INTELLECTUAL
PROPERTY
A tool for professional
enhancement
P.Manoj Kumar
Assistant Professor
RGUKT ONGOLE
Property [ Earlier concept ]
Movable Immova
ble
Tangible property
Fetched maximum Solely responsible
value for growth
Movable
Propert
y Immovable
-
Intangible Acquired
Present
assets more
[IPRs] importance
Concept
Responsible for
Industrial ,economica
l & cultural growth
IPR - an Asset
-many things IPR gives
common with Real exclusive
forms of property Right to the
WHAT IS INTELLECTUAL
PROPERTY
Intellectual Property (IP) is a kind of intangible
property created with the efforts of human
mind or intellect.
Intellectual Property Rights (IPRs) are the rights
derived due to creation of the intellectual
property.
These rights are conferred upon the creator
(inventor, author etc.) of these properties.
Like any other property intellectual property is also
an asset, thus it can be bought, sold,
mortgaged, licensed, exchanged or gifted to
others.
The intellectual property owners have exclusive
rights over their intellectual property, which
means nobody else can lawfully use the
INTELLECTUAL PROPERTY
INDUSTRIAL PROPERTY COPYRIGHT
PATENTS DESIGNS TRADE MARKS
OTHER INTELLECTUAL PROPERTIES
() Geographical Indications
() Layout Design of Integrated Circuits etc
INTRODUCTION PATENT
A patent is protection granted by a national government for
an invention.
Patent rights are granted by National Patent Offices, and so
patent protection for an invention must be sought in each
country individually.
This protection excludes others from making, using or
selling an invention for a period of up to 20 years.
In order for patents to be issued by a granting agency such as a
Patent Office they need to be new, useful and not obvious to
others working in the same field.
The Indian law of patents is enshrined in the Patents Act,
1970. The Act seeks to provide for legal protection for
inventions.
The rights granted under the Act, are operative in the whole
of India.
OBJECT OF PATENT LAW
To enjoy the exclusive rights over the invention
to encourage scientific research, new technology and
industrial progress.
The patent is to ensure commercial returns to the inventor
for the time and money spend in generating a new product
The price of the grant of monopoly is the disclosure of the
invention at the Patent Office, which after expiry of the
fixed period of monopoly, passes into the public
domain.’
A patent is a Monopoly Right
granted
• For an invention
• By the government
• To the inventor or his assignee
• For a limited period (20
YEARS)
• It is valid within the country of
grant
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EXCLUSIVITY OF RIGHTS
Exclusivity of right implies that no one
else can
make,
use,
manufacture or
market the invention
without the consent of the patent holder.
THREE STATUTORY PILLARS OF
PATENTABILITY
1. Novelty (new)
2. Inventive Step (non-obvious) (Sec 2(1)(ja))
3. Industrial Applicability (utility) (Sec 2(1)
(ac))
NOVELTY
Should not form a part of the global state of
the art.
Information appearing in magazines,
technical journals, books, newspapers etc.
constitute the state of the art.
Oral description of the invention in a
seminar/conference can also spoil novelty.
Prior use of the invention before the filing
date can also destroy the novelty.
Novelty is assessed in a global context.
INVENTIVENESS (NON-
OBVIOUSNESS)
Inventive step means a feature that
makes the invention not obvious to a
person skilled in the art
USEFULNESS
An invention must possess utility for
the grant of patent
No valid patent can be granted for an
invention devoid of utility.
DEFINITIONS IN THE INDIAN PATENT ACT
Invention means a new product or process
involving an inventive step and capable
of Industrial application.
Inventive step implies technical advantage
or economic significance or both
Capable of Industrial application means
that the invention is capable of being made
or used in an industry
INVENTIONS NOT
PATENTABLE
Section 3 . What are not inventions.-
3(a) Frivolous Or Obviously Contrary
To Well Established Natural Laws;
A machine purporting to produce perpetual
motion.
A machine allegedly giving 100%
performance.
