INTELLECTUAL PROPERTY

• Intellectual Property (IP) is the terminology attributed to intangible assets having commercial
value, and arising from human intelligence, creativity, and imagination, but typically lacking physical
form.

• Intellectual Property Rights (IPR) is the privileges accorded to the creator/inventor (of IP) in
conformance with the laws. These rights are given to the creator/inventor in exchange for revealing
the process of creation/invention in the public domain. The inventor is conferred with the special
rights to use, sell, distribute, offering for sale and restricting others from using the invention without
his prior permission

• Broadly, IP comprises of two branches i.e. Copyrights and Related Rights and Industrial Property
Rights. o Copyrights and Related Rights refer to the creative expressions in the fields of literature and
art, such as books, publications, architecture, music, wood/stone carvings, pictures,
software‘s/databases. portrays sculptures, films and computer-based

The Industrial Property Rights refer to the Patents, Trademarks, Trade Services, Industrial Designs and
Geographical Indications

• Copyright: Copyright is the right bestowed on the owner or creator in relation to publication, and
distribution of a piece of writing, music, picture or related works. Copyright also applies to technical
contents such as software, datasheets and related documents.

• Patents: A patent is a legal record that bestows the holder the exclusive right over an invention as
per the claims, in a limited geographical domain and for a limited duration by thwarting possible
interested parties from any form of manufacture, use or sale of the product or outcome of the
invention

• Trademarks: A trademark is a sign that suitably differentiates the owner‘s goods or services from
those of others

• Trade services: Any services in relation to trade or any trade related financing, lending or other
financial accommodation provided(or to be provided) by the bank, including but not limited to
issuance/amendment of letter of credit, document arrival under letter of credit, application for
negotiation and inquiries etc.,

• Industrial Designs: An industrial design protection is related to certain specific ornamental shapes
associated with products whose duplication the owner may wish to prevent

• Geographical Indications: A geographical indication (GI) is a name or sign used on products which
corresponds to a specific geographical location or origin. Items that meet geographical origin and
quality standards may be endorsed with a government-issued stamp which acts as official
certification of the origins and standards of the product.

PATENTS

• A patent is an exclusive right granted for an innovation that generally provides a new way of doing
something or offers a new technical solution to a problem.

• The exclusive right legally protects the invention from being copied or reproduced by others.
 • In return, the invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the relevant field.

CONDITIONS FOR OBTAINING A PATENT PROTECTION

There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be fulfilled
for a product or a process to qualify for the grant of a patent.

The criterion encompasses:

•Novelty - Not part of ‘State of the Art’. The innovation claimed in the patent application is new and
not known to anybody in the world. In other words, the innovation is

o not in the knowledge of the public,

o not published anywhere through any means of publication and

o not be claimed in any other specification by any other applicant.

• Inventive step - Not obvious to the person (s) skilled in the art. The innovation is

o a technical advancement over the existing knowledge,

o possesses economic significance and,

o not obvious to a person skilled in the concerned subject.

• Capable of industrial application - For the benefit of society. The invention is capable of being made
or used in any industry.

PATENT INFRINGEMENTS

• Once the patent is granted to the applicant, he owns the right to use or exploit the invention in any
capacity. If anyone uses the invention without the prior permission of the owner, that act will be
considered an infringement of the invention.

Infringements can be classified into two categories

• Direct Infringement - when a product is substantially close to any patented product or in a case
where the marketing or commercial use of the invention is carried out without the permission of the
owner of the invention.

• Indirect Infringement - When some amount of deceit or accidental infringement happens without
any intention of infringement. If such an unlawful act has beencommitted, the patentee holds the
right to sue the infringer through judicial intervention. Every country has certain laws to deal with
such unlawful acts. Following reliefs are made available to the patentee:

o Interlocutory/interim injunction.

o Damages or accounts of profits.

o Permanent injunction

PRIOR ART SEARCH

• Before an inventor embarks upon the patent filing process, he has to ensure that his invention is
novel as per the criterion for the grant of a patent. For this, he/she has to check whether or not his
invention already exists in the public domain.

