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MODULE 4 WTO PATENT RULES

INTRODUCTION
The progress and well-being of humanity depends on its capacity to create and invent new
products, processes, and services. Can we imagine a day without a smart phone, computer,
Television, automobiles -Two wheeler, car, or bus. No, we would not be able to wake-up on
time, easily connect with people, work efficiently or perhaps even get to work. All these were
once created and got Patent Right. Therefore, protecting IP literally keeps our daily lives
functioning.
Discussion of the high sounding phrase, viz., 'intellectual property' has been going on for quite
sometime. It has come to centre stage with the decision of the U.S. administration to name our
country under Special 301 with effect from April 30, 1993. It is useful to know the nature of
intellectual properties before discussing provisions of the patents Act, as the Act deals with
patents which constitute a major component of such properties.

What is Intellectual Property?

Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic
works; designs; and symbols, names and images used in commerce.

Intellectual property (IP) is a category of property that includes intangible creations of the human
intellect.

Intellectual property (I.P. or IP) is a type of property encompassing the products of original
human thought.

IP is protected in law by, for example, patents, copyright and trademarks, which enable people to
earn recognition or financial benefit from what they invent or create. By striking the right
balance between the interests of innovators and the wider public interest, the IP system aims to
foster an environment in which creativity and innovation can flourish.

MEANING OF INTELLECTUAL PROPERTY RIGHTS (IPR)

Intellectual property is the creation of human intellect. It is created by incorporating information
in tangible objects capable of multiplying in an unlimited number of times at different locations
anywhere in the world. The property basically lies in the concept, idea, thought and later in the
actual product, work or process.
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
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rights granted to the inventor to protect their invention or manufacturer to protect their product.
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 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. IPR confer an exclusive right on the
inventor/manufacturer. Some cases, the inventor may rent or lease the invention or product to
some others who operate. So, operator who makes full use of it's invention/product for a limited
period of time. IPR prohibit others from copying and using the IP for commercial purposes
without the prior consent of the IP rights holder. IP plays an important role in the modern
economy by protecting the invention. Therefore, in the present hyper competitive market,
industries should develop innovative policies, management style, processes, products and so on
for survival in the market. Currently, the pharmaceutical industry is the industry inventing
products.
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The definition of intellectual property rights is any and all rights associated with intangible assets
owned by a person or company and protected against use without consent. Intangible assets refer
to non-physical property, including right of ownership in intellectual property.

Examples of intellectual property rights include:

 Patents
 Domain names
 Industrial design
 Confidential information
 Inventions
 Moral rights
 Database rights
 Works of authorship
 Service marks
 Logos
 Trademarks
 Design rights
 Business or trade names
 Commercial secrets
 Computer software

Intellectual property is divided into two categories:

 Industrial Property, which includes: inventions (patents), trademarks, industrial designs and
models and geographic indications of source.
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 Copyright, which includes: literary and artistic works, namely novels, poems, plays, films,
musicals, cartoons, paintings, photographs, statues and architectural designs.

Related Rights is a term in copyright law, used to include the rights of performers in their
performances, the rights of producers of phonograms in their recordings and the rights of
broadcasting organizations in the radio and television programs they air.

What is a Trademark?
A trademark is a sign that individualizes the goods or services of a given enterprise and
distinguishes them from those of competitors. To fall under law protection, a trademark must be
distinctive, and not deceptive, illegal or immoral.
What is a Geographical Indication?
A geographical indication is basically a notice stating that a given product originates in a given
geographical area.

What is an Industrial Design or Model?

It is the aesthetics and ergonomics of a product. It consists of three-dimensional elements, such
as the creation of the product’s shape, or two- dimensional ones, such as graphics, patterns and
colors.

What is a Patent?
Patent is an exclusive right granted by law to an inventor or assignee to prevent others from
commercially benefiting from his/her patented invention without permission, for a limited period
of time in exchange for detailed public disclosure of patented invention.

What is a Trade Name?

A trade name or business name is a name that uniquely distinguishes a business from others.

What is a Trade Secret?

A trade secret is any information of commercial value concerning production or sales operations
which is not generally known. The owner of a trade secret must take reasonable measures to
maintain its confidentiality.
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What is an Integrated Circuit?

A product, in its final form or intermediate form, in which the elements, or at least one of which
is an active element, and whereby the interconnections are integrally formed in and/or on a piece
of material, which is intended to perform an electronic function.

