Intellectual Property Law

Concept of Property: Tangible and Intangible Property

Tangible Property:
* Tangible property refers to physical objects that have a material
form and can be perceived by the senses. Examples of tangible property include
land, buildings, vehicles, equipment, and other physical assets. In the realm of
intellectual property law, tangible property may also include physical
manifestations of intellectual creations, such as books, CDs, and DVDs
containing copyrighted works, or prototypes of patented inventions.

Intangible Property:
* Intangible property encompasses assets that lack a physical form
but possess value due to their intellectual or creative nature. These assets are
often products of human intellect, innovation, or creativity. Examples of
intangible property include:

 Patents: Legal rights granted to inventors for new and useful inventions,
granting them exclusive rights to use, sell, or license their inventions for a
limited period.
 Copyrights: Legal protections granted to creators of original literary,
artistic, musical, or dramatic works, giving them exclusive rights to
reproduce, distribute, perform, or display their works.
 Trademarks: Distinctive symbols, names, logos, or slogans used to
identify and distinguish goods or services in the marketplace, providing
brand recognition and consumer confidence.
  Trade secrets: Confidential information, such as formulas, processes,
methods, or business strategies, that offer a competitive advantage to
businesses and are protected from unauthorized use or disclosure.

In the Indian legal framework, intellectual property rights are safeguarded by

various statutes and regulations, each tailored to address specific types of
intellectual property. These laws aim to incentivize innovation, creativity, and
investment in intellectual endeavors while balancing the interests of creators,
innovators, and the public.

For example, the Patents Act, 1970, provides a framework for the grant and
protection of patents, ensuring that inventors are rewarded for their
technological advancements while promoting the dissemination of knowledge
and technology for the benefit of society. Similarly, the Copyright Act, 1957,
establishes the rights and obligations of creators and users of copyrighted
works, striking a balance between the interests of authors and the public's access
to cultural and educational resources.

Case laws in India, such as the landmark decision in Biswanath Prasad

Radhey Shyam v. Hindustan Metal Industries (AIR 1982 SC 1444), have
played a crucial role in interpreting and applying intellectual property laws,
shaping the legal landscape and providing guidance on issues such as
patentability, infringement, and enforcement. These cases serve as precedents
for future legal disputes and contribute to the evolution of intellectual property
jurisprudence in India.

Intellectual Property: Origin, Development and

Relevance: National and International perspectives
Intellectual Property (IP) deals with any basic construction of human
intelligence such as artistic, literary, technical or scientific constructions.
Intellectual Property Rights (IPR) refers to the legal rights granted to the
inventor or manufacturer to protect their invention or manufacture product.
These legal rights confer an exclusive right on the inventor/manufacturer or its
operator who makes full use of it’s his invention/product for a limited period of
time.

In other words, we can say that the legal rights prohibit all others from using the
Intellectual Property for commercial purposes without the prior consent of the
IP rights holder. IP rights include trade secrets, utility models, patents,
trademarks, geographical indications, industrial design, layout design of
integrated circuits, copyright and related rights, and new varieties of plants. It is
very well settled that IP plays an important role in the modern economy.

There are many types of intellectual property protection. A patent is a

recognition for an invention that satisfies the criteria of global innovation, and
industrial application. IPR is essential for better identification, planning,
commercialization, rendering, and thus the preservation of inventions or
creativity. Each industry should develop its speciality based on its IPR policies,
management style, strategies, and so on. Currently, the pharmaceutical industry
has an emerging IPR strategy, which needs better focus and outlook in the
coming era.

IPR is a strong tool, to protect the investment, time, money, and effort invested
by the inventor/creator of the IP, as it gives the inventor/creator an exclusive
right for a certain period of time for the use of its invention/creation. Thus, IPR
affects the economic development of a country by promoting healthy
competition and encouraging industrial growth and economic growth. The
present review presents a brief description of IPR with particular emphasis on
pharmaceuticals.

Origin of Intellectual Property (IP)

The Intellectual Property (IP) is a term referred to work or inventions that are a
result of some individual’s original creativity. It basically, means the legal rights
arising out of an intellectual activity in any field like literary, industrial and
artistic or industrial etc. It includes the results that are the creations of one’s
creative mind. Prior to the General Agreement on Tariffs and Trade (GATT), the
Intellectual Property and its related rights were not a subject, to any
international trade negotiations. There’s a long history of the Intellectual
Property, which is way complex but, also fascinating. It is traced all the way to
500 BCE, when Sybaris, a Greek State made it possible for the citizens of their
state, to obtain a patent for one year, for “any new refinement in luxury”. Since,
then we can conclude that Patent, Copyright and Trademark laws have become
more complicated over the centuries but, the intent remains the same.

The laws and legislation procedures relating to the IPR have their roots in
Europe. The trend of Patents started in the 14th Century, they were
technologically less advanced than England. However, the first ever known
Copyrights appeared to be in Italy where, Venice was considered the cradle of
Intellectual Property systems. While, the Patents are about 150 years old
concept, as first introduction was based on, the British Patent System. To foster
creativity and to ensure the possibility for the inventor to make benefits of their
creativity.

Introduction to IPR

The Intellectual Property Rights (IPR) are the legal rights that are conferred as
an exclusive right, to the creator or the inventor in order to, protect his invention
or creation for a period of time. Originally, only patent, copyrights and
trademarks of industrial design were protected under the IPR but, now it has a
much wider meaning. IPR enhances technological advancement as it’s a
mechanism of handling piracy, unauthorized use and infringement [1].

It gives protection to the trade secrets and undisclosed information which, are
important factors in the industries and the R & D institutions. The Drugs and
Pharmaceuticals are the match that requires to have a strong IP system as
inventing new drugs comes with all associated risks at the developmental stage.
Here, competition is driven by the scientific knowledge concepts rather than
manufacturing know-how.

The Intellectual Property Rights are the non-fundamental Human Rights which,
are open to state interference to fulfil the obligations of the Human Rights. The
evolution of the IPR consists of all statutorily recognised rights. The
globalization of the Intellectual Property Rights has triggered the debate on the
evaluation of the relationship between them and the Human Rights.

According to the IPR, the traditional knowledge is considered to be a huge part

of the public regime/domain since, they don’t meet the criteria for the protection
and security or the private ownership. The holders or owners/creators of the IPR
have the ensured monopoly, on the usage of their item, property or research, for
a specified particular amount of time.

The Intellectual property rights are important to promote and stimulate research
and development. This is to ensure the rights of the individuals and
organisations, the protection of their innovative ideas and research and so, they
can reap the benefits of their hard work as it is extremely important, for the
growth and development of humanity by, efforts of individuals.

The IP empowers enterprises, individuals or other institutes, to exclude others

from having the right or using their name without the permission, with their
creations/innovations. Thus, it gives the investors, a reasonable reason to return
their investment, in the field of research and development. It encourages the
disclosure, publication and distribution of the innovative creators, to open their
discovery or creation to the public rather, then keeping it as a secret.

Types of Intellectual Property

1. Patents – A Patent is a document issued by the government office, on

application request, normally to protect the rights of the new inventions, ideas
or scientific processes. The Patent holders are required to pay, periodic renewal
fees to the government. Therefore, the approved Patent is for a limited period of
time only.

2. Copyright – It covers all the literary and artistic works including novels,
plays and poems, films, music, architectural designs or photographs etc. It deals
with the rights of the intellectual creators and also, include the rights of the
creator/inventor and those of performers, producers and the broadcasters as
well.

3. Trademarks – They specifically protect the colours, sounds, designs,

phrases or symbols of individual’s creative creation. It indicates trade origin and
the source of the trademark owner. It gives the licensor, the ability to control the
permission, marketing, financial arrangements and the quality of his products.
They may be granted separately from the Patent and know-how licenses.

4. Trade Secrets – The systems, processes, formulas, strategies or any other

form of confidential information of any organisation is covered under this. This
is majorly to provide these organisations, with competitive advantage in the
market as they are vital in the growth of the company.

Statutory Provisions and Legislations

The Rights to Intellectual property is inserted in the United Nations Declaration

for the Right of Indigenous People (UNDRIP). Particularly, the Article 27 of the
UNDHR states that everyone has the right to protect the material and moral
interests, that are the results of any scientific, artistic or literary production of an
author. The Convention Establishing the World Intellectual Property
Organization (WIPO Convention) (1967), concluded in Stockholm provides,
under its Article 2 (viii) that the IP shall include rights relating to fields like
scientific discoveries, industrial designs, literary and artistic works etc.

There are a few international platforms and forums that work for protection and
promotion of the Intellectual Property Rights, such as the World Trade
Organisation and World Intellectual Property Organisation (WIPO).
Furthermore, they do make new laws on IPR and analyse the ways of how these
laws can guarantee the protection within the ambit of Human Rights. The
Article 2 of WIPO states that IP should include the rights related to the
commercial names, literary and artistic works, trademarks and designs against
the unfair competition. The importance of the Intellectual Property was first
recognised by the Paris Convention for the Protection of Intellectual property
(1883) and the Berne Convention for the Protection of Literary and Artistic
Works (1886). Both these treaties were originally administered by WIPO.

