LAW OF IPR

Patent act 1970, Design and trademark Act 1999,

Copy right act 1957
 PATENT ACT 1970

Meaning
A patent is an exclusive right granted by the Government to the
inventor to exclude others to use, make and sell an invention is
a specific period of time. A patent is also available for
improvement in their previous Invention.
the patent is usually referred to as the right granted to an
inventor for his Invention of any new, useful, non-obvious
process, machine, article of manufacture, or composition of
matter.
 THERE ARE THREE BASIC TESTS
FOR ANY INVENTION TO BE
PATENTABLE

• Firstly, the invention must be novel, meaning thereby that the Invention must not
be in existence.
• Secondly, the Invention must be non- obvious, i.e. the Invention must be a
significant improvement to the previous one; mere change in technology will not
give the right of the patent to the inventor.
• Thirdly, the invention must be useful in a bonafide manner, meaning thereby that
the Invention must not be solely used in any illegal work and is useful to the world
in a bonafide manner.
 HISTORY OF PATENT

• The Indian Patent and Design Act, 1911 repealed all previous acts. The Patents Act
1970, along with the Patent Rules 1972, came into force on 20 April 1972.
• The Patents Act, 1970 was amended by the Patents (Amendment) Act, 2005 regarding
extending product patents in all areas of technology including food, medicine,
chemicals and microorganisms. Following the amendment, provisions relating to
exclusive marketing rights (EMR) have been repealed, and a provision has been
introduced to enable the grant of compulsory licenses. Provisions related to pre-grant
and anti-post protests have also been introduced.
 WHAT CAN BE PATENTED

• Sections 3 and 4 of the Indian Patents ,Act, 1970, clearly mentioned There are certain criteria
which have to be fulfilled to obtain a patent in India. They are:
• Patent subject:
The most important consideration is to determine whether the Invention relates to a patent
subject matter. Sections 3 and 4 of the Patents Act list non-patentable subject matter. Unless
the Invention comes under any provision of Section 3 or 4, it means that it consists of a subject
for a patent.
• Novelty:
Innovation is an important criterion in determining the patent potential of an invention. Under
Section 2(l) of the Patent Act, a novelty or new Invention is defined as “no invention or
technology published in any document before the date of filing of a patent application,
anywhere in the country or the world”. The complete specification, that is, the subject matter
has not fallen into the public domain or is not part of state of the art”.
the novelty requirement basically states that an invention that should never have
been published in the public domain. It must be the newest which have no same or
similar prior arts.
• Inventive steps or non-clarity:
Under Section 2(ja) of the Patents Act, an inventive step is defined as “the
characteristic of an invention that involves technological advancement or is of
economic importance or both, as compared to existing knowledge, and invention not
obvious to a person skilled in the art.” This means that the invention should not be
obvious to a person skilled in the same field where the invention is concerned. It
should not be inventive and obvious
• Capable of industrial application:
Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the
invention is capable of being made or used in an industry”. This basically means that
the Invention cannot exist in the abstract. It must be capable of being applied in any
industry, which means that it must have practical utility in respect of patent. These
are statutory criteria for the patent of an invention.
 RIGHTS OF PATENTEE

• Right to exploit patent: A patentee has the exclusive right to make use, exercise, sell or distribute the
patented article or substance in India, or to use or exercise the method or process if the patent is for a person.
This right can be exercised either by the patentee himself or by his agent or licensees. The patentee’s rights
are exercisable only during the term of the patent.
• Right to grant license: The patentee has the discretion to transfer rights or grant licenses or enter into some
other arrangement for a consideration. A license or an assignment must be in writing and registered with the
Controller of Patents, for it to be legitimate and valid. The document assigning a patent is not admitted as
evidence of title of any person to a patent unless registered and this is applicable to assignee not to the
assignor.
• Right to Surrender: A patentee has the right to surrender his patent, but before accepting the offer of
surrender, a notice of surrender is given to persons whose name is entered in the register as having an
interest in the patent and their objections, if any, considered. The application for surrender is also published
in the Official Gazette to enable interested persons to oppose.
• Right to sue for infringement: The patentee has a right to institute proceedings for infringement of the patent
in a District Court having jurisdiction to try the suit
 PROCEDURE OF PATENT

• Step 1: Write about inventions (idea or concept) with each and every
detail.
Collect all information about your Invention such as:
• Field of Invention
• What does the Invention describe
• How does it work
• Benefits of Invention
If you worked on the Invention and during the research and
development phase, you should have some call lab records which are
duly signed with the date by you and the concerned authority.
• Step 2: It must involve a diagram, drawing and sketch explains the
Invention
Drawings and drawings should be designed so that the visual work
can be better explained with the invention work. They play an
important role in patent applications.
• Step 3: To check whether the Invention is patentable subject or
not.
Not all inventions can be patentable, as per the Indian Patent Act
there are some inventions which have not been declared patentable
(inventions are not patentable).
• Step 4: Patent Discovery
• The next step will be to find out if your Invention meets all patent
criteria as per the Indian Patent Act-
• The invention must be novel.
• The Invention must be non- obvious.
• The Invention must have industrial applications.
• Step 5: File Patent Application
• If you are at a very early stage in research and development for your
Invention, then you can go for a provisional application. It offers the
following benefits:
• Filing date.
• 12 months time for filing full specification.
• Lesser cost.
• After filing a provisional application, you secure the filing date, which is
very important in the patent world. You get 12 months to come up with the
complete specification; your patent application will be removed at the end
of 12 months.
• When you have completed the required documents and your research work
is at a level where you can have prototypes and experimental results to
prove your inventive move; you can file the complete specification with the
patent application.
• Filing the provisional specification is an optional step if you are in the
stage where you have complete knowledge about your Invention you can
go straight to the full specification.
• Step 6: Publication of the application
• the complete specification along with the application for the patent, the application is published 18 months
Upon filing

after the first filing.