What is a Copyright?
Copyright is a form of IPR concerned with protecting works of human intellect. The domain of
copyright is literary and artistic works, might that be writings, musicals and works of fine arts,
such as paintings and sculptures, as well as technology-based works such as computer programs
and electronic databases.

What is a Related Right?

Related Rights or Neighboring Rights are rights that in certain respects resemble copyright. The
purpose of related rights is to protect the legal interests of certain individuals, namely
performers, producers and broadcasters, and to help them deliver their message to the public.

What is Unfair Competition?

Unfair competition is any act of competition contrary to honest practices in industrial or
commercial matters.

Objective of Intellectual Property

The World Intellectual Property Organization (WIPO) is a global leader in promoting IP
protections and creative activity. WIPO was signed into law in 1967 in Stockholm, although its
origins date back to the 1880s. Both the 1883 Paris Convention and the 1886 Berne Convention
addressed copyright and industrial property, placing them under Swiss supervision.

Scope of Intellectual Property Rights

The scope of intellectual property rights covers:
• Databases
• Designs
• Geographical indication
• Artistic works
• Industrial design
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• Literary works
• Models
• Neighboring rights
• Patents
• Performances
• Plant production rights
• Plant variety
• Scientific discoveries
• Semi-conductor products
• Trade names
• Trade secrets
• Trademarks
• Typographies
• Unfair competition

Intellectual property is usually divided into categories: Copyright and Industrial Property.
However, for our purpose intellectual properties include trade marks, patents, copyrights and
designs. The present chapter is denoted to detailed discussion on patents law.

Types of Intellectual Property Rights

Patents, Copyrights, Trademarks, Trade secrets, Geographical Identification (GI Tag) are main
Types of IPRS:
1. Patents: WIPO defines a patent is an exclusive right granted for an invention, which is a
product or a process that provides, in general, a new way of doing something, or offers a new
technical solution to a problem. A government authority confers a right or title for a set period,
especially the sole right to exclude others from making, using, or selling an invention. Best
examples are Telephone (Alexander Graham Bell in 1876); The Lightbulb (Thomas Alva Edison
in 1878); Computer, Commercially, successful computer (Steve Wozniak and patented by Apple
Computers Inc in 1977); Bluetooth (Jaap Haartsen in 1994). Detailed discussion is given after
the types of IPRs.
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2. Copyrights: Copyright (or author's right) is a legal used to describe the rights that creators
have over their literary and artistic works. In other words, copyright the exclusive and assignable
legal right, given to the originator for a fixed number of years, to print, publish, perform, film, or
record literary, artistic, or musical material. Works covered by copyright range from books,
music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps,
and technical drawings. You might have come across the phrase 'All Rights Reserved' in real life.
For example, while surfing online material, buying a book, watching a movie, buying an Audio
or Video DVD. Copyright is given to protect the contents of the book, movie, or DVD, and it
indicates that the copyright is held by the publisher, and no one can copy or use the material in
any form without their consent. The Indian Copyright Act protects the creator's work by law
until 60 years after their death.
3. Trademarks: WIPO defines trademark is a sign capable of distinguishing the goods or
services of one enterprise from those of other enterprises. In other words, trademark is a word or
a combination of words, letters, and numerals can perfectly constitute a trademark. But,
trademarks may also consist of drawings, symbols, three-dimensional features such as the shape
and packaging of goods, non-visible signs such as sounds or fragrances, or colour shades used as
distinguishing features - the possibilities are almost limitless. Trademark is representative of a
brand/company's standing to consumers - an assurance of a certain standard and quality. IP
protection is vital for trademarks because companies invest a lot of time and money to develop
brands. The last thing they want is some imposter selling products or services using their
trademarks, deceiving consumers and leading to loss of money and reputation.

Trademarks can include names, logos and designs used in packaging or the products themselves.
For example, 7O'CLOCK for shaving razors (Proprietor: Gillette U.K. Ltd., England); BISLERI
(Acqua Minerals Ltd.,); GLAXO (Glaxo India Ltd.,); TELCO (Tata Engineering and
Locomotive Co. Ltd.,); AMUL (Kaira District Co-operative Milk Producers Union Ltd.,);
TOYOTA (M/s Toyota Motors Corporation); MOTHER DAIRY (Mother Dairy Fruit &
Vegetable Pvt. Ltd.,); ULTRATECH (M/s UltraTech Cement Limited). The words in capitals are
Trademarks and in brackets is the proprietor towards whom right is granted.

