LAW TEACHING

SESSION: 2022-23

SUBJECT: PATENT LAW

TOPIC: TRIPS AGREEMENT

SUBJECT CODE: ML201-IP

SUBMITTED BY:-
SARTHAK SOLANKI
LLM (IPR) 1 YEAR
ENROLL NUMBER-20220231

INDEX
1. ACKNOWLEDGEMENT

2. INTRODUCTION

3. HISTORY OF PATENT

4. RIGHTS AND OBLIGATIONS OF PATENTEE

5. GROUNDS FOR OPPOSITION

6. AUTHORITIES CONCERNING PATENT

7. PATENT INFRINGEMENT

8. REMEDIES FOR PATENT INFRINGEMENT

9. CONCLUSION
 ACKNOWLEDGEMENT
The success and final outcome of this project required a lot of guidance and assistance from
many people and I am extremely privileged to have got this all along the completion of my
project.

Working on this topic was a very knowledgeable experience and we owe our deep thanks to sir
for allowing us to work on this interesting topic.

At the end I would like to express my deep and sincere gratitude to the above mentioned whose
guidance, encouragement and constructive criticism have contributed immensely to the evolution
of our ideas

INRODUCTION
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. 

1 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.

2 WHAT CAN BE PATENTED?

Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the
exclusions regarding what can be patented in India. There are certain criteria
which have to be fulfilled to obtain a patent in India. They are:
  Patent subject:
The most important consideration is to determine whether the Invention relates
to a patent subject matter. Sections 3 and 4 of the Patents Act list non-
patentable subject matter. Unless the Invention comes under any provision of
Section 3 or 4, it means that it consists of a subject for a patent.

 Novelty:
Innovation is an important criterion in determining the patent potential of an
invention. Under Section 2(l) of the Patent Act, a novelty or new Invention is
defined as “no invention or technology published in any document before the
date of filing of a patent application, anywhere in the country or the world”. The
complete specification, that is, the subject matter has not fallen into the public
domain or is not part of state of the art”.

Simply, the novelty requirement basically states that an invention that should
never have been published in the public domain. It must be the newest which
have no same or similar prior arts.

 Inventive steps or non-clarity:

Under Section 2(ja) of the Patents Act,  an inventive step is defined as “the
characteristic of an invention that involves technological advancement or is of
economic importance or both, as compared to existing knowledge, and
invention not obvious to a person skilled in the art.” This means that the
invention should not be obvious to a person skilled in the same field where the
invention is concerned. It should not be inventive and obvious for a person
skilled in the same field.

                Click Above
 Capable of industrial application:
Industrial applicability is defined in Section 2 (ac) of the Patents Act  as “the
invention is capable of being made or used in an industry”. This basically means
that the Invention cannot exist in the abstract. It must be capable of being
applied in any industry, which means that it must have practical utility in
respect of patent.

These are statutory criteria for the patent of an invention. In addition, other
important criteria for obtaining a patent is the disclosure of a competent patent.
A competent patent disclosure means a patent draft specification must
adequately disclose the Invention, so as to enable a person skilled in the same
field related to carrying out the Invention with undue efforts.
3 RIGHTS AND OBLIGATIONS OF THE PATENTEE

3.1RIGHTS OF PATENTEE
 Right to exploit patent: A patentee has the exclusive right to make
use, exercise, sell or distribute the patented article or substance in
India, or to use or exercise the method or process if the patent is for a
person. This right can be exercised either by the patentee himself or by
his agent or licensees. The patentee’s rights are exercisable only
during the term of the patent. 
 Right to grant license: The patentee has the discretion to transfer
rights or grant licenses or enter into some other arrangement for a
consideration. A license or an assignment must be in writing and
registered with the Controller of Patents, for it to be legitimate and
valid. The document assigning a patent is not admitted as evidence of
title of any person to a patent unless registered and this is applicable
to assignee not to the assignor. 
 Right to Surrender: A patentee has the right to surrender his patent,
but before accepting the offer of surrender, a notice of surrender is
given to persons whose name is entered in the register as having an
interest in the patent and their objections, if any, considered. The
application for surrender is also published in the Official Gazette to
enable interested persons to oppose. 
 Right to sue for infringement: The patentee has a right to institute
proceedings for infringement of the patent in a District Court having
jurisdiction to try the suit. 

