IPR covers patents, copyright, trademark, industrial designs, geographical indications, protection of layout design of integrated circuits and protection of undisclosed information (trade secrets).

2. What is a patent?

A patent in an exclusive right granted to an inventor to make, use, manufacture and market the invention,

Exclusivity of right exempt others form make, use, manufacture or market an invention without the consent of the patent holder. The exclusive right is only for a period of 14years as per the old Act, which was amended, and the period of protection is now 20 years in India

A patent is a property right and hence, can be gifted, inherited, assigned, sold or licensed. An inventors/their assignees can file patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries.

3. What is the obligation of the patentee to the state?

A patentee must disclose the invention in a patent document for to the public in return of the limited monopoly granted for 20 years

4. What are the conditions to be satisfied by an invention to be patentable?

Novelty :An invention will be considered novel if it does not form a part of the state of the art. Information appearing in magazines, technical journals, books, newspapers etc. constitute the state of the art. An invention will cease to be novel if it has been disclosed in the public through any type of publications anywhere in the world before filing a patent application in respect of the invention. Prior use of the invention in the country of interest before the filing date can also destroy the novelty.

Inventiveness (Non-obviousness) :A patent application involves an inventive step if the proposed invention is not obvious to a person skilled in the art i.e., skilled in the subject matter of the patent application. The prior art should not point towards the invention implying that the practitioner of the subject matter could not have thought about the invention prior to filing of the patent application.

Usefulness:An invention must possess utility for the grant of patent No valid patent can be granted for an invention devoid of utility.

As per the Indian Patent Act

Invention means a new product or process involving an inventive step and capable of Industrial application

Inventive step means a feature that makes the invention not obvious to a person skilled in the art

Capable of Industrial application means that the invention is capable of being made or used in an industry

5. What are the types of inventions which are not patentable in India?

An invention may satisfy the condition of novelty, inventive step and capable of industrial application, but it may not qualify for a patent under the following situations:

• an invention which is frivolous or which claims anything contrary to well established natural laws;

• an invention contrary to public order or morality or which causes serious prejudice to human , animal or plant life or health or to the environment;

• the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;

• the 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;

• a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

• the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

• a method of agriculture or horticulture;

• any process for 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;

• 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;

• mathematical or business method or a computer program per se algorithms

• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

• a mere scheme or rule or method of performing mental act or method of playing game;

• a presentation of information

• topography of integrated circuits

• an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components

• inventions relating to atomic energy

6. When to file a patent application?

Filing of an application for a patent should be completed at the earliest possible date. An application should be filed with provisional specification at the earliest opportunity, disclosing invention in order to get the priority.

Delay in filing an application may entail some risks like

• other inventors might forestall the first inventor by applying for a patent for the said invention

• there may be either an inadvertent publication of the invention by the inventor or by others

7. 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.

8. What is considered as the date of patent?

The date of patent is the date of filing the application for patent (whether provisional or complete). The term of the patent is counted from this date.

9. What is the term of a patent in the Indian system?

Term of the patent is 20 years from the date of filling for all types of inventions

10. What are the essential patent documents to be generated and submitted by a potential patentee?

There are two types of patent documents usually known as patent specification, namely

(i) Provisional Specification and (ii) Complete Specification Provisional Specification

A provisional specification is usually filed along with the application to establish priority of the invention in case the disclosed 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. The provisional specification is a permanent and independent scientific cum legal document. No patent is granted on the basis of a provisional specification. It has to be a followed by a complete specification for obtaining a patent for the said invention. Complete specification must be submitted within 12 months of filing the provisional specification. This period can be extended by 3 months. An application with complete specification can be filed right at the first instance.

Complete Specification

Submission of complete specification is necessary to obtain a patent The contents of a complete specification would include the following

• Title of the invention

• Field of technology which the invention belongs .

• Prior art disclosure giving drawbacks of the known inventions & practices.

• Complete description of the invention along with experimental results.

• Drawings etc. essential for understanding the invention.

• Claims, describing the area protection, relating to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.

11. What are the criteria for naming inventors in an application for patent?

The naming of inventors is normally decided on the basis of the following criteria:

• All persons who contribute towards development of patentable features of an invention should be named inventor(s).

• All persons, who have made intellectual contribution in achieving the final results of the research work leading to a patent, should be named inventor(s).