A trademark registration will confer an exclusive right to the use of the registered trademark and
can be exclusively used by its owner, or licensed to another party for use in return for payment.
At the national/regional level, trademark protection can be obtained through registration, by
filing an application for registration with the national/regional trademark office.

4. Trade Secrets: Trade secret refers to any confidential business information which provides an
enterprise a competitive edge and is unknown to others may be protected as a trade secret. In
general, to qualify as a trade secret, the information must be:
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(i) Commercially valuable,

(ii) known only to a limited group of persons, and (iii) be subject to reasonable steps taken by the
rightful holder of the information to keep it secret, including the use of confidentiality
agreements for business partners and employees.

There are different types of trade secrets. Trade secrets encompass:

(i) technical information, such as information concerning manufacturing processes,
pharmaceutical test data, designs and drawings of computer programs, and
(ii) (ii) commercial information, such as distribution methods, list of suppliers and
clients, and advertising strategies. A trade secret may be also made up of a
combination of elements, each of which by itself is in the public domain, but where
the combination, which is kept secret, provides a competitive advantage. Other
examples of information that may be protected by trade secrets include financial
information, formulas and recipes and source codes.

The best example of trade secret is Coca-Cola formula for making Coca-Cola. The most closely
guarded and best-kept secret in the food and drinks industry, the Coca-Cola formula is a complex
blend of natural flavours. The officials said that they have protected the special taste of Coca-
Cola for more than 130 years. Only The Coca-Cola Company knows how to make Coca-Cola.
That is way, when we buy one of our drinks, we can be sure we are getting the same delicious
and refreshing experience time and time again!

The unauthorized acquisition use or disclosure of such secret information in a manner contrary to
honest commercial practices by others is regarded as an unfair practice and a violation of the
trade secret protection.

5. Geographical Indication: A geographical indication (GI) is a sign used on products that have
a specific geographical origin and possess qualities or a reputation that are due to that origin. In
order to function as a GI, a sign must identify a product as originating in a given place. In
addition, the qualities, characteristics or reputation of the product should be essentially due to the
place of origin. Since the qualities depend on the geographical place of production, there is a
clear link between the product and its original place of production. GI ensure that products from
other areas do not misuse this indicator.

Geographical indications are typically used for agricultural products, foodstuffs, wine and spirit
drinks, handicrafts, and industrial products. For instance, Basmati rice has been registered under
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the Department of Commerce in India as a product with a Geographical Indication. This tag is
given only to this variety of rice grown in seven states in the foothills of the Himalayas.

For example, Mihidana, West Bengal (GI tag in 2017); Sitabhog from West Bengal resembles
vermicelli (GI tag in 2017); Silao Khaja of Bihar (GI tag in 20148); Rosogulla, Bengali (GI tag
in 2019); Goan Khaje Goa (GI tag in 2020); Kavilapatti Kadalai Mittai, Kovilpatti in Tamil Nadu
(GI tag in 2021). According to a report in The Times of India, Karnataka has the highest number
of GI tag products in the country. Of the 42 products that have been given the GI tag in the state,
18 belong to Mysure alone.

There are four main ways to protect a geographical indication: (i) so-called suigeneris systems
(i.e., special regimes of protection); (ii) using collective or certification marks; (iii) methods
focusing on business practices, including administrative product approval schemes; and (iv)
through unfair competition laws.

INDIAN PATENT ACT 1970

Indian Patent Law is defined by various provisions of the Patents Act, 1970. Under this law,
patent rights are granted for inventions covering a new and inventive process, product or an
article of manufacture that are able to satisfy the patent eligibility requirements of having
novelty, inventive steps, and are capable of industrial application.

