2.

HISTORY OF IPR IN INDIA

George Alfred DePenning is supposed to have made the first application for a patent in India in

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the year 1856. On February 28, 1856, the Government of India promulgated legislation to grant

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what was then termed as "exclusive privileges for the encouragement of inventions of new

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manufactures" i.e the Patents Act. On March 3, 1856, a civil engineer, George Alfred DePenning
of 7, Grant’s Lane, Calcutta petitioned the Government of India for grant of exclusive privileges

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for his invention - "An Efficient Punkah Pulling Machine". On September 2, DePenning,

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submitted the Specifications for his invention along with drawings to illustrate its working.

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These were accepted and the invention was granted the first ever Intellectual Property protection
in India.
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History of Copyright Law in India

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Modern copyright law developed in India gradually, in a span of more than 150 years.

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Copyright law entered India in 1847 through an enactment during the East India Company's
regime. According to the 1847 enactment, the term of copyright was for the lifetime of the author
plus seven years post-mortem. But in no case could the total term of copyright exceed a period of
forty-two years. The government could grant a compulsory licence to publish a book if the owner
of copyright, upon the death of the author, refused to allow its publication. The act of
infringement comprised in a person’s unauthorized printing of a copyright work for (or as a part
of attempt of) "sale hire, or exportation", or "for selling, publishing or exposing to sale or hire".

9
Suit or action for infringement was to be instituted in the "highest local court exercising original
civil jurisdiction." The Act provided specifically that under a contract of service copyright in
"any encyclopedia, review, magazine, periodical work or work published in a series of books or
parts" shall vest in the "proprietor, projector, publisher or conductor." Infringing copies were
deemed to be copies of the proprietor of copyrighted work. Importantly, unlike today, copyright
in a work was not automatic. Registration of copyright with the Home Office was mandatory for
the enforcement of rights under the Act. However, the Act also specifically reserved the
subsistence of copyright in the author, and his right to sue for its infringement to the extent
available in law other than the 1847 Act. At the time of its introduction in India, copyright law
had already been under development in Britain for over a century and the provisions of the 1847
enactment reflected the learnings from deliberations during this period.

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In 1914, the then Indian legislature enacted a new Copyright Act which merely extended most
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portions of the United Kingdom Copyright Act of 1911 to India. It did, however, make a few

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minor modifications. First, it introduced criminal sanctions for copyright infringement (sections

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7 to 12). Second, it modified the scope of the term of copyright; under section 4 the "sole right"
of the author to "produce, reproduce, perform or publish a translation of the work shall subsist
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only for a period of ten years from the date of the first publication of the work." The author,
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however, retained her "sole rights" if within the period of ten years she published or authorised

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publication of her work a translation in any language in respect of that language.

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The 1914 Act was continued with minor adaptations and modifications till the 1957 Act was

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brought into force on 24th January, 1958.

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History of Patent Law in India
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The first legislation in India relating to patents was the Act VI of 1856. The objective of this
legislation was to encourage inventions of new and useful manufactures and to induce inventors
to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since
it had been enacted without the approval of the sovereign. Fresh legislation for granting
‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. This legislation contained
certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful
inventions only and extension of priority period from 6 to 12 months. The Act excluded
10
importers from the definition of inventor. The 1856 Act was based on the United Kingdom Act
of 1852 with certain departures including allowing assignees to make application in India and
also taking prior public use or publication in India or United Kingdom for the purpose of
ascertaining novelty.

The Act of 1859 provided protection for invention only and not for designs whereas United
Kingdom had been protecting designs from 1842 onwards. To remove this lacuna, the ‘Patterns
and Designs Protection Act’ (Act XIII) was passed in 1872. This Act amended the 1859 Act to
include any new and original pattern or design or the application of such pattern to any substance
or article of manufacture within the meaning of ‘new manufacture’. The Act XV of 1859 was
further amended in 1883 by XVI of 1883 to introduce a provision to protect novelty of the
invention, which prior to making application for their protection were disclosed in the
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Exhibitions of India. A grace period of 6 months was provided for filing such applications after
the date of the opening of such Exhibition. o
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In 1888, new legislation was introduced to consolidate and amend the law relating to invention

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and designs in conformity with the amendments made in the UK law.

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In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought in replacing all

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the previous legislations on patents and designs. This Act brought patent administration under

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the management of Controller of Patents for the first time. This Act was amended in 1920 to

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provide for entering into reciprocal arrangements with UK and other countries for securing

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priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to

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grant of secret patents, patent of addition, use of invention by Government, powers of the

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Controller to rectify register of patent and increase of term of the patent from 14 years to 16

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years. In 1945, another amendment was made to provide for filing of provisional specification
and submission of complete specification within nine months.

After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its
objective. It was found desirable to enact comprehensive patent law owing to substantial changes
in political and economic conditions in the country. Accordingly, the Government of India
constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired

11
Judge of Lahore High Court, in 1949, to review the patent law in India in order to ensure that the
patent system is conducive to the national interest.

The Committee submitted its interim report on 4th August, 1949 with recommendations for
prevention of misuse or abuse of patent right in India and for amendments to sections 22, 23 &
23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts of 1919 and
1949.

Based on the recommendations of the Committee, the 1911 Act was amended in 1950 (Act
XXXII of 1950) in relation to working of inventions and compulsory licence/revocation.

In 1952, an amendment was made to provide compulsory licence in relation to patents in respect
of food and medicines, insecticide, germicide or fungicide and a process for producing substance

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or any invention relating to surgical or curative devices, through Act LXX of 1952. The

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compulsory licence was also available on notification by the Central Government. Based on the

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recommendations of the Committee, a bill was introduced in the Parliament in 1953 (Bill No.59

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of 1953). However, the bill lapsed on dissolution of the Lok Sabha.

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In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to

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examine the question of revision of the Patent Law and advise government accordingly. The
report of the Committee, which comprised of two parts, was submitted in September, 1959. The
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first part dealt with general aspects of the patent law and the second part gave detailed note on
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the several clauses of the lapsed bill of 1953. The first part also dealt with evils of the patent
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system and solution with recommendations in regard to the law. The committee recommended
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retention of the patent system, despite its shortcomings. This report recommended major changes
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in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was
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introduced in the Lok Sabha on 21st September, 1965, which, however, lapsed.

In 1967, an amended bill was introduced which was referred to a Joint Parliamentary Committee
and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act
repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911
Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought
into force on 20th April, 1972 with the publication of the Patents Rules, 1972.

12
This Act remained in force for about 24 years till December 1994 without any change. An
ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased
to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance
was later replaced by the Patents (Amendment) Act, 1999 that was brought into force
retrospectively from 1st January, 1995. The amended Act provided for filing of applications for
product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents
were not allowed. However, such applications were to be examined only after 31st December,
2004. Meanwhile, the applicants could be allowed Exclusive Marketing Rights (EMRs) to sell or
distribute these products in India, subject to fulfillment of certain conditions.

The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002
(Act 38 0f 2002). This Act came into force on 20 th May, 2003 with the introduction of the new
Patents Rules, 2003 by replacing the earlier Patents Rules, 1972. m
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The third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment)
Ordinance, 2004 with effect from 1st January, 2005. This Ordinance was later replaced by the

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Patents (Amendment) Act, 2005 (Act 15 Of 2005) on 4th April, 2005 which was brought into
force from 1st January, 2005.
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History of Trademark Law in India
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While some form of proprietary protection for marks in India dates back several millennia,
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India’s statutory Trademarks Law dates back to 1860. Prior to 1940 there was no official
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trademark Law in India. Numerous problems arouse on infringement, law of passing off etc and
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these were solved by application of section 54 of the Specific Relief Act, 1877 and the
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registration was obviously adjudicated by obtaining a declaration as to the ownership of a
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trademark under Indian Registration Act 1908.
To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940, this
corresponded with the English Trademarks Act. After this there was an increasing need for more
protection of Trademarks as there was a major growth in Trade and Commerce. The replacement
to this act was the Trademark and Merchandise Act, 1958. This Act was to provide for
registration and better protection of Trademarks and for prevention of the use of fraudulent
marks on merchandise. This Law also enables the registration of trademarks so that the

13
proprietor of the trademark gets legal right to the exclusive use of the trademark. The objective
of this act was easy registration and better protection of trademarks and to prevent fraud.
The repeal of the Trademarks and Merchandise Act gave rise to the Trademark Act 1999; this
was done by the Government of India so that the Indian Trademark Law is in compliance with
the TRIPS obligation on the recommendation of the World Trade Organisation. The object of the
1999 Act is to confer the protection to the user of the trademark on his goods and prescribe
conditions on acquisition, and legal remedies for enforcement of trademark rights

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3. OVERVIEW OF LAWS RELATED TO INTELLECTUAL PROPERTY RIGHTS
IN INDIA

The Rules and Laws governing Intellectual Property Rights in India are as follows:

1. The Copyright Act, 1957, The Copyright Rules, 1958 and International Copyright
Order, 1999
2. The Patents Act, 1970 The Patents Rules, 2003, The Intellectual Property Appellate
Board (Patents Procedure) Rules, 2010 and The Patents (Appeals and Applications to
the Intellectual Property Appellate Board) Rules, 2011
3. The Trade Marks Act, 1999, The Trade Marks Rules, 2002, The Trade Marks

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(Applications and Appeals to the Intellectual Property Appellate Board) Rules, 2003

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and The Intellectual Property Appellate Board (Procedure) Rules, 2003

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4. The Geographical Indications of Goods (Registration and Protection) Act, 1999 and

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The Geographical Indications of Goods (Registration and Protection) Rules, 2002
5. The Designs Act, 2000 and The Designs Rules, 2001

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6. The Semiconductors Integrated Circuits Layout-Design Act, 2000 and The

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Semiconductors Integrated Circuits Layout-Design Rules, 2001

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7. The Protection of Plant varieties and Farmers’ Rights Act, 2001 and The Protection of

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Plant varieties and Farmers Rights’ Rules, 2003

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8. The Biological Diversity Act, 2002 and The Biological Diversity Rules, 2004

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9. Intellectual Property Rights (Imported Goods) Rules, 2007

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15
 4. COPYRIGHT

4.1. What is Copyright?

Copyright is the set of exclusive rights granted to the author or creator of an original work,
including the right to copy, distribute and adapt the work. Copyright lasts for a certain time
period after which the work is said to enter the public domain. Copyright gives protection for the
expression of an idea and not for the idea itself. For example, many authors write textbooks on
physics covering various aspects like mechanics, heat, optics etc. Even though these topics are

m
covered in several books by different authors, each author will have a copyright on the book

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written by him / her, provided the book is not a copy of some other book published earlier.

