UNIT-III

Nature of Intellectual Property

Intellectual property Right (IPR) is a term used for various legal entitlements which
attach to certain types of information, ideas, or other intangibles in their expressed form.
The holder of this legal entitlement is generally entitled to exercise various exclusive rights
in relation to the subject matter of the Intellectual Property. The term intellectual property
reflects the idea that this subject matter is the product of the mind or the intellect, and that
Intellectual Property rights may be protected at law in the same way as any other form of
property. Intellectual property laws vary from jurisdiction to jurisdiction, such that the
acquisition, registration or enforcement of IP rights must be pursued or obtained separately
in each territory of interest.
Intellectual property rights (IPR) can be defined as the rights given to people over the
creation of their minds. They usually give the creator an exclusive right over the use of
his/her creations for a certain period of time.
Intellectual Property
Intellectual property is an intangible creation of the human mind, usually expressed
or translated into a tangible form that is assigned certain rights of property. Examples of
intellectual property include an author's copyright on a book or article, a distinctive logo
design representing a soft drink company and its products, unique design elements of a web
site, or a patent on the process to manufacture chewing gum.
Intellectual Property Rights
Intellectual property rights (IPR) can be defined as the rights given to people over the
creation of their minds. They usually give the creator an exclusive right over the use of
his/her creations for a certain period of time.
Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic
works, and symbols, names, images, and designs used in commerce.
Categories of Intellectual Property
One can broadly classify the various forms of IPRs into two categories:
• IPRs that stimulate inventive and creative activities (patents, utility models, industrial
designs, copyright, plant breeders’ rights and layout designs for integrated circuits) and
• IPRs that offer information to consumers (trademarks and geographical indications).
IPRs in both categories seek to address certain failures of private markets to provide
for an efficient allocation of resources
IP is divided into two categories for ease of understanding:
1. Industrial Property
2. Copyright
Industrial property, which includes inventions (patents), trademarks, industrial designs,
and geographic indications of source; and
Copyright, which includes literary and artistic works such as novels, poems and plays, films,
musical works, artistic works such as drawings, paintings, photographs and sculptures, and
architectural designs. Rights related to copyright include those of performing artists in their
performances, producers of phonograms in their recordings, and those of broadcasters in
their radio and television programs
Intellectual property shall include the right relating to:
i. Literary, artistic and scientific works;
ii. Performance of performing artists;
iii. Inventions in all fields of human endeavour;
iv. Scientific discoveries;
v. Industrial designs;
vi. rademarks, service marks and etc;
vii. Protection against unfair competition.
Property
Property designates those things that are commonly recognized as being the
possessions of an individual or a group. A right of ownership is associated with property that
establishes the good as being "one's own thing" in relation to other individuals or groups,
assuring the owner the right to dispense with the property in a manner he or she deems fit,
whether to use or not use, exclude others from using, or to transfer ownership.
Properties are of two types - tangible property and intangible property i.e. one that is
physically present and the other which is not in any physical form. Building, land, house,
cash, jewellery are few examples of tangible properties which can be seen and felt physically.
On the other hand there is a kind of valuable property that cannot be felt physically as it does
not have a physical form. Intellectual property is one of the forms of intangible property
which commands a material value which can also be higher than the value of a tangible asset
or property.
Rights protected under Intellectual Property
The different types of Intellectual Property Rights are:
i. Patents
ii. Copyrights
iii. Trademarks
iv. Industrial designs
v. Protection of Integrated Circuits layout design
vi. Geographical indications of goods
vii. Biological diversity
viii. Plant varieties and farmers rights
ix. Undisclosed information
a. Intellectual Property
1. Inventions
2. Trademarks
3. Industrial design
4. Geographical indications
b. Copyright
1. Writings
2. Paintings
3. Musical works
4. Dramatics works
5. Audio-visual works
6. Sound recordings
7. Photographic works
8. Broadcast
9. Sculpture
10. Drawings
11. Architectural works etc.
IPR as Instruments of Development
a. Key drivers of economic performance in R&D based growth models
b. Intellectual property policies do affect the extent and nature of investments
undertaken by multinational enterprises. At the same time, relative to other factors
determining foreign investment decisions, IPRs seem to be of relatively minor
importance.
Duration of Intellectual Property Rights in a nutshell
1) Term of every patent will be 20 years from the date of filing of patent application,
irrespective of whether it is filed with provisional or complete specification. Date of
patent is the date on which the application for patent is filed.
2) Term of every trademark registration is 10 years from the date of making of the
application which is deemed to be the date of registration.
3) Copyright generally lasts for a period of sixty years.
4) The registration of a geographical indication is valid for a period of 10 years.
5) The duration of registration of Chip Layout Design is for a period of 10 years counted
from the date of filing an application for registration or from the date of first
commercial exploitation anywhere in India or in any convention country or country
specified by Government of India whichever is earlier.
6) The duration of protection of registered varieties is different for different crops namely
18 years for trees and vines, 15 years for other crops and extant varieties.
 PATENTS
Patent
Patent is a grant for an invention by the Government to the inventor in exchange for
full disclosure of the invention. A patent is an exclusive right granted by law to applicants /
assignees to make use of and exploit their inventions for a limited period of time (generally
20 years from filing). The patent holder has the legal right to exclude others from
commercially exploiting his invention for the duration of this period. In return for exclusive
rights, the applicant is obliged to disclose the invention to the public in a manner that
enables others, skilled in the art, to replicate the invention. The patent system is designed to
balance the interests of applicants / assignees (exclusive rights) and the interests of society
(disclosure of invention).
Meaning of ‘Invention’ under Patent Law
Sec.2(1)(J)- Invention” means a new product or process involving an inventive step
and capable of industrial application
What is not an ‘Invention’?
According to Sec 3 of the Patent Act, 1970
 Frivolous inventions
 Inventions contrary to well established natural laws
 Commercial exploitation or primary use of inventions,
 which is contrary to public order or morality
 which causes serious prejudice to health or human, animal, plant life or to the
environment
 Mere Discovery of a Scientific Principle or
 Formulation of an Abstract Theory or
 Discovery of any living thing or
 Discovery of non–living substance occurring in nature
 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.
 Substance obtained by mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance
 Mere arrangement or re-arrangement or duplication of known devices, each
functioning independently of one another in a known way
 Method of Agriculture or Horticulture
 Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings or a similar treatment of animals to render them free
of disease or to increase their economic value or that of their products
 Plants & animals in whole or any part thereof other than micro- organisms, but including
seeds, varieties an d species and essentially biological process for production or
propagation of plants & animals
 mathematical method or
 business method or
 algorithms or
 computer programme per se
 A literary, dramatic, musical or artistic work or any other aesthetic creation including
cinematographic work and television productions
 Presentation of information
 Topography of integrated circuits.
 Inventions which are Traditional Knowledge or an aggregation or duplication of known
properties of traditionally known component or components.
What is meant by ‘New”?
The invention to be patented must not be published in India or elsewhere, or in prior
public knowledge or prior public use with in India or claimed before in any specification in
India
A feature of an invention that involves technical advance as compared to the existing
knowledge or have economic significance or both and makes the invention not obvious to a
person skilled in the art.
What can be patented?
Any invention concerning with composition, construction or manufacture of a
substance, of an article or of an apparatus or an industrial type of process.
What cannot be patented?
Inventions falling within Section 20(1) of the Atomic Energy Act, 1962
Who are the beneficiaries of the patent grant?
1. The inventor is secure from competition and can exploit the invention for his gain.
2. For the public the invention becomes public knowledge. The technology is freely
available after expiry of patent and cheaper and better products become available.
Patent System in India
The Patent System in India is governed by the Patents Act, 1970 as amended by the
Patents (Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents
(Amendment) Rules 2006 effective from 05-05-2006.
Administration
Patent system in India is administered under the superintendence of the
Controller General of Patents, Designs, Trademarks and Geographical Indications.
The Office of the Controller General functions under the Department of
Industrial Policy and Promotion, Ministry of Commerce and Industry. There are four
patent offices in India. The Head Office is located at Kolkata and other Patent Offices
are located at Delhi, Mumbai and Chennai. The Controller General delegates his
powers to Sr. Joint Controller, Joint Controllers, Deputy Controllers and Assistant
Controllers. Examiners of patents in each office discharge their duties according to
the direction of the Controllers.
The Patent Information system (PIS) at Nagpur has been functioning as patent
information base for the users. The PIS maintains a comprehensive collection of
patent specification and patent related literature, on a world-wide basis and provides
technological information contained in patent or patent related literature through
search services and patent copy supply services to various users of R&D
establishments, Government offices, private industries, business, inventors and other
users within India.
Hierarchy of Officers in Patent office
 Controller General of Patents, Designs, Trademarks & GI
 Examiners of Patents & Designs
 Assistant Controller of Patents & Designs
 Deputy Controller of Patents & Designs
 Joint Controller of Patents & Designs
 Senior Joint Controller of Patents & Designs
Jurisdiction of Patent offices in India
An applicant or first mentioned applicant in case of joint applicants can file
application for patent at the appropriate Patent Office under whose jurisdiction he
normally resides or has his domicile or has a place of business or the place from
where the invention actually originated. For the applicant, who is non-resident or has
no domicile or has no place of business in India, the address for service in India or
place of business of his patent agent determines the appropriate patent office where
applications for patent can be filed.
Types of Patent Applications
1. Ordinary Application
2. Application for Patent of Addition (granted for Improvement or Modification of
the already patented invention, for an unexpired term of the main patent).
3. Divisional Application (in case of plurality of inventions disclosed in the main
application).
4. Convention application, claiming priority date on the basis of filing in
Convention Countries.
5. National Phase Application under PCT.
Who can apply for Patent?
The inventor may make an application, either alone or jointly with another, or
his/their assignee or legal representative of any deceased inventor or his assignee.
How is a patent obtained?
 File an application for patent
 With one of the patent offices based on territorial jurisdiction of the place of
office or residence of the applicant /agent
 Pay the required fee
 Information concerning application form and details of fee available at
www.ipindia.nic.in
 Guidelines for applicants also available on this website
The Patent Office then
 Conducts searches to ascertain the prerequisites
 Publishes the application
 Conducts in-depth examination
 Raises objection to the application - Grants the patent
General precautions for an applicant
The first to file system is employed, in which, among persons having filed the
same invention, first one is granted a patent, therefore, a patent application should be
filed promptly after conceiving the invention. It is common experience that through
ignorance of patent law, inventors act unknowingly and jeopardize the chance of
obtaining patents for their inventions. The most common of these indiscretions is to
publish their inventions in newspapers or scientific and technical journals, before
applying for patents. Publication of an invention, even by the inventor himself, would
(except under certain rare circumstances) constitute a bar for the subsequent
patenting of it. Similarly, the use of the invention in Public, or the commercial use of
the invention, prior to the date of filing patent application would be a fatal objection
to the grant of a patent for such invention, thereafter. There is, however, no objection
to the secret working of the invention by way of reasonable trial or experiment, or to
the disclosure of the invention to others, confidentially.
