INTELLECTUAL PROPERTY RIGHTS, INDIA

1. Definition:
A patent is an exclusive right granted for an invention, which is a product or a
process that provides, in general, a new way of doing something, or offers a new
technical solution to a problem. To get a patent, technical information about the
invention must be disclosed to the public in a patent application.
2. History:
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911
was enacted. The Patents Act, 1970 is the legislation that till date governs patents in India. It first came
into force in 1972.

1856
The Act VI of 1856 on protection of inventions based on the British Patent Law of 1852. Certain exclusive
privileges granted to inventors of new manufacturers for a period of 14 years.
1859
The Act modified as act XV Patent monopolies called exclusive privileges (making. Selling and using
inventions in india and authorizing others to do so for 14 years from date of filing specification).
1872
The Patterns & Designs Protection Act.
1883
The Protection of Inventions Act.
1888
Consolidated as the Inventions & Designs Act.
1911
The Indian Patents & Designs Act.
1999
On march 26, 1999 Patents (Amendment) Act, (1999) came into force from 01-01-1995.
2002
The Patents (Amendment) Act 2002 came into force from 20th may 2003
2005
The Patents (Amendment) Act 2005 effective from 1st january 2005
 3. Types of patents
Patents protect inventions and new discoveries that are new and non-obvious. There are three
types of patents: utility patents, design patents, and plant patents. Each type of patent has its
own eligibility requirements and protects a specific type of invention or discovery; however, it's
possible for one invention or discovery to potentially have more than one type of patent available
for it. For example, if a person invents an object and he or she wishes to patent both the
functional features and the design of the object, the inventor would have to apply for two
separate patents (both a utility and design patent). This article will provide an overview of the
three different types of patents available under the laws of the United States, as well as a brief
explanation of how to obtain patent protection for your invention or discovery.

3.1 Utility Patents

A utility patent is the most common type of patent that people seek. This type of patent covers
processes, compositions of matter, machines, and manufactures that are new and useful. A utility
patent can also be obtained for new and useful improvements to existing processes, compositions
of matter, machines, and manufactures. Processes refer to any acts or methods of doing
something, usually involving industrial or technical processes. Compositions of matter are
basically chemical compositions, which can include a mixture of ingredients or new chemical
compounds. Machines include things that are generally defined as a machine, such as a
computer, while manufactures are defined as goods that are manufactured or made.

3.2 Design Patents

In terms of obtaining a design patent, a design is defined as the "surface ornamentation" of an

object, which can include the shape or configuration of an object. In order to obtain this type of
patent protection, the design must be inseparable from the object. While the object and its design
must be inseparable, a design patent with only protect the object's appearance. In order to protect
the functional or structural features of an object, a person must also file for a utility patent.

3.3 Plant Patents

A plant patent can be obtained to protect new and distinctive plants. A few requirements to
obtain this type of patent are that the plant is not a tuber propagated plant (i.e. an Irish potato),
the plant is not found in an uncultivated state, and the plant can be asexually reproduced.
Asexual reproduction means that instead of being reproduced with seed, the plant is reproduced
by grafting or cutting the plant. Plant patents require asexual reproduction because it's proof that
the patent applicant can reproduce the plant.

4. How to protect patent

Legal protection falls into three basic categories: copyrights, trademarks, and patents.
 5. Overall Common patent process
The patent process for obtaining patent protection involves 1) a patentability opinion, 2) preparation and
filing of the patent application, 3) prosecution of the patent application, 4) issuance, abandonment, or
appeal of the patent application, and 5) maintenance fees.

Step 1: Patentability Opinion

The first step of the patent process is the patentability opinion which includes a search of the
prior art. During the search, we develop an opinion as to whether the patent office is like to
grant a patent on the invention. You don’t have to go out and search for prior art references that
might invalidate your patent. However, you do have to disclose relevant information that you
know of to the patent office. In other words, there is no duty to search for prior art but there is a
duty to disclose relevant information to the patent office.

Step 2: Preparation and filing of a patent application

In the second step of the patent process, we write your patent application. Upon your approval,
we file the patent application with the Patent Office. The preparation and filing of the patent
application involve the preparation of a document that describes your invention. This document
must be able to allow another person to make and use your invention. The patent application is
not a check-the-box type of application.

Step 3: Patent prosecution

Prosecution of a patent application refers to the correspondence between the patent attorney
representing the inventor and the Patent Office. Correspondence includes documents such as a
written response to an Office Action from the Patent Office. This response is an argument trying
to convince the examiner that your invention is worthy of a patent. The Office Action is the
official stance of the Patent Office on whether they will grant you a patent or not.