In India, other laws protecting and promoting Intellectual Property Rights are
recognised under the legislative statute, such as: –

 The Geographical Indications of Goods (Registration & Protection) Act,

1999
  The Patents Act (1970)

 The Trade and Merchandise Marks Act, 1958.

 The Designs Act, 2000

 The Copyright Act, 1957

World Intellectual Property Organisation (WIPO)

The World Intellectual Property Organisation or WIPO is a specialized agency

of the United Nations (UN) that was created in 1967 and is headquartered in
Geneva, Switzerland. It was created to encourage the intellectual property (IP)
protection and to promote the creative activities, all over the world. In simple
basis, it is a global organization body that provides global forum for IP services,
policies, cooperation and information. There is a strength of 192 members and
the motto of the organisation is to promote creative activities and protect
intellectual property, all across the world. As far as our country is concerned,
India is a signatory member of the WIPO organisation.

WIPO is a self-sufficient and self-funded agency of the United Nations (UN).

The organisations dedicated in working out the balance and developing the
accessibility of the IP system then, also reward for creativity and innovation.
Hence, safeguarding the economic development while protecting the public
interests. The signature feature of the organisation is that it implements
administrative functions as discussed in the Berne and Paris Unions. It assists
the development of the campaigns, to improve IP protection in the world.
Further, it also conducts research and publishes the results of the IP
development in the various countries.

The Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS), 1995 is an international agreement, among the member countries of
the World Trade Organisation (WTO). It is related to the aspects of Intellectual
Property Rights and sought to standardise the rules and regulations and laws
related to the Intellectual property laws. It provides a uniform degree of
preservation and protection of the Intellectual property of the citizens of all the
member countries and the general public. It mandates that there must not be any
discrimination between the intellectual properties created by any citizen of the
member countries, to the TRIP’s. this provides a minimum standard of
protection for the IP hence, the domestic laws of a country can provide a higher
degree of protection, on their own.

Why promote and protect Intellectual Property?

There are several reasons for promoting and protecting the intellectual property
and its related rights [5].

1. Progress of humanity and the moral good benefit of them, remains in the
ability to create and invent new works in the field of technology and culture.
2. It encourages distribution, publication, and disclosure of the creation to
the public for their benefit, rather than keeping it a secret and a personal
establishment.

3. The promotion and protection of intellectual Property can promote

economic development and it may also, generate new jobs and industries. It
could improve the quality of life, with the latest new innovations, inventions
and creativity.

4. They increase the market value of the creators or innovator’s business. It

generates huge incomes through the licensing, selling or the commercializing of
their products. So, improving the stock market and increasing the profits.

5. The creative and intellectual ideas are converted into profitable assets. The
products/services can be commercially successful and may benefit a lot of
individuals in the societies, across the globe as it increases the export
opportunities for the business.

Evolution and Scope of the IPR

The WIPO Programme in the year 1998-99 budget, were initiated to address the
growing concerns related to the Intellectual Property Rights, of the indigenous
knowledge holders. The Intellectual Property gave rise to duties, specifically for
the owner of the IP that are certain functions to be performed by them, in
relation to their work or products. The various laws that come under the ambit
of Intellectual property umbrella did not emerge or evolve together and they are
as a fact, quite dissimilar in many aspects. Thus, the international treaties and
agreements promote the intellectual workers and labours and bring together all
the related laws of IP together.
The Intellectual Property Rights are distinguished from other rights because of
the nature of intangibility. It ensures the Right to Sue or take any legal action
against the person, who gains unauthorised access to his creation or innovation
against the property. The scope of the Intellectual Property Rights is a broad
one. They help in balancing the nature of innovator’s interest and the benefit of
the public by, providing them an environment where, innovation, invention and
creativity can flourish to the highest and can benefit all. The Intellectual
Property systems have a common form of internal appeal procedure against the
violators of IPR.

Apart, from the initiatives of Government for training judicial officers in

matters such as IPR matters, the laws are also, updated and amended to provide
the efficient speedy trials to the citizens. Like in India, The Cell for IPR
Promotion and Management (CIPAM), which is a government body works with
WIPO and the National Judicial Academy (NJA), India, for organising training
sessions and sensitisation programmes on IPR’s for the High Court and District
Court judges. Thus, ensuring that the law system has a greater understanding on
matters like IPR and its assertion in the society [6]. The National Intellectual
Property Rights (IPR) Policy, 2016 was a vision project of Indian government,
to guide the future developments of the Intellectual Property and its Rights in
the country. It seemed to place an institutional mechanism for implementation
and monitoring of developments in global as well as national IPR’s.

Conclusion

The obvious is that the management of the Intellectual Property and its related
rights have a multidimensional aspect. So, they require new strategies and
different action plans, to be aligned with the national and international practices
and treaties. As, it is not just restricted to the national level but, has moved to be
driven by the international organisations as well. These Intellectual Property
Rights hold and guarantee the monopoly rights and temporary privileges to their
holders. The different forms of Intellectual Property Rights, need the different
handling, planning, treatment and strategies of persons involved, with different
domain of knowledge among the individuals.

Intellectual Property and its related rights are surely influenced by the market
needs and responses, the commercial value of the cost involved, in the
transplantation of the IP. Basically, there is a need that every industry must
evolve its own IP policies and strategies. Since, the challenges to IPR are
unavoidable possibilities as, there must be some invalid IPR, Antitrust laws and
hence, the need to ensure that the laws are lawfully asserted and maintained,
established within the industries. These laws protect the release of new ideas
and aims to guarantee the advancements from the ideas, to their original
creators/innovators/inventors. Some progress has been made, over the years in
understanding and documenting the interactions of the IPR’s with the policy
provisions in the country.

It is evident that the Intellectual property is the solution to the inappropriate

claims of property rights, such as the private property conflicts with social
restricted benefits of public access. The main objective of the Intellectual
Property Rights, is to safeguard the producers and creators of the innovative
goods and services by, granting them certain time bound rights to control the
use and regulation of their products. The leading rapid technology with the age
of globalization has given rise to the fierce competition. Thus, protection and
guarantee of the rights against the infringements of the innovations, creations
and findings, must be associated with the IPR’s through Patents, Trademarks,
Copyrights etc.

Kinds of intellectual Property

The subject of intellectual property is very broad. There are many different
forms of rights that together make up intellectual property. IP can be basically
divided into two categories, that is, industrial Property and intellectual property.
Traditionally, many IPRs were collectively known as industrial assets.

It mainly consisted of patents, trademarks, and designs. Now, the protection of

industrial property extends to utility models, service marks, trade names, passes,
signs of source or origin, including geographical indications, and the
suppression of unfair competition. It can be said that the term ‘industrial
property” is the predecessor of ‘intellectual property”.

Copyright

Copyright law deals with the protection and exploitation of the expression of
ideas in a tangible form. Copyright has evolved over many centuries with
respect to changing ideas about creativity and new means of communication
and media. In the modern world, the law of copyright provides not only a legal
framework for the protection of the traditional beneficiaries of copyright, the
individual writer, composer or artist, but also the publication required for the
creation of work by major cultural industries, film; Broadcast and recording
industry; And computer and software industries.

It resides in literary, dramatic, musical and artistic works in ”original’ cinematic

films, and in sound recordings set in a concrete medium. To be protected as the
copyright, the idea must be expressed in original form. Copyright acknowledges
both the economic and moral rights of the owner. The right to copyright is, by
the principle of fair use, a privilege for others, without the copyright owner’s
permission to use copyrighted material. By the application of the doctrine of fair
use, the law of copyright balances private and public interests.

Patent
Patent law recognizes the exclusive right of a patent holder to derive
commercial benefits from his invention. A patent is a special right granted to the
owner of an invention to the manufacture, use, and market the invention,
provided that the invention meets certain conditions laid down in law. Exclusive
right means that no person can manufacture, use, or market an invention without
the consent of the patent holder. This exclusive right to patent is for a limited
time only.

To qualify for patent protection, an invention must fall within the scope of the
patentable subject and satisfy the three statutory requirements of innovation,
inventive step, and industrial application. As long as the patent applicant is the
first to invent the claimed invention, the novelty and necessity are by and large
satisfied. Novelty can be inferred by prior publication or prior use. Mere
discovery ‘can’t be considered as an invention. Patents are not allowed for any
idea or principle.

The purpose of patent law is to encourage scientific research, new technology,

and industrial progress. The economic value of patent information is that it
provides technical information to the industry that can be used for commercial
purposes. If there is no protection, then there may be enough incentive to take a
free ride at another person’s investment. This ability of free-riding reduces the
incentive to invent something new because the inventor may not feel motivated
to invent due to lack of incentives.