Another mistake, which is frequently made by the inventors, is to wait until
their inventions are fully developed for commercial working, before applying for
patents. It is, therefore, advisable to apply for a patent as soon as the inventor's idea
of the nature of the invention has taken a definite shape.
It is permissible to file an application for a patent accompanied by a
"Provisional Specification" describing the invention. The application may, therefore,
be made even before the full details of working of the invention are developed. The
filing of an application for a patent disclosing the invention would secure priority
date of the invention, and thereby, enable the inventor to work out the practical
details of the invention and to file complete specification within 12 months from the
date of filing of provisional specification.
What is meant by patentable invention?
A new product or process, involving an inventive step and capable of being
made or used in an industry. It means the invention to be patentable should be
technical in nature and should meet the following criteria –
 Novelty: The matter disclosed in the specification is not published in India or
elsewhere before the date of filing of the patent application in India.
 Inventive Step: The invention is not obvious to a person skilled in the art in the
light of the prior publication/knowledge/ document.
 Industrially applicable: Invention should possess utility, so that it can be made or
used in an industry.
What is not patentable?
The following are Non-Patentable inventions within the meaning of Section 3
of Patents Act, 1970 -
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 to public order or morality or which causes serious prejudice
to human, animal or plant life or health or to the environment; (For e.g. process of
making brown sugar will not be patented.)
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);
d. the mere discovery of a new form of a known substance which does not result in
the enhancement of the known efficacy of that substance or the mere discovery of
any new property or mere 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;
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;
g. a method of agriculture or horticulture; (For e.g. the method of terrace farming
cannot be patented.)
h. 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; (For e.g. any new technique of hand surgery is not
patentable)
i. plants and animals in whole or any part thereof other than micro-organisms but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals;
j. a mathematical or business method or a computer programme per se or
algorithms;
k. a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions;
l. a mere scheme or rule or method of performing mental act or method of playing
game;
m. a presentation of information;
n. topography of integrated circuits;
o. an invention which in effect, is traditional knowledge or which is an aggregation
or duplication of known properties of traditionally known component or
components.
 p. Inventions relating to atomic energy and the inventions prejudicial to the interest
of security of India.
Appropriate office for filing an application & for other Proceedings
Application is required to be filed according to the territorial limits where the
applicant or the first mentioned applicant in case of joint applicants, for a patent
normally resides or has domicile or has a place of business or the place from where
the invention actually originated. If the applicant for the patent or party in a
proceeding having no business place or domicile in India, the appropriate office will
be according to the address for service in India given by the applicant or party in a
proceeding . The appropriate office once decided in respect of any proceedings under
the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta,
Mumbai, Delhi & Chennai.
From 20th July, 2007 the Indian Patent Office has put in place an online filing system
for patent application.
Publication and Examination of Patent Applications
Publication: All the applications for patent, except the applications prejudicial to the
defence of India or abandoned due to non-filing of complete specification within 12
months after filing the provisional or withdrawn within 15 months of filing the
application, are published in the Patent Office Journal just after 18 months from the
date of filing of the application or the date of priority whichever is earlier. The
publication includes the particulars of the date of the application, application number,
name and address of the applicant along with the abstract. The applications for patent
are not open for public inspection before publication. After the date of publication of
the application, as stated above, the complete specification along with provisional and
drawing, if any, abstract, application on any form or on plain paper and any
correspondence between the office and applicant may be inspected at the appropriate
office by making a written request to the Controller in the prescribed manner and on
the payment of prescribed fee.
Request for examination An application for patent will not be examined if no
request is made by the applicant or by any other interested person in Form-18 with
prescribed fee of Rs.2,500/- or Rs.10,000/- for natural person and other than natural
person respectively, within a period of 48 months from the date of priority of the
application or from the date of filing of the application, whichever is earlier. Where no
request for examination of the application for patent has been filed within the
prescribed period, the aforesaid application will be treated as withdrawn and,
thereafter, application cannot be revived.
Examination Application for patent, where request has been made by the applicant
or by any other interested person, will be taken up for examination, according to the
serial number of the requests received on Form 18. A First Examination Report (FER)
stating the objections/requirements is communicated to the applicant or his agent
according to the address for service ordinarily within six (06) months from the date
of request for examination or date of publication whichever is later. Application or
complete specification should be amended in order to meet the
objections/requirements within a period of 12 months from the date of First
Examination Report (FER). No further extension of time is available in this regard. If
all the objections are not complied with within the period of 12 months, the
application shall be deemed to have been abandoned. When all the requirements are
met the patent is granted, after 6 months from the date of publication, the letter
patent is issued, entry is made in the register of patents and it is notified in the Patent
Office, Journal.
Withdrawal of patent application
The application for patent can be withdrawn at least 3 (Three) months before
the first publication which will be 18 (Eighteen) months from the date of filing or date
 of priority whichever is earlier. The application can also be withdrawn at any time
before the grant of the patent. The application withdrawn after the date of publication
cannot be filed again as it is already laid open for public inspection. However,
application withdrawn before the publication can be filed again provided it is not
opened to public otherwise.
Opposition proceedings to grant of patents
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 any Patent. The representation shall be filed at the
appropriate office and shall include a statement and evidence, if any, in support of the
representation and a request for hearing if so desired. The above representation may
be made on the following grounds
a. that the applicant for the patent or the person under or through whom he claims,
wrongfully obtained the invention or any part thereof from him or from a person
under or through whom he claims;
b. that the invention so far as claimed in any claim of the complete specification has
been published before the priority date of the claim—
1. in any specification filed in pursuance of an application for a patent made in
India on or after the 1st day of January, 1912; or
2. in India or elsewhere, in any other document: Provided that the ground
specified in sub-clause
3. shall not be available where such publication does not constitute an anticipation
of the invention by virtue of sub-section (2) or sub-section (3) of section 29;
c. that the invention so far as claimed in any claim of the complete specification is
claimed in a claim of a complete specification published on or after the priority
date of the applicant's claim and filed in pursuance of an application for a patent in
India, being a claim of which the priority date is earlier than that of the applicant's
claim;
d. that the invention so far as claimed in any claim of the complete specification was
publicly known or publicly used in India before the priority date of that claim.
Explanation —For the purposes of this clause, an invention relating to a process
for which a patent is claimed shall be deemed to have been publicly known or
publicly used in India before the priority date of the claim if a product made by
that process had already been imported into India before that date except where
such importation has been for the purpose of reasonable trial or experiment only;
e. that the invention so far as claimed in any claim of the complete specification is
obvious and clearly does not involve any inventive step, having regard to the
matter published as mentioned in clause (b) or having regard to what was used in
India before the priority date of the applicant's claim;
f. that the subject of any claim of the complete specification is not an invention
within the meaning of this Act, or is not patentable under this Act
g. that the complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;
h. that the applicant has failed to disclose to the Controller the information required
by section 8 or has furnished the information which in any material particular was
false to his knowledge;
i. that in the case of convention application, the application was not made within
twelve months from the date of the first application for protection for the
invention made in a convention country by the applicant or a person from whom
he derives title;
j. that the complete specification does not disclose or wrongly mentions the source
or geographical origin of biological material used for the invention;
k. that the invention so far as claimed in any claim of the complete specification is
anticipated having regard to the knowledge, oral or otherwise, available within any
local or indigenous community in India or elsewhere, but on no other ground.
The Controller shall, if requested by such person for being heard, hear him and
dispose of such representation. If the opposition is decided in favour of the applicant,
the patent is granted and the grant of Patent is published in the Patent Office Journal
thereby opening the application, specification and other related documents for public
inspection on payment of prescribed fee.
Post grant opposition - Any interested person can file notice of opposition
(along with written statement and evidence, if any) 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 in the Patent Office Journal .The above notice under Section 25(2) should be
filed on Form-7 along with a fee of Rs. 1500/ or Rs 6000/- for natural person and
other than natural person respectively, in duplicate at the appropriate office. The
grounds of opposition under section 25 (2) are the same as given before in case of pre
grant opposition. The post grant opposition is decided by an Opposition Board
followed by a hearing and the reasoned decision by the Controller.
Grant of Patent
When all the requirements are met or in case of opposition under section
25(1), if the opposition is decided in favour of the applicant, the patent is granted,
after 6 months from the date of publication under section 11 A, the letter patent is
issued, entry is made in the register of patents and it is notified in the Patent Office,
Journal, thereafter opening the application, specification and other related documents
for public inspection on payment of prescribed fee.
Term and Date of Patent
Term of every patent will be 20 years from the date of filing of patent
application, irrespective of whether it is filed with provisional or complete
specification. Date of patent is the date on which the application for patent is filed.
The term of patent in case of International applications filed under the Patent
Cooperation Treaty designating India, will be 20 years from the International filing
date accorded under the Patent Cooperation Treaty. A patent will have cease to effect
on the expiration of the period prescribed for the payment of any renewal fee, if that
fee is not paid within the prescribed period.
Renewal and restoration
To keep the patent in force, Renewal fee is to be paid every year. The first
renewal fee is payable for the third year and must be paid before the expiration of the
second year from the date of patent If the patent has not been granted within two
years the renewal fees may be accumulated and paid immediately after the patent is
granted, or within three months of its record in Register of Patents or within
extended period of 9 months, by paying extension fees of six month on Form 4, from
the date of record. If the renewal fee is not paid within the prescribed time, the patent
will cease to have effect. However, provision to restore the patent is possible
provided application is made within eighteen months from the date of cessation.
Renewal fee is counted from the date of filing of the Patent application. Six
month's grace time is available with extension fee for payment of renewal fee. No
renewal fees is payable on Patents of Addition, unless the original patent is revoked
and if the Patent of Addition is converted into an independent patent; renewal fee,
then, becomes payable for the remainder of the term of the main patent. Application
for restoration of a patent that lapses due to non-payment of renewal fees must be
made within 18 months of lapse. The application is to be filed in the appropriate
office according to the jurisdiction.
 Designs
What is Design?
A Design refers to the features of shape, configuration, pattern, ornamentation or
composition of lines or colours applied to any article, whether in two or three dimensional
(or both) forms. This may be applied by any industrial process or means (manual,
mechanical or chemical) separately or by a combined process, which in the finished article
appeals to and judged solely by the eye. Design does not include any mode or principle of
construction or anything which is mere mechanical device. It also does not include any trade
mark or any artistic work. An industrial design registration protects the ornamental or
aesthetic aspect of an article. Designs may consist of three-dimensional features, such as the
shape or surface of an article, or of two dimensional features, such as patterns, lines or color.
