2. Patents
• Introduction to Patents
• Procedure for obtaining a Patent
• Licensing and Assignment of Patents
• Software Licensing
• General public Licensing
• Compulsory Licensing
• Infringement of Patents
• Software patent and Indian scenario
Module #: 2
3. What is Patent
A patent is a legal right to an invention given to a person or entity without interference
from others who wish to replicate, use, or sell it. Patents are granted by governing
authorities and have a time limit, usually 20 years.
A patent is a type of intellectual property that gives its owner the legal right to exclude others
from making, using, or selling an invention for a limited period of time in exchange for
publishing an enabling disclosure of the invention.
Patent is defined as to obtain a right to the producing and selling of a product that also stops
anyone from copying it.
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16. Patent Application
• Form 1 - Application for grant of patent
• Form 2 - Two copies of the complete patent specification
• Two sets of the drawing figures, if any, one set of which should be in thick A-4 size white sheets;
• Executed Form 26, power of Attorney
• Form 5 - Declaration of the inventorship signed by the applicant
• Priority documents, if any, if not in English, English translation thereof;
• Form 3 - The Statement and Undertaking regarding corresponding foreign filings.
• International Search Report for National Phase entry in India
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17. Rights and Duties of Patentee
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18. • Right To Exploit The Patent
• When the new invention is a product, the Patentee has the exclusive rights to use, make, import, or
sell for these purposes related to an invention in India. On the other hand, when the invention of
the inventor is a procedure or process of manufacturing of any article or substance, the right to
exploit means the exclusive right exercise or use the procedure or method in the territory of India.
• Right To Grant License
• The Patentee of a Patent is given the right to grant license or transfer rights or enter into some
arrangement for some consideration. The assignment or license to be valid and legitimate it is
required to be in writing and should be registered with the Controller of Patent. Unless a document
of assignment of a Patent is not registered, it is not admitted as evidence of title of the Patent, and
such a rule is applicable to the assignee, not the assignor. (As per Section 69(5) of the Patent Act,
1970)
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19. • Right To Surrender
• By giving notice in the prescribed manner, the Patentee of a Patent has the right to surrender a Patent
at any time and at his/her own discretion. The advertisement for such an offer of surrender is required
to be done in the Journal. The publication is done to give an opportunity to the people to oppose the
offer of surrender of the Patentee. This is done when the Patentee apprehends his/her non-
performance of the Patent in the future and upon which he/she decides to surrender the Patent.
• Right To Sue For Infringement
• The Patentee has the right to sue for Infringement of Patent in District Court has the jurisdiction to try
the suit.
• Right To Use And Enjoy Patent
• The Patentee of the Patent has the exclusive right to exercise, make, utilize, convey or offer or the
patented substance or article in India or to practice or utilize or the process or techniques associated
with the invention. Such rights can be exercised either by the Patentee himself/herself or by his/her
licensees or agents.
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21. • Duty To Disclose
• Sec 8 of the Patent Act, 1970[1], accomplishes the obligation to disclose of the Patentee. Section 8(1) of
the Patent Act, 1970, tells that the Patentee has an obligation to disclose all required data related to
the remote uses of comparative or same invention documented by him/her or through him/her or
through someone by him/her at the time of applying or within 6 months of applying.
• The Patentee of a Patent is required to record an announcement of all the listed particulars viewing the
applications and, in addition to the above, an endeavor to disclose all the points of interest of any
subsequent applications that might be documented at the future stages.
• Section 8(2) of the Patent Act, 1970, puts an obligation on the Patentee to provide all the data
required by the Controller of Patent with regards to the relating of any remote applications at whatever
point demand is made by the Controller of Patents within a time period of 6 months of such a demand
by the Controller of Patent. The first part of the obligation of Patentee begins when a man records an
application of Patent. On the other hand, the second part begins after a demand is made by the
Controller of Patents under the Patents Act, 1970.
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22. • Duty To Request For Examination
• Not like other Intellectual Property Rights, the Registration process of Registration of Patent does
not accommodate any kind of programmed examination of the grant of Patent application. In the
procedure above mentioned, as indicated by Section 11(B) of the Patents Act, 1970, the obligation is
thrown on the Patentee himself/herself to ask for the Controller of Patents to look at the growth or
development connected for Patent.