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Copyright ensures certain minimum safeguards of the rights of authors over their creations,

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thereby protecting and rewarding creativity. Creativity being the keystone of progress, no
civilized society can afford to ignore the basic requirement of encouraging the same. Economic
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and social development of a society is dependent on creativity. The protection provided by
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copyright to the efforts of writers, artists, designers, dramatists, musicians, architects and

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producers of sound recordings, cinematograph films and computer software, creates an

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atmosphere conducive to creativity, which induces them to create more and motivates others to
create.
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4.2.
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Copyright law in India

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The Copyright Act of 1957, The Copyright Rules, 1958 and the International Copyright Order,
1999 governs the copyright protection in India. It came into effect from January 1958. The Act
has been amended in 1983, 1984, 1992, 1994 and 1999. Before the Act of 1957, copyright
protection was governed by the Copyright Act of 1914 which was the extension of British
Copyright Act, 1911.
The Copyright Act, 1957 consists of 79 sections under 15 chapters while the Copyright Rules,
1958 consists of 28 rules under 9 chapters and 2 schedules.
16
 4.3. Meaning of copyright

According to Section 14 of the Act, “copyright” means the exclusive right subject to the
provisions of this Act, to do or authorise the doing of any of the following acts in respect of a
work or any substantial part thereof, namely:-
(a) in the case of a literary, dramatic or musical work, not being a computer programme, -
(i) to reproduce the work in any material form including the storing of it in any medium
by electronic means;
(ii) to issue copies of the work to the public not being copies already in circulation;
(iii) to perform the work in public, or communicate it to the public;

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(iv) to make any cinematograph film or sound recording in respect of the work;
(v) to make any translation of the work;
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(vi) to make any adaptation of the work;
(vii) to do, in relation to a translation or an adaptation of the work, any of the acts

a
specified in relation to the work in sub-clauses (i) to (vi);
(b) in the case of a computer programme,-
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a
(i) to do any of the acts specified in clause (a);

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(ii) to sell or give on commercial rental or offer for sale or for commercial rental any
copy of the computer programme:
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Provided that such commercial rental does not apply in respect of computer programmes
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where the programme itself is not the essential object of the rental.
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(c) in the case of an artistic work,-
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(i) to reproduce the work in any material form including depiction in three dimensions of
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a two dimensional work or in two dimensions of a three dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public not being copies already in circulation;
(iv) to include the work in any cinematograph film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the work any of the acts specified in relation to
the work in sub-clauses (i) to (iv);

17
(d) In the case of cinematograph film, -
(i) to make a copy of the film, including a photograph of any image forming part thereof;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of
whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the film to the public;
(e) In the case of sound recording, -
(i) to make any other sound recording embodying it;
(ii) to sell or give on hire, or offer for sale or hire, any copy of the sound recording
regardless of whether such copy has been sold or given on hire on earlier occasions;
(iii) to communicate the sound recording to the public.
Explanation : For the purposes of this section, a copy which has been sold once shall be deemed
to be a copy already in circulation.
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4.4. Classes of works for which copyright protection is available
Indian Copyright Act affords separate and exclusive copyright protection to the following 7
clauses of work: a
1. Original Literary Work m
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2. Original Dramatic Work

3. Original Musical Work

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4. Original Artistic Work
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5. Cinematograph Films

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6. Sound recording

7. Computer Programme

Copyright will not subsist in any cinematograph film if a substantial part of the film is an
infringement of the copyright in any other work or in any sound recording made in respect of a
literary, dramatic or musical work, if in making the sound recording, copyright in such work has

18
been infringed. In case of work of architecture, copyright will subsist only in the artistic
character and design and will not extend to processes or methods of construction.

4.5. Ownership of Copyright

The author of the work will be the first owner of the copyright in the following instances:

i. In the case of a literary, dramatic or artistic work made by the author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical under a
contract of service or apprenticeship, for the purpose of publication in a newspaper,
magazine or similar periodical, the said proprietor will, in the absence of any agreement
to the contrary, be the first owner of the copyright in the work in so far as the copyright
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relates to the publication of the work in any newspaper, magazine or similar periodical, or
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to the reproduction of the work for the purpose of its being so published, but in all other

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respects the author will be the first owner of the copyright in the work.
ii.
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In the case of a photograph taken, or a painting or portrait drawn, or an engraving or a
cinematograph film made, for valuable consideration at the instance of any person, such
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person will, in the absence of any agreement to the contrary, be the first owner of the
copyright therein. a
iii. n
In the case of a work made in the course of the author’s employment under a contract of

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service or apprenticeship, the employer will, in the absence of any agreement to the

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contrary, be the first owner of the copyright therein.
iv.
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In the case of any address or speech delivered in public, the person who has delivered

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such address or speech or if such person has delivered such address or speech on behalf

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of any other person, such other person will be the first owner of the copyright therein
notwithstanding that the person who delivers such address or speech, or, as the case may
be, the person on whose behalf such address or speech is delivered, is employed by any
other person who arranges such address or speech or on whose behalf or premises such
address or speech is delivered.
v. In the case of a government work, government in the absence of any agreement to the
contrary, will be the first owner of the copyright therein.

19
 vi. In the case of a work made or first published by or under the direction or control of any
public undertaking, such public undertaking in the absence of any agreement to the
contrary, will be the first owner of the copyright therein.

vii. In case of any work which is made or first published by or under the directions or control
of any international organisation, such international organisation will be the first owner
of the copyright therein.

4.6. Assignment of copyright

Sec.18 of the Copyright Act, 1957 deals with assignment of copyright. The owner of the
copyright in an existing work or the prospective owner of the copyright in a future work may
m
assign to any person the copyright either wholly or partially and either generally or subject to
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limitations and either for the whole term of the copyright or any part thereof.
The mode of assignment should be in the following manner:
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•
a
Assignment should be given in writing and signed by the assignor or by his duly
authorized agent.
• m
The assignment should indentify the work and specify the rights assigned and the
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duration and territorial extent of such assignment.
• n
The assignment should also specify the amount of royalty payable, if any, to the author
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or his legal heirs during the currency of the assignment and the assignment may be

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subject to revision, extension or termination on terms mutually agreed upon by the
parties. u
• t
Where the assignee does not exercise the rights assigned to him within a period of one
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year from the date of assignment, the assignment in respect of such rights will be deemed
to have lapsed after the expiry of the said period unless otherwise specified in the
assignment.
The period of assignment will be deemed to be 5 years from the date of assignment unless
specifically mentioned. If the territorial extent of assignment of the rights is not specified, it will
be presumed to extend within India.

20
If any dispute arises with respect to the assignment of any copyright the Copyright Board may,
on receipt of a complaint from the aggrieved party and after holding such inquiry as it considers
necessary, pass such order as it may deem fit including an order for the recovery of any royalty
payable, provided that the Copyright Board may not pass any order to revoke the assignment
unless it is satisfied that the terms of assignment are harsh to the assignor, in case the assignor is
also the author, provided further that no order of revocation of assignment, be made within a
period of five years from the date of such assignment.

4.7. Transmission of copyright by testamentary disposition

Where under a bequest a person is entitled to the manuscript of a literary, dramatic or musical

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work, or to an artistic work, and the work was not published before the death of the testator, the

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bequest can, unless the contrary intention is indicated in the testator's will or any codicil thereto,

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be construed as including the copyright in the work in so far as the testator was the owner of the
copyright immediately before his death. Manuscript means the original document embodying the
work, whether written by hand or not. a
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4.8. Relinquish copyright

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The author of a work can relinquish all or any of the rights comprised in the copyright in the
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work by giving notice in Form I to the Registrar of Copyrights and thereupon such rights will
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cease to exist from the date of the notice. On receipt of notice the Registrar of Copyrights will
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publish it in the Official Gazette and in such other manner as he may deem fit. The
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relinquishment of all or any of the rights comprised in the copyright in a work will not affect any
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rights subsisting in favour of any person on the date of the notice given to the Registrar.

4.9. Term of copyright

Section 22 to 29 of the Copyright Act, 1957 deals with the term of copyright. Copyright
generally lasts for a period of sixty years.

21
  In the case of literary, dramatic, musical or artistic works, the sixty year period is counted
from the year following the death of the author.
 In the case of cinematograph films, sound recordings, photographs, posthumous
publications, anonymous and pseudonymous publications, works of government and
public undertakings and works of international organisations, the 60-year period is
counted from the date of publication.
 In case of Broadcast reproduction right - 25 years from the beginning of the calendar year
next following the year in which the broadcast is made.
 In case of Performers right - 25 years from the beginning of the calendar year next
following the year in which the performance is made.

4.10. Rights of Broadcasting Organisation and of Performers

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Every broadcasting organisation will have a special right to be known as 'broadcast reproduction
right' in respect of its broadcasts. The broadcast reproduction right will subsist until twenty-five

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years from the beginning of the calendar year next following the year in which the broadcast in

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made.

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This would prevent any person other than the broadcasting organisation from:

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i) Re-broadcasting what has already been broadcasted

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ii) Causing the broadcast to be seen or heard by the public on payment of charges

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iii) Making any sound/visual recording of the broadcast
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iv) Making any reproduction of such sound recording ro visual recording where such
initial recording was done without licence or, where it was licensed, for any purpose not
envisaged by such licence

v) Selling or hiring or offering to sell or hire sound/visual recordings.

Where any performer appears or engages in any performance, he will have a special right known
as the 'performer's right' in relation to such performance. The performer's right will subsist until

22
fifty years from the beginning of the calendar year next following the year in which the
performance is made. These rights are:

i) No person may make a sound/visual recording of the performer’s performances

ii) Reproduce a sound/visual recording

iii) Broadcast the performance

iv) Communicate to the public otherwise than by broadcast

4.11. Intellectual Property Rights (IPR) of Computer Software

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In India, the Intellectual Property Rights (IPR) of computer software is covered under the

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Copyright Law. Accordingly, the copyright of computer software is protected under the

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provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were

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introduced in 1994 and came into effect from 10 May 1995. These changes or amendments made
the Indian Copyright law one of the toughest in the world.

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The amendments to the Copyright Act introduced in June 1994 were, in themselves, a landmark
in the India's copyright arena. For the first time in India, the Copyright Law clearly explained:
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• The rights of a copyright holder
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• Position on rentals of software

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• The rights of the user to make backup copies

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Since most software is easy to duplicate, and the copy is usually as good as original, the
Copyright Act was needed.