Designs are applied to a wide variety of products of different industries like handicrafts,
medical instruments, watches, jewellery, house wares, electrical appliances, vehicles and
architectural structures. An industrial design is primarily for aesthetic features.
Design law in India
The essential purpose of design law it to promote and protect the design element of
industrial production. It is also intended to promote innovative activity in the field of
industries.
The Designs Act, 2000 and the Designs Rules, 2001 presently govern the design law in
India. The Act came into force on 25th May 2000 while the Rules came into effect on 11th
May 2001. The object of the Designs Act to protect new or original designs so created to be
applied or applicable to particular article to be manufactured by Industrial Process or
means. Sometimes purchase of articles for use is influenced not only by their practical
efficiency but also by their appearance.
Need for registration of Design
The registration of a design confers upon the registered proprietor the exclusive right
to apply a design to the article in the class in which the design has been registered. A
registered proprietor of the design is entitled to a better protection of his intellectual
property. He can sue for infringement, if his right is infringed by any person. He can license
or sell his design as legal property for a consideration or royalty. Registration initially
confers this right for ten years from the date of registration. It is renewable for a further
period of five years. If the fee for extension is not paid for the further period of registration
within the period of initial registration, this right will cease. There is provision for the
restoration of a lapsed design if the application for restoration is filed within one year from
the date of cessation in the prescribed manner.
Essential requirements for registration of Design
A design should -
 Be new or original
 Not be disclosed to the public anywhere by publication in tangible form or by use or in
any other way prior to the filling date, or where applicable, the priority date of the
application for registration.
 Be significantly distinguishable from known Designs or combination of known designs.
 Not comprise or contain scandalous or obscene matter.
 Not be a mere mechanical contrivance.
 Be applied to an article and should appeal to the eye.
 Not be contrary to public order or morality.
Exclusion from scope of Design
Designs that are primarily literary or artistic in character are not protected under the
Designs Act. These will include:
 Books, jackets, calendars, certificates, forms-and other documents, dressmaking
patterns, greeting cards, leaflets, maps and plan cards, postcards, stamps, medals.
 Labels, tokens, cards, cartoons.
 Any principle or mode of construction of an article.
 Mere mechanical contrivance.
 Buildings and structures.
 Parts of articles not manufactured and sold separately.
 Variations commonly used in the trade.
 Mere workshop alterations of components of an assembly.
 Mere change in size of article.
 Flags, emblems or signs of any country.
 Layout designs of integrated circuits.
Who can apply for registration?
Any person or the legal representative or the assignee can apply separately or jointly
for the registration of a design. The term "person" includes firm, partnership and a body
corporate. An application may also be filed through an agent in which case a power of
attorney is required to be filed. An Application for registration of design may be prepared
either by the applicant or with the professional help of attorneys.
Register of Design
The Register of Designs is a document maintained by the Patent Office, Kolkata as a
statutory requirement. It contains the design number, date of filing and reciprocity date (if
any), name and address of proprietor and such other matters as would affect the validity of
proprietorship of the design such as notifications of assignments and of transmissions of
registered designs, etc. and it is open for public inspection on payment of prescribed fee and
extract from register may also be obtained on request with the prescribed fee.
Procedure for submission of application of registration
Any person who desires to register a design is required to submit the following
documents to the Design Wing of the Patent Office at "Intellectual Property Office", CP-2,
Sector V, Salt Lake, Kolkata - 700 091 or any of the Branch Offices of the Patent Office at
Delhi, Mumbai and Chennai. The applications received by the Branch Offices will be
transmitted to the Head Office for processing and prosecuting.
i. Application duly filed in on the prescribed form (Form-I) along with the prescribed fees,
stating name in full, address, nationality, name of the article, class number, address for
service in India. The application should also be signed either by the applicant or by his
authorized agent.
ii. Representation (in quadruplicate of size 33 cm x 20.5 cm with a suitable margin) of the
article. Drawings \ sketches should clearly show the features of the design from
different views and state the view (e.g. front or Side).
iii. A statement of novelty and disclaimer (if any) in respect of mechanical action,
trademark, work, letter, numerals should be endorsed on each representation sheet
which should be duly signed and dated.
iv. Power of attorney (if necessary).
v. Priority documents (if any) in case of convention application claimed under Section 44
of the Designs Act, 2000.
Cancellation of registration of Design
The registration of a design may be cancelled at any time after the registration of
design on a petition for cancellation in form 8 with a fee of Rs. 1,500/-to the Controller of
Designs on the following grounds:
1. That the design has been previously registered in India or
2. That it has been published in India or elsewhere prior to date of registration or
3. The design is not new or original or
4. Design is not registrable or
5. It is not a design under Clause (d) of Section 2.
Piracy of registered design
During the existence of copyright over any design, other persons are prohibited from
using the design except or with the permission of the proprietor, his licensee or assignee.
The following activities are considered to be infringement.
  To apply the design or any fraudulent imitation of it to any article for sale;
 To import for sale any article to which the design or fraudulent or obvious imitation of it,
has been applied;
 To publish or to expose for sale knowing that the design or any fraudulent or obvious
imitation of it has been applied to it.
Administration
The Patent Office, under the Department of Industrial Policy & Promotion, Ministry of
Commerce & Industry, performs the statutory duties in connection with the grant of patents
for new inventions and registration of industrial designs. Patent Offices are located at
Kolkata, Mumbai, Chennai and Delhi to deal with the applications for patents originating
within their respective territorial jurisdictions.

Copyright
What is Copyright?
Copyright is the set of exclusive rights granted to the author or creator of an original
work, including the right to copy, distribute and adapt the work. Copyright lasts for a certain
time period after which the work is said to enter the public domain. Copyright gives
protection for the expression of an idea and not for the idea itself. For example, many
authors write textbooks on physics covering various aspects like mechanics, heat, optics etc.
Even though these topics are covered in several books by different authors, each author will
have a copyright on the book written by him / her, provided the book is not a copy of some
other book published earlier.
Copyright ensures certain minimum safeguards of the rights of authors over their
creations, thereby protecting and rewarding creativity. Creativity being the keystone of
progress, no civilized society can afford to ignore the basic requirement of encouraging the
same. Economic and social development of a society is dependent on creativity. The
protection provided by copyright to the efforts of writers, artists, designers, dramatists,
musicians, architects and producers of sound recordings, cinematograph films and computer
software, creates an atmosphere conducive to creativity, which induces them to create more
and motivates others to create.
Copyright law in India
The Copyright Act of 1957, The Copyright Rules, 1958 and the International
Copyright Order, 1999 governs the copyright protection in India. It came into effect from
January 1958. The Act has been amended in 1983, 1984, 1992, 1994 and 1999. Before the
Act of 1957, copyright protection was governed by the Copyright Act of 1914 which was the
extension of British Copyright Act, 1911. The Copyright Act, 1957 consists of 79 sections
under 15 chapters while the Copyright Rules, 1958 consists of 28 rules under 9 chapters and
2 schedules.
Meaning of copyright
According to Section 14 of the Act, “copyright” means the exclusive right subject to the
provisions of this Act, to do or authorise the doing of any of the following acts in respect of a
work or any substantial part thereof, namely:-
a. in the case of a literary, dramatic or musical work, not being a computer programme, -
i. to reproduce the work in any material form including the storing of it in any medium
by electronic means;
ii. to issue copies of the work to the public not being copies already in circulation;
iii. to perform the work in public, or communicate it to the public;
iv. to make any cinematograph film or sound recording in respect of the work;
v. to make any translation of the work;
vi. to make any adaptation of the work;
vii. to do, in relation to a translation or an adaptation of the work, any of the acts
specified in relation to the work in sub-clauses (i) to (vi);
 b. in the case of a computer programme,-
i. to do any of the acts specified in clause (a);
ii. to sell or give on commercial rental or offer for sale or for commercial rental any copy
of the computer programme:
Provided that such commercial rental does not apply in respect of computer
programmes where the programme itself is not the essential object of the rental.
c. in the case of an artistic work,-
i. to reproduce the work in any material form including depiction in three dimensions
of a two dimensional work or in two dimensions of a three dimensional work;
ii. to communicate the work to the public;
iii. to issue copies of the work to the public not being copies already in circulation; (iv) to
include the work in any cinematograph film;
iv. to make any adaptation of the work;
v. to do in relation to an adaptation of the work any of the acts specified in relation to
the work in sub-clauses (i) to (iv);
d. In the case of cinematograph film, -
i. to make a copy of the film, including a photograph of any image forming part thereof;
ii. to sell or give on hire, or offer for sale or hire, any copy of the film, regardless of
whether such copy has been sold or given on hire on earlier occasions;
iii. to communicate the film to the public;
e. In the case of sound recording, -
i. to make any other sound recording embodying it;
ii. to sell or give on hire, or offer for sale or hire, any copy of the sound recording
regardless of whether such copy has been sold or given on hire on earlier occasions;
iii. to communicate the sound recording to the public.
Explanation: For the purposes of this section, a copy which has been sold once shall be
deemed to be a copy already in circulation.
Classes of works for which copyright protection is available
Indian Copyright Act affords separate and exclusive copyright protection to the
following 7 clauses of work:
1. Original Literary Work
2. Original Dramatic Work
3. Original Musical Work
4. Original Artistic Work
5. Cinematograph Films
6. Sound recording
7. Computer Programme
Copyright will not subsist in any cinematograph film if a substantial part of the film is
an infringement of the copyright in any other work or in any sound recording made in
respect of a literary, dramatic or musical work, if in making the sound recording, copyright
in such work has been infringed. In case of work of architecture, copyright will subsist only
in the artistic character and design and will not extend to processes or methods of
construction.
Ownership of Copyright
The author of the work will be the first owner of the copyright in the following instances:
i. In the case of a literary, dramatic or artistic work made by the author in the course of his
employment by the proprietor of a newspaper, magazine or similar periodical under a
contract of service or apprenticeship, for the purpose of publication in a newspaper,
magazine or similar periodical, the said proprietor will, in the absence of any agreement
to the contrary, be the first owner of the copyright in the work in so far as the copyright
relates to the publication of the work in any newspaper, magazine or similar periodical,
or to the reproduction of the work for the purpose of its being so published, but in all
other respects the author will be the first owner of the copyright in the work.
 ii. In the case of a photograph taken, or a painting or portrait drawn, or an engraving or a
cinematograph film made, for valuable consideration at the instance of any person, such
person will, in the absence of any agreement to the contrary, be the first owner of the
copyright therein.
iii. In the case of a work made in the course of the author’s employment under a contract of
service or apprenticeship, the employer will, in the absence of any agreement to the
contrary, be the first owner of the copyright therein.
iv. In the case of any address or speech delivered in public, the person who has delivered
such address or speech or if such person has delivered such address or speech on behalf
of any other person, such other person will be the first owner of the copyright therein
notwithstanding that the person who delivers such address or speech, or, as the case
may be, the person on whose behalf such address or speech is delivered, is employed by
any other person who arranges such address or speech or on whose behalf or premises
such address or speech is delivered.
v. In the case of a government work, government in the absence of any agreement to the
contrary, will be the first owner of the copyright therein.
vi. In the case of a work made or first published by or under the direction or control of any
public undertaking, such public undertaking in the absence of any agreement to the
contrary, will be the first owner of the copyright therein.
vii. In case of any work which is made or first published by or under the directions or
control of any international organisation, such international organisation will be the first
owner of the copyright therein.