• Duty To Respond To Objections
• The Controller of Patent before accepting the examination request passes it to the analyst who looks
at the growth and gives a report to the Controller of Patent known as the First Examination Report
(FER). On certain cases there may be some protests which will be brought up in the First
Examination Report, it is the right of Patentee to reply to such opposition complaints and consent to
the corresponding within a time period of a year of the issuance of the First Examination Report
(FER) falling which the application of the Patentee will be considered to be surrendered by the
Controller of Patent.
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23. • Duty To Clear All Objections
• It is the obligation of the owner of the Patent to respond to the raised objections as well as to clear
and remove each one of the raised objections and, in addition, certain oppositions raised against
his/her invention. In the event that the Controller of Patent has not fulfilled he/she, it may also require
a meeting also. Furthermore, it is the obligation of the owner of Patent to go for a consultation and
clear all the objections and, in addition, oppositions, if are raised any, against the invention of the
inventor.
• Duty To Pay Statutory Fees
• The Patentee has an obligation to pay all the statutory expenses required to get a grant of a Patent in
the process of Registration without failure generally, his/her application for the grant of Patent won’t
be managed. Sec 142 of the Patent Act, 1970, accomplishes the provisions recognized with payment
of charges and, in addition, the consequences for non-payment of such prescribed fees.
• After this process is imitated to and the Patentee of Patent clears every one of the restrictions and
protests raised against his/her invention, if the Controller of Patent is fulfilled, he/she will grant a
Patent to the invention and publishes it in the Journal, or generally, the Controller rejects such a
Patent.
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24. Patent Commercialization
• MEANS OF PATENT COMMERCIALIZATION: The commercialization of a patent means that the
original owner of the patent has either sold the patent for a fair value, licensed the patent, or
introduced a replacement product on the market based on the patent. In short, it means that the
owner has financially profited from the patent in some manner. The commercialization of a patent
ensures that no other person can copy your invention and guarantees that the owner can get
financial benefits for the invention.
• PATENT LICENCED IS ENOUGH: According to statistics, one of the main reasons why only 5% of
patented inventions reach the market successfully is the rapid increase in market competition. As
soon as an idea hits the market, competition starts to, due to which the loopholes in inventions or
ideas become transparent to the investors and the public. Therefore, many people never get to see
their invention reach the social sphere. Even if they can obtain financial benefits from selling their
patent, it is not nearly as much as the profits if the product successfully reaches the market and gets
famous by showing its industrial application.
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25. Patent Commercialization
• This is because the value of innovation cannot be determined before it is tested in the public. The
predetermination of a patent’s value can be fairly significant and can make a huge instant profit for
the owner. Still, after subjecting the product to modern needs, the buyer could get ten times as
much over a period of just one year. Therefore, it is important to know the value of your patent and
necessary to know when and how to get investors involved and get your product in the market with
necessary changes in its current application.
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26. STEPS INVOLVING COMMERCIALIZATION OF A
PATENT
• RESEARCH: Sometimes, the most crucial step is to perform intensive research on your patent to know
its commercial applicability. It is extremely important to perform all kinds of experiments beforehand
so that there is no issue regarding the invention’s performance once it reaches the market.
• INVENTION DISCLOSURE: This is a confidential document submitted by the patent owner to the patent
attorney containing the particulars of the invention. By examining this report, the attorney then
decides whether the patent is eligible for protection. Basically, and invention disclosure is for the
documentation of a new patent.
• ASSESSMENT: As the name suggests, the assessment of a patent evaluates the invention and then, by
analysing it thoroughly, develops the preparatory commercialization technique by deciding which
technique is more likely to succeed, matching the commercial nature of the invention. This step is very
helpful as it ensures a preliminary plan to help with the product’s success when it reaches the market
in the future.
• PATENTING: If an invention shows the potential for patenting, the Office of Technology
Commercialization (OTC) prepare the patent for exploitation in the market by engaging an outside
counsel for its protection. After that, the invention is secured and free of fear of infringement.
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27. STEPS INVOLVING COMMERCIALIZATION OF A
PATENT
• PROSPECTING: The Office of Technology Commercialization then take charge and approach
companies, entrepreneurs and investors who can qualify as suitable partners to bring the
technology into the market. This step needs to be done at the right time, as once the patent
goes public, it cannot be controlled in the same way, and competitors start flooding the
market almost instantly.