Some of the key aspects of the law are:

• According to section 14 of this Act, it is illegal to make or distribute copies of

copyrighted software without proper or specific authorization.

• The violator can be tried under both civil and criminal law.
23
 • A civil and criminal action may be instituted for injunction, actual damages (including
violator's profits) or statutory damages per infringement etc.

• Heavy punishment and fines for infringement of software copyright.

• Section 63 B stipulates a minimum jail term of 7 days, which can be extended up to 3

years

4.12. Copyright Infringements

Some of the commonly known acts involving infringement of copyright:

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o Making infringing copies for sale or hire or selling or letting them for hire;

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o Permitting any place for the performance of works in public where such performance

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constitutes infringement of copyright;

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o Distributing infringing copies for the purpose of trade or to such an extent so as to affect

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prejudicially the interest of the owner of copyright ;

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o Public exhibition of infringing copies by way of trade; and

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o Importation of infringing copies into India.

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Civil Remedies for Copyright Infringement
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A copyright owner can take legal action against any person who infringes the copyright in the
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work. The copyright owner is entitled to remedies by way of injunctions, damages and accounts.

The Criminal Offence

Any person who knowingly infringes or abets the infringement of the copyright in any work
commits criminal offence under Section 63 of the Copyright Act. The minimum punishment for
infringement of copyright is imprisonment for six months with the minimum fine of Rs.

24
50,000/-. In the case of a second and subsequent conviction the minimum punishment is
imprisonment for one year and fine of Rs. one lakh.

4.13. International Copyright

Copyrights of works of the countries mentioned in the International Copyright Order are
protected in India, as if such works are Indian works. Copyright of nationals of countries who are
members of the Berne Convention for the Protection of Literary and Artistic Works, Universal
Copyright Convention and the TRIPS Agreement are protected in India through the International
Copyright Order. The list of such countries is mentioned in the schedule of the International
Copyright Order, 1999.
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4.14. Licences o
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Provisions with regard to licences are detailed in Chapter VI of the Copyright Act, 1957.

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Copyright Licence is granted by the owner of the copyright in any existing work or the

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prospective owner of the copyright in any future work in writing signed by him or by his duly

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authorized agent. In the case of a licence relating to copyright in any future work, the licence will

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take effect only when the work comes into existence. Where a person to whom a licence relating

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to copyright in any future work is granted dies before the work comes into existence, his legal

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representatives, in the absence of any provision to the contrary in the licence, will be entitled to

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the benefit of the licence.

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Any person can apply for the grant of copyright licence in Form II to produce and publish
translation of a literary or dramatic work in any language in general use in India after a period of
three years from the publication of such work, if such translation is required for the purpose of
teaching, scholarship or research.

The Copyright Board after holding an enquiry may direct the registrar to grant copyright licence
to the person to publish the work or translation thereof in the language mentioned in the

25
application. The applicant should deposit the amount of royalty as specified by the Copyright
Board in the account of the original owner of the work.

The copyright licence will be terminated at any time after the granting of a licence to produce
and publish the translation of a work in any language, if the owner of the copyright in the work
or any person authorized by him publishes a translation of such work in the same language and
which is substantially the same in content at a price reasonably related to the price normally
charged in India for the translation of works of the same standard on the same or similar subject.

No termination will take effect until after the expiry of a period of three months from the date of
service of a notice in Form IIB on the person holding such licence by the owner of the right of
translation intimating the publication of the translation as aforesaid.

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4.15. Registration of a work under the Copyright Act, 1957
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Copyright comes into existence as soon as a work is created and no formality is required to be

a
completed for acquiring copyright. However, facilities exist for having the work registered in the
Register of Copyrights maintained in the Copyright Office of the Department of Education. The
m
entries made in the Register of Copyrights serve as prima-facie evidence in the court of law.
a
n
Procedure for registration of a work is covered under Chapter VI of the Copyright Rules, 1958

Procedure for registration y

d
u
a. Application for registration is to be made on Form IV (Including Statement of Particulars

t
and Statement of Further Particulars) as prescribed in the first schedule to the Rules ;

S
b. Separate applications should be made for registration of each work;

c. Each application should be accompanied by the requisite fee prescribed in the second
schedule to the Rules ; and

d. The applications should be signed by the applicant or the advocate in whose favour a
Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by
the party and accepted by the advocate should also be enclosed.

26
The following Statement of Further Particulars should be submitted in triplicate along
with the Application for Registration of Copyright (Form IV) -

1. Is the work is to be registered

a. an original work?
b. a translation of a work in the public domain?

c. A translation of a work in which Copyright subsists?

d. an adaptation of a work in the public domain?

e. an adaptation of a work in which Copyright subsists?

m
o
2. If the work is a translation or adaptation of a work in which Copyright subsists:

a. Title of the original work

.c
b. Language of the original work
a
m
c. Name, address and nationality of the author of the original work

a
and if the author is deceased, the date of decease

n
y
d. lName, address and nationality of the publisher, if any, of the

d
original work

u e. Particulars of the authorization for a translation or adaptation

t including the name, address and nationality of the party

S authorizing.

Second schedule to the Copyright Rules, 1958 - Fee payable under the Copyright Act,
1957

For a licence to republish a Literary, Dramatic, Musical or Artistic work Rs. 400/-
(Section 31, 31-A and 32-A) per work

27
 Rs. 600/-
For licence to republish a Cinematograph Film (Section 31)
per work

Rs. 400/-
For a licence to republish a sound recording (Section 31)
per work

For a licence to perform an Indian work in public or to communicate the Rs. 200/-
work to the public by Broadcast (Section 31) per work

For an application for a licence to produce and publish a translation of a Rs. 200/-
Literary or Dramatic work in any Language ) (Section 32 & 32-A per work

For an application for registration of copyright in a:

Rs. 50/-

m
Literary, Dramatic, Musical or Artistic work
per work

o
Provided that in respect of a Literary or Artistic work which is used or is Rs. 400/-
capable of being used in relation to any goods (Section 45)
.c per work

a
For an application for change in particulars of copyright entered in the
Register of Copyrights in respect of a:-
m Rs. 50/-
a
Literary, Dramatic, Musical or Artistic work
per work
n
y
Provided that in respect of a literary or Artistic work which is used or is Rs. 200/-
capable of being used in relation to any goods (Section 45) per work
d
u
For an application for registration of Copyright in a Cinematograph Film Rs. 600/-

t
(Section 45) per work

S
For an application for registration of change in particulars of copyright
entered in the Register of Copyrights in respect of Cinematograph film
Rs. 400/-
per work
(Section 45)

For an application for registration of copyright in a Sound Recording Rs. 400/-

(Section 45) per work

For an application for registration of changes in particulars of copyright Rs. 200/-

entered in the Register of Copyrights in respect of Sound Recording (Section per work

28
 45)

Rs. 20/-
For taking extracts from the indexes (Section 47)
per work

Rs. 20/-
For taking extracts from the Register of Copyrights (Section 47).
per work

For a certified copy of an extract from the Register of Copyrights of the Rs. 20/-
indexes (Section 47) per work

For a certified copy of any other public document in the custody of the Rs. 20/-
Register of Copyright or the Copyright Board per work

For an application for prevention of importation of infringing copies (Section Rs. 400/-
53) per place of entry
m per work

o
Time taken for registration
.c
a
After filing application and receiving diary number the applicant should wait for a mandatory

m
period of 30 days so that no objection is filed in the Copyright office against the claim that

a
particular work is created by the applicant. If such objection is filed it may take another one

n
month time to decide as to whether the work could be registered by the Registrar of Copyrights

y
after giving an opportunity of hearing the matter from both the parties. If no objection is filed the

d
application goes for scrutiny from the examiners. If any discrepancy is found the applicant is

u
given 30 days time to remove the same. Therefore, it may take 2 to 3 month’s time for

t
registration of any work in the normal course. The cooperation of the applicant in providing

S
necessary information is the key for speedy disposal the matter. Any person aggrieved by the
final decision or order of the Registrar of Copyrights may, within three months from the date of
the order or decision, appeal to the Copyright Board.

29
 m
o
.c
a
m
a
n
y
d
u
t
S

30
 4.16. Copyright Board

The Copyright Board, a quasi-judicial body, was constituted in September 1958. The jurisdiction
of the Copyright Board extends to the whole of India. The Board is entrusted with the task of
adjudication of disputes pertaining to copyright registration, assignment of copyright, grant of
Licenses in respect of works withheld from public, unpublished Indian works, production and
publication of translations and works for certain specified purposes. It also hears cases in other
miscellaneous matters instituted before it under the Copyright Act, 1957. The meetings of the
Board are held in five different zones of the country. This facilitates administration of justice to
authors, creators and owners of intellectual property including IP attorney’s near their place of
location or occupation.

m
Powers of the Copyright Board
o
.c
The Copyright Board consists of a Chairman and two or more, but not exceeding fourteen, other

a
members for adjudicating certain kinds of copyright cases. The Chairman of the Board is of the
level of a judge of a High Court. The Board has the power to:
m
i.
a
hear appeals against the orders of the Registrar of Copyright;
ii.
n
hear applications for rectification of entries in the Register of

y
Copyrights;

d iii. adjudicate upon disputes on assignment of copyright;

u
t iv. grant compulsory licences to publish or republish works (in certain

S circumstances);

v. grant compulsory licence to produce and publish a translation of a

literary or dramatic work in any language after a period of seven
years from the first publication of the work;

31
 vi. hear and decide disputes as to whether a work has been published
or about the date of publication or about the term of copyright of a
work in another country;

vii. fix rates of royalties in respect of sound recordings under the

cover-version provision; and

viii. fix the resale share right in original copies of a painting, a

sculpture or a drawing and of original manuscripts of a literary or
dramatic or musical work.

4.17. Copyright Enforcement Advisory Council (CEAC)

m
o
The Government has set up on November 6, 1991 a Copyright Enforcement Advisory Council

.c
(CEAC) to review the progress of enforcement of Copyright Act periodically and to advise the
Government regarding measures for improving the enforcement of the Act.

a
4.18.
m
The Copyright (Amendment) Bill, 2012

a
The Copyright (Amendment) Bill, 2010 was introduced in the Rajya Sabha on 19 th April, 2010.

n
In pursuance of Rule 270 relating to Department-related Parliamentary Standing Committees, the

y
Chairman, Rajya Sabha, referred the Bill to the Standing Committee on Human Resource

d
Development on 23rd April, 2010 for examination and report. The Standing Committee headed

u
by [Link] Fernandes submitted its 227th report on ‘The Copyright Amendment Bill of 2010’

t
on November 23rd 2010.