Step 4: Issuance, Appeal, or Abandonment

If the patent applicant is successful in the prosecution stage of the patent process, then the patent
application will issue as a patent. If the patent applicant is unsuccessful in the prosecution stage
then the patent applicant may abandon the patent application or appeal the decision of the
examiner to an independent board for review as to whether the examiner is correct.

Step 5: Maintenance Fees

If you are successful in obtaining a patent, then there are maintenance fees 3 ½, 7 ½ and 11 ½
years that are due after the issuance of your patent. This is the overall general process for
obtaining a patent. If you would like to more, please do not hesitate to contact me at (949) 433-
0900 or james@ocpatentlawyer.com.

Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I
serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.

6. IPR includes:

6.1 Patents:

A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or
licensed. The patent right is territorial in nature and inventors/their assignees will have to file
separate patent applications in countries of their interest, along with necessary fees, for obtaining
patents in those countries [2].

6.2 Trademarks

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 [3].

6.3 Designs

Design means the features of shape, configuration, pattern or ornament or composition of lines or
colour or combination thereof applied to any article whether two dimensional or three
dimensional or in both forms, by any industrial process or means, whether manual, mechanical
or chemical, separate or combined [4].

6.4 Copyrights

Copyright is a right given by the law to creators of literary, dramatic, musical and artistic works
and producers of cinematograph films and sound recordings. It is a bundle of rights
including, interalia, rights of reproduction, communication to the public, adaptation, and
translation of the work [5].

6.5 Geographical Indications

A geographical indication (GI) is a sign used on products that have a specific geographical origin
and possess qualities or a reputation that are due to that origin [6].

6.6 Plant Varieties

To accelerate agricultural development, it is necessary to protect plants breeders’ rights to

stimulate investment for research and development for the development of new plant varieties.
Simultaneously, it is helpful for the seed industry to ensure availability of high quality of seeds
to the farmers [7].

7. Brief process for registration

1. Patents:

In India, the Patents Act is the central body dealing with the filing and
regulation of an existing and new patent. This Act suggests that either the
inventor, his assignee or one of his legal representatives (in case the inventor is
deceased) can apply for one in the head office of Indian Patent Office or the
branches of the office, depending on the jurisdiction of the applicant.
In case the applicant is not an Indian citizen, he or she must file the application
in their respective jurisdiction (where the address for service of the applicant is
located).
Steps for application of patent filling in India
You can choose to apply for a patent all by yourself or take help from registered
agents. When it comes to the cost of getting a patent, the following two
elements come into the picture:
 Government fees for forms and renewals
 If you choose to have an agent, then the charges for the professional
It is always recommended to get a patent through a registered agent. Here are
the steps required to apply for a patent:
Step 01: Invention disclosure
The first step is to disclose your invention to the professional. This is done by
signing a non-disclosure agreement.
Pro-tip: It is recommended to submit each known fact about your invention. Do
not hold anything back.
Step 02: Patentability search
Usually, a professional charges a fee (approx INR 10,000 to INR 20,000) at this
step. At this stage, your professional performs extensive research for prior
evidence in all the possible databases. Further, he or she builds a patentability
search report based on your invention.
Step 03: Decision to file an application for patent
This is where the actual process begins. After detailed research about (any)
existing history of your invention, you can decide if you want to go ahead with
the patent application filing.
Please note: Your invention must have an ‘inventive step’ as compared with
existing prior art pieces to qualify for a patent. It must have either ‘technical
advanced’ or ‘economically significant’ or both, over any existing piece of arts.
The step where you decide to go ahead with the filing process by writing an
application is called patent drafting.
Step 04: Patent drafting
You can choose to draft the application on your own or take a professional’s
help to do this. If you choose to take help, you might have to pay somewhere
around INR 20,000 to INR 30,000.
Please note: This is one of the most crucial steps of the entire process. It
requires both technical and legal understanding. If not drafted the right way, all
the efforts you out in gets wasted. Hence it’s a good idea to take professional
help here.
Step 05: Filing the patent application
After you are done with a review of your patent draft and are satisfied with the
scope and details, you are ready to file for a patent.
You can file the patent application in a prescribed manner with appropriate
forms with fees. You need to pay fees of INR 1,600 or 4,000 or 8,000 (based on
the type of application) while submitting the patent application in the patent
office. If you do not file a request for early publication, the patent application
will be published on expiry of 18 months.
Step 06: Request for examination
This is the step where the applicant is required to request the Indian patent
office to examine your patent application, within 48 hours. Request for
examination fees ranges from INR 4,000 to INR 20,000 (based on the type of
applicant).
Step 07: Responding to objections (if any)
The draft and the report submitted to the officers in the patent office are
thoroughly examined at this step. At this step, there is a chance for the inventor
to communicate his novelty or inventive step over any other piece of art found
during the assessment. If all the things are well clarified and solved, the patent
application is almost ready to come to action.
Step 08: Grant of patent
If the application meets all the prescribed requirements, it is placed in order for
the grant. Usually, the final grant of the application is notified through a journal
that is published
Step 09: Renewal of your patent
Usually, a patent is in force for 20 years. On completion of 20 years, the owner
is required to renew the patent by paying a small fee.

