Securing Your IPR:

Comprehensive
Steps from Filing to Grant

By
Ashish Sharma (Adv.)
Managing Partner, IP Nation
Secreatry General, IP Owners Association
IP Attorney, Global IPR Law Consultants (INDIA)
Email: [email protected]
Cell: 91 9899801721, 9811466092

1
 What is intellectual
Property?
 Intellectual Property is property intrinsically
intangible developed due to “Creation of
Mind” and gives the property owner similar
rights as in relation with tangible property.
• An expression of an idea
• Invention
• Expression of literary collection
• Unique name/trade name
• Industrial Designs as they appeal to eyes
• New Plant Varieties
• Cinematography, dramatic performances,
musical works etc.
Invention/Innovation
Thinking
Self Interrogation
Ask yourself
How
Why
What
When
Where

Creation of Idea
4
One product - many IP Rights
Trade marks Patents and utility
 NOKIA models
 Product "208"  Data-processing methods
 Start-up tone  Operating system
 Operation of user
interface

Copyright
 Software Designs
 User manuals  Form of overall phone
 Ringtones  Arrangement and shape
 Start-up tone of buttons
 Images  Position and shape of
screen
5
 Types of Intellectual
Property
 Patents
 Trademarks
 Copyright
 Design
 Geographical Indications
 Plant Varieties
 Semiconductor designs
Comparison of types of IP-1
Patent Trademarks copyright Geographical Design
Indications

What is Invention. Words, Original literary, Identification of Shape ,

protected phrase,logo dramatic goods or configuration,
used as work,musical services from a pattern,
trademark on and artistic geographical ornamental etc
goods or works, source of origin. applied to article
services. cinematograph and judged by
films, sound looks or appeal
recordings. to the eye.

How to File application File application File application File application File application
protect for grant of for registration of for registration of for registration of for registration of
patent. In trademark. In copyright. With geographical design with
Patent Office Trademark Registrar of indication .with Indian Patent &
Registry Copy Rights GI Registry Design Office

Who can Inventor(s) or User or First author or Association of Proprietor of new

apply for assignee. proprietor or assignee. persons or or original design
owner. producers. not previously
registration published.

Test for Novelty, Distinctiveness, Originality. Source of New and

protection Inventive use based. geographical original.
concept, utility. origin.
7
Comparison of types of IP-2
Patent Trademarks copyright Geographical Design
Indications

Term of 20 years 10 years initially Over 60 years 10 years initially 10 years initially
protection Renewable Renewable extendable by 5
indefinitely indefinitely years

Protection Right to exclude Right to exclude Right to prevent Exclusive right to Powers to
provided others from others whose unauthorized the use of GI in exclude others to
making, using use may cause copying or public relation to those use or apply
selling, offering confusion or performance goods. registered
to sell, and deception design
importing

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 The Patent System
Patent gives exclusive right to the
patentee of a
product/process to prevent 3rd
parties, who do
not have his consent , from making,
using,
offering for sale, selling or importing
for those
purposes that product or the products9
 Benefits to Public
 Motivation to research & invention.
 Provides incentives to inventor to
disclose his invention to the general
public, instead of keeping it a trade
secret.
 Commercial reward for converting
inventive ideas into vendible useful
products.
 Provides incentive to invest capital to
develop new products

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ADMINISTRATION
The Patent Office, under the Ministry of Commerce
& Industry, Department of Industrial Policy &
Promotion, has been established to administer
the various provisions of the Patents Law relating
to the grant of Patents & The Designs Law,
relating to the registration of Industrial Designs.
There are 4 regional offices: Delhi, Mumbai, Kolkata
& Chennai
Patentability?
To be eligible for Patent an invention
must pass following tests:
1) Novelty
2) Non-obviousness
3) Industrial Utility
 Optional