• If you do not wish to wait until the expiration of 18 months from the filing date to publish your patent application,
an initial publication request may be made with the prescribed fee. The patent application is usually published early
as a one-month form request.
• Step 7: Request for Examination
• The patent application is scrutinized only after receiving a request for an RFE examination. After receiving this
request, the Controller gives your patent application to a patent examiner who examines the patent application
such as the various patent eligibility criteria:
• Patent subject
• Newness
• Lack of clarity
• Inventory steps
• Industrial application
• By enabling
• The examiner makes the first examination report of the patent application upon a review for the above conditions.
This is called patent prosecution. Everything that happens for a patent application before the grant of a patent is
usually called patent prosecution.
• The first examination report submitted to the Controller by the examiner usually includes prior art (existing
documents prior to the filing date) that are similar to the claimed invention and is also reported to the patent
applicant.
• Step 8: Answer the objections
• Most patent applicants will receive some type of objections based on the examination
report. The best thing is to analyze the examination report with the patent professional
(patent agent) and react to the objections in the examination report.
• This is an opportunity for an investor to communicate his novelty over the prior art in
examination reports. Inventors and patent agents create and send a test response that
tries to prove that their Invention is indeed patentable and meets all patent criteria.
• Step 9: clearance of objections
• The Controller and the patent applicant is connected for ensuring that all objections
raised regarding the invention or application is resolved and the inventor has a fair
chance to prove his point and establish novelty and inventive steps on other existing arts.
• Upon receiving a patent application in order for grant, it is the first grant for a patent
applicant.
• Step 10:
• Once all patent requirements are met, the application will be placed for the grant. The
grant of a patent is notified in the Patent Journal, which is published periodically.
• Some major opposition grounds, common to both pre-grant and post-grant opposition, are mentioned below:
• The Invention was published previously in India or elsewhere or was claimed previously in India.
• The Invention is the formation of a part of the prior public knowledge or prior public use or traditional knowledge of any
community.
• The Invention is obvious and lacks an inventive step.
• The Invention does not constitute an invention within the meaning of the Act, or the Invention is not patentable under the
Act.
• Failure to disclose information or furnishing false information relating to foreign by the applicant.
• Pre-Grant Protest: Section 25 (1) of the Patent Act and Rule 55 of the Patent Rules, 2003 provide the
procedure to be followed for pre-grant opposition. Pre-grant opposition can be initiated by anyone after the
application is published and before the patent is granted. If a request for examination is filed to oppose the
application, the Controller considers representation only. If a request for examination has not been made by
the applicant, it is possible for the opponent as an interested person to first file a request for examination
under Section 11B, and then file a pre-grant opposition.
• Post-grant opposition: The procedure is followed to oppose the grant under
Section 25 (2) of the Patents Act, 1970 and Rule 55A to 70 of the Patent Rules, 2003. A Post-grant opposition
can be filed by any person interested in any of the specific grounds before a period of one year from the date
of publication of the grant of the patent. Unlike a pre-grant protest, a pre-grant protest must be filed by an
individual and not by a person. The expression (people interested) is defined under section
2(t) of the Patents Act, 1970 wherein a person/party is engaged, or is conducting research in the same field
with which the Invention (which is to be opposed) is concerned.
• Patent Infringement
• Patent infringement is a violation which involves the unauthorized use, production, sale, or offer of sale of the
subject matter or Invention of another’s patent. There are many different types of patents, such as utility patents,
design patents, and plant patents. The basic idea behind patent infringement is that unauthorized parties are not
allowed to use patents without the owner’s permission.
• When there is infringement of patent, the court generally compares the subject matter covered under the patent
with the used subject matter by the “infringer”, infringement occurs when the infringer Uses patent material from
in the exact form. Patent infringement is an act of any unauthorized manufacture, sale, or use of a patented
invention. Patent infringement occurs directly or indirectly.
• Direct patent infringement: The most common form of infringement is direct infringement, where the Invention
that infringes patent claims is actually described, or the Invention performs substantially the same function.
• Indirect patent infringement: Another form of patent infringement is indirect infringement, which is divided into
two types:
• Infringement by inducement is any activity by any third party that causes another person to infringe the patent
directly. This may include selling parts that can only be used realistically for a patented invention, selling an
invention with instructions to use in a certain method that infringes on a method patent or licenses an invention
that is covered by the patent of another. The inducer must assist intentional infringement, but does not require
intent to infringe on the patent.
• Contributory infringement is the sale of components of material that are made for use in a patented invention and
have no other commercial use. There is a significant overlap with indications, but contributor violations require a
high level of delay. Violations of the seller must have direct infringement intent. To be an obligation for indirect
violations, a direct violation must also be an indirect act.
• Conclusion
• Patents can provide great value and increased returns to
individuals and companies on the investment made in
developing new technology. Patenting should be done with an
intelligent strategy that aligns business interests to implement
the technology with a wide range of options in the search for
how, where and when to patent. As an example, with a focus
on international considerations and regulations in specific
countries, it is possible for a company to achieve significant
savings and improve the rights gained using patents.