Trademark

A trademark is a badge of origin. It is a specific sign used to make the source of

goods and services public in relation to goods and services and to distinguish
goods and services from other entities. This establishes a link between the
proprietor and the product. It portrays the nature and quality of a product. The
essential function of a trademark is to indicate the origin of the goods to which
it is attached or in relation to which it is used. It identifies the product,
guarantees quality and helps advertise the product. The trademark is also the
objective symbol of goodwill that a business has created.
Any sign or any combination thereof, capable of distinguishing the goods or
services of another undertaking, is capable of creating a trademark. It can be a
combination of a name, word, phrase, logo, symbol, design, image, shape,
colour, personal name, letter, number, figurative element and colour, as well as
any combination representing a graph. Trademark registration may be
indefinitely renewable.

Geographical indication

It is a name or sign used on certain products which corresponds to a geographic

location or origin of the product, the use of geographical location may act as a
certification that the product possesses certain qualities as per the traditional
method. Darjeeling tea and basmati rice are a common example of geographical
indication. The relationship between objects and place becomes so well known
that any reference to that place is reminiscent of goods originating there and
vice versa.

It performs three functions. First, they identify the goods as origin of a

particular region or that region or locality; Secondly, they suggest to consumers
that goods come from a region where a given quality, reputation, or other
characteristics of the goods are essentially attributed to their geographic origin,
and third, they promote the goods of producers of a particular region. They
suggest the consumer that the goods come from this area where a given quality,
reputation or other characteristics of goods are essentially attributable to the
geographic region.

It is necessary that the product obtains its qualities and reputation from that
place. Since those properties depend on the geographic location of production, a
specific link exists between the products and the place of origin. Geographical
Indications are protected under the Geographical Indication of Goods
(Registration and Protection) Act, 1999.

Industrial design
It is one of the forms of IPR that protects the visual design of the object which
is not purely utilized. It consists of the creation of features of shape,
configuration, pattern, ornamentation or composition of lines or colours applied
to any article in two or three-dimensional form or combination of one or more
features. Design protection deals with the outer appearance of an article,
including decoration, lines, colours, shape, texture and materials. It may consist
of three-dimensional features such as colours, shapes and shape of an article or
two-dimensional features such as shapes or surface textures or other
combinations.

Plant variety

A new variety of plant breeder is protected by the State. To be eligible for plant
diversity protection, diversity must be novel, distinct and similar to existing
varieties and its essential characteristics under the Plant Protection and
Protection Act, 2001 should be uniform and stable. A plant breeder is given a
license or special right to do the following in relation to different types of
promotional material:

1. Produce and reproduce the material

2. Condition the material for the purpose of propagation
3. Offer material for sale
4. Sell the materials
5. Export the materials
6. Import the materials
7. The stock of goods for the above purposes

Typically, countries are protecting new plant varieties through the Sui Genis
system. The general purpose of conservation is to encourage those who intend
to manufacture, finance, or exploit such products to serve their purpose,
particularly where they otherwise do not work at all.

The enactment of the Protection of Plant Varieties and ‘Farmers’ Rights Act
2001 is an outcome of the India’sIndia’s obligation which arose from article
27(3)(b) of the TRIPs Agreement of 2001 which obliges members to protect
plant varieties either by patents or by effective sui generic system or by any
combination thereof India declined to protect plant varieties by a sui generis
law, i.e. the Plant Varieties Act.

How an average person benefits?

There are many benefits of acquiring intellectual property rights. For example,
protecting your IP may result in:

1. The increased market value of your business – IP can generate income for
your business through licensing, selling or commercializing protected
products or services. This, in turn, can improve your stock market or
increase your profit. In the case of a sale, merger or acquisition,
registered and protected IP assets can increase the value of your business.
2. Convert ideas into profitable assets – IP can help to convert creative ideas
into commercially successful products and services. For example,
licensing your patent or copyright can result in a steady stream of
royalties and additional income that can result in profitable assets.
3. Market the products and services of the business – IP is necessary to
create an image for your business like trademark, logo, or design of your
product. So, it will help in differentiating the product and advertise and
promote it to the customers.
4. Increase export opportunities for the business – IP can increase the
competition in export markets. One can use their brands and design for
marketing foreign goods and are looking for franchising agreements with
foreign companies or to export your patented products. Consumers won’t
be confident buying means without products or reliable services,
international trademark protection and enforcement machinery to
discourage counterfeiting and piracy.

Justifications for Intellectual Property Rights

Intellectual property rights aim to protect various forms of creativity,
innovation, and commercial assets, promoting economic growth, innovation,
cultural development, and fair competition. Each type of intellectual property
right is justified based on different underlying principles and justifications.

Copyright: Copyright is justified based on the principle of rewarding and

incentivising creativity and authorship. By granting creators exclusive rights
over their original works, copyright encourages the production of creative
works by ensuring that creators can control and financially benefit from their
creations. Copyright also promotes cultural and artistic development by
providing an environment that fosters creativity and the dissemination of
knowledge and culture.

Trademarks: Trademarks are justified based on the principle of consumer

protection and preventing consumer confusion. Trademarks allow consumers to
identify and distinguish the source and quality of goods or services. By
protecting trademarks, intellectual property law promotes fair competition and
prevents unauthorised use of trademarks that may deceive or confuse
consumers.

Patents: Patents are justified based on the principle of promoting innovation

and technological progress. Patents provide inventors with exclusive rights over
their inventions for a limited period of time, incentivising them to invest in
research and development. The exclusive rights granted by patents allow
inventors to recoup their investment and benefit financially from their
inventions. In turn, this encourages technological advancement, fosters
innovation, and promotes the dissemination of new technologies.

Industrial designs: Industrial designs are justified based on the principle of

promoting aesthetic creativity and design innovation. Industrial design
protection allows creators to safeguard the unique visual features of their
products, which contribute to their commercial success. By protecting industrial
designs, intellectual property law encourages investment in design innovation,
enhances product differentiation, and promotes consumer welfare.

Trade secrets: Trade secrets are justified based on the principle of preserving
confidential business information and promoting fair competition. Trade secrets
provide a means for businesses to protect valuable and proprietary information
that gives them a competitive advantage. By maintaining secrecy, businesses
can safeguard their innovative processes, formulas, and strategies, thereby
encouraging investment in research, development, and innovation.

Geographical indications: Geographical indications are justified based on the

principle of protecting cultural heritage, regional identity, and consumer
interests. Geographical indications link the quality, reputation, and
characteristics of a product to its specific geographical origin. By protecting
geographical indications, intellectual property law ensures that consumers can
make informed choices and have access to products with specific qualities
associated with a particular region. It also supports the preservation of
traditional knowledge and skills tied to specific geographical areas.

These justifications reflect the underlying policy objectives of intellectual

property rights, which aim to balance the interests of creators, innovators,
businesses, consumers, and society as a whole. The specific justifications may
vary depending on the legal system and the social, economic, and cultural
context in which intellectual property rights are applied.

Development of Sui Generis System in IP

India is the home to a large number of indigenous people. With more than 84.4
million, India has the largest population of the tribal people in the world. All
these tribal people have their own culture, tradition, language and lifestyle. The
knowledge possessed by these communities and other local communities are
diverse and of great importance to the cultural heritage of India. India has made
efforts to protect this “knowledge” through the existing IPR legislation by
including it in the patent, copyright, trademark, geographical indication etc.
However, due to the dynamic and holistic nature of Traditional knowledge, it
hasn’t been able to achieve its objectives. In this essay, the author intends to
discuss the gap between traditional knowledge and IPR system, need of sui
generis legislation and it’s workability in achieving the objective of protecting
cultural values of these communities.

INTRODUCTION

There was a time when there was hardly any medium to convert and protect the
knowledge that an individual or a community possess. With the advent of time,
the Intellectual property developed as a system to protect the creativity and
innovation of the individual. India today has a well-established IPR system. It
protects every kind of creativity possessed by an individual in a form of art,
work, invention or design. However, the economic potential of traditional
knowledge and the need to protect it was realized late by India in the year 1997
when U.S. claimed a patent on turmeric and basmati rice. Soon after, India
made tremendous efforts to protect the “traditional knowledge” by enacting two
important legislations (Bio-Diversity Act and Protection of Plant Varieties Act).
These Acts very well protect the needs of farmers and medicinal plants. Also,
TKDL was established. The introduction of Act may facilitate enhanced private
investment in selected crops, seed supply systems, agricultural growth and
access of technology to farmers at competitive cost. But indigenous peoples and
local communities have unique needs and expectations in relation to IP, giving
their complexities regarding social, historical, political, cultural dimensions and
its vulnerabilities. The protection of TK intersect each and every category of IP
and often involve other legal issues, as well as ethical and cultural sensitivity
reaching beyond IP.

