Concept of Author and Ownership under Copyright Act, 1957

Copyright is a bundle of rights given by the law to the creators of literary, dramatic, musical and
artistic works and the producers of cinematograph films and sound recordings. The rights
provided under Copyright law include the rights of reproduction of the work, communication of
the work to the public, adaptation of the work and translation of the work. At the heart of the
copyright system is the author of a creative work. The Berne Convention, establishing a union to
protect literary and artistic works, recognizes by virtue of Article 1 that the rights being protected
through copyright law are the rights of authors. Authors are the first beneficiaries of rights under
the law and provide a reference point as to how long rights over the work should exist.
Copyright protection is given for a work having originality, i.e. it should be from the author and
must have minimum degree of creativity. So it is the author who is the real creator of the work
thereby first owner of the copyright and Indian law recognizes author as the first owner of the
copyright. But by the term ‘ownership’ it means it includes not only the author but also assignee
and can even a legal entity even though not defined in the Act. In Bern convention the term
Author is not defined, instead it says the person under whose name the work is disclosed which
implies that it is not necessary that always the author should be the owner.
Ownership of Copyright in India
The provisions of acquiring copyright ownership are defined under Section 17 of the Act.
According to which, the first owner of copyright is defined as under:
Subject to the provisions of this Act, the author of a work shall be the owner of copyright therein.
Section 17 statutorily recognizes the author of the work to be the first owner of the copyright.
The author is defined under the Act for various works, which come under the law of copyright.
Section 2(d) defines author, it says "Author" means, -
(1) In relation to a literary or dramatic work, the author of the work;
(2) In relation to a music work, the composer;
(3) In relation to artistic work other than a photograph, the artist;
(4) In relation to photograph, the person taking the photograph, the artist;
(5) In relation to a cinematograph film or sound recording, the producer; and
(6) In relation to any literary, dramatic, musical or artistic work which is computer- generated,
the person who causes the work to be created.
In Ramesh Sippy v. Shaan Ranjeet Uttamsingh, the court stated that where a person financed
and took the risk of making the work and directed others to do the work for valuable
consideration, such person was the owner of copyright.
However, this provision is subject to certain exceptions.
For instance Section17 (a) provides that where a work is made by the author in the course of his
employment by the proprietor of a newspaper, magazine or a periodical under a contract of
service or apprenticeship for the purpose of publication in a newspaper, magazine or periodical,
the said proprietor, in the absence of any agreement to the contrary will be the first owner of the
copyright in the work in so far as it relates to the publication of the work in any newspaper,
magazine or similar periodical or to the publication of the work for the purpose of being so
published. Except in such cases, the author will be the first owner of the copyright in the work.
In Thomas v. Manorama, it was held that in the case of termination of the employment, the
employee is entitled to the ownership of copyright in the works created subsequently and the
former employer has no copyright over the subsequent work so created.
Section 17(b) provides that where a photograph is taken or a painting or a portrait drawn, or an
engraving or a cinematograph film made, for valuable consideration at the instance of any
person, such person, in the absence of any agreement to the contrary, shall, be the first owner of
the copyright therein.  In Chidambare v. Renga, where a person rests under an obligation to do
something, and in discharge of such obligation, he transfers a certain interest, such transfer is for
valuable consideration.
Section 17 (c) provides that in the case of work made in course of the author's employment under
a contract of service or apprenticeship, to which clause (a) or clause (b) does not apply, the
employer shall, in the absence of any agreement to the contrary, be the first owner of the
copyright therein. An author may create a work independently, or he may create a work under a
contract of service or contract for service.
Where a man employs another to do work for him under his control, so that he can direct the
time when the work shall be done the means to be adopted to bring about the end, and the
method in which the work shall be arrived on, then the contract is contract of service. If, on the
other hand, a man employs another to do certain work but leaves it to that other to decide how
that work shall be done. What step shall be taken to produce that desired effect, and then it is a
contract for service. In Beloff v. Pressdram, it was held that the true test is whether on the one
hand the employee is employed is part of business and his work is integral part of the business,
or whether his work is not integrated into the business but is only accessory to it or the work
done by him in business on his own account. In the former case it is a contract of service and in
the latter a contract for service.