Assignment of copyright
Sec.18 of the Copyright Act, 1957 deals with assignment of copyright. The owner of
the copyright in an existing work or the prospective owner of the copyright in a future work
may assign to any person the copyright either wholly or partially and either generally or
subject to limitations and either for the whole term of the copyright or any part thereof.
The mode of assignment should be in the following manner:
 Assignment should be given in writing and signed by the assignor or by his duly
authorized agent.
 The assignment should indentify the work and specify the rights assigned and the
duration and territorial extent of such assignment.
 The assignment should also specify the amount of royalty payable, if any, to the author
or his legal heirs during the currency of the assignment and the assignment may be
subject to revision, extension or termination on terms mutually agreed upon by the
parties.
 Where the assignee does not exercise the rights assigned to him within a period of one
year from the date of assignment, the assignment in respect of such rights will be
deemed to have lapsed after the expiry of the said period unless otherwise specified in
the assignment.
The period of assignment will be deemed to be 5 years from the date of assignment
unless specifically mentioned. If the territorial extent of assignment of the rights is not
specified, it will be presumed to extend within India.
If any dispute arises with respect to the assignment of any copyright the Copyright
Board may, on receipt of a complaint from the aggrieved party and after holding such
inquiry as it considers necessary, pass such order as it may deem fit including an order for
the recovery of any royalty payable, provided that the Copyright Board may not pass any
order to revoke the assignment unless it is satisfied that the terms of assignment are harsh
to the assignor, in case the assignor is also the author, provided further that no order of
revocation of assignment, be made within a period of five years from the date of such
assignment.
Transmission of copyright by testamentary disposition
Where under a bequest a person is entitled to the manuscript of a literary, dramatic
or musical work, or to an artistic work, and the work was not published before the death of
the testator, the bequest can, unless the contrary intention is indicated in the testator's will
or any codicil thereto, be construed as including the copyright in the work in so far as the
testator was the owner of the copyright immediately before his death. Manuscript means the
original document embodying the work, whether written by hand or not.
Relinquish copyright
The author of a work can relinquish all or any of the rights comprised in the copyright
in the work by giving notice in Form I to the Registrar of Copyrights and thereupon such
rights will cease to exist from the date of the notice. On receipt of notice the Registrar of
Copyrights will publish it in the Official Gazette and in such other manner as he may deem
fit. The relinquishment of all or any of the rights comprised in the copyright in a work will
not affect any rights subsisting in favour of any person on the date of the notice given to the
Registrar.
Term of copyright
Section 22 to 29 of the Copyright Act, 1957 deals with the term of copyright.
Copyright generally lasts for a period of sixty years.
 In the case of literary, dramatic, musical or artistic works, the sixty year period is
counted from the year following the death of the author.
 In the case of cinematograph films, sound recordings, photographs, posthumous
publications, anonymous and pseudonymous publications, works of government and
public undertakings and works of international organisations, the 60-year period is
counted from the date of publication.
 In case of Broadcast reproduction right - 25 years from the beginning of the calendar
year next following the year in which the broadcast is made
 In case of Performers right - 25 years from the beginning of the calendar year next
following the year in which the performance is made.
Rights of Broadcasting Organisation and of Performers
Every broadcasting organisation will have a special right to be known as 'broadcast
reproduction right' in respect of its broadcasts. The broadcast reproduction right will subsist
until twenty-five years from the beginning of the calendar year next following the year in
which the broadcast in made.
This would prevent any person other than the broadcasting organisation from:
 Re-broadcasting what has already been broadcasted
 Causing the broadcast to be seen or heard by the public on payment of charges
 Making any sound/visual recording of the broadcast
 Making any reproduction of such sound recording ro visual recording where such initial
recording was done without licence or, where it was licensed, for any purpose not
envisaged by such licence
 Selling or hiring or offering to sell or hire sound/visual recordings.
Where any performer appears or engages in any performance, he will have a special
right known as the 'performer's right' in relation to such performance. The performer's right
will subsist until fifty years from the beginning of the calendar year next following the year
in which the performance is made. These rights are:
 No person may make a sound/visual recording of the performer’s performances
 Reproduce a sound/visual recording
 Broadcast the performance
 Communicate to the public otherwise than by broadcast
Intellectual Property Rights (IPR) of Computer Software
In India, the Intellectual Property Rights (IPR) of computer software is covered under
the Copyright Law. Accordingly, the copyright of computer software is protected under the
provisions of Indian Copyright Act 1957. Major changes to Indian Copyright Law were
introduced in 1994 and came into effect from 10 May 1995. These changes or amendments
made the Indian Copyright law one of the toughest in the world.
The amendments to the Copyright Act introduced in June 1994 were, in themselves, a
landmark in the India's copyright arena. For the first time in India, the Copyright Law clearly
explained:
 The rights of a copyright holder
 Position on rentals of software
 The rights of the user to make backup copies
Since most software is easy to duplicate, and the copy is usually as good as original, the
Copyright Act was needed.
Some of the key aspects of the law are:
 According to section 14 of this Act, it is illegal to make or distribute copies of
copyrighted software without proper or specific authorization.
 The violator can be tried under both civil and criminal law.
 A civil and criminal action may be instituted for injunction, actual damages (including
violator's profits) or statutory damages per infringement etc.
 Heavy punishment and fines for infringement of software copyright.
 Section 63 B stipulates a minimum jail term of 7 days, which can be extended up to 3
years
Copyright Infringements
Some of the commonly known acts involving infringement of copyright:
 Making infringing copies for sale or hire or selling or letting them for hire;
 Permitting any place for the performance of works in public where such performance
constitutes infringement of copyright;
 Distributing infringing copies for the purpose of trade or to such an extent so as to
affect prejudicially the interest of the owner of copyright;
 Public exhibition of infringing copies by way of trade; and o Importation of infringing
copies into India.
Civil Remedies for Copyright Infringement
A copyright owner can take legal action against any person who infringes the
copyright in the work. The copyright owner is entitled to remedies by way of injunctions,
damages and accounts.
The Criminal Offence
Any person who knowingly infringes or abets the infringement of the copyright in
any work commits criminal offence under Section 63 of the Copyright Act. The minimum
punishment for infringement of copyright is imprisonment for six months with the minimum
fine of Rs. 50,000/. In the case of a second and subsequent conviction the minimum
punishment is imprisonment for one year and fine of Rs. one lakh.
International Copyright
Copyrights of works of the countries mentioned in the International Copyright Order
are protected in India, as if such works are Indian works. Copyright of nationals of countries
who are members of the Berne Convention for the Protection of Literary and Artistic Works,
Universal Copyright Convention and the TRIPS Agreement are protected in India through the
International Copyright Order. The list of such countries is mentioned in the schedule of the
International Copyright Order, 1999.
Licences
Provisions with regard to licences are detailed in Chapter VI of the Copyright Act,
1957.
Copyright Licence is granted by the owner of the copyright in any existing work or the
prospective owner of the copyright in any future work in writing signed by him or by his
duly authorized agent. In the case of a licence relating to copyright in any future work, the
licence will take effect only when the work comes into existence. Where a person to whom a
licence relating to copyright in any future work is granted dies before the work comes into
existence, his legal representatives, in the absence of any provision to the contrary in the
licence, will be entitled to the benefit of the licence.
Any person can apply for the grant of copyright licence in Form II to produce and
publish translation of a literary or dramatic work in any language in general use in India
after a period of three years from the publication of such work, if such translation is required
for the purpose of teaching, scholarship or research.
The Copyright Board after holding an enquiry may direct the registrar to grant
copyright licence to the person to publish the work or translation thereof in the language
mentioned in the application. The applicant should deposit the amount of royalty as
specified by the Copyright Board in the account of the original owner of the work.
The copyright licence will be terminated at any time after the granting of a licence to
produce and publish the translation of a work in any language, if the owner of the copyright
in the work or any person authorized by him publishes a translation of such work in the
same language and which is substantially the same in content at a price reasonably related
to the price normally charged in India for the translation of works of the same standard on
the same or similar subject.
No termination will take effect until after the expiry of a period of three months from
the date of service of a notice in Form IIB on the person holding such licence by the owner of
the right of translation intimating the publication of the translation as aforesaid
Registration of a work under the Copyright Act, 1957
Copyright comes into existence as soon as a work is created and no formality is
required to be completed for acquiring copyright. However, facilities exist for having the
work registered in the Register of Copyrights maintained in the Copyright Office of the
Department of Education. The entries made in the Register of Copyrights serve as prima-
facie evidence in the court of law.
Procedure for registration of a work is covered under Chapter VI of the Copyright Rules,
1958
Procedure for registration
a. Application for registration is to be made on Form IV (Including Statement of Particulars
and Statement of Further Particulars) as prescribed in the first schedule to the Rules;
b. Separate applications should be made for registration of each work;
c. Each application should be accompanied by the requisite fee prescribed in the second
schedule to the Rules; and
d. The applications should be signed by the applicant or the advocate in whose favour a
Vakalatnama or Power of Attorney has been executed. The Power of Attorney signed by
the party and accepted by the advocate should also be enclosed.
The following Statement of Further Particulars should be submitted in triplicate along
with the Application for Registration of Copyright (Form IV) -
1. Is the work is to be registered
a. an original work?
b. a translation of a work in the public domain?
c. A translation of a work in which Copyright subsists?
d. an adaptation of a work in the public domain?
e. an adaptation of a work in which Copyright subsists?
2. If the work is a translation or adaptation of a work in which Copyright subsists:
a. Title of the original work
b. Language of the original work
c. Name, address and nationality of the author of the original work and if the author
is deceased, the date of decease
d. Name, address and nationality of the publisher, if any, of the original work
e. Particulars of the authorization for a translation or adaptation including the name,
address and nationality of the party authorizing.