• A person who provides ideas needed to produce the ‘germs of the invention’ need not himself / herself carry out the experiments, constructs the apparatus with his/her own hands or make the drawings himself/herself. The person may take the help or others. Such person who have helped in conducting the experiments, constructing apparatus or making the drawings or models without providing any intellectual inputs are not entitled to be named inventors.

12. What is the nature of information needed while consulting a patent attorney?

As an inventor one should share the complete invention with a patent attorney. Patent attorney require all the information pertaining to the invention to draft a good specification in the absence of details about the invention. Following points should be kept in mind while discussing with the attorney:

• Provide complete details of the invention including failures, if any, on the way to the invention. Details such as, whether there are any other inventors working with you on the inventorship or you have published the invention or disclosed it in a seminar/conference or you have displayed the invention in an exhibition etc. are to be furnished to the attorney. A patent document is a techno-legal document, hence all precautions are to be taken right from the first step. Provides right answers and you may even show your laboratory note book/log book to the attorney. This will help the attorney / agent to explain the inventive step in a precise manner and draft a good specification and associated claims.

• Explain the central theme of the invention and novelty, inventiveness and utility of the invention.

• Share all the prior art documents in your possession with the attorney.

• If you have developed an improved version of your competitor's product/process, admit it and be totally honest. This would help the attorney in drafting precise claims and avoid excessive claims, which might be struck down immediately or at a later date.

• A detailed description of the best way of putting the invention into practical use, results of your tests and trials, etc., including all failures and defects should be given to the attorney.

• Alternative ways of using the invention, and the substitutes or parts of it i.e., will one chemical compound do as well as any other in the process?

• It may be worth drafting the patent widely enough to cover less satisfactory alternatives as well so as to prevent rivals from marketing a less satisfactory competing product which because of its defects might bring the whole genre of product into disrepute or which may be cheap.

• Both after an initial search and during the course of the filing and grant of a patent application, it is important to respond quickly and accurately to queries which the patent attorney may have. Thus the client should keep the patent attorney informed of any new developments in the field of invention carried by the patentee or some one else.

13. What is opposition under the Indian Patents Act 1970?

After the Patent Office has examined an application and found it in order fo rgrant of a patent, it publishes the title pf the invention, name of the inventor(s) and the applicant(s), abstract of the invention, drawings and claims in the Gazette of India, Part III Section 2, for interested parties to oppose the grant of the patent. An application for opposition may be filed at the concerned Patent Office branch within four months of the date of the issue of the concerned gazette. An extension of one month is possible; a request for extension has to be made within the first four months. Copies of the specification together with photocopies of the drawings, if any, can be obtained from the Patent Office on payment of the prescribed fees.

14. >What is the cost of filing a patent application in India?

The Government fee for filing a patent application (complete/provisional) in India is Rs.750/- for individuals and Rs.3,000/- for legal entities. An applicant is now required to make a request for examining the patent application within 48 months of filing of the application. In case of applications filed before May 20, 2003 examination request has to be made within the 48 months of filing of the application or within 12 months from May 20, 2003 whichever is shorter. An individual has to pay Rs.1,000/- as examination fee and Rs.3,000/- for legal entities. A sealing fee of Rs.1,500/- for individuals and Rs.5,000/- for legal entities has to be paid at the time of grant (sealing) of patent.

15. What is the distinction between a patented invention and know how?

The law does not require that the information disclosed in the patent specification be sufficient for commercial exploitation of the invention. Thus, patent usually will not disclose sufficient information for commercialization. Know how on the other hand, covers all information necessary to commercialize the invention e.g. setting up a production plant. Such information would include, for example, details of the production methods, the design drawings etc. It is this know how which is traded while transferring technology. Know how is always kept as a trade secret and not shared with public. Know how is not protected through patents as most of it is non-patentable matter and one does not take patent on the remaining parts to avoid public disclosure. A know how developed around an existing patent and commercialized subsequently may be an infringement of the patent unless the patentee has agreed to commercialization on mutually agreed terms.

