Patents Law

1. Copyright vs Trademark vs Patent (Quick Compare)

Table 1 summary: A comparison of Copyright, Trademark, and Patent protections under Indian law. Copyright, governed by the Copyright Act, 1957, protects creative works like books, art, and music for the author's life plus 60 years without needing a provisional application. Trademarks, under the Trademarks Act, 1999, protect brand identity such as logos, slogans, and shapes for 10 years with the possibility of infinite renewal every 10 years. Patents, governed by the Patents Act, 1970, protect useful new inventions for 20 years from the filing date, requiring an initial provisional application and annual renewal fees, after which they cannot be renewed.

2. International Conventions

Paris Convention (1883)

- One of the oldest I.P treaties in the world.

- Covers patents, trademarks, and designs.

- Big rule: "Right of Priority" — if you file a patent in one member country, you get 12 months to file the same patent in other member countries and still keep your original filing date.

- Also has "National Treatment" — a country must treat foreign applicants the same as its own citizens.

- Guarantees a basic level of protection to everyone.

Patent Cooperation Treaty (P.C.T), 1970

- Lets you file one single international application instead of filing separately in every country.

- It only helps you file the patent — the actual grant still depends on each country's own patent office.

- Signed in Washington, 19 June 1970. Came into force 24 January 1978, started with 18 countries.

- India joined in August 1998.

Advantages of P.C.T:

- One application, one language, one set of fees.

- International Search (compulsory) — tells you if your invention might be patentable.

- International Publication.

- International Preliminary Examination (optional).

- Buys you time (up to 30/31 months) before you need to enter each country separately, so you can decide where it's really worth spending money.

Where can you file a P.C.T application?

- Your own country's patent office

- Directly with W.I.P.O's International Bureau

- A regional office (like aripo, European Patent Office, etcetera)

Before P.C.T Existed — the "Traditional" Way (from the slide diagram)

Without P.C.T: you file your local application at month 0, and then you had to separately file the same invention in every single country abroad, all within 12 months — lots of paperwork, repeated in every country.

P.C.T Process — Step by Step

1. First application filed in your home country.

2. International phase

- File the P.C.T application (within 12 months of your first filing)

- International Search Report + Written Opinion (within 16 months)

- International Publication (18 months after priority date)

- Optional: Extra international search

- Optional: International Preliminary Examination (within 22 months) arrow Report ready by 28 months

3. National phase — now you must actually apply in each country where you want protection (usually within 30 to 31 months). Only the national patent office can actually grant the patent.

Full P.C.T Timeline (from the slide diagram, all times counted in months from your first local filing):

Table summary: The timeline for patent applications begins at month 0 with the first local filing, followed by the filing of a PCT application at month 12. Key milestones include the search report and written opinion at month 16, international publication at month 18, and the international preliminary report on patentability at month 28. Optional steps include a supplementary search at month 19 and a demand for international preliminary examination at month 22. The process culminates at month 30, when the applicant enters the national phase to apply separately in specific countries.

What you need to file a local (first) application:

- A request

- A description of the invention

- One or more claims

- An abstract

- Drawings (if needed)

- The fee

Fees for P.C.T filing: transmittal fee, international filing fee, search fee, priority document fee. Individuals from P.C.T countries get a 90% discount on the international filing fee.

trips Agreement

trips sets the minimum global rules for patents, under the W.T.O. The important part is Articles 27 to 31:

- Article 27(1): An invention must be new, involve an inventive step, and be industrially useful to get a patent. Patents must be available in every field of technology — no discrimination based on country, field, or import/local origin.

- Article 27(2): Countries can refuse a patent if allowing it would harm public order, morality, human/animal/plant health, or the environment.

- Article 27(3): Countries can choose to exclude: medical/surgical/diagnostic treatment methods, and plants/animals (except microorganisms). If plants are excluded, some other protection system (like a plant variety law) must be given instead.

- Article 28: Patent owner gets exclusive rights — for products: stop others from making, using, selling or importing it. For processes: stop others from using that process or selling what came out of it.

