PATENT LAW

1. Professor Introduction
2. Course Description:

In our modern technologically-based economy, the creation and enforcement of

patent rights can make or break a business. With record numbers of patents being
issued every year, the stakes for inventors (and, indeed, their lawyers) continue to
rise, even as the patent law and its administration faces growing criticism.

This course begins with an examination of the fundamental justifications for and
creation of Indian. patent rights as well as the relationship between patent law and
other “intellectual property” concepts. We will then delve into the details of the
Indian requirements for patentability, and explore the scope of patent rights, again
considering how the policies expressed reflect the justifications for patent rights.
Then we will look at an actual patent document and analyze the different pieces of
an issued patent with a special focus on the importance of patent claims. Finally,
we will explore strategies for dealing with patent infringement.1

3. Learning Outcome:

 Explain the scope and limits of patent protection

 Analyze and apply the standards of patentability to navigate the requirements of
patent law.
 Interpret the importance and significance of specific patent claims presented in
an issued patent
 Develop strategies for addressing patent infringement

COURSE OUTLINE
1
https://www.coursera.org/learn/patents

[1]
 1. Lecture 1(5-8 minutes)
Patent- International and Indian Patent Regime
 What is Patent?
 Does Patent promote innovation?
 Difference between Patent and Trademark.
 Difference between Patent and Copyright.
 Difference between Patent and Designs.
 International Patent Regime
 Indian Patent Act,1970.
 History of Indian Patent Law.
 Salient features of Indian Patent Act,1970
 Test of Patentability

ASSESSMENT EVALUATION-A

2. Lecture 2(5-8 minutes)

Patent – Obtaining, Revocation, Opposition
 Procedure for obtaining a Patent.
 Who can be a Patent applicant?
 Where to apply?
 What is priority date?
 Unity of invention
 Types of application
 Documents required at the filing a Patent
 Prosecution stage of an application
 Pre-grant & Post-grant Opposition
 Grounds of Opposition
 Revocation of Patents

ASSESSMENT EVALUATION -B

3. Lecture 3(5-8 minutes)

Patent – Rights, Enforcement & Infringement
 Patent rights & Maintenance of Patent
 Right of Patentee
 Grant of Patents
 Right Enforcement Date
 Jurisdiction for suits relating to infringement of a Patent
 Reliefs available to a Patentee
 Burden of Proof
 Determination of Infringement
 Infringement Analysis
 Defence to Infringement

ASSESSMENT EVALUATION-C

[2]
 4. Lecture 4(5-8 minutes)
Patent- Assignment, Licensing & Appeals
 Assignment of a Patent
Case study
 Norvatis AG v Union of India
 Monsauto v. Nuziveedu
 Compulsory Licensing
 Appeal procedure

ASSESSMENT EVALUATION-D

LECTURE 1(5-8 MINUTES)

[3]
 Patent- International and Indian Patent Regime
 What is Patent?
 Does Patent promote innovation?
 Difference between Patent and Trademark.
 Difference between Patent and Copyright.
 Difference between Patent and Designs.
 International Patent Regime
 Indian Patent Act,1970.
 History of Indian Patent Law.
 Salient features of Indian Patent Act,1970
 Test of Patentability

ASSESSMENT EVALUATION-A

1. Patent application can be filed in India by

(a) True and First Inventor
(b) Assignee of the inventor
(c) Legal representative of the inventor
(d) All the above

Ans. (d)

2. Patent application contains

(a) Form-1
(b) Form-2
(c) Both (a) and (b)
(d) None

Ans. (c)

3. If you file provisional specification, the complete specification is required to be filed

within
(a) 10 months
(b) 12 months
(c) 18th months
(d) 24 months

Ans. (b)

4. Indian Patent system has

(a) Pre-grant opposition
(b) Post-grant opposition
(c) Both (a) and (b)
(d) None of the above

Ans. (c)

[4]
 5. Complete Specification contains
(a) Title of invention
(b) Description of invention
(c) Claim
(d) All the above

Ans. (d)

LECTURE 2(5-8 MINUTES)

[5]
 Patent – Obtaining, Revocation, Opposition
 Procedure for obtaining a Patent.
 Who can be a Patent applicant?
 Where to apply?
 What is priority date?
 Unity of invention
 Types of application
 Documents required at the filing a Patent
 Prosecution stage of an application
 Pre-grant & Post-grant Opposition
 Grounds of Opposition
 Revocation of Patents

ASSESSMENT EVALUATION –B

1. Pre-grant opposition can be filed by

(a) Any person
(b) Person interested
(c) Both (a) and (b)
(d) None

Ans. (a)

