UNIT-2

IPR in India
Course Title: Intellectual Property Rights (IPR)
Course Credits: 2
Central University of Jammu
Topics to be Covered:

 2.1: The Patent Act of India 1911 and the Indian Patent Act of 1970
 2.2: IP rights in India and progressive harmonization with international
Standards; Patent Amendment Act (2005)
 2.3: Case Studies giving examples of patents and technology transfer,
access and affordability of medicine in India
 2.4: International organizations and Treaties (pre-TRIPs era):Paris
Convention, Berne Convention, Rome Convention, WIPO, GATT, FAO,
UNCTAD
 2.1
The Patent Act of India 1911
 In the Indian Sub-continent, the Patents and Designs Act was enacted in 1911
mainly on the basis of the principles laid down in the Statute of Monopolies,
Patents, Design and Trade Marks Act, 1883 and Patents and Designs Act, 1907.
The Patents and Designs Act, 1911, is the main law in force in Bangladesh on
patents and designs. Since enactment of the law, the concepts of patents and
designs have undergone enormous development through decisions of courts
around the world.
 The law covers subjects of copyright, enforcement of intellectual property
rights, industrial designs, intellectual property regulatory body and patents
(inventions).
 The formal of the act is divided among the following parts.
➢ Part I: Patents (Sections 3 to 42),
➢ Part II: Designs (Sections 43 to 54),
➢ Part III: General (Sections 55 to 81).
 Patents (Sections 3 to 42):
▪ Application for and Grant of Patent
▪ Section 3: Application
▪ Section 4: Specifications (4A-Time for leaving complete specification & 4B-
Provisional Protection)
▪ Section 5: proceedings upon application
▪ Section 6: Advertisement on acceptance of application
▪ Section 7: Effect of acceptance of application
▪ Section 8: Repealed
▪ Section 9: Opposition to grant of patent
▪ Section 10: Grant and sealing of patent
▪ Section 11: Date of patent
▪ Section 12: Effect, extent and form of patent
▪ Section 13: Fraudulent applications for patents (13A-Single patent for cognate
inventions)
Patents (Sections 3 to 42):
Term of Patent
Section 14: Term of patent
Section 15: Extension of term of patent (Section 15A- patents of addition)
Section 16: Restoration of lapsed patent
Amendment of Application or Specification
Section 17: Amendment of application or specification of specification by
Registrar
Section 18: Amendment of specification by the court
Section 19: Restriction on recovery of damages
Register of Patents
Section 20: Register of Patents

Government
Section 21: Patent to bind Government (21A-Assignment of patent to the
Government)
 Patents (Sections 3 to 42):
Compulsory Licenses and Revocation
Section 22: Compulsory licenses and revocation
Section 23: Revocation of patents worked outside Bangladesh (23A-
Operation of order under section 22 or section 23)
Section 24: Power of Registrar to revoke surrendered patent
Section 25: Revocation of patent on public grounds
Section 26: Petition for revocation of patent
Section 27: Notice of proceedings to persons interested
Section 28: Framing issue for trial before other Courts
Section 29: Suits for infringement of patents
Section 30: Exemption of innocent infringer from liability for damages
Section 31: Order for inspection, etc, insuit
Section 32: Certificate of validity questioned and costs thereon
Section 33: Transmission of decrees and orders to the Registrar
Section 34: Omitted
Section 35: Hearing with assessor (35A- Grant of relief in respect of particular
claims)
Section 36: Remedy in case of groundless threats of legal proceedings.
Patents (Sections 3 to 42):
 Miscellaneous:
 Section 37: Grant of patents to two or more persons
 Section 38: Public use or knowledge of invention (38A-
Disconformity)
 Section 39: Loss or Destruction of Patent
 Section 40: Provisions as to exhibitions and readings
before learned societies
 Section 41: Models to be furnished to the National
Museum of Bangladesh
 Section 42: Foreign vessels in Bangladesh waters
Part II: Designs (Sections 43 to 54)

