Quarantine series

 The World Intellectual Property Organization (WIPO) is one of the specialized agencies of the  

United Nations (UN) system of organizations. The “Convention Establishing the World Intellectual  

Property Organization” was signed at Stockholm in 1967 and entered into force in 1970.

Intellectual property is  

traditionally divided into two branches, “industrial property” and “copyright.”

The Geneva Treaty on the International Recording of Scientific Discoveries  

(1978)

The Geneva Treaty on the International Recording of Scientific Discoveries  

(1978)

Long before the United Nations was established, BIRPI was the responsible  

intergovernmental organization in the field of intellectual property. WIPO, the successor to BIRPI,  

became a specialized agency of the United Nations when an agreement was signed to that end  

between the United Nations and WIPO which came into effect on December 17, 1974.

The history and evolution of patent law in India span several acts and amendments. The first legislation relating to patents was introduced in 1856, followed by subsequent acts in 1859, 1872, 1883, and 1888. In 1911, the Indian Patents and Designs Act replaced all previous acts and brought patent administration under the Controller of Patents. Amendments were made in 1920, 1930, 1945, 1950, and 1952 to address various aspects of patent law. In 1957, the N. Rajagopala Ayyangar Committee recommended major changes, leading to the introduction of the Patents Bill in 1965 and the subsequent passage of the Patents Act in 1970. The 1970 Act remained in force until amendments were made in 1994, 1999, 2002, and 2005. The Patents Rules were also established to regulate patent administration, with amendments introduced over the years.

TYPE OF APPLICATIONS 

Form-1 is the specified form of the application wherein the details of the type of application is asked  

for. The type of application is mentioned by a ―digit‖ in the 12 digit application number. Though  

there is no specific sequence on the mention of type of applications for the convenience sake the  

following order is followed. 

a) CONVENTION APPLICATION 

This is the application filed by a foreign applicant within non-extendable time limit of 12 months  

from the earliest priority date. [Under Paris Convention].  

b) PCT NATIONAL PHASE APPLICATION 

This is the application which is a National Entry application filed by any applicant including  

Indian National and Resident within a non-extendable time limit of 31 months from the earliest  

priority date. 

c) ORDINARY APPLICATION 

This is the application which is neither Convention application nor a PCT National Phase  

Application. In other words this is the first application of the world, filed by an applicant, who is  

of either Indian or of Foreign origin. Indian filing date is also the First Priority Date of the  

application / applicant. 

d) DIVISIONAL APPLICATION 

Under the provisions of the Section 46(2) of the Indian Patents Act ―A patent shall be granted for  

ONE invention only‖. Section 16 of the Indian Patents Act provides guidelines on dealing with  

such application that comprise more than one invention. The applicant can suo motto make a  

request the Controller to allow him/her to file another application comprising the different  

invention that was disclosed in the first filed or parent application. Or, the applicant may file  

another application on the direction of the Controller to divide the application. Such applications  

are referred as Divisional Applications. Date of divisional application is ante-dated to the parent  

application and therefore the life term of 20 years is calculated from the filing date of the first  

mentioned application. 

Divisional Application(s) can arise from Convention Application or from PCT National Phase  

Application or from Ordinary application. 

If the first mentioned application comprises ―n‖ number of multiple inventions then theoretically  

there is a possibility of (n-1) divisional applications barring the first mentioned application. 

Divisional applications are prosecuted like a regular application and if granted renewal fee shall  

be paid to maintain the patent.

e) PATENT OF ADDITION

Chapter IX and Sections 54 to 56 deal with the applications related to any modification proposed  

to a filed or granted patent. 

Section 54 (1) of the Indian Patents Act reads thus; 

(1) Subject to the provisions contained in this section, where an application is made for a patent  

in respect of any improvement in or modification of an invention described or disclosed in the  

complete specification filed therefor (in this Act referred to as the "main invention") and the  

applicant also applies or has applied for a patent for that invention or is the patentee in respect  

thereof, the Controller may, if the applicant so requests, grant the patent for the improvement  

or modification as a patent of addition.

To give a push to IPRs, the Government of India released the  

‘National IPR Policy-2016’, comprising seven objectives.

List of some leading Instruments concerning Intellectual Property Rights is as below: 

1. The Paris Convention for the Protection of Industrial Property(1883) 

2. The Berne Convention for the Protection of Literary and Artistic Works (1886) 

3. The WIPO Copyright Treaty (WCT) 

4. The Patent Cooperation Treaty (PCT) 

5. Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of  

Patent Procedure 

6. The Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating  

to the Madrid Agreement 

7. The Hague Agreement Concerning the International Deposit of Industrial Designs 

8. The Trademark Law Treaty (TLT) 

9. The Patent Law Treaty (PLT) 

10. Treaties on Classification 

11. Special Conventions in the Field of Related Rights: The International Convention for the Protection of  

Performers, Producers of Phonograms and Broadcasting Organizations (“the Rome Convention”) 

12. Other Special Conventions in the Field of Related Rights 

13. The WIPO Performances and Phonograms Treaty (WPPT) 

14. The International Convention for the Protection of New Varieties of Plants 

15. The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) and WIPO-WTO  

Cooperatio

The Paris Convention for  

the Protection of Industrial  

Property ,1883

 

The Paris Convention for the Protection of Industrial Property,  

signed in Paris, France, on 20 March 1883, was one of the  

first intellectual property treaties. It established a Union for the  

protection of industrial property. The Convention is still in force.  