Section 17(cc) provides that in case of any address or speech delivered in public, the person who
has delivered such address or speech such address or if such person delivered such address or
speech on behalf of any other person, such other person shall be the first owner of the copyright
therein notwithstanding that the person who delivers such address or speech, or, as the case may
be, the person on whose behalf such address or speech is delivered, is employed by any other
person who arranges such address or speech or on whose behalf or premises such address or
speech is delivered;
Section 17(d) provides that in the case of a government work, the government shall, in the
absence of any agreement to the contrary, be the first owner of the copyright therein;
Section 17(dd) states that in the case of a work made or first published by or under the direction
or control of any public undertaking, such public undertaking shall, in the absence of agreement
to the contrary, be the first owner of the copyright therein.
Assignment of copyright
The owner of the copyright in an existing work or the prospective owner of the copyright in a
future work may assign to any person the copyright, either wholly or partially and either
generally or subject to limitations and either for the whole term of the copyright or any part
thereof.
However, in the case of the assignment of copyright in any future work, the assignment shall
take effect only when the work comes into existence.
Where the assignee of a copyright becomes entitled to any right comprised in the copyright, the
assignee as respects the rights so assigned, and the assignor as respects the rights not assigned,
shall be treated for the purposes of this Act, as the owner of copyright and the provisions of this
Act shall have effect accordingly.
Remedies in case of Copyright Infringement

The remedies for copyright infringement are:

a) Civil
b) Criminal, and
c) Administrative
It is only the first two remedies, namely civil and criminal, which are
of any real practical importance.
CIVIL REMEDIES:
The most importance civil remedy is the grant of interlocutory injunction since most actions start
with an application for some interlocutory relief and in most cases the matter never goes beyond
the interlocutory stage. The other civil remedies include damages – actual and conversion;
rendition of accounts of profits and delivery up.
1) INTERLOCUTORY INJUCTIONS: The principles on which interlocutory injunctions should
be granted were discussed in detail in the English case of American Cyanamid v Ethicon
Ltd. (1975). After this case, it was believed that the classic requirements for the grant of interim
injunction, namely,
a) Prima facie case
b) Balance of Convenience; and
c) Irreparable injury
2) PECUNIARY REMEDIES: Under Indian law, however, there is a departure made and the
plaintiff, under sections 55 and 58, can seek recovery of all three remedies, namely (a) account
of profits (b) compensatory damages and (c) conversion damages which are assessed on the basis
of value of the article converted.
3) ANTON PILLER ORDERS: The Anton Pillar Order derives its name from a Court of Appeal
decision in Anton Pillar AG V. Manufacturing Processes [1976]. An Anton Piller Order has the
following elements:
a) An injunction restraining the defendant from dealing in the infringing goods or destroying,
them;
b) An order that the plaintiffs solicitors be permitted to enter the premises of the defendants,
search the same and take goods in their safe custody; and
c) An order that defendant be directed to disclose the names and addresses of suppliers and
customers and also to file an affidavit will a specified time giving this information.
4) MAREVA INJUNCTION:  Mareva Injunction is an order which temporarily freezes assets of
a defendant thus preventing the defendant from frustrating the judgement by disposal of such
assets.
5) NORWICH PHARMACAL ORDERS: These are orders by which information can be
discovered from third parties.
B. CRIMINAL REMEDIES:
Criminal remedies for copyright violation include:
I. Punishment through imprisonment which, under Indian law, may not be less than six months
but which may extend to three years;
II. Fines which, under Indian law, shall not be less than Rs.50.000. and which may extend to
Rs.200, 000.
III. Search and seizure of the infringing goods including plates which are defined as including
blocks, moulds, transfers, negatives, duplicating equipment or any other device used or intended
to be used for printing or reproducing copies of the work.