Registration of Designs
Section 43: Application for registration of designs
Section 44: Registration of designs in new classes
Section 45: Certificate of registration
Section 46: Register of Designs
Part II: Designs (Sections 43 to 54)
 Copyright in Registered Designs
 Section 47: Copyright on registration
 Section 48: Requirements before delivery on sale
 Section 49: Effect of disclosure on copyright
 Section 50: Inspection of registered designs
 Section 51: Information as to existence of copyright (51A- Cancellation of
registration, 51B- Registration of designs to bind the Government

Industrial and International Exhibitions

Section 52: Provisions as to exhibitions

Legal Proceedings
Section 53: Piracy of registered design
Section 54: Application of certain provisions of the Act as to Patents and
Designs
 Part III: General (Sections 55 to 81)
Registration of Designs (Department of Patents, Designs and Trade Marks and
Proceedings thereat)
 Section 55: Appointments of state Registrar, etc
 Section 56: omitted
Fees
 Section 57: Fees
Provisions as to Registers and other Documents in the Department of Patents, Designs and
Trade Marks
 Section 58: Notice of trust not to be entered in registers
 Section 59: Inspection of and extracts from registers (59A- Information relating to
patents)
 Section 60: Privilege of reports of Registrar
 Section 61: Prohibition of publication of specification, drawings, etc, where
application abandoned, etc
 Section 62: Power for Registrar to correct clerical errors
 Section 63: Entry of assignments and transmissions in registers
 Section 64: Rectification of register
Part III: General (Sections 55 to 81)

Powers and Duties of Registrar

 Section 65: Power of Registrar in proceedings under Act
 Section 66: Publication of patented inventions
 Section 67: Exercise of discretionary power by Registrar
 Section 68: Power of Registrar to take directions of the
Government
 Section 69: Refusal to grant patent, etc, in certain cases
 Section 70: Appeals to the Government
Part III: General (Sections 55 to 81)
Evidence, etc
 Section 70A: Evidence before the Registrar
 Section 71: Certificate of Registrar to be evidence (71A- Evidence of
documents in Department of Patents, Designs and Trade Marks)
 Section 72: Transmission of copies of specifications, etc, and inspection
thereof
 Section 73: Applications and notices by post
 Section 74: Declaration by infant, lunatic, etc (74A- Security for costs)

Agency
Section 75: Subscription and verification of certain documents
Section 76: Agency
Section 77: Power for Government to make rules
Part III: General (Sections 55 to 81)

Offences
 Section 78: Wrongful use of words Department of
Patents, Designs and Trade Marks (78A Reciprocal
arrangements with the United Kingdom and other parts
of His Majesty’s dominions)
 Section 79: Savings for prerogative
 Section 80: [Repealed]
 Section 81: [Repealed]

For Further Studies: Patents and Designs Act, 1911

(Act No. II of 1911). (portal.gov.bd)
Indian Patent Act of 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.
For more information: https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_31_1_patent-act-1970-
11march2015.pdf
 2.2
IP rights in India
 Introduction, IP and IPR
 Intellectual Property (IP) - is a property created by a person / persons using
his / her own intellect for ultimate use in commerce and which is not
available in the public domain.
 Examples of IP are, an invention relating to a product or process, a new
design of an article, a literary or artistic work and a trademark (a word, a
symbol and / or a logo, etc.),
 Intellectual Property Right (IPR) is the statutory right granted by the
Government, to applicant(s) or owner(s) of an intellectual property (IP) to
exclude others from exploiting the IP commercially for a given period of
time, in lieu of the discloser of his/her IP in an IPR application.
Importance of IPRs in general

Why should an IP be protected?