Second schedule to the Copyright Rules, 1958 - Fee payable under the Copyright Act, 1957
Time taken for registration
After filing application and receiving diary number the applicant should wait for a
mandatory period of 30 days so that no objection is filed in the Copyright office against the
claim that particular work is created by the applicant. If such objection is filed it may take
another one month time to decide as to whether the work could be registered by the
Registrar of Copyrights after giving an opportunity of hearing the matter from both the
parties. If no objection is filed the application goes for scrutiny from the examiners. If any
discrepancy is found the applicant is given 30 days time to remove the same. Therefore, it
may take 2 to 3 months time for registration of any work in the normal course. The
cooperation of the applicant in providing necessary information is the key for speedy
disposal the matter. Any person aggrieved by the final decision or order of the Registrar of
Copyrights may, within three months from the date of the order or decision, appeal to the
Copyright Board.
Copyright Board
The Copyright Board, a quasi-judicial body, was constituted in September 1958. The
jurisdiction of the Copyright Board extends to the whole of India. The Board is entrusted
with the task of adjudication of disputes pertaining to copyright registration, assignment of
copyright, grant of Licenses in respect of works withheld from public, unpublished Indian
works, production and publication of translations and works for certain specified purposes.
It also hears cases in other miscellaneous matters instituted before it under the Copyright
Act, 1957. The meetings of the Board are held in five different zones of the country. This
facilitates administration of justice to authors, creators and owners of intellectual property
including IP attorney’s near their place of location or occupation.
Powers of the Copyright Board
The Copyright Board consists of a Chairman and two or more, but not exceeding
fourteen, other members for adjudicating certain kinds of copyright cases. The Chairman of
the Board is of the level of a judge of a High Court. The Board has the power to:
i. hear appeals against the orders of the Registrar of Copyright;
ii. hear applications for rectification of entries in the Register of Copyrights;
iii. adjudicate upon disputes on assignment of copyright;
iv. grant compulsory licences to publish or republish works (in certain circumstances);
v. grant compulsory licence to produce and publish a translation of a literary or dramatic
work in any language after a period of seven years from the first publication of the
work; vi. hear and decide disputes as to whether a work has been published or about
the date of publication or about the term of copyright of a work in another country;
vi. fix rates of royalties in respect of sound recordings under the cover-version provision;
and
vii. fix the resale share right in original copies of a painting, a sculpture or a drawing and of
original manuscripts of a literary or dramatic or musical work.
Copyright Enforcement Advisory Council (CEAC)
The Government has set up on November 6, 1991 a Copyright Enforcement Advisory
Council (CEAC) to review the progress of enforcement of Copyright Act periodically and to
advise the Government regarding measures for improving the enforcement of the Act.
The Copyright (Amendment) Bill, 2012
The Copyright (Amendment) Bill, 2010 was introduced in the Rajya Sabha on 19th
April, 2010. In pursuance of Rule 270 relating to Department-related Parliamentary
Standing Committees, the Chairman, Rajya Sabha, referred the Bill to the Standing
Committee on Human Resource Development on 23rd April, 2010 for examination and
report. The Standing Committee headed by Mr.Oscar Fernandes submitted its 227th report
on ‘The Copyright Amendment Bill of 2010’ on November 23rd 2010.
Pursuant to the recommendations of the Standing Committee, the Copyright
Amendment Bill of 2012 was passed by the Rajya Sabha on 17th May 2012. Some of the
changes made in the Bill, 2012 pursuant to the recommendations of the Committee are –
 i. Definition given in the Bill of 2010 has been retained but an additional paragraph for
explanation has been added. "Commercial rental" does not include the rental, lease or
lending of a lawfully acquired copy of a computer programme, sound recording, visual
recording or cinematograph film for nonprofit purposes by a non-profit library or
nonprofit educational institution. Explanation.—For the purposes of this clause, a
“nonprofit library or nonprofit educational institution” means a library or educational
institution which receives grants from the Government or exempted from payment of tax
under the Income-Tax Act, 1961.
ii. Amendment to Section 11 and 12 of the Copyright Act, 1957 has been added.
iii. The provisions with regard to joint ownership of copyright of principal director along
with the producer have been deleted in the Bill of 2012.
iv. Amendment of Section 18 allowed composers and lyricists to retain their rights over
the work which may have been incorporated into a cinematograph work. Thus
although the producer of the movie is the first owner with respect to the music when it
is used as part of the cinematograph work, the lyricist or the composer will be
considered first owner for all other purposes. On the basis of the recommendation of
the committee, the following provisos have also been added to Section 18 in the Bill of
2012 –
Provided also that the author of the literary or musical work included in a cinematograph
film shall not assign or waive the right to receive royalties to be shared on an equal basis
with the assignee of copyright for the utilisation of such work in any form other than for
the communication to the public of the work along with the cinematograph film in a
cinema hall, except to the author's legal heirs or to a copyright society for collection and
distribution and any agreement to contrary shall be void. Provided also that the author of
the literary or musical work included in the sound recording but not forming part of any
cinematograph film shall not assign or waive the right to receive royalties to be shared on
an equal basis with the assignee of copyright for any utilization of such work except to
the legal heirs of the authors or to a collecting society for collection and distribution and
any assignment to the contrary shall be void.
v. Section 19 that deals with mode of assignment has been modified in the Bill of 2012 as
follows –
No assignment of copyright in any work to make a cinematograph film shall affect the
right of the author of the work to claim an equal share of royalties and consideration
payable in case of utilization of the work in any form other than for the communication to
the public of the work, along with the cinematograph film in a cinema hall. No
assignment of the copyright in any work to make a sound recording which does not form
part of any cinematograph film shall affect the right of the author of the work to claim an
equal share of royalties and consideration payable for any utilization of such work in any
form.
vi. Additional clause has been added in Section 19A wherein the Copyright Board has to
pass the final order in case of complaints with regard to assignment of copyright within
6 months from the date of receipt of the complaint and reasons for any delay in
compliance of the same should be recorded in writing.
vii. Amendment made to Section 26 has been deleted in Bill of 2012. In bill of 2010,
proviso with regard to rights of principal director was added with regard to term of
copyright in cinematograph films.
viii. New sections 31B, 31C and 31D had been inserted in the Bill of 2010 also. Some
modifications have been made to the same. For example – clause 5 given in Bill, 2010
has been deleted in Bill, 2012. Clause 3 has been added in Section 31D in Bill, 2012.
ix. Section 33 deals with registration of copyright societies. Amendments made to sec.33
under the Bill of 2010 have been modified in Bill of 2012. New clause 3A has been
added wherein the registration granted to a copyright society shall be for a period of 5
years and be renewed from time to time before the end of every five years on a request
 in the prescribed form and the Central Government may renew the registration after
considering the report of Registrar of Copyrights on the working of the copyright
society under section 36. Provided that the renewal of the registration of a copyright
society shall be subject to the continued collective control of the copyright society
being shared with the authors of works in their capacity as owners of copyright or of
the right to receive royalty. Provided further that every copyright society already
registered before the coming into force of the copyright (Amendment) Act, 2012 shall
get itself registered under this Chapter within a period of one year from the date of
commencement of the Copyright (Amendment) Act, 2012.
x. Section 35 deals with control over the copyright society by the owner of rights.
Additional sub sections have been added in Bill of 2012 – Every copyright society shall
have a governing body with such number of persons elected from among the members of
the society consisting of equal number of authors and owners of work for the purpose of
the administration of the society as may be specified. All members of copyrights society
shall enjoy equal membership rights and there shall be no discrimination between
authors and owners of rights in the distribution of royalties.

Trademark
What is Trademark?
A trade mark (popularly known as brand name) in layman’s language is a visual
symbol which may be a word signature, name, device, label, numerals or combination of
colours used by one undertaking on goods or services or other articles of commerce to
distinguish it from other similar goods or services originating from a different undertaking.
 The selected mark should be capable of being represented graphically (that is in the
paper form).
 It should be capable of distinguishing the goods or services of one undertaking from
those of others.
 It should be used or proposed to be used mark in relation to goods or services for the
purpose of indicating or so as to indicate a connection in the course of trade between the
goods or services and some person have the right to use the mark with or without
identity of that person.
Trade Marks are distinctive symbols, signs, logos that help consumer to distinguish
between competing goods or services. A trade name is the name of an enterprise which
individualizes the enterprise in consumer’s mind. It is legally not linked to quality. But,
linked in consumer’s mind to quality expectation.
Key Features of Trademark
 Trademark must be Distinctive
 Trademark must be used in Commerce
Types of Trademark
 Trademark,
 Servicemark,
 Collectivemark,
 Certification Mark
Functions of Trademark
Trademark performs four functions –
 It identifies the goods / or services and its origin;
 It guarantees its unchanged quality;
 It advertises the goods/services;
 It creates an image for the goods/ services.
Trademarks law of India
The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating
to Trade Marks in India. The Trade Marks Act, 1999 (TMA) protects the trademarks and
their infringement can be challenged by a passing off or/and infringement action. The Act
protects a trade mark for goods or services, on the basis of either use or registration or on
basis of both elements.
Who can apply for Trademark?
Any person claiming to be the proprietor of a trade mark used or proposed to
be used by him may apply in writing in Form TM-1 for registration. The application
should contain the trade mark, the goods/services, name and address of applicant and
agent (if any) with power of attorney, period of use of the mark and signature. The
application should be in English or Hindi. It should be filed at the appropriate office.
Jurisdiction for filing application
A trade mark application should be filed at the appropriate office of the
Registry within whose territorial limits, the principal place of business in India of the
applicant is situate. In the case of joint applicants, the principal place of business in
India of the applicant will be that of the person whose name is first mentioned as
having a place of business. If the applicant has no principal place of business in India,
he should file the application at that office within whose territorial jurisdiction, the
address for service in India given by him is located. No change in the principal place of
business in India or in the address for service in India shall affect the jurisdiction of the
appropriate office once entered.
Location and Jurisdiction of Trademarks Office
1) Trade Marks Registry, Mumbai (Head Office)
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa.
2) Trade Marks Registry, Delhi
Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh,
Himachal Pradesh, Union Territory of Delhi and Chandigarh
3) Trade Marks Registry, Kolkata
Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal,
Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of
Nagaland, Andamar & Nicobar Island.
4) Trade Marks Registry, Ahmedabad
Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of
Damman, Diu, Dadra and Nagar Haveli
5) Trade Marks Registry, Chennai
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and
Union Territory of Pondicherry and Lakshadweep Island.
Particulars to be filed with application for registration
The application should be filed in triplicate with the following particulars –
 Graphic representation of the trademark.
 Five Additional representations are to be provided corresponding exactly with
one another.
 In the case of three dimensional mark, the reproduction of the mark should
consist of a two dimensional or photographic reproduction.