2. Trade mark

General flow chart for Trade mark registration

 3. Designs
Follow the below steps to register a design patent in India.
Step 1: Write down the invention, idea or concept with the correct details, such as

 Area of invention
 Description of invention
 How does it work
 Advantages of the invention
Step 2: Include drawings, diagrams or sketches explaining the working of the
invention

 The drawings and diagrams should be created to demonstrate the working of the invention in a
better way with visual illustrations. They play a crucial role in the patent application.
Step 3: Verify whether the invention is patentable subject matter

 All inventions may not be patentable, as per Indian act certain inventions are patentable in
detail.
Step 4: Patentability Search

Let’s find out whether your invention meets all patentability criteria as per the Indian patent act
such as
 The invention should be Patentable subject matter.
 It should be Novel.
 It should be Non-obvious.
 The invention should have Industrial application.
 And it should be enabling.
Step 5: Decide whether to go ahead with patent

The patent reports and views help decide whether to go ahead with the patent or not, chances are
what was thought as a novel idea might already be patented, and known to the public in some
form of knowledge. Hence, this report saves lots of time.
Step 6: Draft or write a patent application

If you are in the early stages of inventing an idea, you can opt for a provisional
patent application. It has the following benefits:
 It secures a filing date
 12 months to file complete specifications
 Low cost
Filing a provisional patent is an optional step. If you are in a stage where you have the entire
information about your invention then you can instantly opt to provide complete specification.
Step 7: Publication of the application
If an application is filed, the patent will be published after 18 months. If you do not wish to wait
for 18 months from the date of filing, an early publication request can be made along with the
prescribed fees.
Step 8: Request for examination

The application will be examined only after getting a request from the Request for Evidence
(RFE). Receiving this request, the controller gives your patent application to a patent examiner
who examines the patent application with different patentability criteria which we have discussed
from the above steps.
Step 9: Respond to objections.

Based on the examination report, most patent applicants will receive some form of objections. To
sort this issue, analyze the report with patent professionals and prepare a response to the
objections raised in the examination report.
The communication between the controller and patent applicant is to ensure that all objections
raised in the patent applications are resolved.
Step 10: Grant of patent

If the application ID meets all the patent requirements, the application will be placed for the
grant. The grant of the patent will be notified from the patent journal which will be published
from time to time

4. Copyrights
5.Geographical indication
Step 1-Filing of the Application

 The application for the registration of Geographical Indication shall be made in triplicate.
 The application then must be signed by the applicant or his agent along with the statement
of case and has to be submitted along with the prescribed form GI-1
 A single application can be filed for different classes of goods and fees payable shall be in
respect of each of such class of goods.
 An affidavit is required to accompanying the forms has to be submitted by the association
of persons, producers, organisations or authority representing the interest of the producers
over certain goods and how the applicant claims to represent their interest
What should be the contents of the application?

Section 11 (2)

 Firstly, it should state how the geographical indication serves to designate the goods as
originating from the concerned territory of the country or region or localities as the case
may be, in respect to quality specifications, reputation, characteristics which are
exclusively due to certain environmental conditions with inherit natural or human factors
relating to the territory.
 It should also state the class of goods to which the geographical Indication shall apply
 The geographical map of the territory of the country or region or the locality of the
country in which the goods are produced or manufactured should be included.
 Particulars regarding the appearance of the geographical indications as to whether it is
comprised of words or figurative elements or both.
 Statement containing the details of the applicant including the names, addresses and other
such details as may be specified from time to time
Forms for registration of GI are available on the website of Geographical Indications Registry
(http://www.ipindia.nic.in/forms-gi.htm)

Step 2 and 3 – Preliminary Scrutiny and Examination

Section 11 (5) to (7)

 The application will be scrutinized by the examiner for any deficiencies and
discrepancies.
 In case of any deficiencies and discrepancies, the applicant is required to rectify the same
with a period one month of its communication.
  The correctness and authenticity of the content of statement furnished by the applicant
shall then be assessed by the Registrar in consultation with a group of experts consisting
of not more than 7 representatives who are well versed on the subject.
 Only after proper scrutiny and examination that the examination report will be issued
Step 4 – Issue of Show Cause Notice

