What is “Work for Hire”?

The concept of “work for hire” refers to a situation where a person or entity, typically an employer or contractor, hires an individual (an employee or an independent contractor) to create a specific piece of intellectual property, and as a result, the ownership of the work is automatically assigned to the hiring party.

In the Indian IP context, work for hire influences two major areas:

1. Copyrights (for creative works like writings, music, films, software, etc.)

2. Patents (for inventions and innovations).

The way “work for hire” operates under Indian law differs slightly in each of these categories, and understanding these distinctions is crucial for creators, employers, and businesses alike.

Work for Hire in Indian Copyright Law

Legal Framework

In India, copyright is governed by the Copyright Act, 1957. Under this Act, the principle of “work for hire” is enshrined in Section 17, which deals with the ownership of copyright. Generally, the author or creator of a work is the first owner of the copyright. However, there are exceptions to this rule, one of the most significant being works created under employment or commission, which are considered “works for hire.”

Ownership of Copyright

According to Section 17 of the Copyright Act, the employer or commissioning party will be the first owner of the copyright in the following cases:

1. In the Course of Employment: If a work is created by an employee in the course of their employment, the employer is deemed the first owner of the copyright, unless there is an agreement to the contrary.  

2. Commissioned Work: If a work is created on commission for a specific purpose, the party commissioning the work will own the copyright unless there is an agreement to the contrary.

In the case Khemraj Shrikrishnadass v. M/s Garg & Co., the court addressed the issue of copyright ownership concerning work for hire under Indian law. The court held that in the absence of a contract stating otherwise, when an author creates a work at the request of another party for remuneration, the copyright typically passes to the person who commissioned the work. This reinforces the general principle that unless an explicit contract exists, the employer or commissioner becomes the first owner of the copyright in such works created during employment or as commissioned assignments.

Moral Rights

Even though the employer or commissioning party owns the copyright, the creator still retains moral rights under Indian law, including the right to claim authorship and prevent modifications that could harm the creator’s reputation.

Work for Hire in Indian Patent Law

Legal Framework

In India, patent rights are governed by the Patents Act, 1970. Unlike copyright, where the work-for-hire principle is relatively clear, patent law presents a more nuanced situation. Ownership of a patent typically depends on the terms of employment and whether the invention was created within the scope of the inventor’s duties.

Ownership of Patents

There is no automatic “work for hire” rule for patents in India as there is in copyright law. Instead, the inventor is considered the “first owner” of the patent and the ownership of inventions depends on the terms of the employment contract or a specific assignment agreement. This means that while an employee is the actual inventor, ownership of the patent can only be transferred to the employer through a written contract or agreement. Furthermore, there is always a separate debate about the inventions created by the employee during the course of employment and since the inventor (employee in this case) is the first owner of the patents the Employers are advised to always execute a assignment agreement in place.

1. In the Course of Employment: If an employee invents something as part of their job duties (e.g., researchers, engineers), the employer generally owns the patent subject to the assignment agreement.

2. Outside Employment Duties: If an employee invents something unrelated to their job description and outside the use of company resources, the employee may have the right to the patent.

The case of Darius Rutton Kavasmaneck v. Gharda Chemicals Ltd. (2014) revolves around a dispute concerning intellectual property rights in the context of patent law and “work for hire.” The case involved the question of whether the inventions and patents developed by Kavasmaneck, a key employee of Gharda Chemicals, belonged to him individually or to the company. The court ruled in favor of Gharda Chemicals, affirming that the inventions created by Kavasmaneck during his tenure with the company fell under the “work for hire” doctrine, as they were made in the course of his employment and used the company’s resources. This case highlights the importance of employment agreements and the principle that inventions made by employees in the scope of their work duties are typically owned by the employer

Comparing Copyright and Patent Work for Hire

While the concept of work for hire is prevalent in both copyright and patent law, there are some key differences:

1. Automatic Ownership:

   – In copyright, the employer or commissioner is typically the automatic owner unless there is an agreement to the contrary.

   – In patent law, ownership depends on the employment context and the existence of a clear agreement, as the inventor is the first and original owner by default.

2.   Scope of Work:

   – In   copyright, almost any work created within the course of employment may fall under work for hire, regardless of the employee’s specific role.