IV. Delivery up of infringing copies or plates to the owner of the copyright.
Fair Dealing and Permitted Used under Copyright Act, 1957
Fair dealing is a limitation and exception to the exclusive right granted by copyright law to the
author of a creative work. It permits reproduction or use of copyrighted work in a manner,
which, but for the exception carved out would have amounted to infringement of copyright. In
India the provisions of Section 52 of the Copyright Act, 1957 provide for certain acts, which
would not constitute an infringement of copyright namely fair dealing with a literary, dramatic,
musical or artistic work not being a computer program for the purposes of-
 private use, including research;
 criticism or review,
 reporting current events in any print media or
 by broadcast or in a cinematographic film or by means of photographs,
 reproduction for the purpose of a judicial proceeding or of a report of a judicial
proceeding;
 reproduction or publication of a literary, dramatic, musical or artistic work in any work
prepared by the Secretariat of a Legislature or, where the Legislature consists of two
 Houses, by the Secretariat of either House of the Legislature, exclusively for the use of
the members of that Legislature;
 the reproduction of any literary, dramatic or musical work in a certified copy made or
supplied in accordance with any law for the time being in force;
 the reading or recitation in public of any reasonable extract from a published literary or
dramatic work;
 the making of sound if made by or with the license or consent of the owner of the right in
the work
 the performance of a literary, dramatic or musical work by the staff and students, or
communication of a cinematograph film or a sound recording in the course of the
activities of an educational institution subject to the condition that the audience is limited
to such staff and students, the parents and guardian of the students and persons directly
connected with the activities of the institution.
In the Chancellor, Masters & Scholars of Universitv of Oxford v. Rameshwari Photocopy
Services, the professors imparting teaching in the Delhi School of Economics at University of
Delhi, had authorized Rameshwari Photocopy Services to prepare course packs by photocopying
the pages from the books published by the plaintiffs and after binding the same, to supply the
course packs to the students charging 50 paisa per page. The Court stated that it was to be
considered whether the inclusion of the copyrighted work in the course pack was justified by the
purpose of the course pack i.e. for instructional by the teacher to the class and this would warrant
an analysis of the course pack withreference to the objective of the course, the course content
and the list of suggested readings given by the teacher to the students. The Court further stated
that the words 'teacher' and 'pupil' would also include the plural and hence it could be teachers or
pupils. Meaning thereby. the activity of reproduction could be resorted to by teachers as well as
pupils. The phrase 'in the course of instruction', includes the entire process of education as in a
semester or the entire programme of education as in a semester.
Trademark Infringement and difference between trademark infringement and passing-off
Trademark has been defined as a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and may
include the shape of goods, their packaging, and combination of colours. The main purpose of a
trademark is to help people recognize the source of a particular good or service. The source, in
turn, helps people determine the quality. Quality is what consumers usually base their purchase
decisions on. This is why a trademark is of extreme importance in the economy. For the
consumer, a trademark reflects the source and quality of the goods or services. Once a trademark
gets registered and validated, no person other than the owner of proprietary rights of the
trademark has the exclusive authority to use the trademark in relation and vice versa.
Infringement of trademarks as per Section 29 of the Trademarks Act, 1999 
Trademark infringement in India is defined under Section 29 of the Trademarks Act, 1999.
Simply put, when an unauthorized person uses a trademark that is 'identical' or 'deceptively
similar' to a registered trademark, it is known as infringement.
Now, let us take a look at the constituent elements of Infringement of trademark:
1. Unauthorized person – this means a person who is not the owner or the licensee of the
registered trademark.
2. 'Identical' or 'Deceptively similar '– the test for determining whether marks are identical or not
is by determining whether there is a chance for a likelihood of confusion among the public. If the
consumers are likely to get confused between the two marks then there is an infringement.
3. Registered Trademark – You can only infringe a registered trademark. For an unregistered
Trademark, the common law concept of passing off will apply.
4. Goods/ Services – In order to establish infringement even the goods/ services of the infringer
must be identical with or similar to the goods that the registered Trademark represents.
Section 29 of the Trade Marks Act, l999 provides that a registered trademark is infringed when a
person not being a registered proprietor or licensee, uses in course of trade;
 A Mark which is identical to the registered trademark and there is similarity of the goods
or services covered by the trade mark in a manner causing confusion to the general
public; or
 A Mark which is similar to the registered trade mark and there is an identity or similarity
of the goods or services covered by the trade mark in a manner causing confusion to the
general public; or
 A Mark which is identical or similar to the registered trademark having reputation in
India, even if such mark is used in relation to goods or services which are not similar to
those for which the trademark is registered
 A trade name or part of trade name and such concern is dealing in the goods or services
in respect of which the trade mark is registered such application is without Authorisation
 Applies registered trademark to material intended to be used for labeling, packaging,
business paper or advertisement provided such person when he applied the mark knew or
had reasons to believe that the application of the mark was not duly authorised by the
Registered User or Licensee thereof.