- Article 29: The applicant must clearly explain the invention so any skilled person could actually make it. Countries can also ask for the "best way" of doing the invention, and details of similar applications filed abroad.

- Article 30: Countries can allow small exceptions to patent rights, but only if: (1) the exception is limited, (2) it doesn't unfairly clash with normal use of the patent, (3) it doesn't unfairly hurt the patent owner's legitimate interests. (Called the "Three-Step Test.")

- Article 31: Covers compulsory licensing — government can allow someone else to use a patent without the owner's permission, but only after trying to get permission first (except in emergencies). The patent owner must still be paid fairly, and the decision can be challenged in court.

International Patent Classification (I.P.C)

- Comes from the Strasbourg Agreement.

- A common system used worldwide to classify (sort) patents by subject, so searching becomes easier.

3. Why Patents Matter (Benefits)

Patents give: an incentive to invest, legal protection, reward for innovation, help in market competition, sharing of knowledge (since the invention has to be disclosed), support for economic growth, and international standardization.

4. What Makes an Invention Patentable? (Patentability Criteria)

An invention must have all three:

1. Novelty — it must be new (not known anywhere before).

2. Inventive Step (Non-obviousness) — it should not be something obvious to a skilled person in that field.

3. Industrial Application — it must be usable in some industry.

Industrial Application (simple)

The invention must be capable of being made or used in an industry, and usable more than once (repeatable). Example: a pen can be industrially applied because it can be manufactured again and again and used for writing.

Novelty (simple)

The invention must not already be part of "prior art" — meaning it should not already be published, used, or known anywhere in the world before the date of filing.

Things that can destroy novelty:

1. Prior publication

2. Public knowledge/use

3. Sale

4. Public display

5. Public working

6. Traditional knowledge

Case: Raj Prakash v. Mangat Ram Chowdhry — Court said a process for making printed picture films was novel because the steps were different from earlier known photography methods. Key point: you can't mix pieces from different old publications together to say something isn't novel — the invention must be looked at as a whole.

Case: Monsanto v. Coramandal Indag Products — A weed-killer formula and its process were already known publicly (published in an old research report), so the patent was rejected for lack of novelty. Court said something counts as "publicly known" even if only experts/scientists knew about it — it doesn't need to be famous with the general public.

Inventive Step (simple)

The invention must be a real technical advance (or have economic value) and must not be obvious to a normal skilled person in that field.

Case: Bajaj Auto v. T.V.S Motor — About using two spark plugs in small engines. Court said this had novelty and inventive step because using twin spark plugs in small engines wasn't already known using it in big engines doesn't automatically make the small-engine version "obvious." Court also said: just improving something in a small/routine way ("workshop improvement") is not enough to be inventive.

5. What Cannot Be Patented (Section 3 of the Patents Act)

Table summary: Categories of inventions excluded from patentability under Section 3, from 3(a) to 3(p). Exclusions include frivolous inventions or those against natural laws, such as perpetual motion machines, and those contrary to public order or morality, like devices for injecting opium. Scientific discoveries, abstract theories, and natural findings, such as Boyle's Law or a new plant, are also excluded. The list further bars simple mixtures without synergy, the mere combination of known devices, and methods of agriculture or horticulture. Medical treatments, surgeries, and diagnostic methods for humans or animals are not patentable, nor are plants, animals, or biological processes, such as a genetically modified mouse. Other exclusions cover mathematical methods, business models, and computer programs as such, as well as artistic works, game rules, the presentation of information, and the layout design of integrated circuits. Finally, traditional knowledge, such as the use of Neem or Haldi, is excluded unless a significant improvement is demonstrated.

Important note on Section 3(d): A new substance is patentable if you can scientifically prove it works better (enhanced efficacy) than the known substance.

Case: Novartis A.G v. Union of India (Glivec/Imatinib case) — Novartis wanted a patent on a salt form of a known cancer drug. It was rejected under Section 3(d) because it was just a new form of an old substance with no proven extra benefit. Novartis argued Section 3(d) was unclear and unfair, but the Supreme Court said the section is clear and reasonable — you just need scientific proof of better therapeutic effect.

