Research Methodology & IPR

M-Tech, First Year

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Prof. (Dr.) Palash Pal
 Model-5

Patent Rights: Scope of Patent Rights. Licensing and transfer of technology. Patent information and
databases.

Types of Intellectual Property- Origin and Development:

As you are aware that the domain of intellectual property is quite vast. Among other domains of
intellectual property, Copyrights, Patents Trademarks and Designs are known to have received recognition
for a long time. Apart from this, newer forms of the protection are also emerging particularly stimulated by
the exciting developments in scientific and technological activities.

In the light of the varied and diversified domains of the intellectual property, the study lesson aims to
provide an in-depth understanding to the students about the various forms of the intellectual property, its
relevance and business impact in the changing global business environment. Besides, the students will also
be acclimatized with the leading International Instruments concerning Intellectual Property Rights.

What is expected from patentee as an obligation to the State?

A patentee must disclose the invention in a patent document for people to practice it after the expiry of the
term of the patent or after the patent has lapsed due to nonpayment of maintenance fee or practice it with
the consent of the patent holder during the life of the patent. Disclosure of an invention is a legal
requirement for obtaining a patent.

How is invention defined in the Indian Patents Act, which can qualify for grant of a patent?

Invention means a new product or process involving an inventive step and capable of industrial
application.

Capable of industrial application means that the invention is capable of being made or used in an
industry.

What are the grounds for opposition?

Pre-grant and post-grant opposition can be filed only on the following grounds:-

i. Claimed invention or its part wrongfully obtained;

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ii. Claimed invention is published in a patent or any other document before the priority date;

iii. Claimed invention is published in a patent after the priority date having earlier priority date;

iv. Claimed invention was publicly known or publicly used before the priority date;

v. Claimed invention is obvious and does not involve clearly any inventive step, as regards to the matter
published or used (in India) before the priority date;

vi. Claimed invention is not an invention within the meaning of the Patents Act or is not patentable under
the Patents Act;

vii. The complete specification does not sufficiently and clearly describe the invention or the method by
which it is to be performed;

viii. The applicant has failed to disclose to the Controller the information regarding foreign applications
filed by him for the same invention or has furnished the information which in any material particular was
false to his knowledge;

ix. In case of convention application if the application is not filed before the expiry of 12 months from the
date of first application in convention country;

x. The complete specification does not disclose or wrongly mentions the source and geographical origin of
biological material used in the invention;

xi. Claimed invention was anticipated having regard to the knowledge, oral or otherwise available within
any local or indigenous community in India or elsewhere.

Is a patent granted in one country automatically enforceable in other countries?

No. There is nothing like a global patent or a world patent. Patent rights are essentially territorial in nature
and are protected only in a country (or countries), which has (have) granted these rights.

Therefore, the patent could only be enforced in such countries. In other words, for obtaining patent rights
in different countries one has to submit patent applications in all the countries of interest for grant of
patents. This would entail payment of official fees and associated expenses, like the attorney fees, essential
for obtaining patent rights in each country.

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However, there are some regional systems where by filing one application, one could simultaneously
obtain patents in the member countries of a regional system; European Patent Office is an example of a
similar system.

Does grant of a patent in one country affect its grant or refusal in another country?

Each country is free to grant or refuse a patent on the basis of scrutiny by its patent office. This means that
grant of a patent in one country does not guarantee that some other country will also grant patent for the
same invention.

Similarly, the refusal of the patent in one country does not mean that it will be refused in other countries.

However, there are some regional systems where by filing one application, one could simultaneously
obtain patents in the member countries of a regional system; European Patent Office is an example of a
similar system.

What is industrial property?

Industrial property includes:

(a) Patents

(b) Utility models

(c) Industrial designs

(d) Trademarks, service marks and trade names

(e) Indication of source or appellations of origin (this is same as the geographical indications adopted in
TRIPS). [Readers may note the use of the phrase 'Industrial Property' and how it is different from
intellectual property].

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Prof. (Dr.) Palash Pal
 Module 6

New Developments in IPR: Administration of Patent System. New developments in IPR; IPR of Biological
Systems, Computer Software etc. Traditional knowledge Case Studies.