GAP BETWEEN TRADITIONAL KNOWLEDGE AND IPR SYSTEM

IPR system too narrow for TK– The IPR system is developed to protect the
novelty of any innovation, art, design, work etc. It recognizes the right of such
“individual” (copyright), company (trademark) or community (GI) and provides
a mechanism to commercially exploit it. IPR system relates to the intellect of
right holder and nothing else. However, traditional knowledge is tradition-based
literary, artistic or scientific works; performances; inventions; scientific
discoveries; designs; marks, names and symbols; undisclosed information; and
all other tradition-based innovations and creations of indigenous and local
communities. Here, the word tradition is important since it denotes that such
knowledge is originated from culture and belief. This makes it different from
other kinds of works. It is not only the intellect that needs protection, it is the
dignity of the community that has to be protected along. Indigenous peoples do
not view their heritage as property (i.e. which has an owner and is used for the
purpose of extracting economic benefits) but in terms of community and
individual responsibility. Possessing a song, story or medicinal knowledge
carries with it certain responsibilities to show respect to and maintain a
reciprocal relationship with the human beings, animals, plants and places with
which the song, story or medicine is connected. For indigenous peoples,
heritage is a set of relationships rather than just economic rights [1]Gap between
intellectual property and traditional knowledge arise here. While IPR
framework only focuses on the economic benefit and commercialization of the
work, traditional knowledge needs much more protection than that. It is mingled
of human rights, customary rights and economic rights. Although copyright law
recognizes moral right but all kinds of TK can’t be included in it. This justifies
the need of sui generis legislation for the protection of traditional knowledge.

Documentation and complex mechanism- Another problem which arises with

IPR system and traditional knowledge is the documentation and its complex
mechanism for protection. Traditional knowledge holders [2] mostly live in the
isolated areas of the country and are underdeveloped. It is rare that they would
like to undergo such procedure to protect their rights. Instead, hey believe that
their rights are better protected by themselves.

Holistic nature of TK– WIPO has very clearly recognized the holistic
characteristics of TK- the spiritual and cultural element are intertwined and are
inseparable. Since traditional communities develop knowledge with changing
needs so it is dynamic and incrementally improving. TK covers different fields
in area of cultural traditions.[3] IPR system can only protect the value derived
from a thing like medicinal value of plants varieties (Patent Act, Protection of
Plant Varieties Act) and not the tradition relating to it. So, the holistic elements
of traditional knowledge may be addressed under a sui gneris legislation.

Intergenerational and dynamic nature of TK– TK is passed by forefathers from

generation to generation and it changes with time. IPR system protects a defined
work for a definite period. Protecting traditional knowledge for a definite period
will be against the interest of communities. Therefore a sui generis legislation is
needed like of Panama that provides for indefinite protection

Although a tremendous effort have been made by government to protect

traditional knowledge under the IPR framework. Still it is unable to achieve its
objective due to diverse nature of traditional knowledge.

SUI GENRIS LEGISLATION: THE WAY FORWARD AND ITS

WORKABILITY IN INDIAN SOCIETY

Sui generis legislation simply means “one of its own kind” which can be
formulated in a way that it caters to the needs of the nation. India needs a
legislation which listen to the needs of the communities and combines all the
moral, human, customary and economic rights within it. WIPO in its discussion
on elements of sui generis legislation on traditional knowledge[4] has stated that
a distinction should be made between the knowledge which can be
commercialized and other sacred knowledge which remains outside its scope.
The workability of this suggestion is only possible if we divide various elements
of traditional knowledge like spiritual, historic, economic, medicinal and
traditional secret. Indigenous communities have suggested that the knowledge
which is commercialized must be owned and managed by people who have
inherited such knowledge.[5] This can be workable by establishing
administrative bodies governed by representatives of the communities.

Another important consideration is reaching out to the communities and

spreading awareness regarding their rights. For that, India needs a task force to
reach out to every community. Where TKDL can independently work as sui
generis. However, there are various tribes like selenase tribe in Andaman which
doesn’t allow anyone to enter their area. Campaigns like gene campaign should
be encouraged to understand the needs of communities and teach them about
their rights.

CONCLUSION

In order to frame an Act on sui generis, first, we need to refine each and every
categories of TK. Secondly, we need to separate those TK which are holistic in
nature, India is country who holds diversified culture. Thirdly we need to
analyze whether Indians are ready to compromise with their culture and
tradition which has been carried over a period of time. An urgent need is felt for
the insertion of sui generis elements into IPR for the protection of traditional
knowledge. Such a system would act as a bridge between indigenous
community and nationals as well as international legal system in order to secure
the effective recognition and protection of rights. It can offer flexibility in
developing frameworks that deal with knowledge of biological resources and
sharing of benefits derived from the exploitation of resources. The level of
literacy, time and money required for the registration of TK, It is highly unlikely
that these indigenous people would go through this process, thus leaving the
field open for the third party to acquire rights over their resources and
associated knowledge. Therefore the registration procedure, cost and litigation
procedure of TK should be simplified in order to make IPR system affordable
for communities.
SUGGESTIONS

The need for a sui generis form of IPRs was recognized early enough. Any
changes not done in this area can open a window of opportunity for biopiracy
and misappropriation especially of plant and genetic resources. It can also be
said that the absence of a sui generis system means, many communities will be
robbed for their TK and their inheritance. Connected to this is that, India lose a
lot of revenue which is actually needed for their further development. It is
sometimes believed that proper documentation of TK can help in checking bio-
piracy. We can also assume that if the material knowledge are documented, it
can be made available to patent examiners so that prior art in the case of
inventions based on such materials are readily available to them. We also hope
that such documentation would facilitate in tracing the indigenous communities
with whom benefits of commercialization of such materials and knowledge can
be shared.

Access to present databases i.e. TKDL, it could facilitate the establishment

gateway for traditional knowledge in field of medicine which electronically link
this database with another database of TK. At least minimum harmonization
with the structure and content of these data based will achieve. The information
shall be reachable over the Internet. The extent at which traditional knowledge
is already recorded in the database, it is important to insure that patent
examiners are made familiar with this resources.

In addition, to the legal framework, it will include such other elements which
will harmonize the legislation with the socio-political and economic-
environmental predilections of the state and their commitments connected to the
legislative topic without compromising their culture and tradition.
National Intellectual Property Rights Policy
The government recently released the National IPR policy to promote the IP
regime. The policy will encourage creativity, innovation and entrepreneurship in
India. It will check the theft of one person’s innovation by another. This is
India’s first IPR policy.

About the Policy:

 ‘Creative India, Innovative India’ is the tagline of the policy. This is to

incentivize entrepreneurship, creativity and innovation and curb
manufacturing and sale of counterfeits. It promotes an India where

1. creativity and innovation are stimulated by Intellectual Property for

the benefit of everyone;

2. intellectual-property promotes advancement in S&T, arts and

culture, traditional knowledge and biodiversity resources;

3. knowledge is the main driver of development, and knowledge

owned is transformed into knowledge shared.

 It sets in place an institutional mechanism for implementation,

monitoring and review. It aims to incorporate and adapt global best
practices to the Indian scenario.

 Department of Industrial Policy & Promotion (DIPP), Ministry of

Commerce, Government of India, has been appointed as the nodal
department to coordinate, guide and oversee the implementation and
future development of IPRs in India. Know in detail about Department
for Promotion of Industry and Internal Trade (DPIIT) on the linked page.

 India’s IPR regime is in compliance with the WTO’s agreement

on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

 The ‘Cell for IPR Promotion & Management (CIPAM)’, setup under the
aegis of DIPP, is to be the single point of reference for the
implementation of the objectives of the National IPR Policy.
Objective of IPR Policy

There are seven major objectives:

 IPR, awareness, outreach, and promotion – awareness about the

economic, social and cultural benefits of IPRs among the society.

 Create an atmosphere of inventibility and innovation – stimulate the

generation of IPRs

 Replace existing outdated laws – have strong and effective IPR laws,
which balance the interests of rights owners with larger public interest

 Human Capital Development for teaching, research and skill building in

Intellectual Property Rights – strengthen and expand human resources,
institutions and capacities.

 Administration and management of innovation – modernize and

strengthen service-oriented IPR administration

 Commercialization of IPRs – Get value for IPRs through

commercialization

 To combating IPR infringements by reinforcing the enforcement and

adjudicatory mechanisms

The policy put in place a legal framework that will encourage the IPR regime
and reduce the time taken by the government to approve a trademark to a
month. Currently, the process takes more than a year.

Need for an IPR Policy:

 The policy is important for the government to formulate incentives in the

form of tax concessions which in turn will encourage research
and development.

 The policy comes in the backdrop of the US Trade Representative

(USTR), in its annual (2016 edition) Special 301 Report (on the Global
State of IPR Protection and Enforcement) retaining India on the ‘Priority
Watch List’.

 To maintain the sanctity of innovations so that the litigations in this

domain are minimised.
  It will help in protecting the traditional knowledge of India.

 It will help in strengthening the Make In India, Startup and Digital India
schemes.

Salient Features:

 It aims to realise IPR’s as a marketable financial asset, promote

innovation and entrepreneurship while protecting the public interest.

