AICTE-NITTT e-Content

HIGHER LEVEL MODULE

HM-06
INTELLECTUAL PROPERTY RIGHTS (IPR)

Coordinator: Prof. P.K. Purohit

Co-Coordinator: Prof. C. S. Rajeshwari
Expert
Dr. Mohit Gambhir
Faculty
Prof. Nishith Dubey
Prof. Sharad Pradhan

Unit 2
Patents and Filing of Patents

Lesson 2.1: Patent System & Amendments To Patent Act & Rules
By
Prof. P.K. Purohit

National Institute of Technical Teachers’ Training and Research (NITTTR)

Shamla Hills, Bhopal (M.P.), India - 462002
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 INDEX

LESSON NO. CONTENTS PG NO.

Patents And Filling Of Patents 03
Learning Outcomes Of The Unit
2.1 2.1.1 Introduction 03-9
2.1.2 History of Patent System
2.1.3 International and National Legal Regime
2.1.4 Brief about Indian Patent System
2.1.5 Salient Features of Patent Act,1970

Amendments To Patent Act And Rules 10-14

2.11 The Patents (Amendment) Act, 2002
2.12 The Patents (Amendment) Act, 2005
2.13 The Patents (Amendment) Rules, 2017
2.14 Types Of Patent
2.15 Benefits of getting a Patent

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 UNIT 2.1: PATENTS AND FILING OF PATENTS

LEARNING OUTCOMES OF THE UNIT

At the end of this Unit 2.1, the learner will be able to:
➢ Realize the need of patent and its protection
➢ Describe the patent filing process
➢ File a Patent in India

2.1.1 INTRODUCTION
In unit one we have already discussed about what is Patent, what is covered under patent,
what is the Criteria for grant of Patent, objectives of Patent System, what is patentable and
what is non-patentable and related aspects with suitable examples. In this unit we will discuss
about Indian Patent System, detailed procedure for filing of patents in India with some case
studies. As we know that Patent is one of the forms of intellectual property in industrial
property. A patent is a grant or award of privilege, propriety, or authority awarded to one or
more individuals by the country's sovereign or government.

Patents are important due to following reasons:

➢ Inventors should be granted legal rights to promote industrial & economic progress.

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 ➢ Encourage full disclosure of an innovation by disclosing the best method of using it.
➢ Prevent researchers from being exploited by recognizing them as inventors and paying
them royalties when their invention is commercialized.
➢ Prevent duplication of research by referring researchers to published patent
applications or patents for guidance on the state of the art;
➢ As patents are issued for inventions, inventors must disclose the best mode of working
the invention with the help of associated drawings and experimental data.
➢ Emphasize the invention's commercial value.
➢ A considerable amount of technology described in patents is never published in any
other form of publication, making patents a unique source of technical information.

2.1.2 History of Patent System

It is known that the patent system has its beginning in Venetian Vince) system followed by the
British system and American system. A German engineer was granted the world's first patent
for his model grain mill, which could meet the storage needs of the entire city, in 1323 in
Venice, [Link] 1421, architect and engineer Filippo Brunelleschi granted the first recorded
patent for an industrial invention in Florence. In 1787, the first patent for a particularly built
grain elevator was issued in the United States. Inventors were granted grants in the form of
"letters patent" by the sovereign of England the sovereign of England granted inventors grants
in the form of "letters patent." The oldest authenticated instance of a royal donation provided
with the express intention of teaching the English in a new industry is a grant issued to John
Kempe and his Company in [Link] April 10, 1790, the United States Congress passed the first
Patent Act, named "An Act to Promote the Progress of Useful Arts." On July 31, 1790, Samuel
Hopkins got the first patent for a technique dubbed "The Making of Potash and Pear Ashes." In
1416, the Great Council of Venice granted the first patent for a technological discovery to Ser
Franciscus Petri of [Link] 1421, architect Filippo Brunelleschi was granted his own
legislation to protect his intellectual property rights.