 Where the trade mark contains a word or words in scripts other than Hindi or
English, a transliteration and translation of each word in English or in Hindi
should be given indicating the language to which the word belongs, at the time of
filing the application to facilitate completion of data entry at the initial stage
itself.
 The application may contain a declaration claiming priority as per the Paris
Convention.
Procedure for series registration
Section 15 (3) makes provision for registration of trade mark as series in
respect of the same or similar goods /services where the marks, while resembling each
other in the material particulars thereof and yet differ in respect of –
1. Statement of goods or services in relation to which they are respectively used or
proposed to be used; or
2. Statement of number, price, quality or names of places; or
3. Other matter of a non-distinctive character which does not substantially affect the
identity of the trade mark; or
4. Colour
Application for registration of series marks is to be on form TM-8 or TM-37 as
the case may be. Though it is permissible to file a single application for registration of
trade mark in more than one class, it is to be noted that each series marks must be in
respect of the same goods or services or description of goods/services. Where a group
of marks are applied for registration as series in one registration and the Registrar
does not consider them eligible for registration of series marks under section 15 the
applicant will be required to delete any of the mark which is under objection. It is also
open to the applicant to apply on form TM-53 for division of the application to conform
to the provision of section 22. All trademarks registered as series in one registration
are deemed to be registered as associated trade mark.
Registration of Collective Marks
Special provisions have been made for registration of collective marks in section 61 to
68 of the Act. “Collective mark” is defined to mean a trade mark distinguishing the
goods or services of members of an association of persons (not being a partnership
within the meaning of Indian Partnership Act, 1932) which is the proprietor of the
mark from those of others”- section 2(1)(g). To be registerable, the collective mark
must be capable of being represented graphically and meet other requirements as are
applicable to registration of trade marks in general. The following points should be
noted for registering collective marks –
 The collective mark is owned by an association of persons not being a partnership.
 The collective marks belong to a group and its use thereof is reserved for members
of the group.
 The association may not use itself the collective mark but it ensures compliance of
certain quality standards by its members who may use the collective mark.
 The primary function of a collective mark is to indicate a trade connection with the
association or organization who is the proprietor of the mark.
Application for registration as collective mark should be made on form TM-3. Where
appropriate form TM-66, 64 or TM-67 can be used.
Administrative procedure of registration of trademarks
An application for registration of trademarks is received at the Head office of
Trademark Registry, Mumbai and its branches according to territorial jurisdiction.
Applications are then examined mainly with regard to the distinctiveness, possibility of
deceptiveness and conflicting trademarks. The registrar on consideration of the
application and any evidence of use or distinctiveness decides whether the application
should be accepted for registration or not, and if accepted, publishes the same in the
official gazette i.e. Trade Marks Journal (published in CD-Rom). Within a prescribed
period any person can file an opposition, a copy of which is served to the applicants
who is required to file a counterstatement within two months failing which the
application shall be treated as abandoned.
Thereafter, the opponent leads evidence in support of his case by way of
affidavit followed by the applicant’s evidence also by way of affidavit in support of the
application. After that the opponent files evidence by way of rebuttal. On completion of
evidence, the matter is set down for a hearing and the case is decided by a Hearing
officer. The registrar’s decision is appealable to the Intellectual Property Appellate
Board. Almost all functions of the Registry have now been decentralized and executed
by respective offices except publication of journal, issuance of Registration Certificate
and post registration activities including renewal which is done at TMR, Mumbai (Head
Office).
Correction and amendment of registration application
An applicant for registration of a trade mark can before the registration of the
mark, apply in Form TM-16 for correction of any error in connection with his
application. But the correction should not alter the trade mark that has been applied
for or substitute a new specification of goods or services not included in the
application.
Renewal of registration
The period of registration which was 7 years until recently under 1958 Act,
has been increased to 10 years under the present Act. The 10 year period of
registration is reckoned from the date of making of the application which is deemed to
be the date of registration. Registrations can be renewed by payment of prescribed
renewal fees in all cases (trademark / collective marks/certification marks) on form
TM-12. The application is filed by the proprietor of the registered trade mark or his
agent. If there is any change in the proprietorship of the mark, and it has not been
brought on record, proof of title should be filed in the first instance.
Offences & Penalties
There are mainly two classes of Offences relating to Trademarks –
a. Falsification of Trademark
b. Falsely applying the trademark to goods or services
The punishment for the above offences shall not be less than 6 months
imprisonment which may extend to three years and a fine which shall not be less
50,000/-, but may extend to Rupees Two Lakh. Wherever the court proposes a lower
punishment than the minimum, it has to record, adequate and special reasons for the
same.
However second and subsequent offences shall be more severely punished. There shall
be an Imprisonment of not less than one year which may extend to three years and a
fine which shall not be less Rupees One lakh, but may extend to Rupees Two Lakh. The
court can propose a lower punishment than the minimum, only after recording
adequate and special reasons for the same.
E-filing of Trademark application
E-filing is the service provided by the Trademark Registry in order to enable customers
to apply for a Trade Mark on-line allowing from the applicant’s browser to:
 Complete an electronic application form;
 Provide the associated attachments;
 Complete the necessary payment details
Procedure for e-filing
In order to submit an electronic application form, following steps should be followed -
1. Acquire Class 3 Digital Signatures from (n)Code Solutions or Tata Consultancy
Services (TCS) or SafeScrypt from Sify . The Procedure for getting the Digital
Signature and the location of their Offices is available at their website.
2. For users (Proprietors/Agents or Attorneys), already registered with TMR
(Trademark Registry) Office India can complete online registration by providing a
desired User ID, their User Type (Proprietor/Agent/Attorney) and User Code.
3. For Users who are not registered as Proprietor / Attorney with TMR Office, they
can search and fill online form to obtain User code (Party Code).
4. Secure Login into the system with created User Id and the Digital Signatures.
5. Obtain a New Reference Number for New Application. Use this option when the
applicant wants to apply for a new Trademarks Application.
6. Update Application Details: Use this option to edit / update the application details
along with relevant images and attached documents. Final Submission to TMR-
 India with Digital Signature is included in this option after which application
cannot be edited.
7. The Cases which are Digitally Submitted to TMR, India are available for online
payment. The applicant can pay for more than one application in a single
transaction. Once the payment is realized as confirmed by the Payment Gateway,
an acknowledgement receipt for the fees paid is generated by the system
indicating the Receipt Number, Application Number and Date of Filing.
8. An applicant can also view online History and status of the applications filed by
him / her by clicking Status of Filed Application.
9. An applicant can also view the online status of e-Payments.
 International cooperation on Intellectual Property
WIPO’s development cooperation aims to assist developing countries — including the least
developed countries (LDCs), for which a special unit has been established in the WIPO
Secretariat — to attain levels of socio-economic development through their intellectual
property systems, which enable them to enter into effective partnership with more
developed countries and generally to take their place in the world.
Objectives
 The objectives of WIPO’s cooperation for development program are achieved either
directly, by providing legal, practical and administrative information, advice and training
for governments and organizations in developing countries, or indirectly, by facilitating
their contacts with public and private bodies worldwide which can also thus assist them.
 The major objectives of the cooperation for development program are to assist
developing countries in:
 the establishment of intellectual property systems which are modern and function
well, with regard to legislation and administration, and with personnel adequately
trained and using up-to-date equipment;
 the development of human resources, especially by the WIPO Worldwide
Academy;
 the adoption of timely and informed policies to meet existing and new intellectual
property challenges such as the preservation, conservation and dissemination of
biological diversity, the use of traditional knowledge to benefit the holders of it, the
improved protection of expressions of folklore and the implications of electronic
commerce;
 the promotion of cooperation among developing countries, in particular by the use
of the WIPO Global Information Network (WIPONET), in order to pool all available
useful technological information resources at sub-regional and regional levels;
 the development and adjustment of information technology, in both its legal and
practical aspects, to harmonize and enhance its intellectual property application
worldwide.
 The creation and use of intellectual property through the setting up of innovation
support structures and technology transfer.
 In order to carry out activities to fulfil these aims, WIPO undertakes projects and
activities tailored to the needs of particular groups of developing countries.
 A single Permanent Committee on Cooperation for Development Related to Intellectual
Property was established in 1999, to direct Permanent Programs in the fields of both
industrial property and copyright and related rights. Its membership is open to any
Member State of WIPO, as well as to intergovernmental and non-governmental
organizations with observer status.
 The Permanent Committee is a forum for debating policy and practice in intellectual
property matters of particular concern to developing countries. It has focused on all the
new challenges described above (see at the beginning of this chapter the section on the
Objectives of Developing Countries). Its sessions have especially reviewed WIPO’s newer
initiatives to help developing countries to meet those challenges: the major subjects of
discussion have been, among other things, the development of human resources in the
context of the work of WIPO’s Worldwide Academy, assistance to the Least Developed
Countries (LDCs), the promotion and development of collective management of
copyright and related rights (notably in connection with the development of a regional
system), the promotion of innovation in all fields of intellectual property to stimulate
economic growth and culture, new approaches to traditional knowledge, genetic
resources and folklore and, in support of all these and other activities, measures
required to enable developing countries to benefit fully from the latest information
technology. The Permanent Committee will continue to meet biennially.
Development Cooperation in Relation to Intellectual Property
WIPO’s development cooperation activities in the field of intellectual property are aimed at
helping developing countries in the following respects
 training of government officials and representatives of the private sector, such as
lawyers, agents and staff of collective management organizations working in the fields of
copyright and related rights;
 providing legal advice and assistance in drafting new, or revising existing, intellectual
property legislation;
 establishing or strengthening intellectual property offices and other related institutions;
 promoting indigenous innovative, inventive and creative activities;
 using the technological information contained in patent documents;
 establishing programs for legislators and the judiciary;
 promoting awareness of intellectual property protection in local enterprises and
educational institutions.
Training
 WIPO’s training program consists of various regular general and specialized courses
organized each year, in a number of developed and developing countries, for the
collective training of government officials and others, and periodical seminars, workshops
and other types of meeting at national, sub-regional and regional level in which
government officials and other personnel from developing countries participate. In
addition, government officials are attached to intellectual property offices and other
institutions in developed or developing countries for practical training, and middle and
senior level officials are sent on observation visits to such offices. WIPO also organizes on-
the-job training in some countries by international experts. The level of training ranges
from basic, introductory courses to refresher or specialization courses for officials in
responsible positions in intellectual property administrations.
 Training programs have been extended to other categories of beneficiaries, in addition to
the government officials working in the national intellectual property administrations.
These categories include private lawyers and practitioners, staff of research and
development institutions, of enterprises and of collective management organizations,
representatives of the judiciary, officials of enforcement agencies such as police and
customs, of ministries of trade and foreign affairs and other persons dealing with
questions related to intellectual property matters.