 An advertising using a registered trademark and such advertising; takes unfair advantage
of and is contrary to honest practices in industrial or commercial matters; or is
detrimental to its distinctive character; or is against the reputation of the trade mark.

Case Laws- Anchor Health and Beauty Pvt. Ltd. v. Shivam India Hygienes Pvt. Ltd.- Pg
324
Prem Nath Mayer v. Registrar of trademarks- Pg 325
Passing Off
Passing off arises when an unregistered trademark is used by a person who is not the proprietor
of the said trademark in relation to the goods and services of the trademark owner. It is found on
the principle that one person should not unlawfully enrich himself at the cost of another. It is an
actionable tort in India under the common law and is mainly used to protect the goodwill
attached to the goods and services which is related to the unregistered trademark. In Durga Dutt
vs. Navaratna Pharmaceutical, the court set the distinction between passing off and
infringement suit. The action for infringement is a statutory remedy conferred on the registered
owner of a registered Trade mark and has an exclusive right to the use of the trade mark in
relation to those goods. And the passing off is available to the unregistered goods and services.

Passing off and Infringement is different in many ways. For example, infringement suit is a
statutory remedy while passing off is a common law remedy. The most important point is that
the remedy is same in both the cases but the Trademark is available to only the registered goods
and services and passing off is available to unregistered goods and services.
Since infringement suit involves only registered trademark, it involve a greater level of clarity as
compared to passing off, whereby passing off is more unclear compared to registered marks.
Moreover, there is no statutory presumption assisting unregistered marks, on its impact on
public. On the contrary, infringement of a registered trademark is assisted with statutory
presumption. In registered marks, the plaintiff is only required to prove that the mark is either
identical or deceptively similar to his in relation to his goods and services. However, in
unregistered marks, it is necessary that further to proving that the marks are identical or
deceptively similar to each other, it should also be proved whether deception or confusion
occurred in the public, and that the goodwill of the plaintiff suffered a loss.
Further, in passing off, initiating criminal proceedings are relatively tougher than registered
marks. Although damage is the fundamental of an action for passing off, but the plaintiff must
show that there has been a calculated conduct on the part of the defendant to cause confusion in
the minds of the public. A private individual cannot institute a suit for passing off even if the
defendant practices deception upon the public; unless it is proved that the defendant’s action is
likely to cause damage to the individual.
And also, benefits of filing suit under section 134 of the trademarks Act is not available under
the passing off remedy. The suit has to be initiated at the place of residence or the place where
the plaintiff works directly.
In India, combined action for passing off and infringement suit are permissible though the
principle governing them are distinctive.
Steps in the process of grant of patent
The procedure for obtaining a patent in India starts even before a patent application is filed with
the patent office in India.
Step 0 – Decision on doing it yourself or engaging a professional
Before you proceed with the patent application process, you need to decide if you will be using
the assistance of a patent professional or undertaking the patent process yourself. Considering the
number of deadlines and the impact of these deadlines, it is highly recommended that you engage
a patent professional / firm who has years of experience in the patent field.
If you decide to use the services of a professional, then make sure that you sign a Non-Disclosure
Agreement (NDA) with the patent professional / firm before disclosing the invention to them. It
is a good idea that all your disclosures with any third parties are done confidentially and you sign
NDA’s with each party.
Step 1 – Check the Patentability of the invention by performing a search for similar
technologies
Before filing a patent application in India or in any other country, the first step (optional but
recommended) in the patent registration process is to perform a detailed patentability search to
determine the chances of getting a patent. The search should ideally be performed for both patent
and non-patent references.
The advantage of a search is it provides a good idea of the merit of the invention and helps in
deciding if there are good chances of ultimately getting a patent granted. Furthermore, based on
the references (prior art) discovered during the search, you have the option of fine-tuning your
patent application to ensure that you don’t end up filing a patent for something which already
existed.
Hence, a thorough patentability search is always advised but from a patenting process point of
view is totally optional.
If you are thinking of going international with your patent application, spending time and money
on the search will be well worth every Rupee.