3.2OBLIGATIONS OF PATENTEE
 Government use of patents: A patented invention may be used or even
acquired by the Government, for its use only; it is to be understood
that the Government may also restrict or prohibit the usage of the
patent under specific circumstances. In case of a patent in respect of
any medicine or drug, it may be imported by the Government for its
own use or for distribution in any dispensary, hospital or other medical
institution run by or on behalf of the Government. The aforesaid use
can be made without the consent of the patentee or payment of any
royalties. Apart from this, the Government may also sell the article
 manufactured by patented process on royalties or may also require a
patent on paying suitable compensation. 
 Compulsory licenses: If the patent is not worked satisfactorily to meet
the reasonable requirements of the public, at a reasonable price, the
Controller may grant compulsory licenses to any applicant to work the
patent. A compulsory license is a provision under the Indian Patent Act
which grants power to the Government to mandate a generic drug
maker to manufacture inexpensive medicine in public interest even as
a patent in the product is valid. Compulsory licenses may also be
obtained in respect of related patents where one patent cannot be
worked without using the related patent. 
 Revocation of patent: A patent may be revoked in cases where there
has been no work or unsatisfactory result to the demand of the public
in respect of the patented invention. 
 Invention for defence purposes: Such patents may be subject to
certain secrecy provisions, i.e. publication of the Invention may be
restricted or prohibited by directions of Controller. Upon continuance of
such order or prohibition of publication or communication of patented
Invention, the application is debarred for using it, and the Central
Government might use it on payment of royalties to the applicant. 
 Restored Patents: Once lapsed, a patent may be restored, provided
that few limitations are imposed on the right of the patentee. When the
infringement was made between the period of the date of infringement
and the date of the advertisement of the application for reinstatement,
the patent has no authority to take action for infringement.

4 PROCEDURE OF PATENT 
 Step 1: Write about inventions (idea or concept) with each and every
detail.
Collect all information about your Invention such as:

1. Field of Invention
2. What does the Invention describe
3. How does it work
4. Benefits of Invention
If you worked on the Invention and during the research and development
phase, you should have some call lab records which are duly signed with the
date by you and the concerned authority.
  Step 2: It must involve a diagram, drawing and sketch explains the
Invention
Drawings and drawings should be designed so that the visual work can be
better explained with the invention work. They play an important role in patent
applications.

 Step 3: To check whether the Invention is patentable subject or not.

Not all inventions can be patentable, as per the Indian Patent Act there are
some inventions which have not been declared patentable (inventions are not
patentable).

 Step 4: Patent Discovery

The next step will be to find out if your Invention meets all patent criteria as per
the Indian Patent Act-

1. The invention must be novel.

2. The Invention must be non- obvious.
3. The Invention must have industrial applications.

 Step 5: File Patent Application

If you are at a very early stage in research and development for your Invention,
then you can go for a provisional application. It offers the following benefits:

1. Filing date.
2. 12 months time for filing full specification.
3. Lesser cost.
After filing a provisional application, you secure the filing date, which is very
important in the patent world. You get 12 months to come up with the complete
specification; your patent application will be removed at the end of 12 months.

When you have completed the required documents and your research work is at
a level where you can have prototypes and experimental results to prove your
inventive move; you can file the complete specification with the patent
application.

Filing the provisional specification is an optional step if you are in the stage
where you have complete knowledge about your Invention you can go straight
to the full specification.

 Step 6: Publication of the application

Upon filing the complete specification along with the application for the patent,
the application is published 18 months after the first filing.

If you do not wish to wait until the expiration of 18 months from the filing date
to publish your patent application, an initial publication request may be made
with the prescribed fee. The patent application is usually published early as a
one-month form request.

 Step 7: Request for Examination

The patent application is scrutinized only after receiving a request for an RFE
examination. After receiving this request, the Controller gives your patent
application to a patent examiner who examines the patent application such as
the various patent eligibility criteria:

1. Patent subject
2. Newness
3. Lack of clarity
4. Inventory steps
5. Industrial application
6. By enabling
The examiner makes the first examination report of the patent application upon
a review for the above conditions. This is called patent prosecution. Everything
that happens for a patent application before the grant of a patent is usually
called patent prosecution.