 The history of Patent law in India starts from 1911 when the Indian Patents and Designs
Act, 1911 was enacted.
 The Patents Act, 1970 is the legislation that till date governs patents in India. It first came
into force in 1972.
 The Office of the Controller General of Patents, Designs and Trade Marks or CGPDTM
is the body responsible for the Indian Patent Act.
 The Patent Office has its headquarters in Calcutta and has branches in New Delhi,
Chennai and Mumbai. The office of the CGPDTM is based in Mumbai. Nagpur hosts the
office of the Patent Information System and also the National Institute for Intellectual
Property Management.
 The Controller General supervises the Act’s administration and also offers advice to the
government on related matters.
 The Patents Act has been repeatedly amended in 1999, 2002, 2005, 2006 respectively.
These amendments were required to make the Patents Act TRIPS compliant. TRIPS
stands for Trade-Related Aspects of Intellectual Property Rights.
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 The major amendment in the Patent Act was in 2005, when product patents were
extended to all fields of technology like food, drugs, chemicals and microorganisms. The
Rules under Patent Act were also amended in 2012, 2013, 2014.

PROCEDURE TO GET PATENT FOR INVENTIONS & NON-INVENTIONS

What Are Inventions?

The Act provides for the definition of the invention, which is now compliant with the provisions
of TRIPS. The criteria for patentability of an invention are novelty, inventive step and industrial
applicability.

Section 2(1)(j) of the Patent Act, 2005, defines the "invention" as a new product or as process
involving an inventive step and capable of industrial application.

Under the Act "New invention" is defined under section 2(1)(l) of the Patents Act

"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.

What Are Not Inventions?

Section 3 of the Act, deals with non patentable inventions.

a. Inventions which are frivolous or contrary to well established natural laws.

For example: inventions relating to perpetual motion alleged to be giving output without
any input is not patentable as it is contrary to natural law. Merely making in one piece,
articles, previously made in two or more pieces is frivolous. Mere usefulness is not
sufficient (Indian Vacuum Brake co. Ltd vs. Laurd (AUR 1962 CAK 152).

b. Inventions whose primary or intended use or commercial exploitation could be

contrary to public order or morality (such as something against accepted norms of a
culture in a society), or which causes serious prejudice to human, animal or plant life or
health or to the environment.

For example terminator technology which involves inserting a gene sequence in a seed
to stop germination or growing recombinant plants leading to disappearance of
butterflies.
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c. The mere discovery of a scientific principle or the formulation of an abstract theory

or discovery of any living thing or non-living substances occurring in nature. However
isolation of living thing or non-living substances is patentable as it involves human
technical intervention.
d. 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 mere discovery of any new
property, or new use of a known substance, or mere use of known process, machine, or
apparatus unless such known process results in a new product or employs at least one
new reactant.

Explanation to Section 3 (d): "Salts, esters, ethers, polymorphs, metabolites, pure form,
particle size, isomers, mixtures of isomers, complexes, combinations, and other
derivatives of known substance shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy.

It may be seen from section 3(d) that new use of a known substance is not permissible. It
means that claims for second medical use are not allowed in India. Further, derivatives of
known substances are considered to be the same substance unless they "differ
significantly in properties with regard to efficacy".

The term "efficacy" under section 3 (d) has been held vague, as it does not indicate the
kind of efficacy required under the provision. It is also ambiguous because it is unclear
whether the phrase "enhancement of known efficacy" is the same as the phrase "technical
advance" under section 2 (1), (ja).

However, the explanation provided to section 3 (d) does not rule out the grant of patent to
derivatives, complexes, combinations, isomers and so on, if enhancement of its efficacy
as a consequence of its properties can be shown.

e. Substances obtained by mere admixture such as physical admixture are not patentable
under the Act.

However, compositions consisting of combination preparations comprising of two or

more known active ingredients are patentable if "synergism" or super additive effect is
shown clearly, for example pharmaceutical compositions or any other chemical
compositions

f. The mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way.

h. Methods of agriculture or horticulture.

For example a method of producing a new form of a known plant even if it

involved a modification of the conditions under which natural phenomena would
pursue their inevitable course is not patentable. (N.V. Philips
Gloeiammpenfabrieken’s Application 71 RFC 192).
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i. Processes for medical, surgical, curative, prophylactic, diagnostic, therapeutic, or

other treatment of human beings or animals or plants that would render them free
of disease or to increase their economic value.

In United Kingdom, a method for treating an old animal with an enzyme two
hours prior to butchering was allowed to be patented as the treatment increased
the economic value of the animal by making the meat soft (Swift Application RPC
37, 1962). Such a process would not be patentable under the Indian Patent system.