• NEGOTIATION: Negotiation has always been a key factor in any case with two sides when
there is a need for a Win-Win situation. Negotiation clears out a path for all the necessary
actions before introducing an invention to the public eye. It also clears any misunderstandings
or doubts that may form in any party’s mind beforehand and makes situations legally
simplified. The OTC works with interested licensees or investors to discuss the terms of the
agreement and compensation, which can be done in various forms, but mainly includes cash
fees, patent expense reimbursements, royalties or equity, or a combination of the above.
Other terms generally agreed upon in a negotiation agreement include duration timeline,
exclusivity, fields of use, and licensing rights.
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28. STEPS INVOLVING COMMERCIALIZATION OF A
PATENT
• LICENSING: A license is a permit, in this case, granted by the owner of the patent to
commercially sell, make or use the invention for a specific period. The legal documents of the
license are prepared by the Office of Technology Commercialization, which is then signed by
all the parties involved, after which a license agreement is formed. This license agreement
reflects the negotiated business terms, providing the license with the power to commercialise
the patent.
• REVENUE AND COMMERCIALIZATION: This is the last step towards the commercialization of
patents, in which the terms discussed during negotiation are implemented. The invention is
introduced in the market, after which its profits are divided and losses compensated,
according to what is mentioned in the license agreement. The success of the invention in the
marketplace depends on its nature and the market it addresses.
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29. STEPS INVOLVING COMMERCIALIZATION OF A
PATENT
• LICENSING: A license is a permit, in this case, granted by the owner of the patent to
commercially sell, make or use the invention for a specific period. The legal documents of the
license are prepared by the Office of Technology Commercialization, which is then signed by
all the parties involved, after which a license agreement is formed. This license agreement
reflects the negotiated business terms, providing the license with the power to commercialise
the patent.
• REVENUE AND COMMERCIALIZATION: This is the last step towards the commercialization of
patents, in which the terms discussed during negotiation are implemented. The invention is
introduced in the market, after which its profits are divided and losses compensated,
according to what is mentioned in the license agreement. The success of the invention in the
marketplace depends on its nature and the market it addresses.
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30. Assigning & Licensing IPR In India
• A patentee may assign the whole or any part of the patent rights to the whole of India or
any part thereof. There are three kinds of assignments: legal assignment, equitable
assignment and mortgages.
• An assignment (or an agreement to assign) of an existing patent is a legal assignment,
where the assignee may enter his name as the patent owner. A certain share given to
another person is called an equitable assignment and a mortgage is when the patent rights
are wholly or partly transferred to obtain money.
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31. • A valid assignment under the Patents Act requires the assignment to be in writing, to be
contained in a document that embodies all terms and conditions and must be submitted
within six months from the commencement of the Act or the execution of the document
whichever is later.
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32. Infringement
• Section 48 of the Patents Act, 1970 grants the following rights to the patentee:
• In case of a product patent, the following sections would amount to infringement –
making, using, offering for sale, selling or importing for these purposes, the product in India
without the permission of the patentee.
• In case of a process patent, the following would amount to infringement – using, offering
for sale, selling or importing for these purposes the product obtained directly by that
process in India without the permission of the patentee.
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33. Types of Infringement
• Direct infringement - which is the most apparent and common type of infringement. This type of
infringement includes marketing, sale or commercial use of an exact patented item or invention that
performs substantially identical functions. Direct infringement may be literal or nonliteral (also known
as the doctrine of equivalents). Literal infringement occurs when each and every component in the
patent specification has been used in the alleged infringing product/device or process; while Non-Literal
infringement occurs when the infringing device or process may be similar or equivalent to the claimed
invention (performs substantially the same function; in substantially the same way and to achieve
substantially the same result – Triple Identity Test).
• Indirect infringement is when infringement does happen but the direct infringement is facilitated by
someone else. Indirect infringement are of two types, inducted infringement wherein one actively
induces the other person to infringe a patent by encouraging, assisting, aiding, inducing him/her to do
so and contributory infringement, wherein there is an intentional participation/assistance by one party
in an act of infringement to the other party making them vicariously liable for the acts of the infringer.
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