Step 2 – Drafting a patent application (Provisional or Complete)
Once, you have made up your mind to go forward with the patent application process, the next
step is to prepare an Indian patent application (Form 1).
Each patent application has to be mandatorily accompanied by a patent specification (Form 2).
Based on the state of the invention, you can either file a provisional patent application or a
complete patent application (also known as Non-provisional in some countries).
If the invention is still in the development mode and tests are underway, it is a good idea
to quickly file a provisional application to block the all-important filing date. Filing of the
provisional application gives you 12 months of time to test and finalize your invention and file
the complete application.
Whether filing a provisional or a complete application, extra special attention should be paid to
the patent draft included along with the application. The patent draft is your representation in
front of the patent office and the decision of the patent office on the grant of the patent will be
made based on the draft itself. Hence, not doing a patent draft properly may lead to a patent
application which doesn’t get a grant or if granted doesn’t help you stop competitors effectively.
If you are serious about protecting your technology and getting an advantage in the market, it is
highly recommended to seek qualified assistance from patent professionals, to ensure that your
interests are appropriately protected.
It is best to work with a patent agent with the expertise and experience in working and
prosecuting patent applications in your area of technology. Since it may not be very easy to find
quality patent professionals for your area of technology, you can seek free assistance from
experts at Zatalyst.com in helping you finding quality patent professionals and law firms for each
and every patent requirement you may have.
Step 3 – Filing the patent application in India
Patent filing in India can happen in the following scenarios:
 First filing in India – Once the patent application is drafted, the next step is to file the
patent application in India and secure the filing date. In case you are filing a provisional
application first, you need to file the complete application within 12 months from the
provisional filing date.
 Foreign filing decision – Further, if you are interested in protecting your invention in
foreign jurisdictions, the maximum time allowed is 12 months from your first filing date.
Based on the countries you are interested in; you can opt for filing a convention
application in Paris convention members individually in each of the countries you are
interested in protecting your invention. Alternatively, you can use the Patent Cooperation
Treaty (PCT) system to reserve your right in 140 odd member countries. Both the
systems have their pros and cons and the decision of choosing one over other changes
based on your requirement and will be the basis of another post.
 Foreign applications entering India – In another scenario where the patent application
was first filed in a foreign jurisdiction and the patent applicant is interested in filing a
patent application in India under the Paris Convention route or the PCT route, the time
limit to enter India is 12 months and 31 months respectively.
Each application for a patent which is filed with the Indian patent office needs to be
accompanied by the forms provided below:
 Form 1 – Application for grant of a patent
 Form 2 – Provisional/Complete specification)
 Form 3 – Statement and undertaking regarding foreign application under section 8 (only
required if a corresponding patent application is filed in another country)
 Form 5 – Declaration as to inventorship (only to be filed along with the complete
application)
 Form 26 – Form for authorization of a patent agent (only required if you are using a
patent agent to help you file the application)
 Form 28 – To be submitted by startup or small entity (only required if you are claiming
startup or small entity status)
 Priority documents – In case you are claiming priority from a foreign patent application
and entering India, you may be required to provide the priority document as well.
Step 4 – Publication of patent application
 When is it published? – Every patent application which is filed with the Indian patent
office is kept as a secret until the time it is published in the official patent journal. Indian
patent office will publish patent applications ordinarily after 18 months. This is an
automatic event and you need not make any request. However, if you wish to get your
 application published earlier, you can make a request for early publication (Form 9) and
your application will ordinarily be published within 1 month of the request.
 The advantage of publication – The date of publication is important as your privileges
and rights start from the date of publication, although you can’t enforce your rights by
way of any infringement proceedings until your patent is granted.
 When not published – It is also important to know that there are a few scenarios under
which a patent application may not be published and kept as a secret:
o Secrecy directions have been imposed under the patent act. Secrecy directions are
imposed if the invention falls in a category publication of which could be against
the interest of the nation.
o A complete application was not filed within 12 months from the date of filing of
the provisional application
o A request for withdrawal was made. Such a request has to be made at least 3
months prior to publication. So, for practical purposes, it is 15 months from the
date of priority in a standard patent application process.