   – In   patent law, only inventions created within the scope of the employee’s role as an inventor (such as in R&D) typically belong to the employer.

Conclusion

The concept of “work for hire” is an essential aspect of intellectual property law in India, defining how ownership is assigned in both copyrightable works and patentable inventions. For employers, employees, and independent contractors alike, it is critical to have clear agreements in place to establish ownership of IP created during the course of employment or contract. The case laws discussed highlight that Indian courts generally favor employers in matters of work for hire, particularly in copyright law, while patent law provides more room for negotiation and interpretation.

Understanding the nuances of “work for hire” ensures that all parties involved can protect their intellectual property rights and avoid potential disputes.

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Conventional Route Trends

The conventional route, which involves filing a patent application directly with the Indian Patent Office within 12 months of the priority date, has seen a steady increase in activity. This route is often favoured by domestic applicants and businesses seeking to protect innovations promptly within the country.

Growth in Domestic Applications: There has been a noticeable rise in patent applications from Indian inventors and small to medium enterprises (SMEs). This trend is fuelled by increased awareness of intellectual property rights and government initiatives such as the “Startup India” campaign, which offers reduced filing fees for startups.

Technological Advancements: Sectors like biotechnology, pharmaceuticals, information technology, and artificial intelligence have dominated recent filings. Innovations in these areas reflect India’s growing prowess in high-tech and research-driven industries.

Streamlined Processes: The Indian Patent Office has made efforts to streamline the patent examination process, reducing the time taken to grant patents. Initiatives like the expedited examination for startups and the electronic filing system have contributed to more efficient processing of applications.

National Phase Route Trends

The national phase route, allowing international applicants to enter India’s patent system under the PCT within 31 months from the priority date, continues to be a popular choice for foreign entities seeking protection in India.

Increase in International Filings: India’s robust market potential and favourable IP environment have led to an increase in national phase entries. Companies from the United States, Europe, Japan, and China are prominent users of this route, reflecting India’s importance as a key market for global innovation.

Diverse Technological Domains: Similar to the conventional route, the national phase route has seen a surge in applications in advanced technology sectors. Notably, there has been significant activity in renewable energy technologies, medical devices, and consumer electronics.

Legal and Regulatory Developments: Recent amendments in Indian patent laws, aimed at harmonizing with international standards, have made the national phase route more attractive. The introduction of measures like the Patent Prosecution Highway (PPH) with Japan has facilitated faster processing of applications, thereby encouraging more international filings.

Analysis of recent filing trends for both routes

Recent filing trends for patents in India, through both the conventional and national phase routes, indicate a robust growth in domestic and international patent activity. The conventional route has seen a rise in applications from Indian inventors and SMEs, spurred by government initiatives and heightened IP awareness, with notable filings in biotechnology, IT, and AI sectors. Concurrently, the national phase route under the Patent Cooperation Treaty (PCT) has attracted increasing international interest, particularly from the US, Europe, Japan, and China, driven by India’s expanding market potential and improved regulatory environment. Technological advancements and streamlined processes, such as expedited examinations and electronic filing, have further enhanced the appeal of patenting in India.

Impact of technological advancements on filing strategies

Technological advancements are significantly reshaping patent filing strategies, compelling inventors and companies to adopt more sophisticated and proactive approaches. The rise of cutting-edge fields such as artificial intelligence, biotechnology, and renewable energy has led to a surge in complex and interdisciplinary inventions, necessitating comprehensive prior art searches and strategic global filings to secure broad and robust protection. Additionally, advancements in digital tools and patent analytics enable applicants to identify optimal filing routes, anticipate market trends, and streamline the drafting and submission processes. As a result, the integration of technology into IP management not only enhances the efficiency and precision of patent filings but also strengthens the strategic positioning of patents in a competitive marketplace.

Predictions for future trends in patent filings

Future trends in patent filings are likely to be characterized by an increasing emphasis on emerging technologies and sustainability. Innovations in areas such as artificial intelligence, quantum computing, biotechnology, and green technologies are expected to dominate patent landscapes, driven by ongoing research and global efforts to address environmental challenges. Additionally, the patent filing process will continue to evolve with advancements in digital tools, such as AI-powered patent analytics and blockchain for secure and transparent IP management, making the process more efficient and accessible. Geographic trends may also shift, with developing countries like India and China playing a more prominent role in global patent activity. As businesses and inventors seek to protect their innovations in a rapidly changing world, strategic, international, and collaborative patent filings will become increasingly crucial.