 Every five years policy will be reviewed

 The policy is in consonance with the WTO’s agreement on TRIPS.

 Special focus on awareness generation and effective enforcement of IPRs,

also the encouragement of IP commercialization through incentives.

 India will engage in the negotiation of international treaties and

agreements in consultation with stakeholders.

 It recommends making the Department of Industrial Policy and

Promotion (DIPP) the nodal agency for all IPR issues. Copyrights related
issues will also come under DIPP.

 Includes a of trademark offices to reduce the time taken for examination

and registration to just a month by 2017.

 Things like Films, music, industrial drawings will also be all covered
by copyright.

 It seeks to facilitate domestic IPR filings, for the entire value chain from
IPR generation to commercialization.

 It aims to promote research and development through tax benefits.

 To encourage start-ups, there is a proposal to create an effective loan

guarantee scheme.

 The policy allows legislative flexibilities to GOI in the international

treaties and TRIPS agreement like using provisions such as Section 3(d)
and compulsory licensing (CLs) for ensuring the availability of essential
and life-saving drugs at affordable prices.

 The government will examine accession to some multilateral treaties

which are in India’s interest; and, become a signatory to those treaties
 which India has de facto implemented to enable it to participate in their
decision-making process.

Advantages of the Proposed IPR policy regime:

 It is a vision document that aims to create synergies between all forms of

intellectual property, concerned statutes and agencies.

 It will streamline India’s IP regime with global standards and help

improve India’s World Bank’s Ease of Doing Business ranking.

 The policy ensures credibility and encourages potential investors and

strategic partners to invest in India.

 It will cut the time taken on clearing the backlog of IPR applications.

 It prevents film and music piracy and focuses on enhancing access to

healthcare, food security, environmental protection.

 Policy stimulates creativity and innovation across sectors, as also

facilitates a stable, transparent and service-oriented IPR administration in
the country.

 It will Increase awareness which will help in building an atmosphere

where creativity and innovation are encouraged, leading to a generation
of protectable IP that can be commercialized.

 Bringing the Copyright Act and the Semiconductor Integrated Circuits

Layout-Design Act under DIPP would benefit industry and individuals.

 Commercial importance (of IPRs) will be better affected when it is under

one roof due to better administrative convergence

 The aim is to create awareness about social, economic and cultural

benefits of IPRs among all sections of society.

Drawbacks:

 The IPR Policy states “India shall remain committed to the Doha
Declaration on World Trade Organisation (WTO) TRIPS (Trade-Related
 IPR Agreement) and Public Health”. There was, however, a bit of
apprehension that mention of Doha Declaration and flexibility would
mean there would be attempts to find loopholes in TRIPS in order to
favour pharmaceutical companies.

 The government needs to come up with funding and programmes to

ensure access to medicine for all, otherwise, any change in the legislative
framework would hurt not only the generic industry but the people
of India.

 The policy is silent on the issue of traditional knowledge and the informal
creativity/innovations based on it.

 Lack of evidence to show that the modern utility model and trade secret
laws are useful to promote informal innovations.

 It envisages large government funding for protecting and promoting

foreign IP in India even though it stated that the primary obligation of
protecting IP rights was on the IP Moreover, the reference to State
legislations in the context of copyright protection showed how the
balance in the policy was tilted in favour of IP holders against society.

 Few experts feel that the National IPR policy lacks specifics and won’t be
enough to foster innovation.

 It assumes that more IP translates to more innovation! It fails to

understand that IP is not an end in itself but a mere means to an end.

 The policy advocates that all knowledge should be converted to IP

 Corporates also have recognised that IP does not work well in certain
technology sectors, for which a free flow of open knowledge is
more suitable.

 Experts are also skeptical of the policy is applied to the informal

economy in rural areas.The reason is that rural economy and creativity is
not understood Superimposing a formal IP regime in rural areas may do
more harm than good.

 Lastly, criminalising violation of the Indian Cinematograph Act is

disproportionate and too harsh

 IP wrongs are essentially civil wrongs and should not be criminalised.

Achievements under new IPR policy

 Improvement in GII Ranking: India’s rank in the Global Innovation Index

(GII) issued by WIPO has improved from 81st in 2015 to 48th place in
2020.

 Increase in Patent and trademark Filings: Patent filings have increased by

nearly 7% in the first 8 months of 2018-19 vis-à-vis the corresponding
period of 2017-18. Trademark filings have increased by nearly 28% in
this duration.

 Strengthening of institutional mechanism regarding IP protection and

promotion.

 Clearing Backlog/ Reducing Pendency in IP applications: Augmentation

of technical manpower by the government, has resulted in a drastic
reduction in pendency in IP applications.

 Automatic issuance of electronically generated patent and

trademark certificates has also been introduced.

 IP Process Re-engineering Patent Rules, 2003have been amended to

streamline processes and make them more user friendly. Revamped Trade
Marks Rules have been notified in 2017.

 Creating IPR Awareness: IPR Awareness programs have been conducted

in academic institutions, including rural schools through satellite
communication, and for industry, police, customs and judiciary.

 Technology and Innovation Support Centres (TISCs): In conjunction with

WIPO, TISCs have been established in various institutions across
different states.

Way Forward and Conclusion:

 IPRs policy would go a long way to encourage the Indian industry not
only to innovate but also to protect and enforce their innovations but still,
certain areas require further scrutinies like the principle of knowledge
sharing and knowledge access. The success of India’s flagship programs
– Make in India and Startup India – depends on the boost of the
innovation ecosystem with better IPR safeguarding.
  At the same time, there is some concern about the enlargement of the
protection to the objects which fall in the public domain.

 Better enforcement of the policy would help in attracting more foreign

investment into the country.

 It appears that the approach of the policy towards copyrights and

trademarks is to serve the needs of foreign companies. Faster granting of
rights and strong enforcement will encourage them more

 One great thing about the policy is the way it has addressed digital piracy,
indicating stricter steps for addressing the issue.

Module:-2 Patent Law

Meaning of patent

A patent is an exclusive right granted by the Government to the inventor to

exclude others to use, make and sell an invention is a specific period of time. A
patent is also available for improvement in their previous Invention. The main
motto to enact patent law is to encourage inventors to contribute more in their
field by awarding them exclusive rights for their inventions. In modern terms,
the patent is usually referred to as the right granted to an inventor for his
Invention of any new, useful, non-obvious process, machine, article of
manufacture, or composition of matter. The word “patent” is referred from a
Latin term “patere” which means “to lay open,” i.e. to make available for public
inspection. There are three basic tests for any invention to be patentable:

 Firstly, the invention must be novel, meaning thereby that the Invention
must not be in existence.

 Secondly, the Invention must be non- obvious, i.e. the Invention must be
a significant improvement to the previous one; mere change in
technology will not give the right of the patent to the inventor.

 Thirdly, the invention must be useful in a bonafide manner, meaning

thereby that the Invention must not be solely used in any illegal work and
is useful to the world in a bonafide manner.

An invention considered as new if, on the date of filing the application, any
such invention is not known to the public in any form, i.e. oral, writing, or any
other form. Anything shall not be termed as inventive if such a thing is already
known to the public domain. The patent has a limited term of 20 years, which is
counted from the date of filing of the patent application. A patent is a territorial
right. Thus it can only be applied in the country where it has been granted. A
patent is a territorial right. Thus it can only be applied in the country where it
has been granted. Therefore, any legal action against infringement or
infringement of patent rights can only be taken in that country. To obtain patent
protection in different countries, each country must apply for a patent. The
Patent Cooperation Treaty (PCT) provides a way to file an international patent
application in which a patent can be filed through a single patent application in
a large number of countries. However, the PCT of a patent remains
discretionary of the individual patent office only after the application is filed.

Under the Indian patent law, a patent can be obtained only for an invention
which is new and useful. The invention must relate to the machine, article or
substance produced by a manufacturer, or the process of manufacture of an
article. A patent may also be obtained for innovation of an article or of a process
of manufacture. In respect to medicine or drug and certain classes of chemicals,
no patent is granted for the substance itself even if it is new, but the process of
manufacturing and substance is patentable. The application for a patent must be
true and the first inventor or the person who has derived title from him, the right
to apply for a patent being assignable.
Some inventions cannot be patented. In the European Patent Convention (EPC)
law there is the list of non-patentable subject-matter which includes methods of
medical treatment or diagnosis, and new plant or animal varieties. Further
information on such fields can be obtained from a patent attorney. Nor many
patents be granted for inventions whose exploitation would be contrary to
public order or morality (obvious examples being land-mines or letter-
bombs).The following are not regarded as inventions, discoveries, innovations,
scientific theories and mathematical methods, aesthetic creations, such as art or
literature works or art of writing, schemes, rules and methods for performing
mental acts, playing games or doing business, presentations of information,
computer software.