2.1.3 INTERNATIONAL AND NATIONAL LEGAL REGIME

I. INTERNATIONAL LEGAL REGIME

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Patents are governed by the conventions, treaties, and agreements listed below on an
international level. All of this is overseen by the World Intellectual Property Organization. More
information about foreign patent filing can be found in unit six.
1. The Paris Convention for the Protection of Industrial Property (Paris Union), 1883
2. The 1995 TRIPS Agreement on Trade-Related Aspects of Intellectual Property Rights
3. The Patent Cooperation Treaty (PCT) was signed in 1970.
4. The International Patent Classification Agreement of 1971 in Strasbourg
5. Budapest Treaty on International Recognition of Microorganism Deposits for the Purposes
of Patent Procedure, 1977
6. PLT (Patent Law Treaty), 2000
7. Rio de Janeiro Convention on Biological Diversity (Rio Convention), 1992

II. NATIONAL LEGAL REGIME

In India, patents are governed by the following laws.
1. The Patent Act, 1970
2. The Patent Rules, 2003

2.1.4 BRIEF ABOUT INDIAN PATENT SYSTEM

The Patents Law of India is based on the Patents Law of the United Kingdom, which was passed
in 1856. Later acts were passed, including those of 1859, 1872, 1883, 1888, 1911, and the
Patents Act of 1970. Through the Patents (Amendment) Acts of 1999, 2002, and 2005, the
Patents Act of 1970 was changed three times. The Patents Act of 1970, as amended to comply
with the TRIPS Agreement, governs patent law in India today. The Patents Act of 1970 was
revised in 1999, 2002, and 2005 to provide for product patents in chemicals, pharmaceuticals,
food, and agrochemicals. Patent Rules were first amended in 2003 as Patent Rules, and then in
2005, 2006, 2012, 2013, 2014, 2016, and 2017 as Patent Rules, respectively. In 1856, the first
patent was issued, granting inventors exclusive rights for 14 years. Several changes have been
made over the years. In 1972, the Indian Patents Act of 1970 came into effect. Many concepts,
such as invention, declaration and statement of invention, were explicitly defined.

The first patent law in India was passed in 1857, but the Patent Act of 1970, is regarded as
important point in India's industrial boom. Main purpose of this Act was to stimulate innovation

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in India and make commercialization of technologies as simple as possible. On April 20, 1972,
the Indian Patents and Designs Act 1911 was replaced by the Patents Act 1970 and the Patents
Rules 1972. The Patents Act was based on the suggestions of the Justice N. Rajagopala Ayyangar
Committee Report. Only process patents for inventions linked to medicine, pharmaceuticals,
food, and chemicals were one of the recommendations. Later, India signed a plethora of
international treaties in order to enhance its patent system and bring it into line with the rest of
the globe. Joining the Trade Related Intellectual Property Rights (TRIPS) system was a critical
step in achieving this goal. On December 7th, 1998, India signed the Paris Convention and the
Patent Cooperation Treaty, as well as the Budapest Treaty on December 17th, [Link]
Alfred Depinning, a civil engineer and inventor from Calcutta, India, applied for exclusive
privileges under this Act for his invention, which he called "An Efficient Punkah-Pulling
Machine," on March 3, [Link] Indian Patent Office, also known as the Controller General of
Patents, Designs, and Trade Marks (CGPDTM), is an institution within the Department for
Promotion of Industry and Internal Trade that administers Indian patent, design, and trade
mark law.

HISTORICAL OVERVIEW OF PATENT LAW IN INDIA

Act VI of 1856 was India's first patent legislation. The objective of this legislation was to foster
the development of innovative and useful products, as well as to persuade innovators to reveal
their innovations' secrets. The Act was passed without the Queen's consent and was repealed
by Act IX of 1857. Act XV of 1859 provided new legislation for awarding "exclusive privileges" in
1859.

This legislation made some changes to the previous legislation, such as granting exclusive
benefits to valuable inventions alone and extending the priority period from 6 to 12 months.
Importers were not included in this Act's definition of inventor. With a few exceptions, such as
permitting assignees to apply in India and requiring prior public usage or publishing in India or
the United Kingdom to determine originality, this Act was based on the United Kingdom Act of
[Link] provisions of the Act of 1859 were supplemented in 1872 by the terms of Act XIII of
1872, titled "The Patterns and Designs Protection Act," which dealt primarily with designs.