 IP is an assets and can be exploited by the owner for commercial gains
 IP owner can stop others from manufacturing and selling products and
services which are dully protected by the IP owner
 IP owner can sell and/or license the IP for commercial gains
 IP can be used to establish the goodwill and brand value in the market.
 Inventor, creator or author of an IP can mention about the IP in his/her
resumes and thus show their competence
 IPR certificate establishes legal and valid ownership about an intellectual
property
 Kinds of IPRs:
IPRs are protected in accordance with the provisions of the corresponding legislations
of a country. In India, IPRs can be protected and monopolized under the provisions of
different Acts, mainly, for example,
1- The Patent Act, 1970, 2- The Designs Act, 2000, 3- The Trade Mark Act, 1999, 4-
The Geographical Indications of Goods Act, 1999, 5- The Copyright Act, 1957, 6-
Protection of Integrated Circuits Layout and Designs Act, 2000, 7- Protection of
Plant Varieties and Farmers Rights Act, 2001, and also Trade Secret
 Patent (to protect technologies - The Patent Act)
 Trade Mark (to protect words, signs, logos, labels –The Trade Mark Act)
 Design (to protect outer ornamental configuration –The Designs Act)
 Geographical Indications (GI) (to protect region specific product –The
Geographical Indications of Goods Act)
 Copyright (to protect literary and artistic work –The Copyright Act)

All kinds of IPRs are territorial rights

 IP rights in India and progressive
harmonization with international Standards
 India has been a World Trade Organisation (WTO) member since 1995. WTO
member nations must include some IP protection in their national laws. This means
that if you are doing business with India, you will find some similarity between local IP
law and enforcement procedures, and those in force in the UK.
 Treaties and reciprocal agreements
India is also a signatory to the following international IP agreements:
 the Paris Convention – under this, any person from a signatory state can apply for a
patent or trade mark in any other signatory state, and will be given the same
enforcement rights and status as a national of that country would be;
 the Berne Convention – under this, each member state recognises the copyright of
authors from other member states in the same way as the copyright of its own
nationals;
 the Madrid Protocol – under this, a person can file a single trade mark application
at their national office that will provide protection in multiple countries;
 the Patent Cooperation Treaty – this is a central system for obtaining a ‘bundle’ of
national patent applications in different jurisdictions through a single application.
India is not a signatory to the Hague Agreement, which allows the protection of
designs in multiple countries through a single filing.
 Patent Amendment Act (2005)
 Patents (Amendment) Act, 2005, wherein product patent was extended to all
fields of technology including food, drugs, chemicals and microorganisms.
 After the amendment, the provisions relating to Exclusive Marketing Rights
(EMRs) have been repealed, and a provision for enabling grant of compulsory
license has been introduced.
 The provisions relating to pre-grant and post-grant opposition have also been
introduced.
India was required to introduce product patent protection in these sectors from
1.1.2005 in accordance with the obligation under the TRIPS Agreement of the
WTO. To fulfill this requirement, Government of India had issued an Ordinance in
2004. The Ordinance was to be approved by the Parliament. While introducing the
Patents (Amendment) Bill 2005 in the Parliament, Government introduced certain
changes from the provisions in the Ordinance
The Bill was moved by Shri Kamal Nath, Minister of Commerce & Industry, in the Lok
Sabha on 22/3/05 and in Rajya Sabha on 23/3/05
Salient features of the Patents (Amendment) Bill 2005
a) Extension of product patent protection to all fields of technology (i.e., drugs, foods and
chemicals);
b) Deletion of the provisions relating to Exclusive Marketing Rights (EMRs) (which would
become redundant), and introduction of a transitional provision for safeguarding EMRs
already granted;
c) Introduction of a provision for enabling grant of compulsory license for export of
medicines to countries which have insufficient or no manufacturing capacity, to meet
emergent public health situations (in accordance with the Doha Declaration on TRIPS and
Public Health);
d) Modification in the provisions relating to opposition procedures with a view to streamlining
the system by having both Pre-grant and Post-grant opposition in the Patent Office;
e) Addition of a new proviso in respect of mailbox applications so that patent rights in
respect of the mailbox shall be available only from the date of grant of patent, and not
retrospectively from the date of publication.
f) Strengthening the provisions relating to national security to guard against patenting
abroad of dual use technologies;
g) Rationalisation of provisions relating to time-lines with a view to introducing flexibility and
reducing the processing time for patent applications, and simplifying and rationalising
procedures.
For Futher reading: https://www.indianembassyusa.gov.in/ArchivesDetails?id=598
 IPRs transfer:
Sale
Asset Sale Share Sale
Share sale or merger: In a share sale, there is generally no need to separately transfer the IPRs of
the target company, as the buyer inherits ownership of the IPRs by virtue of owing the
shares/capital stock of the target company.