16. Is a patent granted in one country enforceable in other countries?

No. There is nothing like a global patent or a world patent. Patent rights are essentially territorial in nature and are protected only in a country (or countries) which,has (have) granted these rights. In other words,-for obtaining patent rights in different countries one has to submit patent applications in all the countries of interest for grant of patents. This would entail payment of official fees and associated expenses, like the attorney fees, essential for obtaining patent rights in each country. However, there are some regional systems where by filing one application one could simultaneously obtain patents in the member countries of a regional system; European Patent Office is an example of a similar system.

17. Does grant of a patent in one country affect its grant or refusal in another country?

Each country is free to grant or refuse a patent on the bases of scrutiny by its patent office. This means that granting a patent in one country of the Union does not force other countries to grant the patent for the same invention. Also, the refusal of the patent in one country does not mean that it will be terminated in all the countries.

18. What is 'mail box' provision?

TRIPS requires that countries, not providing product patents in respect of pharmaceuticals and chemical inventions have to put in a mechanism for accepting product patent applications w.e.f. 1 January 1995. Such applications will only be examined for grant of patents, after suitable amendments in the national patent law have been made. This mechanism of accepting product patent applications is called the "mail box" mechanism.

19. What is an exclusive marketing right ?

TRIPS requires that member countries of the WTO not having provision in their laws for granting product patents in respect of drugs and agrochemical, must introduce Exclusive Marketing Rights (EMR) for such products, if the following criteria are satisfied:

• A patent application covering the new drug or agrochemical should have been filed in any of the WTO member countries after 1 January, 1995;

• A patent on the product should have been obtained in any of the member countries (which provides for product patents in drugs and agrochemical) after 1 January 1995;

• Marketing approvals for the product should have been obtained in any of the member countries;

• A patent application covering the product should have been filed after 1 January 1995 in the country where the EMR is sought;

• The applicant should apply seeking an EMR by making use of the prescribed form and paying requisite fee.

EMR is only a right for exclusive marketing of the product and is quite different from a patent right. It is valid up to a maximum period of 5 years or until the time the product patent laws come into effect.

20. Does India have provision for grant of EMR?

Yes. The necessary amendment to: the Patents Act, 1970 came into force on 26 March 1999. The provision is applicable with retrospective effect from 1 January 1995.

21. What is industrial property?

Industrial property includes: (a) Patents (b) Utility models (c) Industrial designs (d) Trademarks, service marks and trade names (e) Indication of source or appellations of origin (this is same as the geographical indications adopted in TRIPS);

22. What is the Paris Convention?

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 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

23. What are the principal features of the Paris Convention?

The principal features of the Paris Convention have been listed below

• National treatment

• Right of priority

• Independence of patents

• Parallel importation

• Protection against false indications and unfair competition

24. What is the meaning of national treatment under the Paris Convention?

This means to provide equal treatment to patent applications from member countries, A country should not to differentiate between the nationals of your country and nationals of the other countries for the purpose of grant, and protection of industrial property in your country. Imagine that a national of country X applies for grant of a patent in India. According to the Paris Convention, the Indian Patent Office shall apply the same norms and rules, to the applicant from X, as applicable to an Indian applicant, for granting a patent. Similarly the applicant from X shall have the same protection after grant and identical legal remedies against any infringement shall be available to the applicant provided the conditions and formalities imposed upon Indians are complied with. No requirement as to domicile or establishment in the country where protection is claimed, may. be imposed.

25. What do you understand by the priority date in a patent application and what is its significance?

The date from which patent right is deemed to start is usually the date of filing of application. To obtain rights in other member countries, the application must be filed on the same day in other member countries if it is desired to have the rights started from the same day. However, there are practical difficulties in synchronizing the activities. For facilitating simultaneous protection in member countries, the Convention provides that the applicant can also file the patent application in conventional countries within 12 months of national filing, the propority date will be effective from the date of national filing. In other words you maintain the priority date in all the member countries and no one else in those countries can obtain the patent rights on a similar/identical invention from the same or a later date.

26. Is there a provision for compulsory license in the Paris Convention?

Yes, each member country shall have the right to provide for the grant of compulsory licenses to prevent the abuses resulting from the exclusive rights conferred by the patent. Compulsory licenses for failure to work or insufficient working of the invention may not be requested before the period of time of non-working or insufficient working has elapsed. This time limit is four years from the date of filing of the patent application or three years from the date of the grant. Such licenses will be a non-exclusive and non-transferable one.