Step 5 – Examination of the patent application
Every patent application which is filed for protection has to be substantively examined before a
patent is finally granted. The examination process is where your patent application will finally be
examined on merits of the invention as described and claimed in the patent specification.
Request for Examination
The examination process, unlike publication, doesn’t happen automatically by way of filing of
the Indian patent application. The applicant has to specifically make a request for examining
their patent application (Form 18). Only when a Request for Examination (RFE) is received, will
the application be queued for examination. So, the earlier you make the RFE request, the earlier
your application may be examined by the examiner.
If you wish to fast track your patent application even further and jump the examination queue,
you can file a request for expedited examination (Form 18A). However, an expedited
examination is only available to the applicant if the applicant is either a startup; or the applicant
chose the Indian Patent Office as the International Search Authority (ISA) or International
Preliminary Examining Authority (IPEA) during their international application (PCT
application).
On the contrary, you may sometimes not want to get your application examined early for
strategic reasons. Reasons for deferring the request could include extending the patent-pending
life, waiting for funding, etc.
Examination process (Objections by examiner & responding to objections)
Once, the Request for Examination has been filed, it will eventually land up on the desk of the
examiner from the relevant technology background for examination. During the examination
process, the examiner will scrutinize the application to ensure that the application is in
accordance with the patent act and rules. The examiner also performs a search to understand
similar technologies to ascertain if the invention would satisfy the patentability criteria.
Based on the review of the application, the examiner will issue an Examination Report to the
applicant, stating the grounds for objections. The first such examination report is called the First
Examination Report (FER).
Once, the FER is issued, the patent applicant needs to successfully overcome the objections to
receive a patent grant. The whole process may involve responding to examination reports,
appearing for hearing, etc. The total time needed to put an application in order for the grant is 6
months (earlier 12 months) from the date on which the FER is issued to the applicant. However,
this 6 month period can be extended for a period of 3 months by the applicant by filing a request
for an extension of time (Form 4).
Step 6 – Final decision on grant of patent
Once, the patent application overcomes all the objections, the patent will be granted and
published in the patent gazette.
Step 7 – Renewal
After the patent has been granted, it has to be renewed every year by paying the renewal fee. A
patent in India can be renewed for a maximum period of 20 years from the patent filing date.
Patentability Criteria in India
Sections 3 and 4 of the Indian Patents Act, 1970 specifically state exclusions to what can be
patented in India. Our previous blog post has comprehensively explained what cannot be
patented in India. That brings us to the question; what can be patented in India?
At the outset, it has to be mentioned that the answer to this is not set in stone. There isn't any
definitive list as to what can be patented. There are, however, certain criteria that are required to
be met in order to make an invention patentable. The patentability of an invention is determined
by its ability to meet the criteria.
Even before delving into the criteria, it is important to understand the and invention meaning and
patented meaning. According to Section 2(j) of the Indian Patents Act, 1970 an invention means
"a new product or process involving an inventive step and capable of industrial application.",
such invention protected under the patent law refers to patented.
The following criteria determine what can be patented in India:
1. Patentable subject matter:
 The foremost consideration is to determine whether the invention relates to a patentable subject-
matter. Sections 3 and 4 of the Patents Act list out non-patentable subject matter. As long as the
invention does not fall under any provision of Sections 3 or 4, it means it has patentable subject
matter (subject to the satisfaction of the other criteria).
2. Novelty:
Novelty is an important criterion in determining patentability of an invention. novelty or new
invention is defined under Section 2(l) of the Patents Act 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 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".
Simply put, the novelty requirement basically states that an invention should never have been
published in the public domain. It must be new with no same or similar prior arts.
3. Inventive step or Non-Obviousness:
Inventive step is defined under Section 2(ja) of the Patents Act as "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". This
means that the invention must not be obvious to a person skilled in the same field as the
invention relates to. It must be inventive and not obvious to a person skilled in the same field.
4. Capable of Industrial Application:
Industrial applicability is defined under Section 2(ac) of the Patents Act as "the invention is
capable of being made or used in an industry". This essentially means that the invention cannot
exist in abstract. It must be capable of being applied in any industry, which means that the
invention must have practical utility in order to be patentable.