History of Patent

The first step of the patent in India was Act VI of 1856. The main objective of
the legislation was to encourage the respective inventions of new and useful
manufactures and to induce inventors to reveal their inventions and make
available for public. The Act was repealed by Act IX of 1857 as it had been
enacted without the approval of the British Crown. Fresh legislation was
enacted for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of
1859. This legislation undergoes specific modifications of the previous
legislation, namely, grant of exclusive privileges to useful inventions only, an
extension of priority period from 6 months to 12 months. The Act excluded
importers from the definition of an inventor. The Act was then amended in
1872, 1883 and 1888.

The Indian Patent and Design Act, 1911 repealed all previous acts. The Patents
Act 1970, along with the Patent Rules 1972, came into force on 20 April 1972,
replacing the Indian Patent and Design Act 1911. The Patent Act is basically
based on the recommendations of the report Justice Ann. The Ayyangar
Committee headed by Rajagopala Iyengar. One of the recommendations was the
allowance of process patents in relation to inventions related to drugs, drugs,
food and chemicals. Again The Patents Act, 1970 was amended by the Patents
(Amendment) Act, 2005 regarding extending product patents in all areas of
technology including food, medicine, chemicals and microorganisms. Following
the amendment, provisions relating to exclusive marketing rights (EMR) have
been repealed, and a provision has been introduced to enable the grant of
compulsory licenses. Provisions related to pre-grant and anti-post protests have
also been introduced.

Nature of Patent Law:

* Incentivizing Innovation: Patent law aims to incentivize innovation by

granting inventors exclusive rights to their inventions. This exclusivity allows
inventors to profit from their inventions, encouraging them to invest time,
effort, and resources into developing new technologies.

* Disclosure of Inventions: In exchange for the exclusive rights granted by a

patent, inventors are required to disclose their inventions to the public. This
disclosure contributes to the advancement of knowledge and technology by
allowing others to learn from and build upon existing innovations.

* Balancing Interests: Patent law seeks to balance the interests of inventors,

who seek to protect and profit from their inventions, and the public, which
benefits from the disclosure of new technologies. This balance is achieved by
granting inventors exclusive rights for a limited period, after which their
inventions enter the public domain.

Definition of Patent Law:

* A patent is a legal right granted by the government to an inventor, giving them

the exclusive right to exploit their invention for a limited period, usually 20
years from the filing date of the patent application.
* Patents protect inventions that are new, involve an inventive step (non-
obvious), and are capable of industrial application.

* Patent law sets out the requirements for obtaining a patent, the rights granted
to patent holders, and the procedures for enforcing and challenging patents.

Scope of Patent Law:

* Types of Inventions: Patent law covers a wide range of inventions, including

products, processes, machines, compositions of matter, and improvements
thereof. This broad scope allows inventors to protect various types of
innovations, from new products to innovative manufacturing processes.

* Territorial Scope: Patents are territorial in nature, meaning that a patent

granted in one country does not provide protection in another country. Inventors
seeking international protection for their inventions must file separate patent
applications in each country where they seek protection.

* Limitations: While patents grant inventors exclusive rights to their

inventions, these rights are not absolute. Patent law includes limitations, such as
allowing others to use patented inventions for research and experimental
purposes and providing for compulsory licensing in certain circumstances.

Product patent vs process patent

The Indian Patents Act, 1970 provides for two types of patents, they are process
and product patents. Let’s discuss each of these types.

Product patent
As the name suggests, this type of patent protects the product. It offers the
inventor higher protection for his invention by decreasing the level of
competition of the same product. On the other hand, a process patent protects
the manufacturing process of a product but not the product. The product patent
maximises the level of monopoly and minimizes the competition. So, we can
conclude that a product patent has the following features that eventually
benefits the inventor or the patent owner:

1. It provides a higher level of monopoly rights to the inventor of the

patent owner.

2. Such a grant prevents others from manufacturing the same product

using the same process or a different process.

3. Since the end product is given protection, the level of protection is

considered higher in comparison with process patents.

Process patent

In this type, patent protection is granted only to a particular process used in

manufacturing a product but not the end product. A process patent is often
considered to provide limited protection. The reason is, it does not bar or
prevent others from manufacturing or creating the same product by using a
distinct process. Hence, it is possible that there are multiple process patents
granted for a single product. This eventually reduces the monopoly that the
inventor enjoys, thereby increasing the level of competition.

How are product and process patents different from each other?

Product
Sr.No Basis Process Patent
Patent

1 Definition Patent Process patent

protection is protection is
provided to the provided to
‘End Result’ or only the
‘the product’. process, and
not the
 resulting ‘End
Product’.

Once
protection is Competition
2 Competition
granted, less shall remain
competition

Inventors do
not enjoy a
monopoly
since other
A higher level
persons can
of monopoly is
3 Monopoly still
enjoyed by the
manufacture
inventor
the same
product using a
different
process.

Product Patents Process Patents

were have been
introduced as recognised in
part of the India ever
4 Implementation
Patents since the
(Amendment) Indian Patent
Act, 2005. Act, 1970 was
enforced.
 Example The altered The patent will
DNA will be be provided to
provided the process
protection and involved in
5 not just the altering the
process DNA as
involved. recognised by
the Indian
Patents Act.

Take of developed and developing countries on product and process patents

When it comes to product vs process patents, developed countries and

developing countries have been shown to possess varied opinions. Whereas
developed countries recognise the importance of product patents as complete
protection, developing countries have not yet recognised the importance of
product patents. This dichotomy has led to hindrance in product protection on a
global level as both product and process protection gives protection to patents at
different levels.
Since India is a part of WTO, it has agreed to bound itself and to comply with
the TRIPS Agreement which came into effect in the year 1999. India adopted
the concept of product patent through the 2005 Amendment of the Indian
Patents Act.

This Amendment made in 2005 brought two important sections in the Indian
Patents Act, namely, Section 2 and 3. Even the definition of ‘Patents’ under
Section 2(j) of the Act changed to an invention means a new product or process
involving an inventive step and capable of industrial applications.

WTO’s stand on product and process patents

During the Uruguay Round of Talks, the World Trade Organization (WTO)
codified an agreement that intended to create and recognise an equitable system
for international trade. It was felt that it was the need of the hour to protect
products exported of intangible assets through strong and powerful IP Laws.
This led to the TRIPS Agreement which required the ratified countries to
comply with terms in order to meet global standards and to resolve hindrances
to IP protection that were caused at the global level. One of the requirements
specified under the TRIPS Agreement was that all countries that ratified the
agreement must follow the Product Patent Regime.
In short, we can say that the TRIPS and WTO intended that the countries shift
from process to product patents which would maximise the monopoly right over
the patent and reduce the competition in the market.

Analysis of product vs process patents

Evidently, a strict divergence appears to exist between product and process

patents regimes. Developed countries are inclined towards the product patent
system while the developing country prefers the process patent system. Since
the process patent is granted for a particular process and not for the product
itself, any other person can produce the same product using a different process
by simply modifying the parameters used. This would enable multiple
producers to produce the same product. It is a disadvantage for the inventor
because the multiplicity of producers in the market shall give him less
protection for his patented right and eventually, he wouldn’t have the monopoly
and this will give rise to competition in the market.

However, a process patent is a benefit to the consumer of such a product

because the customer can get alternative options and can opt for a product that
has all the specifications available at an affordable price. The non-existence of
monopoly over a product even pressurises the inventor to market the product at
a lower cost which makes it cost-effective to the consumer of such product.
In the case of a product patent, the exclusive right is given to the original
inventor of a product. Once this type of patent is granted, no other person can
make, use or manufacture the same product. Since there would be a monopoly
over the product, the inventor would stand to benefit since he can market the
product at the price he desires. However, it would be a disadvantage for the
consumer since the price of such a product would be high and the consumer
who has no other alternative option will now be forced to buy the product at the
rate decided by the inventor as his exclusive right.

Patentable and Non-Patentable Product

Inventions that are patentable in India include new products or processes with
an inventive step and industrial application. They must not fall under non-
patentable categories outlined in sections 3 and 4 of the Patent Act. Not
patentable are frivolous or contrary to natural laws, immoral or harmful
inventions, discoveries of scientific principles, and more. Inventions related to
atomic energy are also excluded from patentability.

An invention relating either to a product or process that is new, involving an

inventive step and capable of industrial application can be patented.

Provided the invention is not falling under the categories of inventions that are
non- patentable under section 3 and 4 of the Patent Act.