27. What are the other advantages of joining the Paris Convention?

There are a number of international conventions and treaties, which are open only to the members of the Paris Convention. Some of these are:

• Patent Cooperation Treaty (PCT)

• Budapest Treaty (for deposition of microorganisms)UPOV (for protection of new varieties of plants)

• Madrid Agreement (for repression of false or deceptive indications of source on goods)

• Madrid Protocol (concerning registration of marks)

• Hague Agreement (concerning deposits of industrial designs)

28. What is the Budapest Treaty?

This is an international convention governing the recognition of deposits to micro organisms in officially approved culture collections for the purpose of patent applications in any country that is a party to it. Because of the difficulties and on occasion of virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others. The Treaty was signed in Budapest in 1973 and later on amended in 1980. India has become a member of this Treaty, with effect from December 17, 2001.

29. Are there any differences in the filing of patent applications in respect of microbiological inventions and other inventions?

An inventor is required to deposit the strain of a microorganism in a recognized depository which assigns a registration number to the deposited microorganism. This number needs to be quoted in the patent application. Obviously a strain of microorganism is required to be deposited before filing a patent application. It may be observed that this mechanism obviates the need of describing a microorganism in the patent application. Further, samples of strains can be obtained from the depository for further working on the patent. There are many international depositories in many countries, which are recognized under the Budapest Treaty.

30. What is patent cooperation treaty (PCT)?

The patent cooperation treaty (PCT) is a multilateral treaty entered into force in 1978. Through PCT, an inventor of a member country (Contracting state of PCT can simultaneously obtain priority for his/her Invention in all/ any of the member countries, without having to file a separate application in the countries of interest, by designating them in the PCT application. India joined the PCT on December 7, 1998.

31. Who coordinates the activities of PCT ?

All activities related to PCT are coordinated by the World Intellectual Property Organization (WIPO) situated in Geneva.

32. What are the advantages of PCT ?

In order to protect your invention in other countries, you are required to file an independent patent application in each country of interest; in some cases, within a stipulated time to obtain priority in these countries. This would require a large investment, within a short time, to meet costs towards filing fees, translation, attorney charges etc.

Inventors of Contracting States of PCT on the other hand can simultaneously obtain priority for their inventions without having to file separate application in the countries of interest ; thus saving the initial investments towards filing fees, translation etc. In addition the system provides much longer time for filing patent application in member countries. The time available under Paris Convention for securing priority in other countries is 12 months from the date of initial filing.

33. How are patent applications under PCT handled?

The patent office or any other office designated by each contracting state becomes a receiving office for receiving patent applications These applications are referred to International Searching Authorities (ISA) which usually the patent offices, appointed to carry out the patent search on a global basis. In case the receiving office is also an ISA, a separate referral is not required . There is also a provision to get a patent application examined by international preliminary Examining Authorities which, in most cases are ISA.

34. Where to file the international patent applications?

An international application can be filed in any of the Branch Offices of the Patent Office located at New Delhi, Chennai, Mumbai and Kolkata (Head Office). Any of these Offices shall function as receiving office, designated office and elected office for the purpose of international applications filed under the Treaty.

An international application shall be filed in the Patent Office which would process the application in accordance with these rules and the provision under the PCT.

35. Will an international application designating India be treated as an application for grant of patent under the 1970 Act?

Yes, an international application designating India shall be treated as an application for patent under the Act.

36. What is the cost of filing a PCT application?

The schedule of fees is given below for filing with International Bureau directly:

1. (a) Basic fee up to 30 sheets of a patent application	650 Swiss francs
(b) Basic fee for a patent application having more than 30 sheets;	650 Swiss francs plus 15 Swiss francs for each sheet in excess of 30 sheets
2. (a) Designation fee if designation is less than 5 (Countries)	140 Swiss francs per designation
(b) Designation fee if designation is more than 5 (Countries)	700 Swiss francs
3. Handling fee	233 Swiss francs

4. Search fees are additionally payable

5 All fees payable are reduced by 75% for applications filed by any applicant who resides in a PCT Contracting State where the per capita national income is below 3000 US dollars. If there are several applicants, each must satisfy the criterion. It may be noted that no concessions are available in the national phase or regional phase applications; respective fees in these phases will have to be paid by the applicant.

Last updated on: 26-12-2007

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