What does the description

contain?
 Prior art
• teapot with one spout
 Drawback of prior art
• time-consuming
 Problem to be solved
• reduce filling time for multiple cups
 Solution
• provide a second spout
 Advantage of the invention
• filling time is reduced
 Section 3 . What are not
inventions:-
(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 public order or morality or which causes
serious prejudice to human, animal or plant life
or health or to the environment;
(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;
…..Continued
d) the mere discovery of a new form of a substance
which does not result in the enhancement of a
known efficacy of that substance or the mere
discovery of a new property or new use of a
known process, machine or apparatus unless
such known process results in a new product or
employs at least one new reactant.
Explanation: For the purpose of this clause, salts, esters,
ethers, polymorphs, metabolites, pure form, particle size,
isomers mixtures of isomers, complexes, combinations and
other derivatives of known substance shall be considered
to be the same substance, unless they differ significantly
in properties with regard to efficacy
…..Continued
(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;
…..Continued
(h) a method of agriculture or horticulture;
(i) 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 free of disease or to
increase their economic value or that of
their products.
…..Continued
(j) plants and animals in whole or any part
thereof other than microorganisms but
including seeds, varieties and species and
essentially biological processes for
production or propagation of plants and
animals;
(k) a mathematical or business method or a
computer program per se or algorithms;
…..Continued
(l) a literary, dramatic, musical or
artistic work or any other aesthetic
creation whatsoever including
cinematographic works and
television productions;
(m) a mere scheme or rule or method
of performing mental act or method
of playing game;
(n) a presentation of information;
…..Continued
(o) topography of integrated circuits;
(p) an invention which in effect, is
traditional knowledge or which is an
aggregation or duplication of known
properties or traditionally known
component or components.
 Who can file Patent
Application
Sec 6: Application may be made by
the first inventor(s), either alone or
jointly with another, or his/their
assignee, legal representative of
deceased inventor or assignee

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Type of Patent Applications
 Ordinary Applications
 Convention Applications
 PCT International Applications
 PCT National Phase Applications
 Application for Patent of Addition
 Divisional Application
 Patent of Addition

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 Provisional Specification…..

 It should describe the nature of invention & contain

the description of essential features of the invention.
 Claims and abstract are not a part of provisional
specification
 Fees is same as for complete specification
 Complete specification must be filed within 12 months
from date of filing of provisional application.
Complete Specification

 Compared with the provisional, the complete

specification shall:
a) contain the full description of the invention and its
operation,
b) the best method of making the invention.
c) end with a claim or claims, which are the most

important component in the complete patent

specification. It is the legal operative part which
define and determine the legal protection sought for.
d) be accompanied by an abstract to provide
technical information on the invention.
 Complete Specification

 If applicant mentions a biological material in the

specification, which cannot be described in such a way
to satisfy clauses a) and b), and
 If material is not available to the public, the application
shall be completed by depositing the material to the
international depository authority,
 Deposit of the material shall be made not later than date
of filing of patent application.
 In India biological material can be submitted at Institute
of Microbial Technology (IMTECH), Chandigarh.
Contents of Patent
Application
 Title of the Invention
 Field of the Invention
 Background of the Invention
 Summary of the Invention
 Detailed Description
 Claims
 Drawings
 Abstract
Statutory Fee:

Particular Natural Other than

person/Startup natural person
/Educational (Rs)
Institution
(Rs)
For filing patent application 1600 (1760) 8000 (8800)
For each sheet of 160 (176) 800 (880)
specification in addition to
30
For each claim in addition to 320 (352) 1600 (1760)
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GENERAL PROCEDURE FOR
OBTAINING A PATENT
 Filing of patent application
 Publication after 18 months
 Pre Grant Opposition /Representation by
any person.
 Request for examination
 Examination: Grant or Refusal
 Publication of Grant of patent
 Post Grant Opposition to grant of patent
 Decision By Controller
Important Aspects of Patent
Act
 Publication
 Examination
 Pre-grant Opposition
 Post Grant Opposition
 Revocation of Patent
 Compulsory License
Publication of application
(Rule 24)
 The period for which an application for patent
shall not ordinarily be open to public under sub-
section (1) of section 11A shall be eighteen
months from the date of filing of application or
the date of priority of the application, whichever
is earlier.
 Provided that the period within which the
Controller shall publish the application in the
Journal shall ordinarily be one month from the
date of expiry of said period, or one month from
the date of request for publication under rule
24A.
Particulars of Publication:
(a) Number of application
(b) Date of filing of application
(c) Title of invention
(d) Publication date
(e) International Patent Classification
(f) Name and address of the applicant
(g) Name of the inventor(s)
(h) Priority details like document number, date, country, PCT
application number and date, etc
(i) Patent of Addition to / Divisional Application to: along with
filing date of the parent application /
(j) Abstract of the Invention including drawing (if any)
EXAMINATION OF
APPLICATIONS
 Section 11 Request for
examination
No application for a patent shall be
examined unless the applicant or any
other interested person makes a request
in the prescribed manner for such
examination within the prescribed period.
Section 12: Examination of
application;
 When a request for examination has been made
in respect of an application for a patent in the
prescribed manner under sub-section (1) or sub-
section (3) of section 11B, the application and
specification and other documents related
thereto shall be referred at the earliest by the
Controller to an examiner for making a report to
him in respect of the patent application
Pre-Grant Opposition
[section 25(1)]
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
patent on the ground –
a) Wrongfully obtaining
b) Prior publication / prior claiming
c) Prior claiming in India
d) Prior public knowledge or public use in India
e) Obviousness and lack of inventive step
…grounds
f) Not an invention or the invention not patentable
g) Insufficient description of the invention
h) Failure to disclose information or furnishing false
information relating to foreign filing
i) Convention application not filed within the
prescribed time
j) Incorrect mention of source/geographical origin
of biological material
k) Invention anticipated with regard to traditional
knowledge of any community , anywhere in the
world
…grounds
g) Insufficient description of the invention
h) Failure to disclose information or furnishing false
information relating to foreign filing
i) Convention application not filed within the
prescribed time
j) Incorrect mention of source/geographical origin
of biological material
k) Invention anticipated with regard to traditional
knowledge of any community , anywhere in the
world
Post-Grant Opposition
[section 25(2)]
 At any time after the grant of patent but before the expiry
of a period of one year from the date of publication of
grant of a patent, any person interested may give notice of
opposition to the Controller in the prescribed manner on
any of the following grounds, namely:--
a) Wrongfully obtaining
b) Prior publication / prior claiming
c) Prior claiming in India
d) Prior public knowledge or public use in India
e) Obviousness and lack of inventive step
f) Not an invention or the invention not patentable
Revocation Of Patent
Section 64:
A patent, whether granted before or after the
commencement of this Act may, be revoked on a
petition of any person interested or of the
Central Government by the Appellate Board or
on a counter-claim in a suit for infringement of
the patent by the High Court on any of the
following grounds:-
a) The invention claimed is the subject of a patent
already granted in India prior to the clamed invention
b) Patentee not entitled to the patent
c) Patent was wrongfully obtained by a person other
than the person entitled
…grounds of Revocation
d) Subject of a claim is not an invention
e) Invention is lacking in novelty with regard to prior
knowledge or prior use
f) Invention is not useful
g) The complete specification does not sufficiently and
fairly describe the invention and the method by which
it is to be performed
h) Claims are not clearly and sufficiently defined in
scope and not fairly based on the matter disclosed in
the specification
j) Patent was obtained by false suggestion or
representation.
…grounds of Revocation
k) Subject matter of claims is not a patentable
invention.
l) Claimed invention was secretly used before the
priority date
m) Failure to disclose information regarding Foreign
Application
n) Non-compliance of secrecy direction and filing
outside India without prior permission
o) Leave to Amendment of specification obtained by
fraud.
p) Specification Wrongly Mentioning or Not Disclosing
Geographical Origin.
q) Inventions is Anticipated by traditional knowledge.
Section 84. Compulsory
licenses.-
At any time after the expiration of three years from the
date of the grant of a patent, any person interested may
make an application to the Controller for grant of
compulsory license on patent on any of the grounds,
namely:—
I. the reasonable requirements of the public with respect to
the patented invention have not been satisfied
II. the patented invention is not available to the public at a
reasonably affordable price
III. the patented invention is not worked in the territory of
India.
 Cases pertaining to grant of
compulsory license
 India’s first ever compulsory license was granted by the
Patent Office on March 9, 2012, to Natco Pharma for
the generic production of Bayer Corporation’s Nexavar,
a life saving medicine used for treating Liver and Kidney
Cancer.
 Bayers sold this drug at exorbitant rates, with one
month’s worth of dosage costing around Rs 2.8 Lakh.
 Natco Pharma offered to sell it around for Rs 9000,
making it affordable for people belonging to every
stratum.
 All the 3 conditions of section 84 were fulfilled and the
decision was taken for the benefit of general public.
 Renewal fees
1. To keep a patent in force, the renewal fees shall be
payable at the expiration of the second year from the
date of the patent or of any succeeding year and the
same shall be remitted to the patent office before the
expiration of the second or the succeeding year.
2. While paying the renewal fee, the number and date of
the patent concerned and the year in respect of which
the fee is paid shall be quoted.
3. The annual renewal fees payable in respect of two or
more years may be paid in advance.