(Section 12)

 If the Registrar has any objection with regards to the application then the same shall be
communicated to the applicant.
 The applicant must respond within a period of two months from the receiving of the
notice or he can apply for hearing
 The Registrar has been entrusted with the power to withdraw the application after giving
the applicant a reasonable opportunity of being heard, if he is of opinion that there has
been an error on the part of the applicant and the same has been conveyed to him
 If aggrieved, an appeal can be made within period of one month of the Registrar’s
decision.
Step 5: Advertisement

(Section 13)

 Every application for registration of geographical indication that has been accepted
absolutely or with subject to conditions or limitations shall within three months of
acceptance shall be published in the Geographical Indications Journal.
Step 6: Opposition to Registration

Section 14

 Any person can file a notice of opposition within three months (extendable by another
month on request which has to be filed before three months) opposing the Geographical
Indication application published in the Journal in triplicate along with the form GI-2
 The registrar shall serve a copy of the notice on the applicant for registration and the
applicant shall within period of two months from the date of the receipt of such notice
send to the Registrar the copy of the counter statement stating the grounds on which he
relies on his application, failure to do so will result in abandonment of his application.
 On receiving the counter statement from the applicant, the Registrar shall serve a copy of
the of the same to the person giving the notice of opposition.
 The applicant and the opponent have to submit to the registrar any evidence on which
they rely, in manner and time as may be prescribed from time to time by the registrar.
 Registrar shall give adequate time to both the parties to be heard
  The registrar after hearing both the parties and considering all the evidence shall decide
whether to accept the application with or without limitations or conditions
 If it comes to the notice of the registrar that either the applicant or person giving the
notice of opposition neither resides nor carries on the business in India, the registrar may
require him to give the security for the cost of proceedings before him and in case of any
default of such security duly given, may treat the application or opposition as the case
may be, as abandoned.
 On request the Registrar may permit to make any correction or amendment of an error in
the notice of opposition or counterstatement.
Step 7– Corrections and amendments-

Section 15

The Registrar may from time to time with subject to certain terms and conditions permit either before
or after the acceptance of the application, the correction of any error or an amendment of the
application.

Step 8 : Registration

Section 16

 On acceptance of the application, the registrar shall register the geographical indication
for the same.
 If registered the date of filing of the application shall be deemed to be the date of
registration.
 The registrar shall then issue to the applicant a certificate with the seal of the
Geographical indication’s registry in Form-02 as per Rule 55 0f The Geographical
Indications of Goods (Registration and Protection) Rules, 2002
Step 9: Duration, Renewal And Restoration

Section 18

 A registered Geographical Indication shall be valid for 10 years and can be renewed on
payment of renewal fee.
 At the time before the expiration of last registration of geographical indication, the
Registrar shall send the notice to the registered proprietor or the authorised user as the
case may be, about the date of expiration and the conditions as to payment of fees and
upon renewal of which registration shall be obtained.
 Failure to do so may result in removal of geographical indication
 Where a geographical indication has been removed by the Registrar on grounds of non-
payment of the renewal fees may after six months and within period of one year from the
 expiration of last registration of geographical indication may, on an application in a
prescribed manner and after payment of prescribed fees may restore the geographical
indication for period of 10 years from the expiration of last registration
Step 10: Appeal to the Appellate Boards

Section 31

 Any person aggrieved by an order or decision of the Registrar under the act or under the
rules made thereunder, may prefer an appeal to the Intellectual Property Appellate Board
(IPAB) within three months from the date on which the order or decision sought to be
appealed is communicated.

Reference
1. www.ipindia.gov.in
2. https://www.wipo.int/patents/en/
3. https://ipindia.gov.in/history-of-indian-patent-
system.htm
4. https://www.findlaw.com/smallbusiness/
intellectual-property/types-of-patents.html
5. https://ocpatentlawyer.com/patent-process-
overall-steps-and-procedures/
6. https://www.venturecenter.co.in/campaigns/
sanitation/know-your-intellectual-property-rights/
7. https://razorpay.com/learn/apply-for-patent-in-
india/
8. https://img.indiafilings.com/learn/wp-content/
uploads/2015/02/12011325/Trademark-
Registration-Process-Flowchart.png
9. https://vakilsearch.com/permanent-patent/design-
patent
10. https://www.indiafilings.com/learn/copyright-
registration-process-procedure/#:~:text=Both
%20published%20and%20unpublished
%20works,sent%20along%20with%20the
%20application.
11. https://blog.ipleaders.in/geographical-
indication-registration/