Asset sale: In asset sales, IPRs are transferred by way of agreements such as assignments, which
must generally be in writing (Legal assignment, Equitable assignment and Mortgage). The
assignment can be incorporated in the purchase agreement, except in cases involving a transfer
of obligations relating to existing licenses granted by third parties. In these cases, it is advisable to
enter into a separate agreement with the third party(ies).
A paradigm shift towards IPR policy and technology commercialization have been observed in India, during
the post‐World Trade Organization (WTO) regime. Protecting innovative agricultural technologies through
IPR and technology commercialization are of utmost significance to enhance country's public research
enterprise, promote economic development and national competitiveness. This has impacted the
innovations in a positive direction in these areas.
 What is technology transfer?
Technology transfer is the formal transfer of IP or other rights to any entity to use and
commercialize new invention. Typically, transfer technology is done after protecting the IPR (
viz., patents and copyrights) after a process of due diligence about the company and with
some terms and conditions for licensing.
 Why is technology transfer required?
An invention would be beneficial for the public if transferred successfully through
technology transfer and marketed. In the health sector, tech transfer ensures availability of
new and better products for public use. Technology transfer and commercialization of
inventions provides monetary benefits to the inventors, agency supporting the inventionns,
the company and also the country.
 What is the process of ‘technology transfer’?
Technology transfer is a process that recognizes the practical and commercial aspects
of basic science research and discoveries and increases its outreach for the benefit of public
and also encourages further innovation.
Technology Transfer/management also comprises evaluation and management of invention
portfolios, patent prosecution, demonstration of knowhow, negotiating licensing agreements
and periodic review of cooperative research agreements already in place. Part of the
technology transfer process involves the prosecution of patents Technology Transfer: From
labs to Homes; courtesy: blog.ourcrowd.com Handbook on IPR & Technology Transfer 2017 |
68 which is overseen by the National Patent and Trademark Office. Individuals with
advanced degrees in the subject are needed to review and process patents in the relevant
field such as a biomedical expert is needed to review and process patent of biotechnology.
 Case Studies giving examples of
patents and technology transfer
 Samsung Electronics Company Ltd. vs Income Tax Officer on 18 February,
2005
 Indian Farmers Fertilizer ... vs Commissioner Of Central Excise on 26
December, 2006
 Novartis Ag vs Union Of India & Ors on 1 April, 2013
 Hcl Limited vs The Commissioner Of Income Tax New ... on 3 February, 2015
 Subway Systems India Private ... vs State Of Maharashtra And 3 Ors on 11
August, 2016
 For Detailed Studies:
https://indiankanoon.org/search/?formInput=intellectual%20property%20%
20%20%20%20%20filter%3A%20%20%20%20%20%20case%20law%20on%20
confidential%20information&pagenum=1
Case Studies giving examples of patents
and technology transfer, access and
affordability of medicine in India
 India being a signatory of the TRIPS agreement was under a contractual
obligation to amend its Patents law to make it compliant with the provisions of
the agreement. The first amendment in this series was in the form of the Patents
(Amendment) Act, 1999 to give a pipeline protection.
 It laid down the provisions for filing of applications for product patents in the
field of drugs and agrochemicals with effect from 1st January 1995 as mailbox
applications and introduced the grant of Exclusive Marketing Rights (EMRs) on
those patents.
 To comply with the second set of TRIPS obligations, India further amended the
Patents Act, 1970 by the Patents (Amendment) Act, 2002.
 The third set of amendments in the patent law was introduced as the Patents
(Amendment) Act, 2005. In 2005 the Indian Patents Act, 1970, which provides
patent protection for pharmaceutical products and drugs, was amended.
 Section 3(d) of the Patents Act, 1970, explains that a new form of a known
substance, new property / new use for a known substance and the mere use
of a known process are not patentable and is not considered distinct from
the known substance.
 In terms of novelty, the complication for a biotechnologist is demonstrating
that their creation is a ‘new’ process rather than merely a natural one.
Obtaining a patent also requires that an inventor demonstrate that their
invention is the first in the world to do its specified action (i.e., the
mechanism of action of its therapeutic process). When an inventor applies
for a patent, he or she must demonstrate that the creation meets specific
eligibility requirements: an invention must fall under subject-matter eligibility,
have utility, novelty, be non-obvious, and not have been previously
disclosed.
 Many pharmaceutical giants have announced expansions of their Indian
operations. However, even though pharmaceutical companies are
increasing their footprint in India, they are still concerned about
infringement. Thus, they are very cautious about product introduction until
their patents are demonstrated to be effective at preventing infringement.
There is, however, a longer-term issue that relates to evergreening patents
remain.
 One high-profile case that illustrates some of the challenges in patenting
of medicines is the Tarceva case. The Indian patent application on
Tarceva was filed in 1996 by Roche and was granted in 2007. Roche
intermittently obtained a market approval from the Drug Controller
General of India to market Tarceva in 2006. Cipla, a competitor of Roche,
launched a generic version of Tarceva in 2008. Roche filed a suit for
infringement against Cipla immediately thereafter. A division bench of the
Delhi High Court upheld an earlier ruling that allowed Cipla to
manufacture and market a copy of patented drug Tarceva in the Indian
market citing that there is a price difference between the drug sold by
Roche and its generic version by Cipla. The court did not want patients to
be deprived of a low-cost alternative by disallowing sales of the generic
product as there was substantial price difference. For the first time in India,
a court recognized the need to consider public interest in allowing or
rejecting an order for injunction. While on the one hand MNCs are using
evergreening tactics to extend their patent monopolies, section 3(d) is
protecting poor people paying from higher money for their medications.
 2.4
International organizations and Treaties (pre-TRIPs
era):Paris Convention, Berne Convention, Rome
Convention, WIPO, GATT, FAO, UNCTAD
 Origin of Patents:
In 1300s, the first person who found resources in the Alps dictated property rights for
mining, timber and water. As competition progressed special privileges were granted for
useful creation. In 1409, first patent was granted to a German for the construction of a
model mill. A monopoly by the British was not granted to sell playing cards due to
obviousness. The first English patent was granted for a period of 20 year to John of
Utynam on making stained glass. Meanwhile, the French advanced the system by
registration and examination. In the United States, a patent was granted for a grain
elevator ‘hopper boy’ to Oliver Evans.
In the Indian context, in 1856, the Act VI on protection of inventions based on the British
Patent Law of 1852 was established. During this period certain privileges were granted to
inventors of new manufacturers for a period of 14 year. In 1859, the act was modified as
Act XV in which making, selling, using of inventions in India and authorizing others to do
so for 14 year from the date of fi ling the specification. In 1872, the act was re-named as
The Patents and Design Protection Act, in 1883 as The Protection of Inventions Act, in
1888 consolidated as The Inventions and Designs Act and in 1911 as The Indian Patents
and Designs Act.
 Paris Convention 1883:

 The most important reason or purpose for existence for the Paris Convention
for the protection of Industrial Property, 1883, was the Science Exhibition
that was proposed to be held at Vienna in 1873.
 Since then ,it has been revised at
✓ Brussels(1900),
✓ Washington(1911),
✓ Hague,(1925),
✓ London(1934),
✓ Lisbon(1958), and
✓ Stockholm(1967).
 Types of IPR protected under the Convention The purpose of the Paris Convention is
✓ to protect various forms of Intellectual Property, such as Patents, Utility Models,
Industrial Designs, Trademarks, Service Marks, Trade names, 7 Trademarks, Service
Marks, Trade names, indications of source or appellations of origin,
✓ repression of unfair competition, and
✓ to protect agricultural & extractive industries like wine, tobacco, cattle, minerals,
flowers and flour.
 India as a Member
✓ India was not a member of the Paris Convention till the end of the second
Millennium.
✓ Prior to that ,India had bilateral arrangements with England, Canada, Australia and
Sri Lanka.
✓ Contrary to popular perception , India demonstrated its willingness to modernize its
Patent Laws.
✓ IDMA(Indian Drug Manufacturers’ Association) lobbied hard to ensure that India did
not become a member of the Paris Convention.
✓ Despite their lobbying, India not only adhered to the Paris Union, but also became a
member of the Patent Co-operation Treaty.
 Berne Convention, 1886

