Name : Devika Hemant Nigde Deshmukh

5th year BLS LLB semester 10th

Subject : Intellectual property Rights
  Meaning of patent
 History of Patent
 What can be patented?
 Rights and obligations of the patentee
 Rights of Patentee
 Obligations of patentee

CONTENTS  Procedure of Patent 

 Grounds for opposition 
 What are the Authorities concerning patent
 Patent Infringement
 Doctrine of Equivalents And Doctrine of Colorable Variation
 Remedies for Patent Infringement
 Conclusion
  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. It is also available for improvement in their
previous invention.
 The main objective to enact patent law is to encourage inventors to
contribute more in their field by awarding them exclusive rights for
Meaning their inventions.
 In modern terms, the patent is usually referred to as the right granted to

of an inventor for his Invention of any new, useful, non-obvious process,

machine, article of manufacture, or composition of matter.

patent  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 not be in existence. 
 Secondly, the Invention must be non- obvious. 
 Thirdly, the invention must be useful in a bonafide manner.
  The first step of the patent in India was Act VI of 1856. The main
objective of the legislation was to encourage the respective

History
inventions of new and useful manufactures and to induce
inventors to reveal their inventions and make available for public.
 The Indian Patent and Design Act, 1911 repealed all previous
Of acts. The Patents Act 1970, along with the Patent Rules 1972,
came into force on 20 April 1972, replacing the Indian Patent and

patent Design Act 1911. The Patent Act is basically based on the
recommendations of the report Justice Ann. The Ayyangar
Committee headed by Raja Gopala Iyengar.
 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.
 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:
What  Patent subject

can be  Novelty
 Inventive steps or non-clarity
patented?  Capable of industrial application
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.
 Patentability

Patent eligible subject matter

Non-
obvious

Useful Novel
 Mere discovery
of scientific
principle

Frivolous
Mere
invention or
arrangement of
against natural
known devices
laws

Non patentable

Mathematical Agricultural
or business method or
method horticulture,
signature copyright work

Plants and
animals
therapeutic
treatment
  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. 

Rights  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

of 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
Patentee 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. 
  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
 Compulsory licenses: If the patent is not worked satisfactorily to meet the reasonable
Obligations 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

of without using the related patent. 

 Revocation of patent: A patent may be revoked in cases where there has been no work or

patentee
unsatisfactory result to the demand of the public in respect of the patented invention. 
 Invention for defense 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.
  Step 1: Write about inventions (idea or concept) with each and every detail.
 Step 2: It must involve a diagram, drawing and sketch explains the
Invention
 Step 3: To check whether the Invention is patentable subject or not.
 Step 4: Patent Discovery

Procedure  Step 5: File Patent Application

 Step 6: Publication of the application (the application for the patent, the
of application is published 18 months after the first filing.)The patent
application is usually published early as a one-month form request.

Patent   Step 7: Request for Examination

 Step 8: Answer the objections
 Step 9: clearance of objections
 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.
  Pre-Grant Protest: 
Section 25 (1) of the Patent Act and Rule 55 of the
Patent Rules, 2003 provide the procedure to be
Grounds followed for pre-grant opposition.

for Pre-grant opposition can be initiated by anyone after the

application is published and before the patent is granted.
opposition If a request for examination is filed to oppose the
application, the Controller considers representation only.
Pre-grant 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
Grounds 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
for 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-
opposition 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
Post-grant research in the same field with which the Invention (which is to be
opposed) is concerned.
  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

Common taken to oppose the patent.

Some major opposition grounds, common to both pre-grant and post-
Grounds grant opposition, are mentioned below:
 The Invention was published previously in India or elsewhere or was
for claimed previously in India.

opposition
 The Invention is the formation of a part of the prior public knowledge
or prior public use or traditional knowledge of any community.
 The Invention is obvious and lacks an inventive step.
 The Invention does not constitute an invention within the meaning of
the Act, or the Invention is not patentable under the Act.
 Failure to disclose information or furnishing false information relating
to foreign by the applicant.
  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
Authorities Offices in Chennai, Delhi, Mumbai and Kolkata.

concerning  Since the Controller also acts as the Registrar of Trademarks with
the Head Office of the Trade Office in Mumbai, the Controller acts as

patent 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.
  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.
 Direct patent infringement: The most common form of infringement is
Patent direct infringement, where the Invention that infringes patent claims is
Infringement 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.
 Contributory infringement is the sale of components of material that
are made for use in a patented invention and have no other
commercial use.
 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.
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.
Doctrine The doctrine of equivalents is considered as an equitable doctrine which effectively

of
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.
Equivalents A case of Ravi Kamal Bali vs Kala Tech and Ors brought forward the doctrine in
India. The plaintiff, instituted an infringement suit seeking an interim injunction
preventing Kala Tech, the defendant, from making, selling or distributing tamper
proof locks/seals as it would be the infringement of his patent. He argued that Kala
Tech's perform the same work, in substantially the same manner and gives the
same output thereby contributing to the infringement. He asked the court to apply
Doctrine of Equivalents, while considering the question of infringement of patents.
Although the interim injunction was not granted, the importance of the case lies in
that, it was the first case where the doctrine of equivalents was discussed in India.
  A colorable variation or immaterial variation amounting to
infringement is where an infringer makes slight modification in the
process or product but in fact takes in substance the essential
features of the patentee’s invention.

Doctrine  In Lektophone Corporation v. The Rola Company, 282 U.S. 168

(1930), a patent holder’s patents were of sound-reproducing

of instruments for phonographs. According to the patent application,

size and dimensions of the invention were the essence of the
patent. The patent holder claimed that a radio loud
Colorable speaker manufactured by the defendant (manufacturer) infringed
the patents. The manufacturer’s devise also had a central paper
Variation cone, but the cone was smaller than that of the patented devise
and that constituted colorable alteration. The court held that
because colorable alterations of the manufacturer’s devise, it
would not accomplish the object specified in the patent claims and
hence did not infringe upon the patent holder’s claims.
  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
Patent invention or improvement of someone else’s invention or subject
Infringement matter who owns a patent issued by the Government, without
taking the owner’s consent either by consent, license or waiver.
Remedies  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
Monetary established the value of the patent.
2. Increased damage – Up to three times,
Relief 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:
Equitabl 1. Preliminary injunction – Orders made in the initial
stage of lawsuits or lawsuits that prevent parties
e from doing an act that is in dispute (such as making a
patent product)
Relief 2. Permanent injunction – A final order of a court
which permanently ceases certain activities or takes
various other actions.
  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
Conclusion 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.