S
Pursuant to the recommendations of the Standing Committee, the Copyright Amendment Bill of
2012 was passed by the Rajya Sabha on 17th May 2012.
Some of the changes made in the Bill, 2012 pursuant to the recommendations of the Committee
are –
i. Definition given in the Bill of 2010 has been retained but an additional paragraph for
explanation has been added. "Commercial rental" does not include the rental, lease or
lending of a lawfully acquired copy of a computer programme, sound recording, visual
recording or cinematograph film for nonprofit purposes by a non-profit library or non-
32
 profit educational institution. Explanation.—For the purposes of this clause, a “non-
profit library or nonprofit educational institution” means a library or educational
institution which receives grants from the Government or exempted from payment of tax
under the Income-Tax Act, 1961.
ii. Amendment to Section 11 and 12 of the Copyright Act, 1957 has been added.
iii. The provisions with regard to joint ownership of copyright of principal director along
with the producer have been deleted in the Bill of 2012.
iv. Amendment of Section 18 allowed composers and lyricists to retain their rights over the
work which may have been incorporated into a cinematograph work. Thus although the
producer of the movie is the first owner with respect to the music when it is used as part
of the cinematograph work, the lyricist or the composer will be considered first owner for

m
all other purposes. On the basis of the recommendation of the committee, the following
provisos have also been added to Section 18 in the Bill of 2012 –
o
.c
Provided also that the author of the literary or musical work included in a
cinematograph film shall not assign or waive the right to receive royalties to be shared

a
on an equal basis with the assignee of copyright for the utilisation of such work in any

m
form other than for the communication to the public of the work along with the

a
cinematograph film in a cinema hall, except to the author's legal heirs or to a copyright

n
society for collection and distribution and any agreement to contrary shall be void.
Provided also that the author of the literary or musical work included in the sound
y
recording but not forming part of any cinematograph film shall not assign or waive the
d
right to receive royalties to be shared on an equal basis with the assignee of copyright
u
for any utilization of such work except to the legal heirs of the authors or to a collecting
t
society for collection and distribution and any assignment to the contrary shall be void.
v. S
Section 19 that deals with mode of assignment has been modified in the Bill of 2012 as
follows –
No assignment of copyright in any work to make a cinematograph film shall affect the
right of the author of the work to claim an equal share of royalties and consideration
payable in case of utilization of the work in any form other than for the communication to
the public of the work, along with the cinematograph film in a cinema hall.

33
 No assignment of the copyright in any work to make a sound recording which does not
form part of any cinematograph film shall affect the right of the author of the work to
claim an equal share of royalties and consideration payable for any utilization of such
work in any form.
vi. Additional clause has been added in Section 19A wherein the Copyright Board has to
pass the final order in case of complaints with regard to assignment of copyright within 6
months from the date of receipt of the complaint and reasons for any delay in compliance
of the same should be recorded in writing.
vii. Amendment made to Section 26 has been deleted in Bill of 2012. In bill of 2010, proviso
with regard to rights of principal director was added with regard to term of copyright in
cinematograph films.
viii.
m
New sections 31B, 31C and 31D had been inserted in the Bill of 2010 also. Some

o
modifications have been made to the same. For example – clause 5 given in Bill, 2010

.c
has been deleted in Bill, 2012. Clause 3 has been added in Section 31D in Bill, 2012.
ix. Section 33 deals with registration of copyright societies. Amendments made to sec.33

a
under the Bill of 2010 have been modified in Bill of 2012. New clause 3A has been

m
added wherein the registration granted to a copyright society shall be for a period of 5

a
years and be renewed from time to time before the end of every five years on a request in

n
the prescribed form and the Central Government may renew the registration after
considering the report of Registrar of Copyrights on the working of the copyright society
y
under section 36. Provided that the renewal of the registration of a copyright society shall
d
be subject to the continued collective control of the copyright society being shared with
u
the authors of works in their capacity as owners of copyright or of the right to receive
t
royalty. Provided further that every copyright society already registered before the
S
coming into force of the copyright (Amendment) Act, 2012 shall get itself registered
under this Chapter within a period of one year from the date of commencement of the
Copyright (Amendment) Act, 2012.
x. Section 35 deals with control over the copyright society by the owner of rights.
Additional sub sections have been added in Bill of 2012 – Every copyright society shall
have a governing body with such number of persons elected from among the members of
the society consisting of equal number of authors and owners of work for the purpose of

34
the administration of the society as may be specified. All members of copyrights society
shall enjoy equal membership rights and there shall be no discrimination between
authors and owners of rights in the distribution of royalties.

m
o
.c
a
m
a
n
y
d
u
t
S

35
 5. PATENTS

5.1. What is Patent?

Patent is a grant for an invention by the Government to the inventor in exchange for full
disclosure of the invention. A patent is an exclusive right granted by law to applicants / assignees
to make use of and exploit their inventions for a limited period of time (generally 20 years from
filing). The patent holder has the legal right to exclude others from commercially exploiting his
invention for the duration of this period. In return for exclusive rights, the applicant is obliged to
disclose the invention to the public in a manner that enables others, skilled in the art, to replicate
the invention. The patent system is designed to balance the interests of applicants / assignees
(exclusive rights) and the interests of society (disclosure of invention). m
o
.c
5.2. Meaning of ‘Invention’ under Patent Law

a
Sec.2(1)(J) - Invention” means a new product or process involving an inventive step and capable
of industrial application

5.3. What is not an ‘Invention’? m

According to Sec 3 of the Patent Act, 1970 a
• Frivolous inventions n
• y
Inventions contrary to well established natural laws
• d
u
Commercial exploitation or primary use of inventions,

t
o which is contrary to public order or morality

S o which causes serious prejudice to health or human, animal, plant life or to the
environment
• 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

36
• 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.
• Substance obtained by mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance
• Mere arrangement or re-arrangement or duplication of known devices, each
functioning independently of one another in a known way
• Method of Agriculture or Horticulture
• Any process for medicinal, surgical, curative, prophylactic, diagnostic,
therapeutic or other treatment of human beings or a similar treatment of
animals to render them free of disease or to increase their economic value or
that of their products
m
•
o
Plants & animals in whole or any part thereof other than micro- organisms, but

.c
including seeds, varieties an d species and essentially biological process for

a
production or propagation of plants & animals
• mathematical method or
• business method or m
• algorithms or a
• computer programme per se n
• y
A literary,dramatic, musical or artistic work or any other aesthetic creation including

d
cinematographic work and television productions
• u
Presentation of information
• t
Topography of integrated circuits.
• S
Inventions which are Traditional Knowledge or an aggregation or duplication of
known properties of traditionally known component or components

37
 5.4. What is meant by ‘New”?

The invention to be patented must not be published in India or elsewhere, or in prior public
knowledge or prior public use with in India or claimed before in any specification in India

A feature of an invention that involves technical advance as compared to the existing knowledge
or have economic significance or both and makes the invention not obvious to a person skilled
in the art.

5.5. What can be patented?

Any invention concerning with composition, construction or manufacture of a substance, of an

article or of an apparatus or an industrial type of process.

5.6. What cannot be patented?

Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 m
o
.c
5.7. Who are the beneficiaries of the patent grant?

a
1. The inventor is secure from competition and can exploit the invention for his gain.
2. For the public the invention becomes public knowledge. The technology is freely
m
available after expiry of patent and cheaper and better products become available.
a
n
5.8.
y
Patent System In India

d
u
t
The Patent System in India is governed by the Patents Act, 1970 as amended by the Patents

S
(Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents (Amendment)
Rules 2006 effective from 05-05-2006.

5.8.1. Administration

Patent system in India is administered under the superintendence of the Controller General of
Patents, Designs, Trademarks and Geographical Indications.

38
The Office of the Controller General functions under the Department of Industrial Policy and
Promotion, Ministry of Commerce and Industry. There are four patent offices in India. The Head
Office is located at Kolkata and other Patent Offices are located at Delhi, Mumbai and Chennai.
The Controller General delegates his powers to Sr. Joint Controller, Joint Controllers, Deputy
Controllers and Assistant Controllers. Examiners of patents in each office discharge their duties
according to the direction of the Controllers.

The Patent Information system (PIS) at Nagpur has been functioning as patent information base
for the users. The PIS maintains a comprehensive collection of patent specification and patent
related literature, on a world-wide basis and provides technological information contained in
patent or patent related literature through search services and patent copy supply services to
various users of R&D establishments, Government offices, private industries, business, inventors
and other users within India. m
o
.c
Hierarchy of Officers in Patent office

• a
Controller General of Patents, Designs, Trademarks & GI
• Examiners of Patents & Designs
m
• a
Assistant Controller of Patents & Designs

n
•
y
Deputy Controller of Patents & Designs

• d
Joint Controller of Patents & Designs

u
•
t
Senior Joint Controller of Patents & Designs

S
Jurisdiction of Patent offices in India

An applicant or first mentioned applicant in case of joint applicants can file application for patent
at the appropriate Patent Office under whose jurisdiction he normally resides or has his domicile
or has a place of business or the place from where the invention actually originated. For the
applicant, who is non-resident or has no domicile or has no place of business in India, the
39
address for service in India or place of business of his patent agent determines the appropriate
patent office where applications for patent can be filed.

Office Territorial Jurisdiction

The States of Maharashtra, Gujarat, Madhya Pradesh,

Patent Office Branch, Mumbai Goa and Chhattisgarh and the Union Territories of Daman
and Diu & Dadra and Nagar Haveli

The States of Andhra Pradesh, Karnataka, Kerala, Tamil

Patent Office Branch, Chennai Nadu and the Union Territories of Pondicherry and
Lakshadweep.

m
The States of Haryana, Himachal Pradesh, Jammu and

o
Patent Office Branch, New Delhi Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal,
Delhi and the Union Territory of Chandigarh.

.c
a
Patent Office, Kolkata The rest of India.

m
a
5.8.2. Types Of Patent Applications
n
1) Ordinary Application
y
2)
d
Application for Patent of Addition (granted for Improvement or Modification of the

u
already patented invention, for an unexpired term of the main patent).
3)
t
Divisional Application (in case of plurality of inventions disclosed in the main

4)
S
application).
Convention application, claiming priority date on the basis of filing in Convention
Countries.
5) National Phase Application under PCT.
5.8.3. Who can apply for Patent?