Case: Diamond v. Chakrabarty — Scientist made a genetically engineered bacteria that could break down crude oil (useful for oil spills). Court allowed the patent because it was man-made, not something simply found in nature — even a living thing can be patented if humans actually created it.

Case: Standipack v. Oswal Trading — Claim was only about the thickness of plastic film used in pouches. Court said this was just a rearrangement of existing material (not a new invention), so it was rejected under Section 3(f).

Case: Dimminaco A.G v. Controller of Patents — A vaccine (a living virus-based product) for a poultry disease was allowed as patentable, because the process to make it was inventive.

Section 4 — Atomic Energy

Inventions related to nuclear materials (Uranium, Thorium, Plutonium, Radium, etcetera, as listed under the Atomic Energy Act) cannot be patented.

6. How to Get a Patent (Registration Process)

Who can apply?

- The true inventor

- Someone the inventor has assigned rights to (needs proof)

- The legal representative of a deceased inventor/assignee

Where to file: Based on where you live, do business, or where the invention was made. If you're outside India, you need an address for service inside India.

How to file: Online (via ipindiaonline dot gov.in), by post, or in person.

India's 4 Patent Office branches and their areas (from the slide table):

Table summary: Regional office coverage across India. The Kolkata Head Office covers the Rest of India, while other offices manage specific clusters. New Delhi handles the largest number of regions, including Haryana, Himachal Pradesh, J&K, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi, and Chandigarh. Mumbai covers Maharashtra, Gujarat, Madhya Pradesh, Goa, Chhattisgarh, Daman & Diu, and Dadra & Nagar Haveli, and Chennai covers Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Pondicherry, and Lakshadweep.

Documents Needed

1. Covering letter listing all documents

2. Form 1 — application for grant of patent

3. Form 2 — provisional or complete specification

4. Form 3 — statement & undertaking

5. Form 26 — Power of Attorney (if using an agent)

6. Form 5 — Declaration of Inventorship (for Indian applications)

7. Priority document copy (if claiming priority)

8. Fees

Provisional vs Complete Specification

- Provisional: Filed early to "lock in" your priority date while the invention is still being finalized. No patent is granted just on this. Must be followed by a complete specification within 12 months.

- Complete: Has the full description, best method of making the invention, the claims (this is the legal part that actually defines what's protected), and an abstract.

Cognate filing: If someone files multiple related (similar) provisional applications, the Controller can allow them to be combined into one single complete specification.

Section 9(3): A complete application can be converted back into a provisional one, if requested within 12 months.

Section 9(4) — Post-dating: The Controller can cancel the provisional application and shift ("post-date") the filing date to match the complete specification's date, if the applicant asks.

Steps After Filing

1. Publication — happens automatically 18 months after filing (or you can request early publication after 1 month via Form 9).

2. Pre-grant opposition — Anyone can oppose within 3 months of publication (or until grant, whichever is later).

3. Request for Examination — Must be filed for the application to actually be examined.

4. First Examination Report (F.E.R) — Examiner checks novelty, inventive step, industrial use, and lists any objections.

5. Grant of Patent — happens once all objections in the F.E.R are resolved. The patent gets a serial number.

6. Post-grant opposition — Anyone interested can oppose within 1 year of grant.

Note: Once published (even before grant), the applicant gets some rights similar to a granted patent — but cannot sue for infringement until the patent is actually granted.

Timeline at a glance (from the process flowchart in the slides):

- Complete specification must follow a provisional application within 12 months (else it's treated as withdrawn)

- Publication happens after 18 months

- Request for Examination must be made within 48 months of filing (else treated as withdrawn)

- Response to the First Examination Report (F.E.R) is due within 16 months (extendable) — no response also means it's treated as withdrawn

- After a hearing, if there's an order for refusal, an appeal can be filed within 3 months

- After a hearing, reply to objections is due within 15 days

- If granted: the patent number is allotted and the grant is published

Renewal Fee

- No fee needed for year 1 and year 2.