 The Berne Convention for the Protection of Literary and

Artistic Works of 1886 was developed at the instigation of
Victor Hugo of the Association Littéraire et Artistique
Internationale. It was influenced by the French "right of
the author" (droit d'auteur).
 The Berne Convention was revised in Paris in 1896 and in
Berlin in 1908, completed in Berne in 1914, revised in
Rome in 1928, in Brussels in 1948, in Stockholm in 1967
and in Paris in 1971, and was amended in 1979.
 BASIC PRINCIPLE given by the
Convention
 All foreign authors to receive same Copyrights and protections for
their copyrighted work, in a member country of the Convention, as
given to its domestic authors.
 The concept of ‘Inherent protection’ guarantees the author
copyright and protection based upon the creation and publication
of a work (not subject to conditional or required registration or
notification to acquire copyrights and protection).
 The Berne Convention legislation is to apply regardless of a
particular nation's own copyright laws and regulations
 Membership: As of September 2008, there are 164 countries that are
parties to the Berne Convention. India ratified the Berne Convention
on 1st April 1928.
 Rome Convention
Performers, producers of phonograms and
broadcasting organizations
Adopted in 1961: 86 countries party
National treatment and minimum rights
Economic rights: fixation, broadcasting,
rebroadcasting, or communication to the public,
reproduction
Limitations: Private use, use of short excerpts for
reporting events, for teaching purposes or scientific
research
Duration: 20 years
WIPO:
GATT:
 ON INTELLECTUAL PROPERTY IN FOOD
AND AGRICULTURE
 Among the core ethical issues in food and agriculture arising from the TRIPS
Agreement are:
✓ the increasing risk of a transfer of important knowledge from the common
domain (public goods) to the private domain, often controlled by
corporations;
✓ the likely negative impact of the TRIPS Agreement on the livelihood of poor
farmers;
✓ the uncertain impact on sustainable access to affordable, safe, nutritious
food for consumers with limited income;
✓ the environmental impact, including the effect on biodiversity.
FAO: The foundations of intellectual property rights
 A number of arguments based on natural justice or morality have been articulated to
promote an expansion of IPRs in agriculture and other areas. The granting of IPRs has been
historically justified on three different types of grounds:
✓ Natural-rights-based proprietarianism: : Under different variants (including theological and
non-theological), this approach gives property interests a moral primacy. Property rights,
including on abstract objects, are deemed to pre-exist the state and to be simply
recognized as a matter of natural justice. In some of its formulations, this theory or creed is
grounded on the idea that a person who is first connected to an object with economic
value is entitled to appropriate it.
✓ Distributive justice:: Intellectual property rights, namely patents, have been regarded by
some as a reward that the society is morally obligated to give to whoever introduces a new
creation or invention. Although this conception is not based on the pre-existence of rights, it
considers the granting of such rights a moral imperative, regardless of the economic and
social implications of such a grant. It shares with the natural rights theory a strong
individualistic bias
✓ Instrumentalism: This approach conceives IPRs as a tool that society creates to attain
objectives of its own choice. In fact, IPRs emerged several centuries ago as rulegoverned
“privileges”. Although they interfered in the negative liberties of others, such privileges were
justified as necessary to achieve the objectives of certain societies. Under an instrumentalist
conception, knowledge is by its very nature a public good and IPRs withhold the use of
information from the common pool for practical reasons, not as recognition of pre-existing
rights or as a morally due reward.
For details: https://www.fao.org/3/i2043e/i2043e02d.pdf
UNCTAD