The first examination report submitted to the Controller by the examiner usually
includes prior art (existing documents prior to the filing date) that are similar to
the claimed invention and is also reported to the patent applicant.

 Step 8: Answer the objections

Most patent applicants will receive some type of objections based on the
examination report. The best thing is to analyze the examination report with the
patent professional (patent agent) and react to the objections in the
examination report.

This is an opportunity for an investor to communicate his novelty over the prior
art in examination reports. Inventors and patent agents create and send a test
response that tries to prove that their Invention is indeed patentable and meets
all patent criteria.
  Step 9: clearance of objections
The Controller and the patent applicant is connected for ensuring that all
objections raised regarding the invention or application is resolved and the
inventor has a fair chance to prove his point and establish novelty and inventive
steps on other existing arts.

Upon receiving a patent application in order for grant, it is the first grant for a
patent applicant.

 Step 10: 
Once all patent requirements are met, the application will be placed for the
grant. The grant of a patent is notified in the Patent Journal, which is published
periodically.

5 GROUNDS FOR OPPOSITION 

An application for a patent may be opposed by either a prior grant or a
subsequent grant by any person on the grounds specified in s 25 (1) and 25 (2)
of the former Act. No other grounds stated in the Act can be taken to oppose
the patent. Some major opposition grounds, common to both pre-grant and
post-grant opposition, are mentioned below:

1. The Invention was published previously in India or elsewhere or was

claimed previously in India.
2. The Invention is the formation of a part of the prior public knowledge
or prior public use or traditional knowledge of any community.
3. The Invention is obvious and lacks an inventive step.
4. The Invention does not constitute an invention within the meaning of
the Act, or the Invention is not patentable under the Act.
5. Failure to disclose information or furnishing false information relating
to foreign by the applicant.
Pre-Grant Protest: Section 25 (1) of the Patent Act and Rule 55 of the Patent
Rules, 2003 provide the procedure to be followed for pre-grant opposition. Pre-
grant opposition can be initiated by anyone after the application is published
and before the patent is granted. If a request for examination is filed to oppose
the application, the Controller considers representation only. If a request for
examination has not been made by the applicant, it is possible for the opponent
as an interested person to first file a request for examination under Section
11B, and then file a pre-grant opposition.
Post-grant opposition: The procedure is followed to oppose the grant
under Section 25 (2) of the Patents Act, 1970  and Rule 55A to 70 of the Patent
Rules, 2003. A Post-grant opposition can be filed by any person interested in
any of the specific grounds before a period of one year from the date of
publication of the grant of the patent. Unlike a pre-grant protest, a pre-grant
protest must be filed by an individual and not by a person. The expression
(people interested) is defined under section 2(t) of the Patents Act,
1970 wherein a person/party is engaged, or is conducting research in the same
field with which the Invention (which is to be opposed) is concerned.

6 WHAT ARE THE AUTHORITIES CONCERNING PATENT

The Controller of Patents is considered as the principal officer responsible for
administering the patent system in India. The Controller is regarded as the
overall supervisor of the four Patent Offices in Chennai, Delhi, Mumbai and
Kolkata. Since the Controller also acts as the Registrar of Trademarks with the
Head Office of the Trade Office in Mumbai, the Controller acts as a patent from
his office in Mumbai. Officially, the patent has its head office in Kolkata
(Calcutta). Patents granted under the Patents Act and other officers of the
Patent Office discharge their functions under the direction or regulation of the
Controller.

7 PATENT INFRINGEMENT
Patent infringement is a violation which involves the unauthorized use,
production, sale, or offer of sale of the subject matter or Invention of another’s
patent. There are many different types of patents, such as utility patents,
design patents, and plant patents. The basic idea behind patent infringement is
that unauthorized parties are not allowed to use patents without the owner’s
permission.

When there is infringement of patent, the court generally compares the subject
matter covered under the patent with the used subject matter by the
“infringer”, infringement occurs when the infringer Uses patent material from in
the exact form. Patent infringement is an act of any unauthorized manufacture,
sale, or use of a patented invention. Patent infringement occurs directly or
indirectly.