The inventor may make an application, either alone or jointly with another, or his/their assignee
or legal representative of any deceased inventor or his assignee.
40
 5.8.4. How is a patent obtained?

o File an application for patent

o With one of the patent offices based on territorial jurisdiction of the place of office or
residence of the applicant /agent
o Pay the required fee
o Information concerning application form and details of fee available at
[Link]
o Guidelines for applicants also available on this website
The Patent Office then

m
o
- Conducts searches to ascertain the prerequisites
- Publishes the application
- Conducts in-depth examination
.c
-
-
Raises objection to the application
Grants the patent
a
5.8.5. General precautions for an applicant m
a
n
The first to file system is employed, in which, among persons having filed the same invention,

y
first one is granted a patent, therefore, a patent application should be filed promptly after

d
conceiving the invention. It is common experience that through ignorance of patent law,

u
inventors act unknowingly and jeopardize the chance of obtaining patents for their inventions.

t
The most common of these indiscretions is to publish their inventions in newspapers or scientific

S
and technical journals, before applying for patents. Publication of an invention, even by the
inventor himself, would (except under certain rare circumstances) constitute a bar for the
subsequent patenting of it. Similarly, the use of the invention in Public, or the commercial use of
the invention, prior to the date of filing patent application would be a fatal objection to the grant
of a patent for such invention, thereafter. There is, however, no objection to the secret working of
the invention by way of reasonable trial or experiment, or to the disclosure of the invention to
others, confidentially.

41
Another mistake, which is frequently made by the inventors, is to wait until their inventions are
fully developed for commercial working, before applying for patents. It is, therefore, advisable to
apply for a patent as soon as the inventor's idea of the nature of the invention has taken a definite
shape.
It is permissible to file an application for a patent accompanied by a "Provisional Specification"
describing the invention. The application may, therefore, be made even before the full details of
working of the invention are developed. The filing of an application for a patent disclosing the
invention would secure priority date of the invention, and thereby, enable the inventor to work
out the practical details of the invention and to file complete specification within 12 months from
the date of filing of provisional specification.

5.8.6. What is meant by patentable invention?

m
o
A new product or process, involving an inventive step and capable of being made or used in an

.c
industry. It means the invention to be patentable should be technical in nature and should meet
the following criteria –
• a
Novelty: The matter disclosed in the specification is not published in India or elsewhere

m
before the date of filing of the patent application in India.
•
a
Inventive Step: The invention is not obvious to a person skilled in the art in the light of

n
the prior publication/knowledge/ document.

y
• Industrially applicable: Invention should possess utility, so that it can be made or used in

d
an industry.

u
5.8.7. What is not patentable?

t
The following are Non-Patentable inventions within the meaning of Section 3 of Patents Act,
1970 - S
(a) an invention which is frivolous or which claims anything obviously contrary to well
established natural laws;
(b) 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; (For e.g. process of making brown sugar will not be
patented.)

42
(c) The mere discovery of a scientific principle or the formulation of an abstract theory (or
discovery of any living thing or non-living substances occurring in nature);
(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 or the mere discovery of any new property
or mere 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;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way;

m
(g) a method of agriculture or horticulture; (For e.g. the method of terrace farming cannot be
patented.)
o
.c
(h) any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render them

a
free of disease or to increase their economic value or that of their products; (For e.g. any new
technique of hand surgery is not patentable)
m
a
(i) plants and animals in whole or any part thereof other than micro-organisms but including

n
seeds, varieties and species and essentially biological processes for production or propagation of
plants and animals;
y
(j) a mathematical or business method or a computer programme per se or algorithms;
d
(k) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
u
including cinematographic works and television productions;
t
(I) a mere scheme or rule or method of performing mental act or method of playing game; (m) a
S
presentation of information;
(n) topography of integrated circuits;
(o) an invention which in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.
(p) Inventions relating to atomic energy and the inventions prejudicial to the interest of security
of India.

43
 5.8.8. Appropriate office for filing an application & for other Proceedings

Application is required to be filed according to the territorial limits where the applicant or the
first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile
or has a place of business or the place from where the invention actually originated. If the
applicant for the patent or party in a proceeding having no business place or domicile in India,
the appropriate office will be according to the address for service in India given by the applicant
or party in a proceeding . The appropriate office once decided in respect of any proceedings
under the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta,
Mumbai, Delhi & Chennai.

From 20th July, 2007 the Indian Patent Office has put in place an online filing system for patent
application.
m
5.8.9. Publication and Examination of Patent Applications o
.c
a
Publication:
All the applications for patent, except the applications prejudicial to the defence of India or

m
abandoned due to non-filing of complete specification within 12 months after filing the

a
provisional or withdrawn within 15 months of filing the application, are published in the Patent

n
Office Journal just after 18 months from the date of filing of the application or the date of

y
priority whichever is earlier. The publication includes the particulars of the date of the

d
application, application number, name and address of the applicant along with the abstract. The

u
applications for patent are not open for public inspection before publication. After the date of

t
publication of the application, as stated above, the complete specification along with provisional

S
and drawing, if any, abstract , application on any form or on plain paper and any correspondence
between the office and applicant may be inspected at the appropriate office by making a written
request to the Controller in the prescribed manner and on the payment of prescribed fee.

Request for examination

An application for patent will not be examined if no request is made by the applicant or by any
other interested person in Form-18 with prescribed fee of Rs.2,500/- or Rs.10,000/- for natural
person and other than natural person respectively, within a period of 48 months from the date of
44
priority of the application or from the date of filing of the application, whichever is earlier.
Where no request for examination of the application for patent has been filed within the
prescribed period, the aforesaid application will be treated as withdrawn and, thereafter,
application cannot be revived.

Examination

Application for patent, where request has been made by the applicant or by any other interested
person, will be taken up for examination, according to the serial number of the requests received
on Form 18. A First Examination Report (FER) stating the objections/requirements is
communicated to the applicant or his agent according to the address for service ordinarily within
six (06) months from the date of request for examination or date of publication whichever is

m
later. Application or complete specification should be amended in order to meet the

o
objections/requirements within a period of 12 months from the date of First Examination Report

.c
(FER). No further extension of time is available in this regard. If all the objections are not
complied with within the period of 12 months, the application shall be deemed to have been

a
abandoned. When all the requirements are met the patent is granted, after 6 months from the date

m
of publication, the letter patent is issued, entry is made in the register of patents and it is notified

a
in the Patent Office, Journal.

n
5.8.10. Withdrawal of patent application

y
The application for patent can be withdrawn at least 3 (Three) months before the first publication
d
which will be 18 (Eighteen) months from the date of filing or date of priority whichever is
u
earlier. The application can also be withdrawn at any time before the grant of the patent. The
t
application withdrawn after the date of publication cannot be filed again as it is already laid open
S
for public inspection. However, application withdrawn before the publication can be filed again
provided it is not opened to public otherwise.

5.8.11. Opposition proceedings to grant of patents

Where an application for a patent has been published but a patent has not been granted, any
person may, in writing represent by way of opposition to the Controller against the grant of any

45
Patent. The representation shall be filed at the appropriate office and shall include a statement
and evidence, if any, in support of the representation and a request for hearing if so desired.
The above representation may be made on the following grounds
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully
obtained the invention or any part thereof from him or from a person under or through whom he
claims;
(b) that the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent made in India on
or after the 1st day of January, 1912; or (ii) in India or elsewhere, in any other document:
Provided that the ground specified in sub-clause (ii) shall not be available where such

m
publication does not constitute an anticipation of the invention by virtue of sub-section
(2) or sub-section (3) of section 29;
o
.c
(c) that the invention so far as claimed in any claim of the complete specification is claimed in a
claim of a complete specification published on or after the priority date of the applicant's claim

a
and filed in pursuance of an application for a patent in India, being a claim of which the priority
date is earlier than that of the applicant's claim;
m
a
(d) that the invention so far as claimed in any claim of the complete specification was publicly

n
known or publicly used in India before the priority date of that claim.
Explanation —For the purposes of this clause, an invention relating to a process for which a
y
patent is claimed shall be deemed to have been publicly known or publicly used in India before
d
the priority date of the claim if a product made by that process had already been imported into
u
India before that date except where such importation has been for the purpose of reasonable trial
or experiment only; t
S
(e) that the invention so far as claimed in any claim of the complete specification is obvious and
clearly does not involve any inventive step, having regard to the matter published as mentioned
in clause (b) or having regard to what was used in India before the priority date of the applicant's
claim;

(f) that the subject of any claim of the complete specification is not an invention within the
meaning of this Act, or is not patentable under this Act;

46
(g) that the complete specification does not sufficiently and clearly describe the invention or the
method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information required by section 8
or has furnished the information which in any material particular was false to his knowledge;
(i) that in the case of convention application, the application was not made within twelve months
from the date of the first application for protection for the invention made in a convention
country by the applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions the source or
geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated
having regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere, but on no other ground.
m
o
The Controller shall, if requested by such person for being heard, hear him and dispose of such

.c
representation. If the opposition is decided in favour of the applicant, the patent is granted and
the grant of Patent is published in the Patent Office Journal thereby opening the application,

a
specification and other related documents for public inspection on payment of prescribed fee.

m
a
n
Post grant opposition - Any interested person can file notice of opposition (along with written
statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period
y
of one year from the date of publication of grant of a Patent in the Patent Office Journal .The
d
above notice under Section 25(2) should be filed on Form-7 along with a fee of Rs. 1500/ or Rs.
u
6000/- for natural person and other than natural person respectively, in duplicate at the
t
appropriate office. The grounds of opposition under section 25 (2) are the same as given before
S
in case of pre grant opposition. The post grant opposition is decided by an Opposition Board
followed by a hearing and the reasoned decision by the Controller.

5.8.12. Grant of Patent

When all the requirements are met or in case of opposition under section 25(1),if the opposition
is decided in favour of the applicant ,the patent is granted, after 6 months from the date of
publication under section 11 A, the letter patent is issued, entry is made in the register of patents

47
and it is notified in the Patent Office, Journal, thereafter opening the application, specification
and other related documents for public inspection on payment of prescribed fee.