3(b) Contrary To Public Order Or Morality,
Prejudice To Human, Animal Or Plant Life
Or Health Or To The Environment;
Device, method for committing theft/burglary
Biological warfare material
INVENTIONS NOT PATENTABLE
3(c) Mere Discovery Of Scientific Principle,
Abstract Theory, Living Thing Or
Non- living Substances
Discovery of any living thing,
micro-organism,
naturally occurring material.
3(d)Mere Discovery Of New Form, New
Property, New Use Of A Known
Process, Machine Or Apparatus
(EFFICACY)
Explanation: salts, esters, ethers, etc.
New use of Aspirin in heart ailments
INVENTIONS NOT
PATENTABLE
3(e) Mere Admixture (SYNERGY)
mixture of sugar and some colorants in
water to produce a soft drink.
3(f) Mere Arrangement, Re-
arrangement, Duplication of
known devices.
Umbrella cum Torch
3(h) Method Of Agriculture Or
Horticulture
method of producing mushroom plant.
method of producing improved soil
INVENTIONS NOT
PATENTABLE
3(i) Method Of Treatment.
Treatment of malignant tumor cells
However, Patent can be obtained for
surgical, therapeutic or diagnostic
instrument or apparatus.
3(j)Plants, Animals, Including Seeds
Varieties, Species, Biological Processes.
Exception: Microorganisms
Protection of Plant Varieties &
Farmers’ Rights Act, 2002.
INVENTIONS NOT PATENTABLE
3(k) Mathematical Or Business Method
Or A Computer Program Per Se
Or Algorithms;
3(l) Literary, Dramatic, Musical Or Artistic
Work, Other Aesthetic Work
Copyright Act, 1957.
3(m) Mere Scheme, Rule, Method Of
Performing Mental Act, Playing Game;
Method of learning a language.
Method of playing chess.
INVENTIONS NOT PATENTABLE
3(n) A Presentation Of Information;
Method of expressing information.
Business methods
3(o) Topography Of Integrated
Circuits;
Semiconductor Integrated Circuit
Lay-out Designs Act, 2000
3(p) Traditional Knowledge
Pesticidal / insecticidal
properties of neem.
INVENTIONS NOT PATENTABLE
Section 4: “No Patent shall be granted in
respect of an INVENTION RELATING TO
ATOMIC ENERGY falling within
subsection (1) of section 20 of the
Atomic Energy Act, 1962 (33 of 1962)”
Radioactive Substances or Radioactive
Material
Nuclear Materials, Nuclear-related other
WHEN TO FILE A PATENT APPLICATION.
Earliest possible date and should not be
delayed.
Delay in filing an application may entail
some risks like
Other inventors may apply for a patent for
the said invention
There may be either an inadvertent
publication of the invention by the inventor
himself/herself or by others independently
of him/her.
CAN A PUBLISHED OR DISCLOSED INVENTION BE PATENTED?
No, publication of an invention in any form
by the inventor before filing of a patent
application would disqualify the invention to
be patentable.
Hence, inventors should not disclose their
inventions before filing the patent
application.
The invention should be considered for
publication after a patent application has
been filed.
ESSENTIAL PATENT DOCUMENTS
There are two types of patent
documents usually known as patent
specification, namely
(i) Provisional Specification and
(ii) Complete Specification
CONTENTS OF SPECIFICATION
Title of the invention
Field of the invention
Background of the invention (PRIOR ART)
Object of the invention
Summary of the invention
Brief description of drawings, if any
Detailed description of the invention
Examples
Claims- not required in provisional
Abstract- not required in provisional
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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.
26
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.
27
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.
28
GRANT FOR A PATENT
To get a patent grant, the first
most step is to file a patent
application.
Who can file a patent application?
Where to file a patent application?
How to file a patent application?
29
WHO CAN FILE PATENT APPLICATION
In India [Section 6 and 134]
The application can be filed either alone or
jointly:
By any person claiming to be true and first
inventor(s)
By any person being the assignee of person
claiming to be true and first inventor(s)
By the legal representative of any deceased
person or assignee
30
WHERE TO FILE PATENT APPLICATION
The appropriate office of the patent office shall be
the head office of the patent office or the branch
office as the case may be within whose territorial
limits …
Residence of applicant or Domicile; or
The place of business; or
The place where the invention actually
originated.