• For this, he/she needs to read patent documents and Non-Patent Literature (NPL), scientific
journals/reports/magazines, etc.

• The information lying in the public domain in any form, either before the filing of the patent
application or the priority date of the patent application claiming the invention, is termed as Prior
Art.

• Conducting a prior art search before filing the patent has advantages as it averts infringement,
tracks research and development and provides access to detailed information on the invention.

• The prior art search is carried out on the parameters such as novelty, patentability, state of the art,
infringement, validity and freedom to operate.

• The commonly used databases for prior art search fall in two categories i.e. Patents Databases and
NPL.The patent databases are

o Indian Patent Advanced http://ipindiaservices.gov.in/publicsearch/). Search System

o Patentscope (WIPO- https://www.wipo.int/patentscope/en/).

o Espacenet (EU- https://worldwide.espacenet.com/patent/).

o USPTO (USA- https://www.uspto.gov/).

CHOICE OF APPLICATION TO BE FILED

Once a decision has been made to patent the invention, the next step is, what kind of application
needs to be filed i.e. provisional patent application or complete (Final) patent application - generally,
the provisional patent application is preferred for the following reasons:

• It is cheaper, takes less time, and involves fewer formalities.

• Any improvements made in the invention after the filing of the provisional application can be
included in the final application. In other words, the provisional application does not require
complete specifications of the inventions. The application can be filed even though some data is yet
to be collected from pending experiments.

• A provisional application allows you to secure a priority date for the patent applied.

PRE-GRANT OPPOSITION

• If anybody has an objection to the invention claimed in the patent application, he/she can
challenge the application by approaching the Controller of Patents within 6 months from the date of
publication. It is termed as Pre-grant Opposition.

• Depending on the outcome of the case, the patent application may be rejected or recommended
for the next step, i.e. patent examination.

• Although the patent application is kept secret for 18 months, but under special circumstances, this
period can be reduced when the patentee/applicant plans to sell or license the patent or seek an
investor).
• For this, the applicant has to fill a Form-9 and submit it to the Controller General.

NATIONAL BODIES DEALING WITH PATENT AFFAIRS

There are many departments/organizations/bodies dealing with various aspects of patents, namely,
• The Indian Patent Office (IPO) - The Office of the Controller General of Patents, Designs and Trade
Marks generally known as the Indian Patent Office, is an agency under the Department for
Promotion of Industry and Internal Trade which administers the Indian law of Patents, Designs and
Trade Marks.

• Department for Promotion for Industry and Internal Trade (DPIIT) - DPIIT, earlier known as the
Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry,
Govt. of India, is the apex IP body. It came into existence in 1995 and is the main body for regulating
and administering the industrial sector.

• Technology Information, Forecasting and Assessment Council (TIFAC) - The importance of

undertaking technology forecasting and assessment studies on a systematic and continuing basis was
highlighted in the Government of India‗s Technology Policy Statement (TPS) of 1983. Therefore in
1985, TIFAC was established as an autonomous body, registered as a Society in 1988, under the
Department of Science and Technology. It is an important cog in filling a critical gap in the overall
Science and Technology system of India. Its mission is to assess the state-of-art of technologies and
set directions for future technological developments in India in important socio-economic sector

• National Research Development Corporation (NRDC) - NRDC, an enterprise of Department of

Scientific & Industrial Research (DSIR), Govt. of India, was set up in 1953 with a mandate to develop,
promote and transfer/commercialize IP and technologies emanating from Higher Education Institutes
(HEIs), R&D research laboratories/institutions and Public Sector Undertakings (PSUs). NRDC has a
repository of 2500 Indian technologies, filed over 1700 Patents and transferred about 5000
technologies in different sectors in India. It has also created a technology data bank
(http://fccollc.com/nrdclive/) containing information regarding technologies available in various
fields, such as electrical & electronics, mechanical, coil, mining, biotechnology, healthcare, leather,
etc.

TYPES OF PATENT APPLICATIONS

• Provisional Application - A patent application filed when the invention is not fully finalized and
some part of the invention is still under experimentation. Such type of application helps to obtain the
priority date for the invention.