Here is how an invention is defined in the patent act 1970:

 Section 2(1)(j) “invention” means a new product or process involving an

inventive step and capable of industrial application;

 Section 2(1)(ja) “inventive step” means a feature of an invention that

involves technical advance as compared to the existing knowledge or
having economic significance or both and that makes the invention not
obvious to a person skilled in the art

 Section2(1)(ac) capable of industrial application”, in relation to an

invention, means that the invention is capable of being made or used in an
industry;

 Section 2(1)(l) “new invention” means any invention or technology

which has not been anticipated by publication in any document or used in
the country or elsewhere in the world before the date of filing of patent
application with complete specification, i.e., the subject matter has not
fallen in public domain or that it does not form part of the state of the art;

Patentable subject matter in India

Invention must

 relates to a process or a product or both

 be new (Novel)
 involves an inventive step
 be capable of industrial application
 not fall under Section 3 and 4

Patentability requirements of an invention

 Newness or novelty
 Inventive step or non-obviousness requirement
 Capable of Industrial application
 Enabling

What we can learn from it:

If your innovative idea is a product or a process that has novelty, has an

inventive step, and is capable of the industrial application then the invention
said to be a patentable invention.

Now let’s look at each patentability criteria one by one so that we can see if our
innovative idea satisfies them and whether we should proceed with the patent
application.

Newness or novelty requirement

Sections 2(1)(l) and 2(1)(j) of the Patents Act highlight the difference between a
new invention and an invention. A ‘new invention’ is defined as:
any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date
of filing of a patent application with complete specification, i.e., the subject
matter has not fallen in the public domain or that it does not form part of the
state of the art.

An invention is said to be novel if all elements of a claim of the invention are

not anticipated by a single prior art that is published, or used or known to the
public.

Refer our section on “working with patent agent or attorney” on patent drafting
for understanding importance of claim and the role they play in patent.

Inventive step or non-obviousness

Now let’s talk about the inventive step, also known as the non-obviousness test
for your innovative idea.

An inventive step is said to be present in your invention when it has a technical

advance as compared to the existing knowledge (that is state of the art of your
field of the invention) or it has economic significance or you invention has both
such that it makes your invention non-obvious to a person skilled in the art.

So, we need to identify a feature of our invention that is either technically

advance or it is economically significant or both, when it is compared to state of
the art or existing knowledge such that our invention becomes non-obvious to a
person skilled in the art.

Technical advance means some feature of the invention is having advancement

which is technical in nature as compared to the existing knowledge.

A person skilled in the art is a person who has average skills from your domain.
For example, if your invention is related to a mechanical device, the person
skilled in the art would be from a mechanical background. If there are multiple
technologies used in the invention then a person skilled in the art is assumed to
have all the knowledge (that is available and known to the public) from the
technologies involved. This is to assess the inventiveness of the invention.
The idea here is our invention should not be obvious to a person skilled in the
art (that is an average person from a background of the field of the invention).

In other words, considering the state of the art (things are already known to the
public) and assuming the person skilled in the art does not have any knowledge
about our invention, if that person skilled in the art was asked to solve the
problem (that our invention solves), then our invention should not come as a
natural suggestion by that person skilled in the art. Which ultimately means
invention should not be obvious. This is in essence known as the non-
obviousness test.

Few approches to achieve Inventive step

few approches to achieve Inventive step are:

 Inventions is solveting a long-standing technical problem which is tried

to be solved by prior arts but could not.
 If invention is showing unexpected technical effect of a new combination
of known elements
 The digree of difficulty to a person to combine known prior arts to arrive
at solution, etc..
 The “problem/solution” approach is usually used for evaluating inventive
step, wherein the solution presented by the patent application is checked
if it is obvious to a person skilled in the art.

And one of the ways to qualify for the non-obviousness test of patentability is
mentioning and proving to the examiner that our invention is solving a long-
standing problem in the industry. Pointing out that the problem existed for a
long time and there was a need to solve the problem, also mentioning existing
prior arts and patent references who tried before but could not solve up to a
certain extent (stating problems with the prior arts in the background of the
invention while drafting patent) and since the problem has not solved till now it
ultimately means the solution to the problem that is our invention was Not
obvious.

Now, this is not your job as an inventor to do all this, in fact, this is the
responsibility of a patent agent or patent attorney working on your invention.
an experienced patent professional would be asking you for the required details
and technicality of your invention and using such information while drafting
patent application for your invention which gives a very good chance for your
patent application to stand through the examination stage till the grant of patent.

Industrial application or utility

Section2(1)(ac) capable of industrial application”, in relation to an invention,

means that the invention is capable of being made or used in an industry;

Industrial application means invention is capable of being made or used in any

kind of industry. This is also known as usefulness, a patented invention should
be able to be produced on a large scale that is it could be created, used and
repeated.

Now if you observe the word in the definition is Capable of industrial

application, which means it need not be mass-produced right now, but has the
capability of industrial application in the future. In general, this patentability
requirement of usefulness or industrial application is not much of a problem to
prove.

Who can apply for a patent in India?

An application for a Patent for an invention may be made by any of the

following persons either alone or jointly with any other person:

 The true and first inventor

 True and first inventor‘s assignee

 The legal representative of the deceased true and first inventor or his/her
assignee

What inventions are Not Patentable in India?

What is not Patentable?

 Inventions falling within the scope of Sec. (3) of Patents Act, 1970.

 Inventions falling within the scope of Sec. (1) of Sub-sec. 20 of

Atomic Energy Act, 1962

The following are not inventions as per Section 3 of the patent act

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;
c. the mere discovery of a scientific principle or the formulation of an
abstract theory or discovery of any living thing or non-living
substance 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 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. (omitted)
h. a method of agriculture or horticulture;
i. 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.
j. 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;
 k. a mathematical or business method or a computer program per se
or algorithms;
l. a literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and
television productions;
m. a mere scheme or rule or method of performing mental act or
method of playing the game;
n. a presentation of information;
o. the topography of integrated circuits;
p. an invention which in effect, is traditional knowledge or which is
an aggregation or duplication of known properties of a traditionally
known component or components.

And as per Section 4 of the patent act Inventions relating to atomic energy not
patentable.

Patentability criteria
Every invention has to pass various tests and fall under the category of
inventions that can be patented in India. The 3 main tests are novelty, non-
obviousness and utility. There are certain requirements that need to be fulfilled
in order to get a patent for an invention.

Requirements or principles of Patent Law

To get a product patented, it has to fulfil the following requirements, which also
serve as the principles of patent law in India. These are:

 An invention must be new.

 It must involve an inventive step.

 Capable of being used in industries i.e. industrial application.

  It must not fall into the category of exceptions or subjects that are not
patentable.

The following criteria determine what can be patented in India:

Novelty or newness

The invention must be new and not similar to any other inventions or existing
products. According to Section 2(l) of the Patents (Amendment) Act, 2005 ‘new
invention’ means an invention that has not been anticipated by prior publication
and does not fall into the public domain. There must be no prior publication of
the invention. However, a mere discovery does not amount to an invention. The
two criteria for granting patents, i.e., novelty and utility, were recognized as
important in the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal
Industries (1979). It was observed in the case of Gopal Glass Works Ltd. v.
Assistant Controller of Patents (2005), that for an invention to be patented it
must be new and original. Novelty in itself is not a complete criterion. The
product or invention must be sufficiently original as well.

Non-obviousness or inventive step

According to Section 2(1)(j) of the Indian Patents Act, 1970, any product or
process that involves an inventive step and is capable of being used in the
industry is called an invention. This definition makes it clear that the invention
must have an inventive step and it must not be known to any skilled person in
that particular field. Section 2(1) (ja) of the Act defines ‘inventive step’. The
concept of inventive step was introduced in India in the case of Bishwanath
Prasad Radhey Shyam v. Hindustan Metal Industries (1979). It also reiterated
the four tests of obviousness. These are:

 A skilled person must identify the inventive step in the form of prior
use, art or knowledge.

 He must be able to tell the difference between the subject matter and
the invention.

 Consideration must be given to observing the differences.

 There must be a degree of invention.

Usefulness or utility
This is another important criterion for granting patents. An invention must be
useful and have an industrial application besides being new and non-obvious. In
the case of Cipla Ltd. v. F Hoffmann-La Roche Ltd. (2015), the Court observed
that according to the definitions of ‘invention’ and ‘capable of industrial
application’ under the Act, an invention must have a commercial use so that it
can be utilized in the industries. In the case of Indian Vacuum Brake Co. Ltd.
E.S. Luard (1925), the Court observed that the term ‘utility’ has not been used
in an abstract sense in the Act. In order to qualify for a patent, an invention must
have some utility. Mere usefulness is not enough.

Patent claims

What is a patent claim

A patent claim is said to be the heart of a patent application. It defines the

boundary and subject matter of the patent that is sought to be protected. The
claim describes the elements or aspects of the invention that the patentee can
prevent others from creating, using, or selling against his or her permission.

A claim cannot be too extensive since the applicant cannot get a patent for
something that their invention cannot achieve. An applicant does not want the
claim to be too limited since they do not want to lose complete protection for
their invention.

To make a successful application or patent claim, it is important to conduct a

detailed patent search. It helps to understand the similarities and differences
between other patent applications and their own inventions.

Importance of a patent claim

As discussed above, a patent claim is an essential part of the patent application.
It states the exclusive rights after the grant of patent and tells all other third
parties what is or not permissible as far as invention is concerned.