If the applicant has no business or domicile in India,
the address for service in India is given by such
applicant
31
Jurisdiction of offices
32 32
HOW TO FILE A PATENT APPLICATION?
Documents can be filed in the patent office
through online( e-filing)
through post or
can be submitted by hand
33
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
34
PATENT GRANT
PROCEDURE
Filing of patent application Prior art
search
Early Publication Publication after 18
months
Request for examination
Pre Grant Opposition /
Representation by any person.
Examination: Grant or Refusal
Publication of Grant of patent
Post Grant Opposition to grant of
patent
(Constitution of Opposition Board)
Decision By Controller
DOCUMENTS REQUIRED FOR
FILING OF A PATENT APPLICATION
1. Covering letter- indicating the list of documents;
2. Application for Grant of Patent in Form 1 [section 7, 54
& 135 and Rule 20(1)] in duplicate;
3. Complete/Provisional specification in Form 2 in
duplicate [Section 10; Rule 13]
4. Statement and Undertaking in Form 3 [Section 8; Rule
12];
5. Power of Attorney in Form 26 (in original) (Rule 3.3 (a)
(ii)); (if filed through attorney)
6. Declaration of Inventor-ship in Form 5
(only in case of an Indian Application; (Rule 4.17);
7. Certified true copy of the Priority document (in case
priority is claimed);
8. Requisite Statutory fees (cheque / DD).
36
TYPES OF INTERNATIONAL APPLICATION
1. Conventional application
2. PCT
NATIONAL PHASE
ENTRY
First Application
Family
Application
0 12
38
NATIONAL PHASE ENTRY
39
COPYRIGHTABLE SUBJECT MATTER
IN INDIA
COPYRIGHT (OXFORD ENGLISH DICTIONARY)
“The exclusive right given by law for a
certain term of years to an author,
composer etc. (or his assignee) to print,
publish and sell copies of his original
work”
COPYRIGHT
Copyright is
an exclusive right of the copyright
holder.
a right to copy or reproduce the work
for which the author has got the
copyright.
a right to do or authorizing others to
do certain acts .
a product of human skill & his mental
capacity to do something creative.
COPYRIGHT
Copyright is a right
given by the law
to creators of literary, dramatic,
musical and artistic works and
producers of cinematograph films and
sound recordings
COPYRIGHT
It is a bundle of rights including,
rights of reproduction,
communication to the public,
adaptation
translation of the work etc.
SUBJECT MATTER OF THE
COPYRIGHT
cinematography
artistic works
dramatic works
musical works
literary
sound recording
computer programs, etc
AUTHOR
literary and dramatic work ------- author
of the work .
artistic works -------- the artist
musical work --------- the composer
photography ---------- the photographer
cinematography -------- the producer
computer program ------- the
programmer.
ARTISTIC WORK
Artistic work means
any panting ,
any sculpture
any drawing including maps,chart and a
plan
an engraving
a work or an architechture
any other work of craftsamanship and
any work which has artistic quality .
CINEMATOGRAPHY
Cinematography means
any work of visual recording on the medium
produced through a process from which a
moving image may be produced .
it includes sound recording accompanied
with the visual images .
it shall also be construed as including any
work produced by any process analogous to
cinematography including video films.
[Section 2 (f)]
LITERARY WORK
Section 2(o) of the Act provides that
“literary work” includes computer
programmes, tables and compilations
including computer databases.