These are the statutory criterion for the patentability of an invention. Apart from this, another
important criterion for getting a patent is disclosure of an enabling patent. An enabling patent
disclosure means a patent draftspecification must disclose the invention sufficiently, so as to
enable a person skilled in the same field as the invention relates to, to carry out the invention
without undue effort. If the patent specification does not disclose an enabling patent then a patent
will most definitely not be granted.
Bishwanath Prasad Radhey Shyam v Hindustan Metal Industries the Supreme Court (SC)
addressed Improvements and combination patents, where the importance of assessing inventive
step in these cases was outlined. The SC held that in order for subject matter to constitute an
inventive step, the alleged invention should be more than a mere workshop improvement.
Furthermore, in the case of an improvement patent, the improvement must itself constitute an
inventive step. If the alleged invention constitutes known elements or a combination of known
elements, the result must be new, or result in an article substantially cheaper or better than what
existed.
 Opposition to grant of Patents
A patent grants the patent holder complete monopoly over his invention. The patent holder has
exclusive rights over the patented invention. As such, it is very important to ensure that patents
are granted only for inventions that are novel and inventive. To this end, the Indian Patent
System envisages a provision whereby a third-party can oppose the grant of a patent. Section 25
of the Patents Act, 1970, provides for two kinds of opposition; Pre-grant opposition and post-
grant Opposition.
Grounds for filing a Patent Opposition (Pre-grant or Post-Grant)
 Wrongfully obtained invention
 Invention has been published before the priority date of claim.
 Same invention has been published or filed prior to the Applicant’s filing.
 Prior public knowledge or public use in India
 Obviousness and lack of inventive step
 The subject-matter is not an invention or not patentable under the Act.
 Insufficient and unclear of description of the invention
 Non-disclosure of information as per the requirement or providing materially false
information by an applicant
 Convention patent application not filed within 12 months of filing the first application in
a convention country
 Nondisclosure/ wrong mention of source of biological material
 Invention anticipated with regard to traditional knowledge of any local or indigenous
community, in India or elsewhere
Proceedings Under Pre-Grant Opposition: Any person can file a pre-grant opposition by way
of a representation to the Controller against the grant of patent based on any of the grounds
mentioned above. The representation is required to include a statement, a request for hearing and
evidence (if any) in support of the representation. A representation is required to be filed within a
period of 6 months from the date of publication of the patent application under section 11A. The
controller considers the representation only after a request for examination for that patent
application has been filed. After considering the representation, the controller notifies the
applicant with a copy of the representation. The applicant is required to reply to the notification
with his statement and evidence (if any) in support of his application within three months from
the date of the notice. The Controller then based on the statement and evidence filed by the
applicant either refuses the grant of the patent or asks the applicant for amendment of the
complete specification to his satisfaction. Finally, after considering the representation and
response by the applicant the controller proceeds further by either rejecting the representation
and granting the patent with amendments to the complete specification or accepting the
representation and refusing the grant of the patent within one month from the completion of
above proceedings.
In India, the opposition proceedings take place before the controller general of patents. The
major advantage of initiating opposition proceedings with the India patent office is that the
whole process is strictly time bound, therefore interested parties do not have to go through
lengthy and tedious procedures, which may also involve considerable time till the matter is
decided. The cost incurred in opposition is also minimal compared to litigation costs.
Proceedings Under Post-Grant Opposition
The statutory provision for the post-grant opposition is Section 25(2) of the Patents Act.
According to this section, a post-grant opposition can be filed after the grant of patent
but before  the expiry of one year from the date of publication of the grant of patent. A post-grant
opposition can be filed only by a person interested. A person interested in defined under Section
2(1) (t) of the Patents Act, as” including a person engaged in, or in promoting, research in the
same filed as that to which the invention relates”.
According to Rule 55A of the Patents Rules, the notice for post-grant opposition must be sent to
the Controller in duplicate in Form 7. After receiving the notice of opposition the
Controller must  constitute an Opposition Board consisting of three members (Rule 56). This
Opposition Board will conduct an examination of the notice of opposition. The Opposition Board
must give its recommendation to the Controller within three months from the date on which the
documents were forwarded to it. After receiving the recommendation of the Board and after
giving the patentee and the opponent an opportunity for being heard, the Controller will pass an
order to maintain, revoke or amend the patent.
Rights and Obligations of Patentee