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In 1983, the 1872 Act was supplemented once more. All of the Acts of 1859, 1872, and 1883
were superseded by Act V of Act 1888. The Indian Patents and Designs Act, 1911, was updated
and replaced it. Before independence, this was changed from time to time in 1920, 1930, and
[Link] was felt after independence that the Indian Patents and Designs Act, 1911, was not
serving its purpose. As a result, a committee was formed to recommend changes to the existing
Act that would enable the country to become technologically self-sufficient. The Act was
updated" on the working of inventions in 1952, based on the interim report, and the Controller
was empowered to grant licences on foods, medicines, and other items in 1953. In 1953, a Bill
was introduced in Parliament based on the final report, which was based on the UK Patents Act,
1949, however it was not passed. Justice (Retd.) N. Raja Gopala Ayyanger, a former judge, was
asked to advise the government on the reform of the law. He submitted the report in [Link]
Patents Act of 1970 was passed in February 1972, based on his findings and the report of the
Joint Committee of Parliament. The Patents Act of 1970 was changed by the Patents
(Amendment) Act of [Link] Patents Act of 1970 represents a landmark moment in India's
industrial development. The Act's core premise is that patents be awarded to stimulate
inventions and ensure that these inventions are commercialized as quickly as possible. Patents
aren't merely granted to grant the patentee a monopoly on the patented item's importation
into the country.

It's worth noting that products critical to our economy, like as agriculture and horticulture,
atomic energy inventions, and all living things, aren't patentable. As a result, the Patents Act of
1970 provided a suitable balance between adequate and effective patent protection on the one
hand, and the country's technological advancement, public interest, and special demands on
the other. The Patents Act of 1970, on the other hand, was criticized by industrialized countries
for having only process patents and not product patents in various fields such as foods,
medicines/drugs, and chemical sectors, as well as a short patent period of 7 to 14 years. India
has a contractual duty under the TRIPS agreement to amend its Patents Act to conform with
TRIPS' standards. India has to achieve the first criterion on January 1, 1995. This was done to
preserve the pipeline until the country started issuing product patents. However, the

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amendment [Patents (Amendment) Act, 1999] could only be passed in 1999, and it went into
effect on March 26, 1999, retroactive to January 1, [Link] established provisions for submitting
product patent applications in the fields of pharmaceuticals and agrochemicals as mail box
applications with effect from January 1, 1995, and introduced the grant of exclusive marketing
rights on certain items. India updated its Patent Act in 2002 to meet with the second set of
obligations, which went into effect on January 1, 2000 (Term of Patent, etc.).

This amendment, known as the "Patents Act, 1970 as amended by Patents (Amendment) Act,
2002," went into effect on May 20, 2003, along with Patent Rules, 2003, which superseded
Patent Rules 1972 and included provisions for a 20-year patent term, reversal of the burden of
evidence, and other features. The Patent Act of 1970 was amended for the third time to
provide provisions for issuing product patents. The Patents (Amendment) Act, 2005, and the
Patents (Amendment) Rules, 2005, have already come into effect, based on the obligations to
be fulfilled as of 1.1.2005. The Patents (Amendment) Rules, 2005 have four Schedules.

The fees to be paid are specified in the First Schedule; the list of forms and the texts of various
forms required in connection with various activities under the Patents Act is specified in the
Second Schedule; and the list of forms and the texts of various forms required in connection
with various activities under the Patents Act is specified in the Third Schedule. These forms
should be used whenever they are required and, if necessary, modified with the Controller's
authorization. When a patent is awarded, the Third Schedule describes the sort of patent that
will be issued. In various processes before the Controller under the Act, the Fourth Schedule
provides costs to be awarded. The patent system in India is governed by the Patents Act, 1970
(No. 39 of 1970), as revised by the Patents (Amendment) Act, 2005, and the Patents Rules,
2003, as amended by the Patents (Amendment) Rules 2006.

2.1.5 SALIENT FEATURES OF THE PATENTS ACT, 1970

➢ The Patents Act of 1970 has the following key aspects.
➢ The Patents Act of 1970 is divided into XXIII Chapters and contains a total of 163
sections.