Patent law is the branch of intellectual property law that deals with new inventions. Traditional patents
protect tangible scientific inventions, such as circuit boards, car engines, heating coils, or zippers.
However, over time patents have been used to protect a broader variety of inventions such as coding
algorithms, business practices, or genetically modified organisms. Considering the significance of Patents
and its positive image for the successful enterprises, there is a plethora of international treaties and national
laws to regulate the process and operation of Patents worldwide. Under this background, this chapter
briefly discusses, background of patent law in India along with few international treaties on patent
including Patent Cooperation Treaty, TRIPs and Paris Convention.

Indian Patent Law:

Inventions arising from the creative work of human beings acquire considerable commercial value, in view
of the possibility of their use by large sections of the society, not only within the country but also in other
countries of the World.

Patent is one of the ways through which the scientific inventions which have a potential for industrial
application are being protected and thus promoted. In India, however, very few scientific organizations and
much less industries take adequate measures to protect their inventions by getting a Patent in respect of
them.

In India, the law relating to Patents is contained in the Patents Act, 1970. This Act has been amended in the
years 1995, 1999, 2002 and 2005 respectively to meet the challenges of changing times and also to meet
India’s obligations under the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)
which forms a part of the Agreement establishing the World Trade Organization (WTO). The Patents Act,
1970 is now conceived as fully compliant with India’s obligations under the TRIPS Agreement of the
WTO. Further, as regards the Rules framed under the Act, earlier the Patents Rules, 1972, which were in
place for close to three decades, were substituted by the Patents Rules, 2003. The Patents Rules, 2003 have

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also been amended in the years 2005, 2006, 2012, 2013, 2014, 2015, 2016 and 2017 respectively inter alia
in order to keep them in line with the international trends and requirements.

The importance of Patents has increased tremendously over last few decades which is evident from the fact
that every company is now creating its own strong Patent portfolio. It is thus important to know the
advantages involved in getting a Patent and also as to how does the Patent benefit an Inventor.

The objective is to develop amongst the students a greater awareness about the Patent law in India and
spell out the procedural mechanism involved in obtaining a Patent, besides explaining the concepts of
Assignment & Licensing of Patents and Compulsory Licensing.

Patent Databases and Patent Information System:

The Intellectual Property Office in India is dedicated to mobilize the use of technological advancement for
socioeconomic development, by creating the requisite IP culture. The Office of the Controller General of
Patents, Designs & Trade Marks (CGPDTM) is responsible for the administration of Patents Act, 1970,
Designs Act, 2000, The Trade Marks Act, 1999 and Geographical Indications of Goods (Registration and
Protection) Act, 1999 through its Intellectual Property Offices located at Mumbai, Delhi, Kolkata, Chennai
and Ahmadabad.

Patent information is more than just technological or legal information. When developing a new product,
comparative technological information may determine the success or failure of the product and, in turn, the
success or failure of the company itself.

An important step before filing a patent application is to conduct a patent search. A patent search is a
search conducted in patent databases as well as in the literature available to check whether any invention
similar to inventor’s invention already exists.

Many national and regional patent offices provide free online access to their own patent collections as well
as to selected patent documents from other offices. A number of commercial and non-profit service
providers also offer free patent information databases online.

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It familiarizes the students with the Intellectual Property Office in India; importance of patent information
in business development; patent search and its importance, and the various databases available for
conducting patent search.

Recent Developments in Patent System:

With the rapid advancement in science and technology, newer forms of intellectual property protection are
emerging. Examples of such protection are seen in the efforts made to protect computer programmes and
software, life forms particularly following developments in the biotechnology etc.

Patent laws of several countries favor patent protection for software innovation. Such countries include
USA, Australia and Singapore, to name a few. However, many other countries which include India and
European nations have more stringent laws concerning patent protection to software innovation. The Indian
Patent Law does not contain any specific provision regarding the protection of computer software.

Biotechnology has been at the core of a number of important developments in the pharmaceutical,
agrochemical, energy and environmental sectors. In particular, progress in the field of molecular biology,
biotechnology and molecular medicine has highlighted the potential of biotechnology for the
pharmaceutical industry.

The objective is to provide an understanding to the students about the patenting of software in India as well
as the patenting of inventions in the domain of biotechnology.

Protection of Plant Varieties and Farmers’ Rights:

In the present era of liberalization, globalization and fast paced information technology, intellectual
property rights have emerged as a new global phenomenon. An efficient and effective IPR regime is one
which balances individual incentives and benefits with the wider needs of the society, while, IPRs are a
well- established institution in the manufacturing sector, their application to agriculture is still in a state of
evolution. The key issue in the agricultural sector is, quite simply, that some agricultural innovations are
imperfectly appropriable. This imperfect appropriability may reduce innovators’ incentive to invest in the
improvement of such crops.