Challenges and Opportunities

Despite the positive trends, several challenges remain. The backlog of pending applications, although reduced, still poses a hurdle. Additionally, ensuring consistent quality in patent examination is critical as the volume of applications grows.

However, these challenges also present opportunities. Continued investments in digitization, capacity building within the Patent Office, and fostering a more innovation-friendly ecosystem can further enhance India’s position as a global patent filing destination.

Conclusion

The evolving landscape of patent filing in India, encompassing both the conventional and national phase routes, highlights a dynamic interplay between domestic innovation and international interest. The conventional route has become increasingly popular among Indian inventors and SMEs, driven by government initiatives and a growing awareness of intellectual property rights. Meanwhile, the national phase route under the PCT attracts substantial international filings, reflecting India’s significance as a key market for global innovation. Technological advancements are reshaping filing strategies, enabling more efficient and strategic patent management. Future trends are expected to focus on emerging technologies and sustainability, with India poised to play an even more prominent role in the global patent arena. While challenges such as application backlogs and quality consistency remain, they also present opportunities for further improvements. By continuing to invest in digitization and capacity building, India can enhance its position as a leading destination for patent filings, benefiting inventors and businesses worldwide.

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NBA stands for National Biodiversity Association which is a statutory body that was established in 2003 by the Central government for the purpose of the Biological diversity Act, 2002 to regulate access and equitable sharing of benefits arising from any biological resources.

What is a Biological Resource?

As per Section 2(c) of the Biological Diversity (Amendment) Act (BDA), 2023, “biological resources” includes plants, animals, micro-organisms or parts of their genetic material and derivatives (excluding value added products) with actual or potential use or value but does not include human genetic material wherein “derivative” means a naturally occurring biochemical compound or metabolism of biological resources, even if it does not contain functional units of heredity.

When Do We Need NBA Approval?

It is mandatory to apply for NBA approval under BDA 2002 through Form 3 with appropriate fee (INR 500) before patent application in or outside India under the following condition:

• If the invention that is to be patented is based on any research or information on a biological resource wherein the source and geographical origin of the biological material is from India.
• If the biological resource is a plant, before applying for plant breeders right in any country other than India.

The NBA approval shall be obtained prior to the grant of the Patent provided that the NBA shall dispose of the application for permission made to it within a period of ninety days from the date of receipt thereof. In case of foreign jurisdiction, NBA approval shall be granted only to those countries that are intimated in the Form 3.

Relevant Sections

• As per Section 10 (4)(ii) of The Patent act, 1970, an applicant must disclose the source and geographical origin of the biological material in the specification, when used in an invention.
• Section 6 of BDA act, 2023:

(1A) Any person applying for any intellectual property right, by whatever name called, in or outside India, for any invention based on any research or information on a biological resource which is accessed from India, including those deposited in repositories outside India, or traditional knowledge associated thereto, shall register with the National Biodiversity Authority before grant of such intellectual property rights.

(1B) Any person who has obtained intellectual property right, by whatever name called, in or outside India, for any invention based on any research or information on a biological resource which is accessed from India, including those deposited in repositories outside India, or traditional knowledge associated thereto, shall obtain prior approval of the National Biodiversity Authority at the time of

commercialization.

• As per section 19 of BDA act, 2023, Any person who intends to apply for a patent or any other form of intellectual property rights, whether in India or outside India, referred to in of section 6 (1), may make an application to the National Biodiversity Authority in such form, on payment of such fee, and in such manner, as may be prescribed.

When Do We Not Need NBA Approval?

NBA approval is not required in following cases:

• If the biological resource is neither obtained from India or sources from India
• If the invention does not relate to a biological resource defined under the BDA act, 2002 such as Value-added products, Biowaste and synthetically prepared biological material.