• Ordinary Application - A patent application filed with complete specifications and claims but
without claiming any priority date.

• PCT Application - An international application filed in accordance with PCT. A single application can
be filed to seek patent protection and claim priority in all the member countries of PCT.

• Divisional Application - When an application claims more than one invention, the applicant on his
own or to meet the official objection on the ground of plurality may divide the application and file
two or more applications. This application divided out of the parent one is known as a Divisional
Application.

• Patent of Addition Application - When an invention is a slight modification of the earlier invention
for which the patentee has already applied for or has obtained a patent, the applicant can go for
Patent of Addition, if the modification in the invention is new. Benefit - There is no need to pay a
separate renewal fee for the Patent of Addition, during the term of the main patent. It expires along
with the main patent.

• Convention Application - If a patent application has been filed in the Indian Patent Office and the
applicant wishes to file the same invention in the one or more Convention countries (e.g. Paris
Convention) by claiming the same priority date on which application was filed in India, such an
application is known as Convention Application. The applicant has to file Convention Application
within 12 months from the date of filing in India to claim the same priority date

COMMERCIALIZATION OF A PATENT

• The patent owner may grant permission to an individual/organization/industry to make, use, and
sell his patented invention. This takes place according to agreed terms and conditions between the
involving parties.

• A patent owner may grant a license to a third party for the reasons mentioned below: o The patent
owner has a decent job e.g. university professor and has no desire or aptitude to exploit the patent
on his own. o The patent owner may not have the necessary manufacturing facilities. o The
manufacturing facility is not able to meet the market demand. o The patent owner wishes to
concentrate on one geographic market; for other geographical markets, he may choose to license the
patent rights.

• Once the patent is granted, the patentee (person holding the rights to the patent) enjoys the
exclusive rights to use the patented invention.

• Only the patentee has the right to license or deal with the patent for any deliberations. Although,
the validity of the granted patent is for 20 years (from the date of filing a patent application), but the
patentee is required to furnish information (Form-27), on an annual basis relating to the
commercialization/selling of the patent. It is called as Working/Licensing of the Patent.

• The licensing of a patent can be exclusive or non-exclusive.

• In an Exclusive License, the patent is sold to only one individual/organization for a fixed time
period. During this time period, no other person or entity can exploit the relevant IP except the
named licensee.

• In Non-Exclusive License, a patentee can sell his patent rights to as many individuals/parties as he
likes. If the patentee is not able to commercialize his patent within three years from the date of the
grant of a patent, any person may submit an application to the Controller of Patents for grant of
Compulsory Licensing (of the patent), subject to the fulfillment of following conditions: o Reasonable
requirements of the public concerning the patented invention have not been satisfied. o The
patented invention is not available to the public at a reasonable price. o The patented invention is
not worked in the territory of India.

UTILITY MODELS

• In many cases, a new invention involves an incremental improvement over the existing products,
but this technical improvement is not sufficient enough to pass the stringent criterion of Novelty and
Non-obviousness set aside for the grant of a patent. Such small innovations can still be legally
protected in some countries and termed as ‗Utility Models‘ or ‗Petty Patents‘ or ‗Innovation
Patents‘.

• In this case, the criterion of Novelty and Non-obviousness are diluted or relinquished. But the
requirement of industrial application or utility is the same as that for patents.

• Utility Model is a helpful tool for Micro, Small and Medium Enterprises (MSME) since the grant of a
Utility Model is usually less rigorous and involves minimal cost.

• MSMEs do not have deep pockets to carry out intensive R&D leading to the grant of patents. But
their innovations are good enough for improving their products/processes and bringing more
financial rewards. Such inventions pass the requirements set aside for Utility Models but not for
patents.

• The life of the Utility Model is less as compared to the patents. It varies from 7-15 years in different
countries.

• Nearly 80 countries, including France, Germany, Japan, South Korea, China, Finland, Russian
Federation and Spain, provide protection for Utility Models under their IPR laws.

• India till date does not recognize utility patents. If these small patents are recognized under IP
protection in India, it will catapult the number of patents (filed and granted) on annual basis.