small
Entity
Comment
1.
Application for grant
of Patent
1600
4000
8000
Mandatory
2.
Early publication fee
2500
6250
12500
Optional
3.
Request for
examination of
Patent
4000
10000
20000
Mandatory
4.
For every Extra sheet
over 30 sheets
160/sheet
400/sheet
800/sheet
Mandatory
5.
For every Extra claim
over 10 claims
320/claim
800/claim 1600/claim
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Mandatory
PATENT OFFICES IN INDIA
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Office
Address
Territorial Jurisdiction
Mumbai
Intellectual Property Office, Boudhik Sampada
Bhawan, Near Antop Hill Post
Office, S.M.Road,Antop Hill, MumbaiI – 400 037.
EMAIL: mumbai-patent@nic.in
Maharashtra, Gujarat,
Madhya Pradesh, Goa and
Chhattisgarh and the UTs of
Daman and Diu & Dadra and
Nagar Haveli
Chennai
Intellectual Property Office, Intellectual
Property Office Building, G.S.T. Road, Guindy,
Chennai-600032,
Email: chennai-patent@nic.in
Andhra Pradesh, Karnataka,
Kerala, Tamil Nadu and the
UTs of Pondicherry and
Lakshadweep
New
Delhi
Intellectual Property Office, Intellectual
Property Office Building, Plot No. 32, Sector
14, Dwarka, New Delhi-110075,
Email: delhi-patent@nic.in
Haryana, Himachal Pradesh,
Jammu and Kashmir,
Punjab, Rajasthan, Uttar
Pradesh, Uttaranchal, Delhi
and the UTs of Chandigarh.
Kolkata
Intellectual Property Office, Intellectual
Property Office Building, CP-2 Sector V, Salt
Lake City, Kolkata-700091,
Phone : 23671945, 1946, 1987,
FAX-033-2367-1988,
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Email:- kolkata-patent@nic.in
The rest of India.
Tips for innovators
⮚Do not publish/ present/ display/ discuss your
invention before filing a patent application.
⮚Always maintain record of your invention.
⮚Conduct a search before filing an application to judge
the feasibility.
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Dr. Saurabh Verma
PhD (IPR), PGDIPR
Assistant Professor
Department of Management Studies
NIT Silchar (Assam) 788010
E-mail: saurabhverma@mba.nits.ac.in
Mobile: 8059442520