COPYRIGHTABLE SUBJECT MATTER
BOOKS/ E-BOOKS
NEW EDITIONS OF BOOKS
NOVELS
STORY
PLAYS
POEM
SONG LYRICS
CONCEPT NOTE
LETTERS
LECTURES, SERMON AND SPEECHES
TABLES
JUDICIAL PRONOUNCEMENTS
COMMENTARIES
COMPILATIONS
DIRECTORIES/ENCYCLOPAEDIA/DICTIONARIES
RESEARCH THESIS/RESEARCH PAPERS/DISSERTATION
COMIC BOOKS
WEBSITE CONTENT
PANCHANG
TICKETS
QUESTIONNAIRE AND QUESTION PAPERS
BROCHURE/ CATALOGUE/ PAMPHLET
ACTIVITY BOOKS
Original and not generic
NON-COPYRIGHTABLE SUBJECT MATTER IN CASE OF LITERARY WORK
SINGLE WORD
TITLES
TWO OR THREE SENTENCES
SLOGANS
CERTIFICATES
BLANK FORM
WEBSITES as whole
MATHEMATICAL FORMULAS/ALGORITHMS
POCKET DIARIES & CALENDARS
RECIPE
LAYOUT ALONE
FLOW CHARTS
FLASH CARDS
SCREENSHOTS/SNAPSHOTS OF APP
MUSICAL WORK
Musical work means
any work consisting of music and includes any
graphical notation
but does not include any words or any actions
intended to be sung ,spoken or performed with the
music Section 2(p)
In a musical work
“Copyright is not the soulful tune, the super singing,
the glorious voice or the wonderful rendering. It is the
melody or harmony reduced to printing, writing, or
graphic form”
SOUND RECORDING
Sound recording means
any recording of sound
from which such sounds may be produced
regardless of the medium
on which such recording is the method by
which the sound are produced . Section 2 (xx)]
By definition, any recorded audio will be
considered a sound recording. For example, a
song, a recorded speech, or an audio book
RIGHTS OF A COPYRIGHT HOLDER
right to reproduce
right to communicate to public
right to issue new copies of the work
right to have a copyright for fixed terms.
right to assign
right to seek legal remedy in case of
infringement or right to sue
right to grant licence.
TERM OF THE COPYRIGHT
in case of artistic ,dramatic and literary works
and musical works the term of copyright is -----
lifetime plus 60 years from the date of death .
in case of artistic ,dramatic and literary works
and musical works the term of copyright is -----
lifetime plus 60 years from the date of death .
in case of the works of public undertaking and
work of international organisation ------- the
term of copy right is 60 years from the date of
its publication.
REGISTRATION OF THE COPY RIGHT
the registration of copy right is not
compulsory . because the copyright in
a material work automatically comes
into existence immediately after the
original work is produced .
COPYRIGHT REGISTRATION WORK
FLOW
ADVANTAGES OF COPYRIGHT REGISTRATION
the certificate copy of registration ,which
is acts an evidence of the authorship
its helps the author to take immediate
legal action against the infringement
the registration certificate is useful to
author and his successors to establish
their title in the case of dispute
it helps to prove the copyright in the
foreign countries .
TRADEMARK
A trademark is something that distinguishes your products from
others within the market.
Trademark can be
A word or name
A logo
A slogan
A design
In certain cases, this can be extended to…
A colour scheme
A smell
A sound
OBJECTIVE OF TRADEMARKS
To prevent confusion among
consumers as to the source of
goods or services;
To permit the trade mark owner
to control the products’ or
services’ reputation.
To protect the good will that
the trademark owner has built up
in his products and services .
TRADE MARK Should be
DISTINCTIVE in respect of goods,
Easy to pronounce, remember, spell and write
Non-confusing
Preferably an Invented or coined Word (Kodak)
or Original artistic creation
And
Should not belong to Marks prohibited by Law e.g.
Emblem of India
Should not contain obscene matter
Should not hurt religious or sacred feelings of any
citizen
INDUSTRIAL DESIGN
• Design is for beautifying an
industrial product to attract
consumer public.
• Any new or original design
adopted for ornamentation,
shaping and configuration of an
industrial product is eligible for
Design registration.