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 ➢ The act complies with the TRIPS Agreement.
➢ Product patents are implemented in all fields including food, drugs, medicines and
chemicals
➢ Establishes patentability criteria (Sections 2(ac) (j) (ja) (1)).
➢ The act specifies a list of inventions that are not patentable (Section 3)
➢ Mandatory disclosure of information relevant to international patent application filings
(Section 8)
➢ On request, early publication of a patent application before the eighteen-month period
is permitted (Section l1A)
➢ Patent examination is done only once a request is made and the required money is paid
after the patent application is published (Section l1 B)
➢ There is pre-grant and post-grant opposition available (Section 25)
➢ The act ensures the confidentiality of inventions used for defence objectives, as well as
the use of inventions by the government for its own interests (Sections 35 to 42)
➢ In all sectors, the patent term is twenty years (Section 53)
➢ There is a provision for revocation and the grounds for revocation of a patent (Section
64)
➢ The act establishes a patent for additions (Section 54 to 56)
➢ The workings of patented innovations are explained in general terms (Section 83)
➢ Compulsory licences can be given for non-working inventions, public health concerns,
and patent infringement (Section 84)
➢ The act establishes patent infringement and civil remedies for infringement (Sections
104 to 115)
➢ Central Government has power to use and acquire the invention (Sections 99 to 103)
➢ Compulsory licences may be given in the event of a national emergency, extraordinary
urgency, or for non-commercial public use (Section 92)
➢ Patents bind the government as well. The patent shall have the same force and effect
against the government as it does against any other individual (Section 156)
➢ The Central Government has the authority to withhold disclosure of any invention that it
judges to be harmful to India's security, and to revoke patents in the interest of India's
security (Section 157 A)

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2.11 AMENDMENTS TO PATENT ACT AND RULES
In this section we will discuss about following three amendments in Act and Rules.
➢ The Patents (Amendment) Act, 2002
➢ The Patents (Amendment) Act, 2005
➢ The Patents (Amendment) Rules, 2017

Significant amendments to the Patents Act, 1970, and the Patents Rules, 2003, were made
between the years 2002 and 20052 to bring the Patents Act, 1970, and the Patents Rules, 2003,
amended through 2017, into full compliance with the TRIPS agreement.

2.11 THE PATENTS (AMENDMENT) ACT, 2002

The Patents (Amendment) Act of 2002 made the following changes to the patent system.
➢ New definitions for terms such as "capable of industrial application” invention" and
"inventive step" are included, among others.
➢ The patent term is set at 20 years. All patents that had not yet expired on the date
would be extended for a maximum of 20 years.
➢ The phrase "method for the medical, surgical, curative, prophylactic diagnostic,
therapeutic" was included under the heading "inventions not patentable," as well as a
mathematical or business process or computer software, algorithm, topography of
integrated circuits, traditional knowledge, and other items.
➢ Patents on microorganisms are permitted
➢ Depositories for biological materials have been established. The applicant must specify
the geographical origin of the bio material used in the invention.
➢ Patent applications are published 18 months after the date of filing or priority.
➢ A patent applicant or any other interested party must make an application requesting
that his application be examined and pay the appropriate price. Applications for
examination are reviewed in the order in which they were received.
➢ Time for restoration of patent increased to 18 months from 12 months.
➢ The applicant has the right to withdraw his application at any moment before the patent
is granted.

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 ➢ The grounds for revocation and opposition have been strengthened.
➢ The procedure for filing an opposition has been altered.
➢ The reasons for issuing forced lie patents were laid down in the Act.7
➢ There is a provision for parallel imports.

2.12THE PATENTS (AMENDMENT) ACT, 2005

➢ There are detailed provisions defining what is patented and what is not patentable subject
matter.
➢ New definitions of "inventive step," "new invention," "pharmaceutical substance", and
others were provided.
➢ New sections on pre-grant and post-grant opposition have been added.
➢ Patent applications are published eighteen months following the filing date or priority
date, whichever comes first, with the option of an early publication upon the applicant's
request.
➢ Patent applications are processed more quickly, and processing time limits are shortened.
➢ Patents can be obtained for the benefit of public health.
➢ Export license is required if there is an urgent requirement in the case of a health
emergency.
➢ Patent rights for applications received through a mailbox made available from the date of
patent issuance.
➢ The patent term is set at 20 years from the date of filing.
➢ EMRs (Exclusive Marketing Rights) have been removed from the proposal.
➢ A patent can be cancelled if it is detrimental to the public interest.
➢ New forms of recognized compounds are forbidden in order to avoid patents from
becoming increasingly greener.