The substantive provisions of the Convention fall into three main  

categories: national treatment, priority right and common rules.

The Berne Convention for  

the Protection of Literary and  

Artistic Works,1886

 

The Berne Convention, adopted in 1886, deals with the  

protection of works and the rights of their authors. It provides  

creators such as authors, musicians, poets, painters etc. with  

the means to control how their works are used, by whom, and  

on what terms. It is based on three basic principles and contains  

a series of provisions determining the minimum protection to be  

granted, as well as special provisions available to developing  

countries that want to make use of them.

The WIPO Copyright 

Treaty (WCT) Signed 1996, 

Effective 2002

The WIPO Copyright Treaty (WCT) is a special agreement 

under the Berne Convention which deals with the protection of 

works and the rights of the authors in the digital environment. 

In addition to the rights recognized by the Berne Convention, 

certain economic rights are also grated. The Treaty also deals 

with two subject matters to be protected by copyright: (i) computer 

programs, whatever the mode or form of their expression; and 

(ii) compilations of data or other material (“databases”).

The Patent Cooperation 

Treaty (PCT) ,1970

The Patent Cooperation Treaty (PCT) makes it possible to seek 

patent protection for an invention simultaneously in each of 

a large number of countries by filing an “international” patent 

application. Such an application may be filed by anyone who is a 

national or resident of a PCT Contracting State. It may generally 

be filed with the national patent office of the Contracting State of 

which the applicant is a national or resident or, at the applicant’s 

option, with the International Bureau of WIPO in Geneva.

Budapest Treaty on the 

International Recognition 

of the Deposit of 

Microorganisms for the 

Purposes of Patent 

Procedure,1977

Adopted in 1977, the Budapest Treaty concerns a specific topic 

in the international patent process: microorganisms. All states 

party to the Treaty are obliged to recognize microorganisms 

deposited as a part of the patent procedure, irrespective of 

where the depository authority is located. In practice this means 

that the requirement to submit microorganisms to each and 

every national authority in which patent protection is sought no 

longer exists. The Cell of IP  

Promotion and Management (CIPAM) was set up and is tasked with implementing the IP Policy and interagency coordination. In 2016, the state of Telangana set up India’s first IP Crime Unit, to combat the menace of internet piracy.

IP Offices  

a) Patents – Delhi, Kolkata, Chennai, Mumbai 

b) Trademarks - Delhi, Kolkata, Chennai, Mumbai and Ahmedabad 

c) Copyrights – Delhi 

d) Designs – Kolkata 

e) Geographical Indication – Chennai 

f) Semiconductor Integrated Circuits Layout Design Registry (SICLDRS) – Delhi

Patent, in general parlance means, a monopoly given to the inventor on his invention to commercial  

use and exploit that invention in the market, to the exclusion of other, for a certain period. As per  

Section 2(1) (j) of the Patents Act, 1970, “invention” includes any new and useful; 

1. Art, process, method or manner of manufacture; 

2. Machine, apparatus or other article; 

3. Substance produced by manufacture, and includes any new and useful improvement of any of  

them, and an alleged invention

 

– In view of considerable progress made in the field of science and technology, a need was felt to  

provide more efficient legal system for the protection of industrial designs in order to ensure effective  

protection to registered designs, and to encourage design activity to promote the design element in  

an article of production.

 

– In this backdrop, The Designs Act of 1911 has been replaced by the Designs Act, 2000.

 

– The Designs Act, 2000 has been enacted essentially to balance these interests and to ensure that  

the law does not unnecessarily extend protection beyond what is necessary to create the required  

incentive for design activity while removing impediments to the free use of available designs.

 

– A utility model is an exclusive right granted for an invention, which allows the right holder to prevent  

others from commercially using the protected invention, without his authorization for a limited period  

of time. In its basic definition, which may vary from one country (where such protection is available) to  

another, a utility model is similar to a patent. In fact, utility models are sometimes referred to as “petty  

patents” or “innovation patents.”

 

– A trade secret can be protected for an unlimited period of time but a substantial element of secrecy  

must exist so that, except by the use of improper means, there would be difficulty in acquiring the  

information. Considering the vast availability of traditional knowledge in the country, the protection  

under this will be very crucial in reaping benefits from such type of knowledge.