 It is also desirable that the teaching of intellectual property law should be developed in a
number of universities in developing countries. The International Bureau has already
awarded fellowships for this purpose to university teachers from developing countries to
enable such personnel to examine the course and curriculum content in order to
introduce or strengthen teaching at the university level. This means a more intensive
involvement in the training of trainers.
 The aim of the training activities is to enable government officials and other personnel
from developing countries to acquire knowledge and practice in the various aspects of
intellectual property, so that they may effectively organize and administer the intellectual
property system of their own countries. Training activities occupy a preeminent place
within WIPO’s development cooperation program because laws and institutions, however
good they may be, are of little use without qualified staff to administer them.
Legal Advice and Assistance
 In recent years, there have been many instances of a growing interest, on the part of
governments of developing countries in various parts of the world, in making intellectual
property an effective tool in the development process. The existence of intellectual
property laws suited to the needs of the country concerned is a precondition of an
effective intellectual property system.
 For this reason, WIPO has received many requests for advice in drafting intellectual
property laws where they do not exist, and in revising existing laws that are inadequate
for the country’s economic needs and priorities. In addition, adherence to international
treaties oblige countries to adapt their legislation in order to meet the protection
requirements established in those treaties
 At the request of a government, WIPO comments on draft legislation prepared by the
government or prepares draft legislation with due regard to the wishes of the government
and the needs of the country concerned. Those wishes and needs would have been
ascertained through consultations and surveys made on the spot by WIPO experts. The
draft texts are then submitted to the authorities for study and comment. What follows is
often an exchange of letters and visits between the authorities and WIPO experts to clarify
and improve the texts.
 Legal assistance is provided by the International Bureau of WIPO in two forms — the
drafting of model laws and assistance in the drafting of national legislation. The
International Bureau has already drawn up a number of model laws for the use of
developing countries. These texts are prepared by meetings of experts from developing
countries and developed countries, working on the basis of drafts prepared by the
International Bureau and, in all cases, submitted to the States for their comments and
subsequently adopted by meetings of governmental experts.
 In addition, WIPO has produced model laws or guides for developing countries dealing
with such subjects as patents, trademarks, industrial designs and industrial property
licensing, copyright and related rights, the implementation of treaties, the
implementation of licensing procedures for translation and reproduction licensing under
the Berne Convention, and the protection of traditional knowledge and expressions of
folklore.
Institutional Assistance
 A law is not an end in itself for the country concerned. It provides an important
framework within which its industrial property system will function. The law must be
administered and used, and for that purpose suitable administrative machinery and
procedures are required.
 Here again, WIPO has considerable expertise to offer governments and institutions. WIPO
experts are sent, at the request of countries, in order to give on-the-spot advice, on such
matters as the establishment, streamlining and automation of procedures, preparation of
organigrams, acquisition of appropriate equipment including computer hardware and
software, acquisition of the required technical documentation, establishment of links with
external institutions, assessment of staff requirements and training needs, utilization of
office space and the determination of suitable fee schedules. In the copyright and related
rights fields, WIPO has paid special attention to the establishment and reinforcement of
collective management systems, which undertake the safeguarding of the rights and
interests of authors, composers and performers, and the collection and distribution of
their royalties, and which also contribute to the promotion of education and culture, as
well as assisting in participation in international cultural exchange.
 Often, such administrative improvements and changes are planned, for implementation
over a period of time, by WIPO in consultation with the authorities concerned, depending
on priorities and available resources.
 For an intellectual property administration system to be useful, it must serve the public.
In many countries, the intellectual property system has not been used to full advantage
partly because the public, including creators and business circles, are unaware of the
advantages the system has to offer and its role in the development process. WIPO
therefore organizes meetings which aim at building, to start with, awareness of
intellectual property by answering such basic questions as what is intellectual property,
what are its constituent elements, how does intellectual property help trade,
 technological development and cultural development, and how to use and protect
intellectual property rights at the national level?
Promotion of Indigenous Creativity, Innovation and Inventiveness
 As observed earlier, the role that the intellectual property system can play in
technological, economic and cultural development has long been recognized in
developing countries. The protection afforded by intellectual property laws results in
more creations, innovations and inventions, more investment and effort in research and
development (R&D) in technical fields, leading to technological improvements, and
thereby to improvement in the quality of industrial output, and by greater access to
creations of foreign origin, in an educational and cultural climate that promotes
development in general.
 Without a national intellectual property system, it is difficult for a country to stimulate
and protect the results of indigenous creativity and innovation. Governments can, with
the help of WIPO experts, devise ways and means of encouraging local entrepreneurs and
enterprises, the creation of national associations in the field, the provision of legal advice
on protection procedures, financial support and incentives, public recognition of creators
and inventors, the award of prizes through competitions, etc. Through mass participation
in nationwide events and competitions, and in clubs in schools, public consciousness and
use of the intellectual property system is stimulated. One example is that since 1979,
WIPO has established an award for inventors and innovators that is widely used by
developing countries to encourage inventive activity.
 Following this, since 2001 two new Awards were added to the Awards program. First, the
WIPO Creativity Award gave due recognition to individuals or groups of individuals
whose creativity, artistic skills and imagination have resulted in original works,
performances or productions connected with the field of copyright and related rights,
including original works developed and used in the digital environment and related fields.
There is also the WIPO Trophy for Innovative Enterprises, which encourages enterprises
and companies in all Member States to actively use the intellectual property system in
their production and commercial activities.
Use of Patent Information
 One of the activities of WIPO in assisting the development process in developing countries
is directed at improving access by those countries to the technological information
contained in patent documents, by the provision of the necessary patent documentation
and training in methods of retrieval and dissemination.
 A program, now called the WIPO Patent Information Services for Developing Countries,
began in 1975. Its aim is to provide free-of-charge patent information services to
institutions in developing countries under agreements concluded between the
International Bureau of WIPO and contributing industrial property offices in some 20
countries (both industrialized and developing countries).
 WIPO gives assistance and advice, and is the executing agency for several UNDP projects,
concerning the planning and establishment of patent information and documentation
centers which serve the needs of national or regional institutions in developing countries.
Such centers may be created within an existing or planned industrial property office, or
within a scientific and technological information center.
Programs for Legislators and the Judiciary
 WIPO cooperates in promoting the exchange of experience and other information among
legislators so that they are better prepared to consider the needs of their own countries,
and find solutions to such needs, when engaged in the adaptation of their intellectual
property legislations to the changing economic and technological situation, both on the
domestic level and in international relations. This cooperation may take the form of
national and regional seminars and study trips.
 In addition, WIPO works to promote the exchange of experience and information among
members of the judicial branch (judges of courts of all levels) so that they are better
prepared to interpret and apply domestic laws and international treaties in the field of
intellectual property law and to order measures that would prevent the continuation of
infringement of intellectual property rights. Such cooperation may also take the form of
national and regional seminars, simulated trials and study trips.
Promotion of Awareness in Local Enterprises and Educational Institutions
 It is increasingly recognized that efficient use of the intellectual property protection
system can significantly contribute to economic growth. The Small and Medium-Sized
Enterprises (SMEs) Division, established in October 2000 following unanimous support
by WIPO’s General Assembly, seeks to raise awareness of the relevance of intellectual
property for small business and promotes initiatives to make the intellectual property
system more accessible, less cumbersome and more affordable for SMEs.
 The activities carried out by the SMEs Division of WIPO recognize the important role
played by such enterprises in strengthening the economic wellbeing of a country.
Research has shown that SMEs can and should contribute considerably to employment
creation and trade, which ultimately promote economic growth. It has also been shown
that, given the opportunity, SMEs are innovative and competitive. However, SMEs need to
be encouraged to take full advantage of the existing intellectual property protection
system in order to compete more successfully in the global economy.
 One of the priorities of this program is to raise awareness of the potential benefits for
SMEs so that they effectively use this system. The awareness-building activities are for
government institutions responsible for SMEs, other institutions supporting SMEs and,
through information made available on the Internet, for SMEs themselves. These include
international, regional and national seminars organized by WIPO, distance learning
courses offered by the WIPO Worldwide Academy and joint activities in cooperation with
other international or regional organizations or institutions which deal with matters
concerning SMEs.
 WIPO has already been active in raising awareness of the value of the intellectual
property system in higher education, through cooperation activities with universities and
similar institutions to include intellectual property in teaching programs. A number of
cooperation agreements have been concluded with universities and regional training
centers towards this aim (see under the WIPO Academy below).

Procedure for grant of a patent

Patent rights do not arise automatically. A patent can be obtained only by following the
procedure set out in the Patents Act and Patents Regulations. An understanding of the
procedure for obtaining a patent is important to understanding Australian patent law
generally. The steps in obtaining an Australian patent are described below. A flow chart
outlining the stages in the patent application process is included in s 4 of the Patents Act and
was reprinted in DP 68.
Filing an application
For a patent to be granted, an eligible person must file an application in the form
prescribed by the Patent Office. Eligible persons are the inventor of the invention claimed in
the application, or a person to whom the inventor has assigned his or her rights in the
invention. A patent application must include a specification of the invention, which contains
instructions adequate to enable a skilled person in the relevant area of technology to
produce or perform the invention. The specification must also indicate the ‘claims’ that
define the invention; that is, the scope of protection that the applicant is seeking.
Australian patent law recognises two types of patent applications—provisional and
complete. Provisional and complete applications may be filed to obtain either a standard
patent or an innovation patent.
 A provisional application need only contain a description of the invention. Often, an
inventor files a provisional application before all the details of an invention are known. The
applicant then has 12 months to file a complete application.
A complete application must contain a full description of the invention, together with
claims, and an abstract summarising the invention being disclosed. A complete application
may be based on one or more provisional applications, and only those claims that are ‘fairly
based on the relevant provisional application will be entitled to the priority date of the
provisional application.
The ‘priority date’ of a patent claim is important in determining whether the
requirements for patentability of an invention have been met. As discussed in Chapter 6, the
requirements of novelty and inventive step are assessed against the prior art as it existed
before the priority date. The priority date is typically the date on which a provisional
application is filed in Australia, or the date on which an application is filed in another
participating jurisdiction.
An applicant may also elect to file a complete application with the Patent Office under
the Patent Cooperation Treaty (PCT). As discussed in Chapter 4, a PCT application designates
all the jurisdictions that are parties to the PCT (including Australia), and secures an
international priority date.