2.13 THE PATENTS (AMENDMENT) RULES, 2017

The Patents (Amendment) Act of 2017 made the changes below. Start-up (Rule 2(fb)) The
following is the definition of Start-up as provided by the Patents (Amendment)Rules, 2017.

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Start-up means a new entity which is a private limited company as defined in the Companies
Act, 2013, or a registered partnership firm registered under section 59 of the Partnership Act,
1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002 which
fulfils the following conditions.
Where
➢ It hasn't been more than five years since it was incorporated or registered;
➢ Out of the five years stated, none of the financial years' turnover exceeded rupees
twenty-five crores (After five years from the date of registration an organisation no
longer qualifies as a start-up if its previous year's income was more than Rs. 25 crores)
➢ Its goal is to develop, deploy, or commercialise innovative goods, processes, or services
that are based on technology or intellectual property. This means the company must
attempt to produce or add value for customers or workflow by developing and
commercialising a new product, service, or process, or significantly improving an
existing product, service, or process.
➢ It is not a start-up to develop (a) non-commercial products, services, or processes (b)
undifferentiated products, services, or processes, or (c) products, services, or processes
that add no or little new value to customers or workflow.

2.14 TYPES OF PATENTS

"Patented article" and "patented process" are defined in Section 2 (1) (0) as an article or
process for which a patent is issued. A patent can be issued to a new product or procedure, as
well as a technical innovation. A product, an end result, an article, or a process may be the
subject of a patent application. In the case of a product patent, the patent is the finished
product or piece. In the case of a process, the patent only covers the technique by which it is
carried out, not the end product. The full scientific process must be taken into account when
granting process patents. Patents are available for both products and processes.

PRODUCT PATENTS : The patent awarded to the product, the end result, an article, or the
substance itself is known as a product patent. The end result or product is protected by this

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patent. The patent holder has complete control over the production and marketing of the
patented goods.

PROCESS PATENTS
When a substance is invented or manufactured, it is referred to as a process patent. A patent is
not issued to the substance itself; rather, it is granted to the technique or process of
manufacturing a product or substance. The technique is patentable, but not the product or the
end result.

PATENTS OF ADDITION
Patent of addition is a patent granted for the improvement or modification of patent or an
invention. As a result, anyone who has applied for a patent or who has previously secured a
patent can apply to the Controller for any improvement or modification to an invention.

PATENTS ARE DIVIDED INTO THREE CATEGORIES:

1) UTILITY PATENTS:
Anyone who invents or discovers a new and useful process, machine, manufacturing product,
or material composition, or any new and useful improvement thereof, may be eligible for this
grant.

2) DESIGN PATENTS
May be granted to anyone who creates a new, unique, and ornamental design for a
manufactured item; and

3) Plant patents
May be granted to anyone who invents or discovers a new plant variety and reproduces it
asexually.

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2.15 Benefits of getting a Patent
Benefits of obtaining a patent include prevention of theft of your idea, exclusivity, ease of
manufacture and commercialization Increased market share since your concept has become a
brand, Increased monetary worth and profit margins etc.

Provides
Intellectual
Property Right

Safeguards
Your
Helps You In
Invention For
Benefits Of Earning
A Time
Patent From
Period Of 20
Registration Your Own
Years
Invention

Creates An
Asset For
You and
Your
Enterprise

Although the entire process of filing a patent is long and complex, one must remember the
importance it has. With digital advancements, it is probable that the process might get
simplified and easy. Having a patent in place ensures that no individual can claim rights over
your invention. If at all there happens to be an infringement, you can take help from legal
bodies and avoid the problems that can prove to be a hurdle in your growth.

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