- From year 3 to year 20, yearly renewal fee must be paid to keep the patent alive.

- A 6-month grace period is allowed (with extra fee) if you miss the deadline.

- If not paid, the patent lapses (dies).

7. Revocation (Cancelling a Patent)

A patent can be cancelled if, for example:

- The same invention is already patented by someone else in India

- It was granted to the wrong person, or obtained wrongfully

- It's not actually an "invention" under the law

- It lacks novelty or inventive step

- It's not useful

- The description doesn't properly explain the invention

- It was obtained by false claims/fraud

- It falls under Section 3 or 4 (non-patentable subject)

- It was secretly used in India before the priority date (with some exceptions like trials/government use)

- Foreign filing info wasn't disclosed properly, or secrecy rules were broken

- Amendments to the specification were approved through fraud

Case: Dr. Aloys Wobben v. Yogesh Mehra — Supreme Court said: if you want to challenge a patent's validity, you can either file a revocation petition or raise it as a counterclaim in an infringement case — but not both at once.

8. Compulsory Licensing

A compulsory licence = the government allows a third party to use a patent without asking the patent owner's permission — done to make sure patents actually benefit the public.

Section 84 conditions — a compulsory licence can be given if:

1. The public's reasonable needs for the invention are not being met (for example, Indian industry is being hurt, demand isn't met, exports aren't happening, local development is being blocked)

2. The invention is not available to the public at a reasonably affordable price

3. The invention is not actually being "worked" (used/manufactured) in India

9. Rights of a Patentee (Section 48) — What the Owner Can Stop Others From Doing

(This was shown as a diagram in the slides and wasn't in the plain text — important to know.)

If the invention is a Product, the patentee can stop others from:

- Making the product

- Using the product

- Selling the product

- Importing the product

- Offering the product for sale (Easy to remember: musio)

If the invention is a Process, the patentee can stop others from using the process itself, and also from doing these things with whatever the process produces:

- Selling the product made by that process

- Importing the product made by that process

- Offering that product for sale

10. Patent Infringement

Meaning: Using, making, selling, or importing a patented invention without permission from the patent owner.

Types of Infringement

- Direct

- Indirect

- Contributory

- Literal

- Wilful

Literal Infringement — every single part/claim of the patent matches the copied product exactly.

- Case: Polaroid v. Eastman Kodak — Kodak's instant camera copied Polaroid's patented tech exactly to literal infringement found.

- Case: Laraami Corp. v. Amron — A water gun's design was different enough (removable tank versus fixed chamber) from the patent claim, so it was not infringement.

Non-literal infringement — the copy is not identical, but it's an "equivalent" version doing basically the same job.

- Case: Laxmi Dutt Roop Chand v. Nankau — Court compared the exact manufacturing process claimed versus the process actually used by the other side, and found they were different enough — no infringement.

Defences to Infringement (Section 107)

1. Using the same revocation grounds (Section 64) as a defence

2. Certain permitted acts under Section 47 (like government use, research use, etcetera)

Acts That Are not Infringement (Section 107A)

- Bolar Provision — allows using a patented invention just for research/testing needed to get regulatory approval (so a generic drug company can prepare in advance, before the patent expires).

- Parallel Import — importing a genuine patented product that was legally sold somewhere else in the world.

11. Key Case Laws (Infringement & Grant)

Novartis v. Union of India (2013) — Novartis's Glivec patent claim was rejected. The Court drew a clear line between"discovery" and true"invention," and introduced the idea of"enhanced therapeutic efficacy" as needed for drug patents. Purpose: keep essential medicines affordable.

F. Hoffmann-La Roche v. Cipla — One of India's earliest post-independence patent infringement cases. Roche wanted to stop Cipla from selling a generic version of its drug. Delhi High Court refused the interim injunction, saying the generic drug served the public interest, and noted there was already a pending case to revoke the patent.

Dr. Snehlata C. Gupte v. Union of India (2007) — Clarified when a patent is legally considered"granted." Court held it's simply a procedural step once the Controller passes the order — the physical certificate is not what matters legally.