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Several forms of IPRs employed in the sector of agriculture attempts to address this issue. Here it is
relevant to mention the prevalent legal mechanisms including patents, plant varieties protection,
trademarks, trade secrecy rights and plant breeders’ rights.

India is among the first countries in the world to have passed legislation granting farmers’ rights in the
form of the Plant Varieties Protection and Farmers’ Rights Act, 2001 (PVPFR). India’s law is unique in
that it simultaneously aims to protect both farmers’ and breeders’ rights. The Indian case assumes immense
importance due to the country’s lead in establishing a legal framework on Farmers’ Rights and also
significant as the Indian Gene Centre is recognized for its native wealth of plant genetic resources.

As we have dedicated legislation in the form of The Protection of Plant Varieties and Farmer’s Rights Act,
2000, which works as effective legal system for the protection of plant varieties, the rights of farmers and
plant breeders and to encourage the development of new varieties of plants, this chapter aims at apprising
the students with each and every minute detail of the Act in order to assistant in the effective
implementation of the Plant Varieties Act to recognize and protect the rights of the farmers in respect of
their contribution made at any time in conserving, improving and making available plant genetic resources
for the development of new plant varieties.

Protection of Trade Secrets:

Knowledge is what happens to information when human ingenuity is applied to it. Information alone does
not confer competitive advantage. Knowledge does. It is human ingenuity that turns information into
knowledge and gives it value. And it is this knowledge that is the underlying value of the intellectual
property or capital of an organization–its relationships, know-how, confidential business information and
trade secrets.

Today more than ever, intellectual property also includes confidential business information, trade secrets,
know-how and key business relationships. The various statutes that have been enacted provide an adequate
mechanism of protection to intellectual property rights. However, some ideas cannot be patented and
indeed, some innovators do not want to patent their ideas as for instance trade secret or confidential
information. If a trade secret is really kept a secret, the monopoly on an idea or product may never end.
Once the information is leaked and goes into the public domain, it is lost forever.

Too often, beyond applying for patents on new inventions or trademarks on new brands, little real attention
is paid to protecting or securing this less formal type of intellectual property and consequently the
information goes into the hands of the rival competitors of the business enterprises. It explains the
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importance of trade secrets to the business enterprises whether small, medium or large and why this key
strategic asset needs to be protected.

Key Business Concerns in Commercializing Intellectual Property Rights:

Effective management of intellectual property enables companies to use their intellectual property rights to
improve their competitiveness and strategic advantage. Acquiring intellectual property protection no doubt
is crucial, but its effective management provides much more than just protection to an enterprise’s
inventions, trademarks, designs, copyright or other allied rights.

Exploitation of intellectual property rights can take many forms, ranging from outright sale of an asset, a
joint venture or a licensing agreement. Inevitably, exploitation increases the risk assessment.

Valuation is, essentially, a bringing together of the economic concept of value and the legal concept of
property. The presence of an asset is a function of its ability to generate a return and the discount rate
applied to that return.

Acceptable methods for the valuation of identifiable intangible assets and intellectual property fall into
three broad categories. They are market based, cost based, or based on estimates of past and future
economic benefits. It provides an exposure to the students about the management and valuation of
intellectual property assets.

IPR of Biological Systems:

The aims to provide a comprehensive background and overview of key issues, debates and positions
related to the international regulation and application of intellectual property rights (IPRs) over biological
resources, including biotechnology, and the use and protection of the traditional knowledge of indigenous
and local communities. The linkages among biological diversity, rural livelihoods, biotechnology
developments and intellectual property have been increasingly explored and analyzed in recent years. The
application of IPRs to plant varieties and the role of biotechnology have particularly important implications
given the relationship between access to biological and genetic resources, agriculture systems, food
security, and increased poverty levels around the world.

There is a growing interest on the potential commercial uses of biodiversity, which is driving many of the
policy and legislative developments in this area, such as the sharing of benefits, the role of traditional
knowledge-holders, and the role and responsibilities of countries that provide and use these resources and
knowledge. A 1999 study provided estimates of the size of global markets for uses of genetic resources in
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the pharmaceutical, seed, cosmetic, horticultural and botanical medicine industries, with figures ranging
from US$20 billion a year in the horticultural sector, to US$300 billion a year in the case of
pharmaceuticals. The commercial seed market has been estimated at US$30 billion a year and is fast
growing due to increasing food demands. However, it should be added that the non-commercial cultural
and spiritual values of biodiversity for rural and indigenous communities all over the world are more
difficult to calculate in monetary terms but also more important for them and their own survival.