Industrial Designs
Industrial Designs are of great commercial Value
because shape or configuration of the article can
often
¨When be a great selling point.
companies are competing at equal price and functionality,
Design is the only differential that matters
¨Product value enhancement through Innovating new designs
¨Ranges from shape of product to packaging
¨Valid for 10 years, extendable by 5 more years
Must not be previously published
PATENT CASE STUDIES
Basmati Rice Patent Case
BENEFITS
IPR CASE BETWEEN INDIA AND USA ON NEEM
INTRODUCTION
Neem is a tropical evergreen tree native to India.
It is known at “the village pharmacy” because of its
versatile use since more than 4000 years.
PATENTING ON NEEM-A CASE OF BIOPIRACY
Bio piracy is the theft of genetic materials by the process of
patenting.
Once patented, the patent owner can easily prevent
competitors from producing the product, occasionally even
interfering with the lifestyles of the community, which is
the original source of the patented product.
In such cases, farmer and community livelihoods are
threatened.
THE PROBLEM & DISPUTE
THE PROBLEM
IN 1971, us timber importer Robert Larson observed the tree’s
usefulness in India and began importing neem seeds to Wisconsin.
He then conducted safety and performance tests on it and sold the
patent for the product to the MNC, W R Grace and Co.
Since 1985, over a dozen US patents have been taken out by US and
Japanese firms on the formulate for stable neem based solutions,
emulsions, etc.
It also began suing Indian companies for making the emulsion.
THE DIPUTE
The controversy that who has the right over the neem tree raised may
questions
Indian companies claim that what the us companies are calling
inventions are actually the stealing and pirating of the indigenous
practices and knowledge’s of its people.
US, on the other hand stated that what they are doing will help the
Indian economy.
Another issue is whether the neem tree is patentable because it is a
product of nature.
The problem is that W R Grace doesn’t have a patent on the tree but on
the process of making the emulsion.
AFTERMATH
THE NEEM CAMPAIGN
It consisted of a group of NGO’s and
individuals.
This was done to mobilize worldwide
support to protect indigenous
knowledge systems.
The neem patent became the first case
to challenge US and European patents
on ground of bio piracy.
CASE JUDJEMENT
On 30 September 1997 EPO accepted the arguments
offered by Indian scientists and rejected the order of
the US patent.
The Indian scientists argued that the Indians have
known the medicinal properties of neem for
thousands of years and hence no other company can
patent its properties.
The EPO agreed to withdraw the patent in May 2000.
The US also needs to change is laws which allows bio
piracy.
Patents are supposed to satisfy three criteria-
NOVELTY, NON-OBVIOUSNESS AND UTILITY.
COMPULSORY LICENSE U/S 84
Section 84:
(1) 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 licence on patent on any of
the following grounds, namely:—
(a) that the reasonable requirements of the public
with respect to the patented invention have not
been satisfied, or
(b) that the patented invention is not available to the
public at a reasonably affordable price, or
(c) that the patented invention is not worked in the
territory of India.
Case summary
(Natco Pharma Ltd., India vs Bayer Corporation, USA)
In a land mark decision on 9th March 2012, Mr.
P. H. Kurian, the then Controller of Patents
issued the order of grant of first compulsory
license for patents in India.
The compulsory license was issued to Natco
Pharma Ltd. in patent number 215758
granted to M/S Bayer Corporation.
This patent relates to drug Sorafenib tosylate
sold under the brand name Nexavar by
Bayer.
Nexavar is indicated in Renal Cell Carcinoma
- RCC (kidney cancer) and Hepatocellular
Carcinoma – HCC (liver cancer).
CASE SUMMARY
Controller found that the reasonable requirements of the
public with respect to the patented invention had not
been satisfied since only 2% of the total kidney and
liver cancer patients were able to access the Bayer’s
drug.
The Controller determined that the patented invention was
not available to the public at a reasonably affordable
price because Bayer was charging about Rs 2.8 lakhs for
a therapy of one month of the drug.
The Controller also found that the patented invention was
not worked in the territory of India since Bayer was not
manufacturing the product in India rather it was
importing it from out side India
CASE SUMMARY
After getting this compulsory license Natco is
now free to manufacture and sell a generic
version of Nexavar in RCC and HCC.