43
Renewal Fee…

Up to 6 Rs. 800/ year 4,000/ year

years
7-10 years Rs. 2,400/ year 12,000/ year

11-15 Rs. 4,800/ year 24,000/ year

years
16-20 Rs. 8,000/ year 40,000/ year
years

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EVOLUTION OF INVENTIONS

45
SOFTWARE: BREAKTHROUGH INVENTIONS

OWNER PATENT No. PATENT ON

IBM US4,965,765 Fat lines: To turn a thin line on a
computer screen into a broad line
Microsoft US7,415,666 Page Up Page Down
US6,727,830 Double Clicking
Apple US 5764992 Automatic Software Update
US8046721 Slide to Unlock
Intel EP1254562 Digital Video Recording
US6,389,458 Pop-up windows

Alcatel-Lucent US 5627938 MP3 Technology

US 5341457
Somasundram IN 214388 Dual Sim Phone
Ramkumar
 Patent Granted: Moustache Guard

What is the traditional symbol of a true gentleman, if not his moustache?

This “Moustache guard”, patented by V. A. Gates in 1876, is a witty
solution to protect your moustache (and your reputation!) during the
holiday feasts. A “curved and concave shield, which may be made of
vulcanized rubber, metal, or any other suitable material” promises to
keep your moustache out of harm’s way whilst (inevitably) overindulging
this holiday season. Cheers to innovation!
48
Patent Granted: Bicycle

This bicycle, patented by Louis S. Burbank in 1900, allows you to

exercise both your legs and arms while cycling.
"The object of the invention is to provide means whereby one
may enjoy with a bicycle exercise like that of rowing with a pair
of sculls" – the patent explains. Looks fun but we are not sure
how the brakes work!
Paper clip
Camera in stumps

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Locks
Pressure Cooker
Refrigerator
Typewriter
Earbuds

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 Patent
Certificate

57
 TRADEMARKS

07/02/2025 4711
 ‘Mark’-Definition under the
Trade Marks Act 1999
"mark" includes a device, brand,
heading, label, ticket, name,
signature, word, letter, numeral,
shape of goods, packaging or
combination of colours or any
combination thereof;
[S. 2 (1) (m) Trade Marks Act 1999]

www.ipnation.in
Purpose & functions of a Trademark

• To identify the origin of the product/service.

• To distinguish the product/service of the

proprietor from those of others.

• To guarantee the quality of the

product/service, and

• To advertise the product/service.

Identify the symbol

www.ipnation.in
ORIGINALS?

www.ipnation.in
Original Vs Copied

www.ipnation.in
Bisleri Vs Bilseri, Belsri, Birseli

www.ipnation.in
65
OKAY is OK?

www.ipnation.in
Fair my Love/ Four Love

www.ipnation.in
Which one is Nike?

www.ipnation.in
 Kinds of Trademarks
Trademarks to distinguish goods

Service To Distinguish Service

Marks
Collective To distinguish goods or
Marks services by members of an
association

Certification to distinguish goods or

Marks services certified by a
certifying authority
Well Known very famous in the market
marks and as a result benefit from
stronger protection
www.ipnation.in
 Symbols Used In Intellectual
Property
 TM for applying Trademarks

 SM for applying Service Marks

 For Registered Trademarks

 For Copyright Protection

www.ipnation.in
Who Can File Trademark
Application?
 The person himself/Proprietor
 Duly Authorized Person:

Legal Practitioner
Trademark Agents
Authorized Representative of
Company/Firm

www.ipnation.in
 Registration of Trade Mark

 Trade Marks are registered by

national trade mark registries and are
valid in that country

 Registration is made after

examination and publication

 Period of registration is for 10 years

but can be renewed indefinitely
www.ipnation.in 72
 Trade Marks Classification
(Some of the classes are…………….)