The words ‘diagnostic & therapeutic’ has to be read as diagnosis of diseases in

human beings and animals. Accordingly, method of screening antibodies for a
specific activity is permissible.

j. Plants and animals in whole or any part thereof other than microorganisms but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals. For example clones and new
variety of plants are not patentable. But process/method of preparing genetically
modified organisms is patentable subject matter.
k. Computer program per se, a mathematical method or a business method or
algorithms.
l. Literary, dramatic, musical or artistic work or any other aesthetic creations
including cinematographic works and television productions are not patentable as
they are covered under the copyrights, design and entertainment laws.
m. Scheme/rule/method of performing a mental act or method of playing a game.
n. Presentation of information.

Unfortunately neither the Act nor the Rules defines a mathematical method, or a
business method or a computer program per se or algorithm. Under such
circumstances, one has to rely on the practices built up under Articles 52(1), 52(2)
and 52(3) of the EPC, where similar provisions corresponding to the Indian Act
under section 3(k), 3(m), and 3(n) exists.

A program producing technical effect or program having technical character is

permissible in EPO as it is not program per se. Accordingly, software related
inventions may be patentable if accompanied by a novel and non-obvious
technical effect which adds to the art of technology.

o. Topography of integrated circuits.

p. An invention falling within the scope of traditional knowledge such as the use of
herbal medicines.

Inventions relating to atomic energy are not patentable under section 4. Such
applications are referred to the Department of Atomic Energy. The decision of the
Department of Atomic Energy is final and no appeal lies to the decisions of the
Department of Atomic Energy.
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With the amendments effected patents are now granted for inventions relating to both
product and process. The invention must relate to a machine, article or substance capable
of industrial application, or the process of manufacture of an article. A patent may also be
obtained for an improvement of an article or of a process of manufacture. Further, with
regard to medicine or drug patent is now granted for the product and process of
manufacturing the substance.

PROCEDURE TO GET PATENT

In India, a patent application can be filed, either alone or jointly, by true and first inventor or his
assignee. After filing the application for the grant of patent, a request for examination is required
to be made for examination of the application by the Indian Patent Office. After the First
Examination Report is issued, the Applicant is given an opportunity to meet the objections raised
in the report. The Applicant has to comply with the requirements within 12 months from the
issuance of the First Examination Report. If the requirements of the first examination report are
not complied with within the prescribed period of 12 months, then the application is treated to
have been abandoned by the applicant. After the removal of objections and compliance of
requirements, the patent is granted and notified in the Patent Office Journal.

Filing of Application for Grant of Patent in India by Foreigners

India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883
and the Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the aforesaid
routes for filing of application for grant of patent in India. Where an application for grant of
patent in respect of an invention in a Convention Country has been filed, then similar application
can also be filed in India for grant of patent by such applicant or the legal representative or
assignee of such person within twelve months from the date on which the basic application was
made in the Convertion Country I.e. the home country. The priority date in such a case is
considered as the date of making of the basic application.

1. Form 1 - Application for Grant of Patent

It is an application for grant of patent in India. In this form, you will have to furnish information,
such as, name and address of the inventor(s), name and address of the applicant(s), Information
corresponding to prior patent applications relating to the current invention, which you or any
authorized entity has filed and some declarations, among other information.

2. Form 2- Provisional/Complete Specification

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It is used to furnish your patent specification. The patent specification can be provisional or a
complete patent specification depending of the type of patent application (provisional or
complete) you are filing.

3. Form 3-Statement and Undertaking Under Section 8

It is used to furnish information/actions relating to patent applications filed in other countries for
the current invention. Additionally, any information relating to the rights corresponding to the
present patent application has to be furnished. It is used to undertake that you will be keeping the
patent office informed in writing the details regarding corresponding applications for patents
filed outside India.

4. Form 5-Declaration by Inventor

It is used to declare the inventors of the subject matter sought to be protected using the current
patent application.

5. Form 9-Request for Publication

If this form is not filed, then the patent specification will be published by the patent office after
18 months from the priority date (filing of the first patent application for the current subject
matter). On the other hand, by filing this form, you can generally have your patent specification
published within 1 month from filing this form. Note that the patent rights start from the date of
publication of the patent application (enforceable after grant of patent).

6. Form 18 - Request for Examination of Application for Patent

This form can be filed within 48 months from the priority date. The patent office will not
consider your patent application for examination unless this form is filed.