PCT applications that have entered the national phase (and will be processed as a
complete application) are the main type of applications received by IP Australia. In 2002–03,
16,278 PCT applications selected Australia as one of the jurisdictions in which an applicant
wished to obtain patent protection and entered the national phase in Australia. During the
same period, 5,694 non-PCT applications for standard patents were filed with IP Australia
Divisional applications
Each patent application may claim protection only for a single invention. If, following
assessment of a patent application, a patent examiner finds that an applicant has claimed
more than one invention in the application, the applicant may elect to file a ‘divisional
application’—that is, a new application divided from the original or parent application. A
divisional application allows an applicant to continue to benefit from the priority date of the
original application.
Divisional applications may claim subject matter not contained in the original
application so long as all the features of at least one of the claims were disclosed in the
original application. There are no statutory limits on the number of divisional applications
that may arise from a single complete application.
The Patents Act restricts the subject matter that may be claimed in a divisional
application, depending on the time at which it is filed. However, a divisional application,
once filed, is subject to the same procedural requirements, including examination, as any
other complete patent application.
In its submissions to the Inquiry, IP Australia indicated that divisional applications
are currently ‘open to abuse’. In practice, such abuse may occur only in a small number of
cases. However, IP Australia suggested that patent applicants are able to make strategic use
of divisional applications in order to delay determinations by the Patent Office as to the
proper scope of patent claims, or as to whether a patent should be granted. IP Australia
commented that the Patents Act allows an applicant to use a divisional application to obtain
a de facto monopoly by extending the period within which to respond to an examiner’s
adverse report. While this use of divisional applications may be legitimate in some
circumstances, IP Australia suggested that it might be used tactically by an applicant in
‘newly developing areas of technology, such as genetics, where there is a question of [the]
patentability of the subject matter’. Further, an applicant might avoid a decision in an
opposition proceeding by withdrawing the opposed application and refiling it as a divisional
application. To address these issues, IP Australia suggested that limitations could be
imposed on the circumstances in which divisional applications are available.
 However, the majority of submissions and consultations on this issue did not support
imposing additional limitations either on the period within which a divisional application
may be filed or on the subject matter that may be claimed in a divisional
application. Submissions and consultations questioned whether divisional applications are
being misused, and commented on the lack of evidence that divisional applications claiming
genetic inventions present a special case.
The ALRC does not consider that reform of the Patents Act relating to divisional
applications is required to address particular issues raised by patents over genetic materials
and technologies. The concerns expressed by IP Australia about divisional applications are
not limited to genetic inventions. Further, the weight of submissions considered that the
current provisions are operating well and should not be amended without firm evidence of a
problem.
Examination
Once an application has been filed with the Patent Office, a number of additional
steps must be followed before a patent may be issued. An applicant must file a request that
the Patent Office examine the application. Examination is not automatic and a request for
examination must generally be filed within five years of the date of filing a complete
specification. However, IP Australia’s standard practice is to direct applicants to file a
request for examination, if no request has been received, at approximately 32 months from
the priority date, although this period may vary according to IP Australia’s workload. An
abbreviated examination may be requested if an Australian patent application is related to a
patent that has already been granted by the patent office in a prescribed foreign jurisdiction.
The purpose of examination is to determine whether the invention meets the
statutory requirements for patentability set out in the Patents Act. The Patent Office carries
out searches of previously published documents—including scientific and patent literature
(‘prior art information’)—to determine the prior art material relevant to the claimed
invention. In addition, an applicant must disclose to the Patent Office the results of searches
carried out by or on behalf of foreign patent offices in respect of the invention claimed in an
Australian application, or in a corresponding patent application filed overseas. An examiner
with expertise in the relevant area of technology then examines the application, taking into
account the information contained in the results of these searches and any other prior art
information.
Examination of a patent application typically involves an exchange between the
examiner and the applicant about the appropriate scope of the specification and the claims
in light of the relevant prior art. This process is known as ‘prosecution’ of a patent
application.
Following receipt of a request for examination, an examiner will make an initial
assessment of an application for a standard patent and either accept the application as filed
or issue a ‘first report’ detailing the procedural and substantive grounds for objecting to the
application. An applicant then has a period of 21 months to address the objections raised by
the examiner. The examiner may issue further reports for each response by the applicant
that does not satisfy the objections raised. An application for a standard patent will generally
lapse if it is not in order for acceptance within 21 months after the date of the first report.
Acceptance, publication and sealing
The Commissioner of Patents must notify an applicant of the decision to accept or
refuse a patent application, and must publish notice of the decision in the Official Journal of
Patents (Official Journal). Formal refusal of an application is rare. More commonly,
applications for standard patents lapse for failure to obtain acceptance within the prescribed
21 month period following a first report. The Official Journal also publishes notices of lapsed
applications.
Publication of a notice of acceptance in the Official Journal should be distinguished
from the publication of a complete specification for a standard patent. This typically occurs
18 months after the earliest priority date for the application, and is also advertised in
the Official Journal. An application is confidential prior to publication of the complete
specification, and only bibliographic details—such as the applicant’s name and title of the
invention—are made available by the Patent Office.
patent is granted when the Commissioner of Patents causes the patent to be sealed
with the seal of the Patent Office. For a standard patent, this will occur within six months of
the date of publication in the Official Journal of the notice of acceptance of the application,
unless the application is opposed.

Patenting under PCT

Generally, one cannot obtain a single patent that is effective in every country in the
world. Patent protection must generally be secured in each foreign country or jurisdiction
through a local patent in that country or jurisdiction. However, regional patents exist that
span across multiple countries. One example of a regional patent is a European patent,
where European member countries of the European Patent Office (EPO) recognize EPO
patents.
Apart from regional patents, there exists an international patent application called
a PCT patent application that provides a process for reserving your right to file patent
applications in foreign countries and participating regions, such as the EPO.
Paris Convention v. PCT
For member countries of the Paris Convention, generally foreign patent applications
must be filed within 12 months of the earliest national application filed in a member
country. Therefore if the applicant first filed a patent application in the United States, the
applicant would have 12 months from the U.S. filing to file foreign applications in Paris
Convention member countries claiming priority and receiving the benefit of the filing date of
the U.S. patent application.
The PCT (Patent Cooperation Treaty) application process generally gives the
applicant an additional 18 months to consider whether and in which countries to pursue
patent protection. If the applicant first filed a patent application in the United States, then
filed a PCT application within 12 months of the U.S. filing, the applicant would generally have
an additional 18 months to nationalize the PCT application in the foreign countries in which
the applicant desired patent protection.
However some PCT member countries do not provide the full 18 months for
nationalization, but instead require nationalization at a much sooner time. It is important to
consult early in the process with an attorney regarding the deadlines that would be
applicable to your case.
PCT Member Countries
Over 140 countries are PCT member countries. Therefore by filing a PCT application,
you can reserve your option to pursue patents in over 140 countries. Not all countries
are PCT member countries. The PCT application process has two steps, the international
stage and the national stage. Residents or nationals of any PCT member country are eligible
to file a PCT application.
International Stage
A PCT patent application must be filed within 12 months of the first filing of a
national patent application (such as a U.S. provisional or non-provisional patent application).
An example application process flow is provided in figure 1 below.
The example of in figure 1 shows that at point A a U.S. Patent Application was filed.
Then 12 months later at point B a PCT application was filed claiming priority to the U.S.
Patent Application. It is also possible to file the PCT application first before any national
application.
The PCT application can be filed through a receiving office in PCT member countries,
such as the U.S. Patent and Trademark Office or through the international bureau at WIPO.
 After the PCT application is filed, an International Searching Authority (ISA) will
perform a patentability search and issue an international search report. The ISA will also
issue a written opinion on patentability. The applicant has the option to withdraw the
application in light of the search report or written opinion, if this is not done the application
and the international search report will be published. The PCT application will generally be
published 18 months after the earliest priority filing date (such as the first national
application filing date).
The PCT applicant can request a second or supplementary international search which
may be carried out by one or more of the ISAs (other than the one that carried out the main
international search) resulting in a supplementary international search report. The PCT
applicant has the opportunity to amend the claims in the patent application in response to
the search report.
Optionally, the PCT applicant can request a Chapter II Examination international
preliminary examination resulting in an international preliminary report on patentability.
National Stage
The PCT application must be “nationalized” (entered into the national phase) into the
particular foreign countries or jurisdictions that you would like to have patent protection in.
Once the application is nationalized in a particular country, the application will be examined
under the local laws of that country to determine whether a patent should be granted.
Therefore if you wanted to have foreign patent protection in China, Australia, and in
Europe, you would need to nationalize the PCT application in each of those jurisdictions by
the nationalization deadline (see below) in order to seek patent protection there.
The deadline for nationalizing the PCT application depends on the country. Most
countries or jurisdictions require the application to be nationalized within 30 months of the
earliest filing date (the earliest claimed priority application filing date) other countries or
jurisdictions require nationalization within 31 months. However, as explained above, some
PCT member countries do not provide the full 18 months for nationalization, but instead
require nationalization at a much sooner time. It is important to consult early in the process
with an attorney regarding the deadlines that would be applicable to your case.
The earliest claimed priority date in the example of Figure 1 is the date that the US
application was filed, not the date that the PCT application was filed.
 At point C in figure 1, nationalization occurs regarding Countries 1 and 2 at the 30
month deadline. At point D in figure 1, nationalization occurs regarding Countries 3 and 4 at
the 31 month deadline. Nationalization might occur into a regional patent organization, such
as the European Patent Office, rather than a country.
Individual countries or regional patent organizations many provide a grace period or
revival period allowing the nationalization even after the deadline. Therefore if you have
missed the nationalization deadline, you should inquire with an attorney whether there are
still options for nationalizing your application in the countries you choose.
Nationalization usually involves the payment of nationalization fee, filing of certain
documents, and in some cases, filing of a translation of the application. Then the nationalized
application will be considered under the local laws of the jurisdiction to determine whether
a patent should be granted. Local attorney representation will likely be needed in the
nationalized jurisdictions to prosecute the application under their local laws. Generally your
U.S. lawyer can work with foreign attorneys during the local prosecution of the application
in the national stage.
Cost
Pursuing patent protection by nationalizing a PCT application in every PCT country is
generally not economically feasible. The need to hire local attorneys and prosecute the
applications in each of 140 countries would be an very expensive endeavor.
Instead, clients often, at or before the nationalization deadline, choose to nationalize
the PCT application in countries where they have (1) actual or anticipate sales or (2) actual
or anticipated licensing or business opportunities sufficient to justify the foreign patenting
expense.
The PCT international patent application filing fee is around $4000. The
nationalization fees can range from $2000-$7000 per country to file. After that there are
prosecution costs in each country until the application hopefully issues within a few years as
a patent. There are also yearly patent application fees and patent annuity fees to be paid in
each country.
Conclusion
Seeking foreign patent protection involves considerable costs. However, foreign
patenting can be valuable when undertaken with a targeted approach that is aligned with
the appropriate business case.