5.8.13. Term and Date of Patent

Term of every patent will be 20 years from the date of filing of patent application, irrespective of
whether it is filed with provisional or complete specification. Date of patent is the date on which
the application for patent is filed. The term of patent in case of International applications filed
under the Patent Cooperation Treaty designating India, will be 20 years from the International
filing date accorded under the Patent Cooperation Treaty.A patent will have cease to effect on
the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid
within the prescribed period.
m
5.8.14. Renewal and restoration
o
.c
To keep the patent in force, Renewal fee is to be paid every year. The first renewal fee is payable

a
for the third year and must be paid before the expiration of the second year from the date of
patent If the patent has not been granted within two years the renewal fees may be accumulated

m
and paid immediately after the patent is granted, or within three months of its record in Register

a
of Patents or within extended period of 9 months, by paying extension fees of six month on Form

n
4, from the date of record. If the renewal fee is not paid within the prescribed time, the patent

y
will cease to have effect. However, provision to restore the patent is possible provided

d
application is made within eighteen months from the date of cessation.

u
Renewal fee is counted from the date of filing of the Patent application. Six month's grace time is

t
available with extension fee for payment of renewal fee. No renewal fees is payable on Patents

S
of Addition, unless the original patent is revoked and if the Patent of Addition is converted into
an independent patent; renewal fee, then, becomes payable for the remainder of the term of the
main patent. Application for restoration of a patent that lapses due to non-payment of renewal
fees must be made within 18 months of lapse. The application is to be filed in the appropriate
office according to the jurisdiction.

5.8.15. What are the documents required for filing a Patent application?

1) Application form in duplicate (Form 1).

48
2) Provisional or complete specification in duplicate. If the provisional specification is filed, it
must be followed by the complete specification within 12 months. (Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign
patent application in duplicate (Form 3).

6) Priority document (if priority date is claimed) in convention application, when directed by the
Controller.

7) Declaration of inventorship where provisional specification is followed by complete

specification or in case of convention/PCT national phase application (Form 5).m
o
.c
8) Power of attorney (if filed through Patent Agent).

a
9) Fee (to be paid in cash/by cheque/by demand draft) (Schedule I).

m
(The cheque or demand draft should be payable to the "Controller of Patents" drawn on any

a
schedule bank at a place where the appropriate office is situated).

Request for permission to file abroad:

n
y
If any application is to be filed abroad ,without filing in India ,it should be made only after taking

d
a written permission from the Controller .The request for permission for making patent

u
application outside India shall be made in Form-25 along with a fee of Rs 1000/- or Rs 4000/-

t
for natural person and other than natural person respectively. A gist of invention should also be

S
filed along with the Form-25.

Specifications

Provisional specification - Application for patent may be accompanied by the provisional

specification. It should contain the description of invention with drawing, if required. It is not
necessary to include Claim. However, the complete specification should be fairly based on the
matter disclosed in the provisional specification and should be filed within 12 months. If the
complete specification is not filed within 12 months the application is deemed to have been
49
abandoned. Usually a provisional specification is 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.

Complete specification - The complete specification is an essential document in the filing of

patent application along with the drawing to be attached according to the necessity. Complete
specification should fully describe the invention with reference to drawing, if required,
disclosing the best method known to the applicant and end with Claim/Claims defining the scope
of protection sought.. The specification must be written in such a manner that person of ordinary
skill in the relevant field, to which the invention pertains, can understand the invention.
Normally, it should contain the following matter- m
1) Title of invention, o
2) Field of invention,
.c
a
3) Background of invention with regard to the drawback associated with known art,
4) Object of invention,
5) Statement of invention, m
6) A summary of invention, a
n
7) A brief description of the accompanying drawing,

y
8) Detailed description of the invention with reference to drawing/examples,
9) Claim(s),
d
10) Abstract.
u
t
The specification must start with a short title, which describes the general nature of invention.

S
The title should not contain anyone's name, a fancy name and trade name or personal name or
any abbreviation etc.

5.8.16. Rights of the Patentee (Sec.48 of Patents Act, 1970)

Where a patent covers a product, the grant of patent gives the patentee the exclusive right to
prevent others from performing, without authorisation, the act of making, using, offering for sale,
selling or importing that product for the above purpose.

50
Where a patent covers a process, the patentee has the exclusive right to exclude others from
performing, without his authorisation, the act of using that process, using and offering for sale,
selling or importing for those purposes, the product obtained directly by that process in India.

Where a patent is granted to two or more persons, each of those persons will be entitled to an
equal undivided share in the patent unless there is an agreement to the contrary.

5.8.17. Restoration of lapsed patents

Where a patent has ceased to have effect due to failure to pay the renewal fee within the
prescribed period, the patentee or his legal representative can within 18 months from the date on
which the patent ceased to have effect make an application in Form 15 for restoration of the
m
patent. If the Controller is satisfied that failure to pay the renewal fee was unintentional and that
o
there has been no undue delay in the making of the application, then the patent will be restored.

.c
5.8.18. Compulsory Licence
a
m
a
Compulsory Licensing (CL) allows governments to license third parties (that is, parties other

n
than the patent holders) to produce and market a patented product or process without the consent

y
of patent owners.

d
Chapter XVI i.e. Sections 82 to 94 of the Patents act, 1970 deals with ‘Working of Patents,

u
Compulsory Licenses and Revocation’. Chapter XVII also deals with use of inventions for the

t
purpose of government and acquisition of inventions by Central Government.

S
Chapter XIII i.e. Rules 96 to 102 of Patents Rules, 2003 deals with ‘compulsory licence and
revocation of patent’.

Sec.84 of Patents Act, 1970 deals with general Compulsory Licences to be issued by the
Controller on application.

Any time after three years from date of sealing of a patent, application for compulsory licence
can be made, provided

51
 a) reasonable requirements of public have not been satisfied;
b) patented invention is not available to public at a reasonably affordable price or
c) patented invention is not worked in India.
Applicant’s capability including risk taking, ability of the applicant to work the invention in
public interest, nature of invention, time elapsed since sealing, measures taken by patentee to
work the patent in India will be taken into account by the Controller of Patents before granting
licence. In case of national emergency or other circumstances of extreme urgency or public non
commercial use or an establishment of a ground of anti competitive practices adopted by the
patentee, the above conditions will not apply.

Section 92 of Patents Act, 1970 deals with special provision for compulsory licences on
notifications issued by Central Government. If the Central Government is satisfied in respect of
m
any patent in force, in case of national emergency or extreme urgency or in case of public non-
o
commercial use, then compulsory licences can be granted at any time to work the invention and
make a declaration in this regard in the Official Gazette.
.c
a
Section 92A of Patents Act, 1970 provides for compulsory licensing of patents relating to the

m
manufacture of pharmaceutical products for export to countries with public health problems.

a
This section is an "enabling provision" for export of pharmaceutical products to any country

n
having insufficient or no manufacturing capacity in the pharmaceutical sector in certain

y
exceptional circumstances, to address public health problems. Such country has either to grant

d
compulsory licence for importation or issue a notification for importation into that country.

u
The general purpose for granting compulsory licence is that –
t
S
a. that patented inventions are worked on a commercial scale in India without undue delay
and to the fullest extent that is reasonably practicable;
b. that the interests of any person for the time being working or developing an invention in
India under the protection of a patent are not unfairly prejudiced.

While settling the terms and conditions of compulsory licences, the Controller should endeavour
to secure –

52
 • that the royalty and other remuneration, if any, reserved to the patentee or other person
beneficially entitled to the patent, is reasonable, having regard to the nature of the
invention, the expenditure incurred by the patentee in making the invention or in
developing it and obtaining a patent and keeping it in force and other relevant factors;
• that the patented invention is worked to the fullest extent by the person to whom the
licence is granted and with reasonable profit to him;

• that the patented articles are made available to the public at reasonably affordable prices;

• that the licence granted is a non-exclusive licence;

• that the right of the licensee is non-assignable;

• m
that the licence is for the balance term of the patent unless a shorter term is consistent
with public interest;
o
•
.c
that the licence is granted with a predominant purpose of supply in the Indian market and

a
that the licensee may also export the patented product if required;

• m
that in the case of semi-conductor technology, the licence granted is to work the

a
invention for public non-commercial use;

• n
that in case the licence is granted to remedy a practice determined after judicial or
y
administrative process to be anti-competitive, the licensee shall be permitted to export the
d
patented product, if need be.
u
t
Compulsory licence under Paris convention

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The Paris Convention is an international convention for promoting trade among the member
countries, devised to facilitate protection of industrial property simultaneously in the member
countries without any loss in the priority date. All the member countries provide national
treatment to all the applications from the other member countries for protection of industrial
property rights. The convention was first signed in 1883. Since then the Convention has been
revised several times; in 1900 at Brussels, in 1911 at Washington, in 1925 at the Hague, in 1934

53
at London, in 1958 at Lisbon and in 1967 at Stockholm. The last amendment took place in 1979.
India became a member of the Paris Convention on December 7, 1998.

The principal features of the Paris Convention are:

• National treatment
• Right of priority

• Independence of patents

• Parallel importation

• Protection against false indications and unfair competition

m
The Paris convention recognized that non working of registered patents may amount to abuse of
the patent system.
o
•
.c
Article 5A (2) permits members of Paris union to “take legislative measures for the grant

a
of compulsory licenses, to prevent the abuses which might result from the exercise of
exclusive rights conferred by the patent. For example - failure to work.
• m
According, to Article 5A (3) persistent inaction on the part of the patent holder may even
a
be remedied by forfeiture, of the patent right, but not before the expiration of two years

n
from the grant of a first compulsory license.
• y
According to Article 5A (4) however insufficient working shall not result in compulsory

d
license before the expiration period of 4 years from the date of filing of patent application

u
or 3 years from the date of grant of patent, whichever period expires last. The patent

t
holder is allowed to justify his inactions by legitimate reasons stemming from “the

S
existence of legal, economic, technical obstacles to exploitation, or more intensive
exploitation of the patent in the country”.

Compulsory licence under TRIPS

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an

international agreement administered by the World Trade Organization (WTO) that sets down

54
minimum standards for many forms of intellectual property (IP) regulation as applied to
nationals of other WTO Members. It was negotiated at the end of the Uruguay Round of the
General Agreement on Tariffs and Trade (GATT) in 1994. (The Uruguay Round was the 8th
round of multilateral trade negotiations (MTN) conducted within the framework of the General
Agreement on Tariffs and Trade (GATT), spanning from 1986-1994 and embracing 123
countries as “contracting parties”. The Round transformed the GATT into the World Trade
Organization.)