Class 1 Soaps, Detergents

Class 5 Medicines Total Classes 45 in which

Class 7 Machine Tools

For Product Trademark 34
Class 9 Electronic Components
And For Service Trademark
Class 30 Food Items
11
Class 35 Trading

Class 41 Educational Services

Class 43 Restaurants, Hotel Services

Trademark Search- First
Step
 Before filing a trademark application,
an online trademark can be performed in the
Indian Trademark Registry Database i.e.
www.ipindia.nic.in.
 It helps to identify any similarity from an
already registered or applied mark.
 This can either be done by the applicant or by
the attorney filing on his/her behalf.
 There is no govt fee for searching the
trademark.

www.ipnation.in
TM Form filing- TM A

 Once the trademark availability is checked,

the trademark application is filled with form TM-
A.
 After filling the form with required fees and
documents, the proprietor can use the
mark ™ with their logo or mark.
 Once the application for a trademark is
submitted to the registrar, an application number
is generated which helps the applicant to track
the status of the mark online.
 Statutory Fee
 Application for Registration of a trademark:
For an Individual/ Startup/Small Enterprises :
Rs 5000/- (for Physical Filing)
Rs 4500/- ( for E-filing)
For Other than Individual/ Startup/ Small
Enterprises:
Rs 10000/- (for Physical Filing)
Rs 9000/- (for E-filing)
 Renewal Fee: for 10 Years

Rs. 10,000/- (for Physical Filing)

Rs. 9,000/- (for E-filing)
 Trademark
Registration
Certificate

www.ipnation.in
Copyright
Copyright
 Copyright protects literary and artistic
works
e.g. Books, lectures, dramatic and musical
works, choreography, cinematography,
drawings, paintings, architecture,
sculpture, photographs, illustrations, maps,
plans sketches etc.
 Copyrights protect the original expression
of ideas, not the ideas themselves.
 Copyright in Forensic
Science
• In forensic science, copyrightable
material may include: Specific computer
programs used for data analysis (e.g.,
software for interpreting DNA profiles)

• Detailed laboratory protocols outlining

procedures for conducting forensic tests

• Original instructional materials for forensic

training programs
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 Rights covered under CR
 Moral Rights : Author’s right of
paternity. Non-alienable.
 Economic Rights : Rights to exploit the
work. e.g. Rights of translation, rights
of performance, rights of reproduction
etc.
 These rights can be transferred,
assigned, licensed for economic
benefits.
Who are the Authors?
 Writer/writers of the book;
 Painter;
 Music composer;
 Translator;
 Cinematographer;
 Photographer etc.
Duration of Protection
 For books and other works of arts it
is 60 years after the death of the
author;
 For photographic work 25 years
from making the work;
 For cinematic works 50 years after
making the work available to public.
Exceptions to Protection
(Free Use or Fair Deal)
 Quotations for commentary;
 Illustration for Teaching;
 Current News Reporting etc.
 Marriage Functions

Free Use is decided by amount of

work used and its economic
implications to the right holder.
The mention of original
author/source is must.
Copyright
Certificate

86
 Industrial
Designs

07/02/2025
Criteria for Protection as
Industrial Designs
• New and Original
• Capable of mass production or
application on an article of utility
• Not contrary to public order or morality
• The shape should not be determined
merely by the functionality of the good.

07/02/2025
 To be protected under most national laws, an
industrial design must appeal to the eye.
This means that an industrial design is
primarily of an aesthetic nature, and does not
protect any technical features of the article to
which it is applied.
 Industrial designs are what make an article
attractive and appealing; hence, they add to
the commercial value of a product and
increase its marketability

07/02/2025
Requirements
 Name and Details of Applicants
 Front Perspective View
 Front View
 Back View
 Top View
 Bottom View
 Both Side View

www.ipnation.in
Certificate of
Design
Registration

www.ipnation.in
Recent Trends in IPR
 More than 90,000 Patent Applications filed
in last Calendar Year 2023 (Approx. 247
applications per day)
 More than 1,00,000 Patents granted in
last FY 2023-24.
 Approx. 4,66,580 Trademark Applications
filed in FY2023
 Approx. 22,000 Design Applications Filed
and 23,400 Design Registered in FY2023

92
Growing Importance of IPR
 The Indian government recognizes the
importance of IPR for economic growth.
 Initiatives like the National IPR Policy
(2016) promote awareness and
facilitate IPR filing processes.
 Increased focus on sectors like
biotechnology, pharmaceuticals, and IT
has driven IPR filings.

93
 Thanking You
Ashish Sharma (Adv.)
Managing Partner, IP Nation
IP Attorney, Global IPR Law Consultants (INDIA)
Secretary General, IP Owners Association
Email: [email protected],
[email protected]
Cell: 91 9899801721, 9811466092
94