Direct patent infringement: The most common form of infringement is direct

infringement, where the Invention that infringes patent claims is actually
described, or the Invention performs substantially the same function.
Indirect patent infringement: Another form of patent infringement is indirect
infringement, which is divided into two types:

 Infringement by inducement is any activity by any third party that

causes another person to infringe the patent directly. This may include
selling parts that can only be used realistically for a patented invention,
selling an invention with instructions to use in a certain method that
infringes on a method patent or licenses an invention that is covered
by the patent of another. The inducer must assist intentional
infringement, but does not require intent to infringe on the patent.
 Contributory infringement is the sale of components of material that
are made for use in a patented invention and have no other
commercial use. There is a significant overlap with indications, but
contributor violations require a high level of delay. Violations of the
seller must have direct infringement intent. To be an obligation for
indirect violations, a direct violation must also be an indirect act.

8 DOCTRINE OF EQUIVALENTS AND DOCTRINE OF COLOURABLE

VARIATION
Patent infringement generally categorized into two, i.e. literal infringement and
infringement in the doctrine of equivalents. The term “literal infringement”
means that each element heard in a claim has the same correspondence in the
alleged infringement device or process. However, even if there are no literal
violations, a claim can be infringed under the doctrine of equivalents if the
accused device or some other element of the process performs the same
function, in substantially the same way to obtain substantially the same result.
The principle of equivalence is a legal rule in most patent systems in the world
that allows a court to hold a party liable for patent infringement, even though
the infringing instrument or process does not fall within the literal scope of the
patent claim, but Still equal to the claimed Invention.

This is not an expansion of coverage of a claim permitted by the principle of

equivalence. Rather, the scope of coverage given to the patent owner is limited
by

 (i) the “prosecution history estoppel” and

 (ii) the principle of the prior art.

The analysis of infringement determines whether a claim claimed in a patent
“literally reads on the accused infringer’s instrument or process”, or covers the
allegedly infringing device in the doctrine of equivalents.

The steps in the analysis are:

 Oppose the scope of the “literal” language of claims.

 Comparing claims with the accused device or process to determine if
there is a literal violation.
 If there is no literal violation, reduce the scope of claims under the
principle of equality.
The doctrine of equivalents is considered as an equitable doctrine which
effectively expands the scope of the claims beyond their literal language to the
true scope of the inventor’s contribution to the art. However, there are
limitations in the scope of equivalents to which the patent owner is entitled.

9 REMEDIES FOR PATENT INFRINGEMENT

Patent infringement lawsuits can result in significantly higher losses than other
types of lawsuits. Some laws, such as the Patent Act, allow plaintiffs to recover
damages. Patent infringement is the illegal manufacture or usage of an
invention or improvement of someone else’s invention or subject matter who
owns a patent issued by the Government, without taking the owner’s consent
either by consent, license or waiver. Several remedies are available to patent
owners in the event of an infringement. Measures available in patent
infringement litigation may include monetary relief, equal relief and costs, and
attorneys’ fees.

Monetary Relief: Monetary relief in the form of compensatory damages is

available to prevent patent infringement:

1. Indemnity compensation – A patent owner may have lost profits for

infringement when they established the value of the patent.
2. Increased damage – Up to three times, compensation charges can be
charged in cases of will or violation of will.
3. The time period for damages – The right to damages can be claimed
only after the date when the patent was issued and only 6 years before
the infringement claim is filed.
Equitable relief: Orders are issued by the court to prevent a person from doing
anything or Act. Injections are available in two forms:
 1. Preliminary injunction – Orders made in the initial stage of lawsuits or
lawsuits that prevent parties from doing an act that is in dispute (such
as making a patent product)
2. Permanent injunction – A final order of a court which permanently
ceases certain activities or takes various other actions.

10 CONCLUSION
Patents can provide great value and increased returns to individuals and
companies on the investment made in developing new technology. Patenting
should be done with an intelligent strategy that aligns business interests to
implement the technology with a wide range of options in the search for how,
where and when to patent. As an example, with a focus on international
considerations and regulations in specific countries, it is possible for a company
to achieve significant savings and improve the rights gained using patents.