 

– In order to have a comprehensive legislation for registration and for providing adequate protection  

to geographical indications and accordingly the Parliament has passed legislation, namely, the  

Geographical indication of Goods (Registration and Protection) Act, 1999. The legislation is  

administered through the Geographical Indication Registry under the overall charge of the Controller  

General of Patents, Designs and Trade Marks.

 

– The Convention on Biological Diversity establishes important principles regarding the protection of  biodiversity while recognizing the vast commercial value of the planet’s store of germplasm.

 

– However, the expansion of international trade agreements establishing a global regime of intellectual property rights creates incentives that may destroy biodiversity, while undercutting social and economic development opportunities as well as cultural diversity.

 

– The member countries were pressurized to change their IPR laws to confirm to the TRIPS agreement.

 

– India also followed the suit by placing in place legal frameworks for the management of biodiversity  

and Intellectual property laws.

Following India’s ratification of the Convention on Biological Diversity (CBD) at international level, the  

Biological Diversity Act, 2002 was adopted.

 

– The Biological Diversity Act aims at conservation of biological resources and associated knowledge as well as facilitating access to them in a sustainable manner and through a just process.

The Hague Agreement  

Concerning the International  

Deposit of Industrial  

Designs,1925 

The Hague Agreement Concerning the International Deposit of  

Industrial Designs, also known as the Hague system provides a  

mechanism for registering an industrial design in several countries by means of a single application, filed in one language, with one set  

of fees. The system is administered by WIPO.

 

The Hague Agreement consists of several separate treaties, the  

most important of which are: the Hague Agreement of 1925, the  

London Act of 2 June 1934, the Hague Act of 28 November 1960  

(amended by the Stockholm Act), and the Geneva Act of 2 July  

1999.

 

The original version of the Agreement (the 1925 Hague version) is no longer applied, since all states parties signed up to subsequent instruments. The 1934 London Act formally applied between a London act states that did not sign up to the Hague and/or Geneva Act in relation with other London act states until October 2016.  

Since 1 January 2010, however, the application of this act had already been frozen.

 

Countries can become a party to the 1960 (Hague) Act, the 1999  

(Geneva) Act, or both. If a country signs up to only one Act, then  

applicants from that country can only use the Hague system to  

obtain protection for their designs in other countries which are  

signed up to the same Act. For instance, because the Japan  

has only signed up to the 1999 (Geneva) Act, applicants which  

qualify to use the Hague system because their domicile is in the  

European Union can only get protection in countries which have  

also signed up to the 1999 Act or to both the 1999 and 1960 Acts.

The  governance of all categories of IP, except the Plant Variety and  Farmers‘ Rights Act, is carried out by the Department for Promotion  

of Industry & Internal Trade (DPIIT) under the aegis of Ministry of  Commerce and Industry, GoI. There are a few other dedicated  

organizations/departments established by the government to  promote patent-ecosystem (patent awareness, patent filing and  

patent commercialization) in India e.g. Technology Information  Forecasting and Assessment Council (TIFAC), National Research  

Development Corporation (NRDC) and Cell for IPR Promotion and  Management (CIPAM), etc

The world’s first patent was granted in 1790 to Samuel Hopkins in USA for the "making of pot ash and pearl ash by a new apparatus and process". In India, the first patent (known as ‘Exclusive Privileges’ at that time) was awarded in 1856 to a civil  engineer, George Alfred DePenning from Calcutta, for his invention, ‘An Efficient Punkah Pulling Machine’.

Non-Patent Literature (NPL) 

 Scholarly publications: Handbooks, Textbooks, Withdrawn  

Patents, Encyclopedias, Journals (IEEE, Research Gate,  

Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s  

PubMed, Conference Proceedings, Technical Reports, Public  

Conferences, etc. 

 Industry/trade publications: Industry reviews and public 

disclosures (Social media, YouTube, Books, Magazines,  

Datasheets, Blueprints, etc.).  

 Others: Newspapers, Websites, Technology blogs,  

Researchers‘ websites, etc.

The licensing of a patent can be exclusive or non-exclusive. In an Exclusive Licence, the patent is sold to only one individual/organization for a fixed time period. During this time period, no other person or entity can exploit the relevant IP except the named licensee. 

In Non-Exclusive Licence, a patentee can sell his patent rights to as many individuals/parties as he likes.

If the patentee is not able to commercialize his patent within  

three years from the date of the grant of a patent, any person may  

submit an application to the Controller of Patents for grant of  

Compulsory Licensing (of the patent), subject to the fulfilment of  

following conditions: 

 Reasonable requirements of the public concerning the patented  

invention have not been satisfied. 

 The patented invention is not available to the public at a  

reasonable price. 

 The patented invention is not worked in the territory of India.