The TRIPS agreement introduced intellectual property law into the international trading system
for the first time and remains the most comprehensive international agreement on intellectual
property to date.

m
According to the TRIPS agreement patent protection must be available for inventions for at least

o
20 years. Patent protection must be available for both products and processes, in almost all fields

.c
of technology. Governments can refuse to issue a patent for an invention if its commercial
exploitation is prohibited for reasons of public order or morality. They can also exclude
a
diagnostic, therapeutic and surgical methods, plants and animals (other than microorganisms),

m
and biological processes for the production of plants or animals (other than microbiological
processes).
a
n
The agreement describes the minimum rights that a patent owner must enjoy. But it also allows
y
certain exceptions. A patent owner could abuse his rights, for example by failing to supply the

d
product on the market. To deal with that possibility, the agreement says governments can issue

u
“compulsory licences” (Article 31) for allowing a competitor to produce the product or use the

t
process under licence. But this can only be done under certain conditions aimed at safeguarding
S
the legitimate interests of the patent-holder.

5.8.19. Procedure to check if invention is already patented

The person concerned can perform a preliminary search on Patent Office website in the Indian
patent data base of granted patent or Patent Office journal published every week or by making
search in the documents kept in the Patent Office Search and Reference Room, which contains
Indian patents arranged according to international patent classification system as well in serial

55
number. It is open to the general public from Monday to Friday, except Gazetted holidays. The
public can also conduct search free of charge on the website of Patent Office. The person
concerned can also make a request for such information under section 153 of the Act.

5.8.20. Patent Agent

A Patent agent is a registered person with Indian Patent Office whose name is entered in the
patent agent register after being declared qualified the patent agent examination conducted by the
patent office and who is entitled—
(a) to practice before the Controller; and

(b) to prepare all documents, transact all business and discharge such other functions as may be
prescribed in connection with any proceeding before the Controller under this Act.
m
Eligibility conditions for registration as patent agents are below.-
o
.c
A person shall be qualified to have his name entered in the register of patent agents if he fulfills

a
the following conditions, namely—

(a) he is a citizen of India;

m
(b) he has completed the age of 21 years;
a
n
(c) he has obtained a degree in science, engineering or technology from any university
y
established under law for the time being in force in the territory of India or possesses such other
d
equivalent qualifications as the Central Government may specify in this behalf and, in addition,
— u
t
S
(i) has passed the qualifying examination prescribed for the purpose; or

(ii) has, for a total period of not less than ten years, functioned either as an examiner or
discharged the functions of the Controller under section 73 or both, but ceased to hold
any such capacity.

It is not necessary under the patent law to engage a registered patent agent for filing an
application for patent. The applicant is free to file an application by himself or through the patent

56
agent. However, an applicant who is not a resident of India is required to file either through the
registered patent agent or must give an address for service in India.

5.8.21. Infringement of Patents

Infringement of a patent consists of the unauthorized making, importing, using, offering for sale
or selling any patented invention within the India.

Remedies against infringement of a patented invention

1. Interlocutory Injunction

A patent owner at the start of a trial can request for an interim injunction to
restrain the defendant from committing the acts complained of until the hearing of
m
the action or further orders. Permanent injunction is given based on the merits of
the case at the end of the trial. o
.c
2. Relief of damages: An award of damages focuses on the losses sustained by the
a
claimant. A patent owner is entitled to the relief of damages as compensation to

m
the patentee and not punishment to the infringer.

a
3. Account of profits: Account of profits focuses on the profits made by the

n
defendant, without reference to the damage suffered by the claimant at the hands

y
of the defendant. The purpose of the account is to prevent the unjust enrichment

d
of the defendant by the use of the claimant’s invention. The patent owner may

u
also opt for the account of profits where he has to prove use of invention and the

t
amount of profit derived from such illegal use.

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5.8.22. Penalties

1) Contravention of secrecy provisions relating to certain inventions (Sec.118) - If any

person fails to comply with any directions given under section 35 or makes or causes to
be made an application in contravention of section 39 he shall be punishable with
imprisonment up to 2 years or with fine or with both. (Section 35 deals with secrecy

57
 directions relating to inventions relevant for defence purposes and Section 39 deals with
residents not to apply for patents outside India without prior permission.

2) Falsification of entries in register etc (Sec.119) - If any person makes, or causes to be

made, a false entry in any register kept under this Act, he shall be punishable with
imprisonment for a term that may extend to 2 years or with fine or with both.

3) Unauthorized claim of patent rights (Sec.120) - If any person falsely represents that any
article sold by him is patented in India or is the subject of an application for a patent in
India, he will be punishable with fine that may extend to Rs.1,00,000. The use of words
'patent', Patented', 'Patent applied for', 'Patent pending', 'Patent registered' without
mentioning the name of the country means they are patented in India or patent applied for
in India.
m
o
4) Wrongful use of words, "patent office" (Sec.121) - If any person uses on his place of

.c
business or any document issued by him or otherwise the words “patent office” or any

a
other words which reasonably lead to the belief that his place of business is, or is
officially connected with, the patent office, he will be punishable with imprisonment for a
m
term that may extend to 6 months, or with fine, or with both.
a
n
5) Refusal or failure to supply information (Sec.122) - If any person refuses or fails to

y
furnish information as required under section 100(5) and 146 he shall be punishable with

d
fine, which may go up to Rs 10,00,000/-. If he furnishes false information knowingly he

u
shall be punishable with imprisonment that may extend to 6 months or with fine or with
both.
t
S
6) Practice by non-registered patent agents (Sec.123) - Any person practicing as patent
agent without registering is liable to be punished with a fine of Rs 1,00,000/- in the first
offence and Rs.5,00,000/- for subsequent offence.

7) Deals with offences by companies (Sec.124) - When offence is committed by a company

as well as every person in charge of and responsible to the company for the conducts of
its business at the time of the commission of the offence will be deemed to be guilty and
will be liable to be preceded against and punished accordingly. Provided that nothing
58
 contained in this sub-section shall render any such person liable to any punishment if he
proves that the offence was committed without his knowledge or that he exercised all due
diligence to prevent the commission of such offence.

5.8.23. E-filing of Patent applications

What is e-Filing?

E-filing is a service provided by the Intellectual Property Office, India in order to enable
customers to apply for a patent on-line allowing from the User’s browser for the User to:

• Complete an electronic application form • Provide the associated attachments • Complete

the necessary payment details

Procedure for e-filing

m
o
1. Acquire Class 3 Digital Signatures either from (n) Code Solutions, Tata Consultancy
Services (TCS) & Safe Script.
.c
a
2. New users (Applicants, Agents or Attorneys), can complete online registration by
providing Digital Signature details to get a User ID and Password for using the e-Filing
System of Indian Patent Office (IPO). m
a
n
3. Secure Login into the system with created User Id and the Password.

y
4. Download the Client Software for preparing Patent Application Offline with required
d
documents and Digitally Sign it for uploading on IPO Server.
u
t
5. Fill Patent Application offline and generate an XML file using Client Software.

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6. After creating application (XML) file offline, Digitally Sign the XML file (Max. file size
permitted 5MB) for uploading on to the IPO Server.

7. Login into e-Patent portal ([Link] for uploading Application XML file on
IPO Server.

8. Upload & Submit Digitally Signed XML file to IPO Server.

59
 9. Process Application for EFT (Electronic Fund Transfer) using State Bank of India(SBI)
& Axis Bank Payment Gateways.

10. Review Application Status on e-Patent Portal.

11. On successful EFT acknowledgement details would be displayed/ generated.

12. Print Acknowledgement. Click on "Print" to generate printout of acknowledgement.

5.8.24. Fees under the Patents Act, 1970

Amount of fees (in rupees)

Form Description Natural Person Legal Entity other
no. than m natural
o
person(s).

1 Application for Patent 1000

.c 4000

a
- Multiple of 1000 in- Multiple of 4000 in

m
case of every multiplecase of every multiple

a priority. priority.

n - 100 (each sheet of- 400 (each sheet of

y specification in additionspecification in

d to 30) addition to 30)

u
t
- 200 (for each claim- 800 (for each claim

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in addition to 10) in addition to 10)

60
2 Provisional / CompleteNo fee No fee
specification
- 100 (each sheet of- 400 (each sheet of
specification in additionspecification in
to 30) addition to 30)

- 200 (for each claim- 800 (for each claim

in addition to 10) in addition to 10)

3 Information & undertaking forNo fee No fee

foreign patent application

4 Request for extension of time 300 per month 1200 per month

5 Declaration as to inventorship No fee No fee

m
o
6 Claim or request regarding any500 2000
change in applicant for Patent

7 Notice of opposition 1500 .c 6000

8 Request or claim regarding500 a 2000

mention of Inventor as such in a
m
Patent
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9 Request for publication
n 2500 10000

10 Application for amendment of1500

y 6000
Patent
d
11
u
Application for direction of the1500 6000
Controller
t
12 S
Request for grant of patent under1500 6000
Sec.26(1) & 52(2)

13 Application for amendment of the500 2000

application for patent/complete
1000 4000
specification
200 800

14 Notice of opposition to1500 6000

61
 amendment/restoration/surrender
of patent/compulsory licence or
correction of clerical errors

15 Application for restoration of1500 6000

patent

16 Application for registration of1000 4000

title/interest in a patent or share in
it or registration of any document
purporting to affect proprietorship
of the patent

17 Application for compulsory1500 6000

licence m
o
.c
18 Request for examination of2500 10000
application for patent
3500 14000

19 Application for revocation of a1500 a 6000

patent for non-working m
20 Application for revision of terms1500 a 6000
and conditions of licence n
21 Request for y
termination of1500 6000

d
compulsory licence

22 u
Application for registration of2000 No fee
t
patent agent

23 S
Application for restoration of the1000 No fee
name in Register of Patent Agents

24 Application for review/setting1000 4000

aside Controller’s decision/order

25 Request for permission for making1000 4000

patent application outside India

62
26 Form for authorisation of patentNo fee No fee
agent/or any person in a matter or
proceeding under the Act

27 Statement regarding working ofNo fee No fee

patented invention on commercial
scale in India

6. TRADEMARK
m
o
.c
a
6.1. What is Trademark?

m
A trade mark (popularly known as brand name) in layman’s language is a visual symbol which

a
may be a word signature, name, device, label, numerals or combination of colours used by one

n
undertaking on goods or services or other articles of commerce to distinguish it from other

y
similar goods or services originating from a different undertaking.
•
d
The selected mark should be capable of being represented graphically (that is in the paper
form).
u
•
t
It should be capable of distinguishing the goods or services of one undertaking from

•
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those of others.
It should be used or proposed to be used mark in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between the
goods or services and some person have the right to use the mark with or without identity
of that person.