In a patent registration application, a patent claim from a legal standpoint is

used to specify the extent of a patent’s legal rights once the patent has been
issued. Each patent specification must contain one or more patent claims that
define the scope of the invention for which protection is sought.

Generally, patent claims are given at the end of a patent application. As per
Section 10(4)(c) of the Patents Act, 1970 every specification must end with a
claim or claims that explains the scope of the invention that needs to be
protected.

In addition to extensive explanations, diagrams, flow charts, or graphical

representations of the invention would further enhance and support the claims
stated in an application.

Essential parts of patent claims

A patent claim comprises three parts and they are as follows:

Preamble

It is the initial part of a patent claim and states the category of the invention,
like, an apparatus, article, composition, method, or process There are various
kinds of categories like device, process, method, composition, apparatus, or
article. While patent claim drafting one should keep two things in mind:

 To maintain consistency in the title of the invention, for instance, the

process to make medicine.

 The preamble must have the main objective of the invention for which
it is patented, for instance, the cure of a disease.

Transitional phrases
Transitional phrases refer to the phrases that connect the preamble of a claim to
the components mentioned in the claim (which explains the functioning of an
invention). In other words, transitional phrases connect the prologue to the
invention’s parts.

The terms ‘comprising’ and ‘consisting of’ are two of the most prevalent
transitional phrases.

 The word ‘comprising’ is seen as a broad and open-ended term,

 Whereas ‘consisting of’ is regarded as a closed phrase since it restricts

the scope of the claim to the components specifically mentioned.

The body

It provides a detailed description of the claims. Also, it attempts to interlink and

describe the relationship between the components of the invention. It must not
simply enumerate the various components of the invention. Instead, the body
must seek to establish the link between the invention’s numerous components.

Tips to draft a patent claim

1. The claim must be specific and not general, unclear, speculative, or

hypothetical.

2. The description must back up the claims (fairly based on the

description).

3. Each assertion should be a single phrase that is well-written.

4. A full specification’s claim(s) must pertain to a single invention or a

series of innovations connected together to constitute a single
inventive concept, and they must be clear, short, and reasonably based
on the content disclosed in the specification.

5. Each assertion should be specific and should not be repeated.

6. Only claims are granted rights, not any matter mentioned in the entire
specification.

7. Claims determine the bounds of legal protection and serve as a barrier

to innovation.
Types of patent claims
A patent claim can be of following types:

Dependent and Independent claims

A dependent claim refers to a claim that elaborate the features or limitations of

the invention. The scope of a dependent claim is more specific and may include
secondary characteristics of the invention.

An independent claim is a claim that stands alone and contains all of the
restrictions required to define an invention. In simple words, the basic
characteristics of an invention are covered by independent claims. It might be
followed by further claims that specify distinct components of an invention.

Mean plus function claim

The mean plus function claim explains the purpose of a particular feature of the
invention. We can state the element in a claim in the form of steps to perform a
function in a mean-plus-function claim. Further, the claims are wide enough to
include all of the materials or structures described in the application.

It is also known as a “step plus function” claim and is typically used in

combination with an independent claim if the specifications for the invention
enable the use of mean plus function language. Thus, a mean plus function
claim aims to specify the functions provided by the invention’s structures or
components.

Composition claim

When a chemical innovation is being patented, a composition claim is usually

included. It is like a device claim, describing the chemical ingredients utilized to
construct a method or a substance.
Method claim

These claims are intended to patent a unique approach or procedure that

provides us with the desired or ideal outcome. Methods of analysis, methods of
preparation, methods of treatment, and so on are examples of frequent patent
claims.

Usually, transitional phrases like “comprising” or “comprising the steps” are

used to explain method claims.

Apparatus claim

It explains a device or a network of systems found in the invention. In short, this

claim outlines the invention’s components. An apparatus claim, unlike a mean
plus function claim, does not address the functioning or processes of the
invention. Rather, it defines the equipment or device from which the invention
is made.

Other special claims

Beauregard claim

A Beauregard claim is commonly used in patents for claims relating to software

and software-related technologies. Several instructions that a computer
programme may process are included in the preamble of a Beauregard claim.

Furthermore, these claims are primarily concerned with establishing the

operation of the program rather than the composition of the software.
Jepson claim

The preamble of a Jepson claim describes a statement pertaining to the prior art,
which is followed by claims that represent an improvement over the prior art. In
brief, it elaborates on the point of the uniqueness of the invention in comparison
to previous art in a specific arena. Jepson claims are most common under US
patent law.

Overview of Patent Procedures

GRANT OF PATENT (SEC.43)

 Patent gives monopoly right over the invention.

 Patent is an intellectual property which is protected under law.

 Patent Law in India is governed by Indian Patents Act, 1970.

 Patent law grant exclusive privilege to the patent owner to own, use or
sell the method or the product for a limited period of time. (Sec.48)

OBJECT OF GRANT OF PATENT:

The main object of grant of patent is to encourage scientific research, new

technology, industrial development and innovation.
BASIC REQUIREMENTS:

Before filing an application for grant of patent the following points should be
considered:-

a. The subject matter of patent should be new.

b. It should involve inventive steps.

c. The invention must be capable of being used in an industry.

d. Patent is granted to True & First Inventor.

e. It should not come under section 3 & 4 of the Act.

PROCEDURE FOR GRANT OF PATENT:

1. Filing (Sec.6) :-

 Patent application is to be filed in Indian Patent office.

  It can be provisional or complete.

 In case of provisional application, the complete application must be filed

within 12 months from filing date.

2. Publication (Sec.11 A) :

 Indian Patent Office is require to publish the patent application after 18

months.

 From the date of publication, the inventor started enjoying provisional

rights & priviledges.

 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.

3. Examination (Sec.12):

 Application for patent, where request has been made by the applicant or
by any other interested person, will be taken up for examination.
  After examination a First Examination Report is prepared.

 This report states the objection/requirement.

 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).

 If all the objections are not complied with within the period of 12 months,
the application shall be deemed to have been abandoned.

GRANT OF PATENT (SEC.43) :-

 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.

 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 re-filed

as it is already laid open for public inspection.

 However, application withdrawn before the publication can be re-filed

provided it is not opened to public otherwise.

DR. SNEHLATA C. GUPTE V. UNION OF INDIA & ORS

 The Issue raised as to the Actual Date Of Grant Of A Patent.

 There was a time gap between the grant of a patent and the issue of the
patent certificate.

 The court held that the date of the grant of a patent is the date on which
the controller passes an order to that effect on the file i.e. on the day in
which the Controller makes a decision to grant a patent.
  The issue of a certificate at a later date is then nothing more than a mere
formality.

WHAT CONSTITUTE INFRINGEMENT OF PATENT?

 Patent gives exclusive right to the patent holder.

 Patent infringement means the violation of exclusive right of

patentee/patent holder.

 If any person exercises exclusive rights of patent holder without authority

or permission, he is liable for patent infringement.

 Permission is granted in the from of license.

POINTS TO REMEMBER:-

 . Patent infringement in Indian is described under sections 104 to 114 of

the Indian Patents Act, 1970.

 . Patent infringement is violation of exclusive rights granted to the patent

holder under section 46.
  The period of limitation for filing a suit for patent infringement is 3 years
from the date of infringement.

The following acts constitute infringement:-

a. Manufacture the patent invention

b. Market or Sell

c. Use

d. Offer for sell

e. Import

During the term of patent.

 Infringement of patent can be granted after publication of patent

application.

 Section 104 states that a suit for patent infringement can be filed only in a
District Court or High Court.
  Section 104 A states that - The burden of proving the non- infringement
lies on defendant.

ACTS THAT DOES NOT CONSTITUTE INFRINGEMENT:

Section 107A states the following acts does not constitute an infringement of
patent:-

1. Make, use, sell, import the patent invention for Research & Development
purpose.

2. Importation of patented invention by any authorized person or government

for its own use.

RELIEF: SECTION 108

The court may grant following relief in patent infringement suit:-

1. Injunction

2. damages

3. Accounts of profit
4. The court can further order to seize, forfeit or destroy the infringing goods.

BAYER CORPORATION V. UNION OF INDIA

The case is related to topic of Compulsory License.

Section 84 of the Act states that:

After 3 years from the date of grant of patent a person can apply for compulsory
license.

For getting compulsory license three conditions should be fulfilled:-

o The reasonable requirement of public has not been satisfied.

o The patented invention is not available to public at reasonable

price.

o The invention is not worked in India.

The court held that medicine has to be made available to every patient at
reasonable cost.

The petitioner was required to pay royalty to patent holder against compulsory
license.
DIMMINACO A.G VS. CONTROLLER OF PATENTS DESIGN:

 A vaccine was invented.

 . After examination u/s 12 of the Indian Patents Act, 1970 it was reported
that vaccine is not an invention u/s 2 (j).

 The court held that the process for preparation of vaccine was new, novel
and include inventive steps.

 If the end product is a new article, it is patentable.