Since the early 1990s, an interesting parallel process has taken place: on the one hand, international law
and policy have shifted from considering biological genetic resources as common heritage of humankind
— and therefore free for all — to giving States sovereignty and control over these resources. In addition,
this situation has been further affected by the increased promotion of private ownership and the use of IPRs
over plant and crop varieties. Another factor to be considered is that most developing countries did not
have IPR regulations before they joined the World Trade Organization (WTO) in 1995 and so they are
tackling the implementation of the WTO Agreement on Trade-related Aspects of Intellectual Property
Rights (TRIPS Agreement) while they are also addressing the application of other relevant regimes such as
the Convention on Biological Diversity (CBD) and the FAO International Treaty on Plant Genetic
Resources for Food and Agriculture.

Together with the ongoing emphasis on genetic resources and the use of biotechnology to develop new
varieties and products, there is growing international interest on the potential applications of the knowledge
and know-how that indigenous peoples and rural communities have developed and applied to natural
resources over generations. Concerns have been raised as to the ways in which traditional knowledge,
innovations and practices are being accessed and used by non-indigenous individuals and by public and
private researchers and companies in both industrialized and developing countries. Different ways and
options to regulate access to genetic resources, the potential uses of such genetic material, and the fair and
equitable sharing of the benefits that may be derived from genetic resources and associated traditional
knowledge, are being explored by a number of international organizations in multiple fora. In this context,
positions are shifting as countries further their understanding of possible policy and regulatory options and
mechanisms to protect the rights of traditional knowledge-holders at the national and international level, as
well as the implications of those options on other policy areas, such as research, trade or agriculture.

Two major groups of civil society are closely linked to the shaping of national positions and policy, as well
as public opinion, on these issues, although with a different degree of influence:

(i) Industry and the private sector, and

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(ii) grass-roots organizations, and environmental and development Non-Governmental Organizations
(NGOs).

They operate at different levels and in very different ways, as the motivation is clearly distinct. While
industry s lobbying takes place mostly in closed circles, NGOs campaign on these issues through the use of
the media in informing the general public to raise public awareness of these highly complex new issues:
biotechnology, intellectual property rights, bioprospecting, trade, and their impact on the environment and
rural livelihoods. NGOs portray through the media specific experiences and examples of the shortcomings
of the current international legal and policy framework such as patents granted in the US over the neem
tree, basmati rice, and the Andean root crop maca.

At the heart of these issues lies the complexity of the international system governing biodiversity, access to
genetic resources, the protection of traditional knowledge and the use of intellectual property rights. The
web of international treaties and regional conventions governing biodiversity and IPRs, and the increasing
number of bilateral trade agreements between industrialized nations and developing countries requiring the
latter to accept stricter IPR standards than they are obliged to under global rules, are all contributing to a
rapidly changing and highly uncertain policy environment, which is affecting the world s rapidly dwindling
biological diversity. This situation is not helped by the fact that a number of international agencies and
institutions overlap on these issues and are pursuing different agendas and priorities with varying levels of
co-ordination with the rest. Lack of agreement among the countries member of such agencies on which
institution should take the lead on which issue also marks the current state of affairs, which is resulting in a
slow pace of progress towards finding the solutions that are urgently needed.

The extent to which developing countries can influence the outcomes of the international IPR debate has
been analyzed by a number of academics and activists, with the overall conclusion that they have
comparatively little influence. The main reason for this lack of influence over the years, which can be
tested on the outcomes of international debates on IPR issues, has been found to lie on the continued use of
webs of coercion by the US and EU, both of which remain united on the need for strong global standards of
intellectual property. The same author evaluated the TRIPS negotiations in accordance with a theory of
democratic property rights, arguing that efficient property rights are more likely to emerge if three
conditions are met:

(i) All relevant interests have to be represented in the negotiating process (the condition of representation);

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(ii) All those involved in the negotiation must have full information about the consequences of various
possible outcomes (the condition of full information); and

(iii) One party must not coerce the others (the condition of non-domination). Drahos concluded that the
negotiations of the TRIPS Agreement did not meet these conditions of democratic bargaining.