63
Trade Marks are distinctive symbols, signs, logos that help consumer to distinguish between
competing goods or services. A trade name is the name of an enterprise which individualizes the
enterprise in consumer’s mind. It is legally not linked to quality. But, linked in consumer’s mind
to quality expectation.

Key Features of Trademark

• Trademark must be Distinctive

• Trademark must be used in Commerce

Types of Trademark

• Trademark,
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• Servicemark,
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• Collectivemark,
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• Certification Mark a
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Functions of Trademark

Trademark performs four functions – n

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It identifies the goods / or services and its origin;
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It guarantees its unchanged quality;
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It advertises the goods/services;
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• It creates an image for the goods/ services.

6.2. Trade Marks law of India

The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to Trade
Marks in India.

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The Trade Marks Act, 1999 (TMA) protects the trade marks and their infringement can be
challenged by a passing off or/and infringement action. The Act protects a trade mark for goods
or services, on the basis of either use or registration or on basis of both elements.

6.2.1. Who can apply for Trademark?

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him
may apply in writing in Form TM-1 for registration. The application should contain the trade
mark, the goods/services, name and address of applicant and agent (if any) with power of
attorney, period of use of the mark and signature. The application should be in English or Hindi.
It should be filed at the appropriate office.

6.2.2. Jurisdiction for filing application

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A trade mark application should be filed at the appropriate office of the Registry within whose

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territorial limits, the principal place of business in India of the applicant is situate. In the case of

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joint applicants, the principal place of business in India of the applicant will be that of the person
whose name is first mentioned as having a place of business. If the applicant has no principal
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place of business in India, he should file the application at that office within whose territorial
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jurisdiction, the address for service in India given by him is located. No change in the principal

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place of business in India or in the address for service in India shall affect the jurisdiction of the
appropriate office once entered. y
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6.2.3. Location and Jurisdiction of Trademarks Office

1) Trade
S Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post
Office, S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211
Fax: 24120808, 24132295

Jurisdiction: State of Maharashtra, Madhya Pradesh and

Goa.
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2) Trade Marks Registry, Delhi

Intellectual Property Bhavan, Plot NO.32, Section 14,

Dwarka, Delhi
Tel. 011-28082915/ 16/17 Fax:
Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana,
Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi
and Chandigarh

3) Trade Marks Registry, Kolkata,

CP-2, Sector V, 5th floor, [Link], Salt Lake, Kolkata-

700091
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(Telfax. 033-23677311) o
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Jurisdiction: State of Arunachal Pradesh, Assam, Bihar,

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Orissa, West Bengal, Manipur, Mizoram, Meghalaya,

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Sikkim , Tripura and Union Territory of Nagaland, Andamar

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& Nicobar Island.

4) Trade Marks Registry, Ahmedabad,n

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15/27 National Chambers, 1st floor,
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Ashram road, Ahmedabad - 380 009.

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Tel: 079-26580567
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Jurisdiction: The state of Gujarat and Rajasthan and Union
Territory of Damman, Diu, Dadra and Nagar Haveli

5) Trade Marks Registry, Chennai

IP building, GST Road, Guindy
Chennai-600032
Tele: 044-22502041, Fax: 044-22502042

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 Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil
Nadu, Karnataka and Union Territory of Pondicherry and
Lakshadweep Island.

6.2.4. Particulars to be filed with application for registration

The application should be filed in triplicate with the following particulars –

• Graphic representation of the trademark.

• Five Additional representations are to be provided corresponding exactly with one
another.

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In the case of three dimensional mark, the reproduction of the mark should consist of a

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two dimensional or photographic reproduction.

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Where the trade mark contains a word or words in scripts other than Hindi or English, a

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transliteration and translation of each word in English or in Hindi should be given
indicating the language to which the word belongs, at the time of filing the application to
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facilitate completion of data entry at the initial stage itself.
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The application may contain a declaration claiming priority as per the Paris Convention.

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6.2.5. Procedure for series registration
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Section 15 (3) makes provision for registration of trade mark as series in respect of the same or

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similar goods /services where the marks, while resembling each other in the material particulars

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thereof and yet differ in respect of –
1. Statement of goods or services in relation to which they are respectively used or
proposed to be used; or
2. Statement of number, price, quality or names of places; or
3. Other matter of a non-distinctive character which does not substantially affect the
identity of the trade mark; or
4. Colour

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Application for registration of series marks is to be on form TM-8 or TM-37 as the case may be.
Though it is permissible to file a single application for registration of trade mark in more than
one class, it is to be noted that each series marks must be in respect of the same goods or services
or description of goods/services. Where a group of marks are applied for registration as series in
one registration and the Registrar does not consider them eligible for registration of series marks
under section 15 the applicant will be required to delete any of the mark which is under
objection. It is also open to the applicant to apply on form TM-53 for division of the application
to conform to the provision of section 22. All trademarks registered as series in one registration
are deemed to be registered as associated trade mark.

6.2.6. Registration of Collective Marks

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Special provisions have been made for registration of collective marks in section 61 to 68 of the

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Act. “Collective mark” is defined to mean a trade mark distinguishing the goods or services of

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members of an association of persons (not being a partnership within the meaning of Indian

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Partnership Act, 1932 ) which is the proprietor of the mark from those of others”- section 2(1)
(g). To be registerable, the collective mark must be capable of being represented graphically and

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meet other requirements as are applicable to registration of trade marks in general. The following

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points should be noted for registering collective marks -
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The collective mark is owned by an association of persons not being a partnership.
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The collective marks belong to a group and its use thereof is reserved for members of the
group.
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The association may not use itself the collective mark but it ensures compliance of certain

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quality standards by its members who may use the collective mark.
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The primary function of a collective mark is to indicate a trade connection with the
association or organization who is the proprietor of the mark.
Application for registration as collective mark should be made on form TM-3. Where appropriate
form TM-66 , 64 or TM-67 can be used.

6.2.7. Administrative procedure of registration of trademarks

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An application for registration of trademarks is received at the Head office of Trademark
Registry, Mumbai and its branches according to territorial jurisdiction. Applications are then
examined mainly with regard to the distinctiveness, possibility of deceptiveness and conflicting
trademarks. The registrar on consideration of the application and any evidence of use or
distinctiveness decides whether the application should be accepted for registration or not, and if
accepted, publishes the same in the official gazette i.e. Trade Marks Journal (published in CD-
Rom). Within a prescribed period any person can file an opposition, a copy of which is served to
the applicants who is required to file a counterstatement within two months failing which the
application shall be treated as abandoned.

Thereafter, the opponent leads evidence in support of his case by way of affidavit followed by

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the applicant’s evidence also by way of affidavit in support of the application. After that the

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opponent files evidence by way of rebuttal. On completion of evidence, the matter is set down

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for a hearing and the case is decided by a Hearing officer. The registrar’s decision is appealable
to the Intellectual Property Appellate Board.

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Almost all functions of the Registry have now been decentralized and executed by respective

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offices except publication of journal, issuance of Registration Certificate and post registration

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activities including renewal which is done at TMR, Mumbai (Head Office).

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6.2.8. Correction and amendment of registration application

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An applicant for registration of a trade mark can before the registration of the mark, apply in

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Form TM-16 for correction of any error in connection with his application. But the correction

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should not alter the trade mark that has been applied for or substitute a new specification of
goods or services not included in the application.

6.2.9. Renewal of registration

The period of registration which was 7 years until recently under 1958 Act, has been increased to
10 years under the present Act. The 10 year period of registration is reckoned from the date of
making of the application which is deemed to be the date of registration.

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Registrations can be renewed by payment of prescribed renewal fees in all cases (trademark /
collective marks/certification marks) on form TM-12. The application is filed by the proprietor
of the registered trade mark or his agent. If there is any change in the proprietorship of the mark,
and it has not been brought on record, proof of title should be filed in the first instance.

6.2.10. Offences & Penalties

There are mainly two classes of Offences relating to Trademarks –

(a) Falsification of Trademark

(b) Falsely applying the trademark to goods or services

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The punishment for the above offences shall not be less than 6 months imprisonment which may

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extend to three years and a fine which shall not be less 50,000/-, but may extend to Rupees Two

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Lakh. Wherever the court proposes a lower punishment than the minimum, it has to record,
adequate and special reasons for the same.

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However second and subsequent offences shall be more severely punished. There shall be an

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Imprisonment of not less than one year which may extend to three years and a fine which shall

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not be less Rupees One lakh, but may extend to Rupees Two Lakh. The court can propose a

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lower punishment than the minimum, only after recording adequate and special reasons for the
same.
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6.2.11. E-filing of Trademark application
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E-filing is the service provided by the Trademark Registry in order to enable customers to apply

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for a Trade Mark on-line allowing from the applicant’s browser to:

• Complete an electronic application form;

• Provide the associated attachments;

• Complete the necessary payment details

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Procedure for e-filing

In order to submit an electronic application form, following steps should be followed -

1) Acquire Class 3 Digital Signatures from (n)Code Solutions or Tata Consultancy Services
(TCS) or SafeScrypt from Sify . The Procedure for getting the Digital Signature and the
location of their Offices is available at their website.

2) For users (Proprietors/Agents or Attorneys), already registered with TMR (Trademark

Registry) Office India can complete online registration by providing a desired User ID,
their User Type (Proprietor/Agent/Attorney) and User Code.

3) For Users who are not registered as Proprietor / Attorney with TMR Office, they can
search and fill online form to obtain User code (Party Code).

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4) Secure Login into the system with created User Id and the Digital Signatures.
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5) Obtain a New Reference Number for New Application. Use this option when the
applicant wants to apply for a new Trademarks Application.

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6) Update Application Details: Use this option to edit / update the application details along

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with relevant images and attached documents. Final Submission to TMR-India with

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Digital Signature is included in this option after which application cannot be edited.

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7) The Cases which are Digitally Submitted to TMR, India are available for online payment.

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The applicant can pay for more than one application in a single transaction. Once the

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payment is realized as confirmed by the Payment Gateway, an acknowledgement receipt

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for the fees paid is generated by the system indicating the Receipt Number, Application

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Number and Date of Filing.

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8) An applicant can also view online History and status of the applications filed by him / her
by clicking Status of Filed Application.

9) An applicant can also view the online status of e-Payments.

TMR Flow Chart

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