2. Patent can be revoked in India

(a) Yes
(b) No
(c) Yes in some cases

Ans. (c)

3. A sues B for the violation of his patent (granted on 1.1.2009 and covering a fungicide)
in a district court in India. B wishes to invalidate the patent on 1.2.2010. B can
a. File a revocation petition at the IPAB
b. File a revocation petition at the High Court
c. File a counterclaim in the District Court asking that the patent be revoked.
d. File a post grant opposition to the patent
e. All of the above

Ans. (a)

4. Can the government of India use any patented invention merely for its own use?
a. Yes

[6]
 b. Yes, it can do so, only when the President of India sanctions such use
c. Yes, it can do so, only if the government notifies its intention of using the said
patent before two months of such use
d. Yes, only after 3 years of the date of grant of the patent
e. All of the above

Ans. ()

5. A patent can be revoked

a. Anytime after its grant Only after 1 year from the date of grant
b. Only after 3 years from the date of grant
c. Only after obtaining permission from the Controller of Patents
d. All of the above

Ans. (d)

LECTURE 3(5-8 MINUTES)

[7]
 Patent – Rights, Enforcement & Infringement
 Patent rights & Maintenance of Patent
 Right of Patentee
 Grant of Patents
 Right Enforcement Date
 Jurisdiction for suits relating to infringement of a Patent
 Reliefs available to a Patentee
 Burden of Proof
 Determination of Infringement
 Infringement Analysis
 Defence to Infringement

ASSESSMENT EVALUATION-C

1. Assume that A is the first person to discover the method of making lemon juice by
combining lemon with water and sugar. A patents the method of making the juice as
also the product (juice) that is made. B is a professor and teaches his students in his
hotel management class how to make lemon juice. B then asks his students to taste the
juice so made. Does B infringe A's patent?
a. Yes
b. No, since B `s method of teaching does not fall within the scope of the A's claim.
c. No, since the Indian Patents Act provides a specific exemption in favour of B's
activity.
d. No. since the Indian Patents Act grants B a compulsory license to use the patent
and teach the students
e. None of the above

Ans. ()

2. A has a process patent covering a method of making a drug to cure baldness. B sells
the same drug in the market. If A sues B for infringement, on whom lies the burden of
proof?
a. On A
b. On B
c. On the court
d. On the Indian patent office
e. None of the above

Ans. ()

3. Patent can be infringed by

(a) Directly
(b) In-directly
(c) Both (a) and (b)
(d) None

[8]
Ans. (c)

4. Patent of addition can be filed by

(a) Inventor
(b) Patentee
(c) Both (a) and (b)
(d) None of the above

Ans. (c)

5. A is granted a patent on 1.1.2006 for a drug. It proceeds to sell the drug at a very
expensive price that is not affordable by the average Indian consumer. B infringes the
patent and is restrained by a court of law on 1.10.2008. B then files a compulsory
licensing application after 2 months, stating that A's drug is too expensive. Will B
succeed'?
a. Yes
b. No
c. Yes, provided B complies with all the formalities for applying for such license
d. Yes, provided B gets a good lawyer.
e. Yes, provided B gets permission from the Controller General of Patents

Ans. ()

LECTURE 4(5-8 MINUTES)

[9]
 Patent- Assignment, Licensing & Appeals
 Assignment of a Patent
Case study
 Norvatis AG v Union of India
 Monsauto v. Nuziveedu
 Compulsory Licensing
 Appeal procedure

ASSESSMENT EVALUATION-D

1. In which of the following cases, an appeal shall not lie to the IPAB?
a. Refusal of a patent application by the Controller under section 15
b. Decision regarding post-dating of an application under section 17
c. Decision of the Controller under section 54 regarding patent of addition
d. An application is deemed to have been abandoned under section 21

Ans. (d)

2. A person shall be appointed as a Technical Member of the Appellate Board under

Section 116 if he:
a. Has been a Controller for a minimum period of five years
b. Has been a Registered Patent Agent for a minimum period of 10 years with a
masters degree in engineering
c. Has a least one patent registered in his name
d. Has been an Advocate for a minimum period of five years

Ans. (b)

3. A statement regarding the working of a patented invention on a commercial scale in

India shall be made in:
a. Form 27
b. Form 25
c. Form 24
d. Form 23

Ans. (a)

4. A person can authorize a patent agent by making an application under:

a. Form 26
b. Form 27
c. Form 28
d. Form 29

Ans. (a)

5. Section 159 of Indian Patents Act 1970 refers to:

a. Power of Central Government to make the Patents Rules

[10]
 b. Power of Parliament to make the Patents Rules
c. Power of IPAB to make the Patents Rules
d. Both (a) and (b)

Ans. (a)

[11]