A central question is whether the international acceptance and expansion of common standards of patent
protection through international treaties, which were developed to meet the conditions and needs of
advanced industrialized countries, may have the effect of undermining biodiversity, traditional knowledge-
systems, and the food security of communities in developing countries. Globalization has emphasized the
linkages and conflicts between international trade rules, domestic priorities, standards of IPR protection,
and resource needs, which are resulting in a fast expanding gap between industrialized and developing
countries, as well as in growing differences and inequalities within those countries. As stated in its title,
this paper aims to provide an overview of those key issues and current debates regarding the nature of and
linkages between IPRs and biodiversity, with the objective of shedding some light over the impact of
policy developments and country positions on the future life of the planet.

IPR on Computer Software:

Software intellectual property, also known as software IP, is a computer code or program that is
protected by law against copying, theft, or other use that is not permitted by the owner.

There are intellectual property issues associated with four elements of a software program:

1. Program function - whether the algorithm is performed by the hardware or the software,

2. External design - the conventions for communication between the program and the user or other
programs,

3. User interfaces - the interactions between the program and the user,

4. Program code - the implementation of the function and external design of the program.

Whether and to what extent software-related inventions are the subject of utility patent protection had been
an issue for consideration by the courts since the early 1960s. The U.S. Supreme Court has examined the
issue of patentability of software on a number of occasions, in the cases of Gottschalk v. Benson, Parker v.
Flook, and Diamond v. Diehr attempting to delineate the limits of patentable subject matter with respect to
―mathematical algorithms.‖
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The scope of copyright protection for computer programs depends in part on the interpretation of Section
102(b) of the Copyright Act. There are a number of existing views of the application of existing law to user
interfaces. One interpretation of the law is that user interfaces are inherently functional and therefore not
copyrightable subject matter. The other view is that user interfaces may be protected by copyright because
they could be thought to fall under the compilations or audio-visual works. Another approach to protecting
user interfaces through copyright law is to consider the user interface as part of the program itself.

Databases are protected under copyright law as compilations. Under the copyright law, a compilation is
defined as a work formed by the collection and assembling of pre-existing materials of data that are
selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original
work of authorship (17 USC Section 101). In April 1991, the Supreme Court ―dropped a bomb‖ when it
held in Feist Publications Inc. v Rural Telephone Service Company, Inc. that the white pages of a typical
telephone directory were not copyrightable. The decision sent shockwaves throughout the computer
industry because of the questions it raised about copyright protection for other fact-based compilations,
such as computer databases. The Supreme Court effectively reaffirmed that copyright originality requires a
minimum level of human creativity which some databases may not meet.

Traditional knowledge Case Studies:

Traditional knowledge (TK) is knowledge, know-how, skills and practices that are developed, sustained
and passed on from generation to generation within a community, often forming part of its cultural or
spiritual identity.

Traditional knowledge in IPR is usually protected through two methods – positive protection and
defensive mechanism. Positive protection is the act of providing traditional knowledge holders with the
rights to take necessary action and seek remedies against the misuse of the knowledge base.

There are two forms of intellectual property related protection systems with regards to traditional
knowledge. They are: Positive protection, i.e. giving traditional knowledge holders the right to take action
or seek remedies against any misuse of traditional knowledge.

Traditional knowledge refers to the knowledge, innovations and practices of indigenous and local
communities around the world. Developed from experience gained over the centuries and adapted to the
local culture and environment, traditional knowledge is transmitted orally from generation to generation.

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Traditional knowledge includes types of knowledge about traditional technologies of subsistence (e.g. tools
and techniques for hunting or agriculture), midwifery, ethnobotany and ecological knowledge, traditional
medicine, celestial navigation, craft skills, ethnoastronomy, climate, and others.

Examples include knowledge about traditional medicines, traditional hunting or fishing techniques,
knowledge about animal migration patterns or water management.

Reference:

1. https://www.icsi.edu/media/webmodules/FINAL_IPR&LP_BOOK_10022020.pdf

2. https://www.investopedia.com/articles/investing/111014/patents-trademarks-and-copyrights-basics.asp

3.https://csrc.nist.gov/csrc/media/publications/conference-paper/1996/10/22/proceedings-of-the-19th-nissc-
1996/documents/paper072_073_074/bowman.pdf

4. https://epub.wupperinst.org/frontdoor/deliver/index/docId/2082/file/WP151.pdf

5. https://www.ipmall.info/sites/default/files/hosted_resources/Hennessey_Content/IPRProtection.pdf

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