Natco will have to pay a 6% royalty on the net
sales to Bayer at the end of each quarter.
Further, it can not charge more than Rs 8800
for a monthly dose of 120 tablets of the drug.
Natco has also committed to donate free
supplies of the medicines to 600 needy
patients each year as a condition of the
compulsory license agreement.
PATENT CASE ON-
NOVARTIS VS. UNION OF INDIA &
OTHERS
Challenging the Indian Patent Office for:
Denial of its patent application for
Glivec
Constitutional validity of section 3 (d) of
Indian Patent Law, 1970
INTRODUCTION-
Section 3 (d) of the Indian Patent Act-
Prevents the Grant of a Patent for
New Forms of Known Substances,
Unless It is Demonstrated with an
Increased Efficacy.
Glivec Patented in 35 countries &
Helpful in Chronic Myeloid Leukemia.
“Imatinib Mesylate” in Beta Crystalline Form.
Restrain Indian Generic Pharmaceutical
Manufacturers from Producing Drugs based on
the Compound.
Not Compatible with the Trade Related Aspects
of Intellectual Property Rights (TRIPS) (Vague).
Non Uniform Discretionary Power on the
patent controller.
DECISION-
Dismissal of 2 Petitions by Madras High
Court.
Division Bench of Court Rejected the
Contention as it gave Scope to the Statutory
Authority to Exercise its Power Arbitrarily.
Substance was Used in the Market for Many
Years.
Glivec does not Quality the Test of
“Invention” as laid down in Section
2 (1) (j) and Section 2 (1) (j (a)) of
the Indian Patent Act.
Novartis decided to stop any
further Investment in R & D in
India.
CASE STUDIES
Kajal Agarwal Vs. V.V.D & Sons
Both single judge and division
bench has confirmed
Subject to contractual agreement, the
owner of the copyright has right to
exploit.
DAIMLOR BENZ Vs. HYBO HINDUSTA
(AIR 94 del 239)
Plaintiff filed suit for permanent
injunction restraining the use of its
trademark “BENZ” along with device of
three pointed human being on
undergarment.
Court restrained defendant from using
mark “BENZ” along with the device of
three pointed human being on
undergarment.
CASE STUDIES
Suneet Varma Design Pvt. Ltd. And ...
vs Mr. Jas Kirat Singh Narula And Anr.
2007 (34) PTC 81 Del
Incidental use of dress in a
cinematographic film
INFRINGEMENT…
IPR in a property shall be deemed to be
infringed—
when any person, without a licence granted
by the owner of IPR
Any act violating exclusive rights granted
to the owner constitute infringement
Including permitting for profit any place for
commitment of sale / hire / Trade exhibit
Including import ( personal domestic use is
exempted)
REMEDIES FOR COPYRIGHT
INFRINGEMENT
Remedies for
Infringement
Administrativ
Civil Criminal
e
CIVIL REMEDIES
Civil
Injunctio
Damages Accounts
n
CRIMINAL REMEDIES
Criminal
Remedies
Imprisonmen
Cognizable Fine up to
t up to 3
Offences 200,000 INR
years
WHO IS A PATENT AGENT
A patent agent is an individual who has qualified Indian
Patent Agent Exam and is registered for practicing before an
Indian Patent Office.
Eligibility criteria to become patent agent India
Applicants need to be an Indian citizen and is to complete 21
years of age at exam time.
All technology and science graduates (M.Tech, B.Tech, M.Sc.
and B.Sc,) from any established university under Indian law
or other specified equivalent qualification under central
government is eligible for appearing the exam.
NATURE OF INFORMATION NEEDED WHILE
CONSULTING A PATENT ATTORNEY
As an inventor one should share the
complete invention with a patent
attorney in the same manner as a
patient confides in a doctor.
A patent attorney may not be able to
draft a good specification in the absence
of details about the invention
The only thing that keeps us alive
is our brilliance
The only thing protecting our
brilliance is our patents.
Edwin H. Land, 1976
QUERIES …
THANK YOU