Relevant Section & Definitions

• As per Section 2(p) of the BDA, 2002 “value added products” means products which may contain portions or extracts of plants and animals in unrecognizable and physically inseparable form.
• Biowaste – Waste that is generated after the exhaustive economic use of the biological resource.
• Synthetically prepared biological material includes secondary metabolites from microbes, synthetic sugars, synthetic biomaterials, nanomaterials and so on.

Why Should Apply For NBA Approval?

The following applicants should apply for NBA approval before patent application disclosing biological resources from India:

• Indian Citizen
• Non-Indian
• Non-Resident Indian (NRI)
• Entities registered or incorporated in India.
• Entities not registered or incorporated in India.

Why To Disclose Biological Resource & Apply For NBA Approval?

The National Biodiversity Authority may, while granting the approval under section 6(2) of BDA, 2002, impose benefit sharing fee or royalty or both or impose conditions including the sharing of financial benefits arising out of the commercial utilization of such rights from biological resources.

The Biological Diversity Act, 2002 has a penal provision in this regard under section 55 (1) which provides that “whoever contravenes or attempts to contravene or abets the contravention of the provisions of the section 3 or section 4 or section 6 shall be punishable with imprisonment for a term which may extend to five years, or with fine which may extend to ten lakh rupees and where the damage caused exceeds ten lakh rupees such fine may commensurate with the damage caused, or with both.”

If the complete specification does not disclose or wrongly mentions the biological material source and geographical origin, then, according to clause (j) of Sections 25(1) and 25(2) respectively of the Patents Act, 1970, it will create a ground for pre and post-grant opposition.

If NBA approval is not obtained/submitted, a controller can file an objection in the examination report. Even if one did not raise the complaint during the examination process, it could be brought subsequently.

How To Apply For NBA Approval?

For the sake of patent application, a person seeking approval from the NBA must make an application on NBA Form 3 through ABS (Access and Benefit Sharing) e-filing with INR 500 as a fee. The particulars that are required for Form 3 application is given below:

1. Full particulars of the applicant including

(a) Name of the applicant (s) as indicated in the IPR application submitted to the Patent Office.

(b) Complete address of the applicant (s) with state/province name/country and PIN code/zip code, Telephone/ Fax Number (Land line with code), Mobile Number and Email address.

(c) Complete professional profile or bio-data of the applicant (s) not exceeding one page.

(d) Bona fide letter in original from the institution or organisation with whom the applicant (s) is affiliated.

2. Details of the invention on which IPRs sought including

(a) Full and exact title and abstract of IPR on which application is made.

(b) Patent office reference number, if application is filed before the Patent Office.

3. Details of the biological resources and or/associated knowledge used in the invention including

(a) Scientific name(s) of the biological resource(s)

(b) common name(s) of the biological resource(s)

(c) Details of associated knowledge used and source of such information, if applicable.

(d) Provide copy of approval of NBA for access to biological resources and/ or associated knowledge (if the applicant is covered under Section 3(2) of BD Act)

4. Geographical location from where the biological resources used in the invention are collected

(a) Indicate the name of village, panchayat, block, taluk, district and state from where the biological resource(s) were collected.

(b) If the biological resource(s) were collected or procured from the Institute/ Organization/ Company/local trader/individual, provide exact contact details (address and phone number) of such supplier and invoice/evidence for such purchase.

(c) Indicate whether the material was sourced from wild/cultivated

5. Details of any traditional knowledge used in the invention and any identified individual/ community holding the traditional knowledge

(a) Provide full details of individual/communities holding such traditional knowledge (b) In case, this knowledge sourced from texts provide source of such information (photocopies of relevant information may be attached wherever applicable)

6. Details of Institution where Research and Development Activities carried out

(a) Name and address of the institute where research was carried out.

(b) Please provide details of collaboration with other institutions/organization/company, if any, during the course of research activities.

7. Details of economic, biotechnological, scientific or any other benefits that are intended or may accrue to the applicant due commercialization of the invention

(a) Nature of benefits envisaged

(b) Investment in Research and Development, in the current invention.

8. Declaration by the applicant(s).

9. Authorization letter from the applicant (s) to any agent or representatives.

Conclusion

Any patent applicant should be mindful while using biological resources from India for their research and innovation. It is mandatory to apply for NBA approval before any patent application in or outside India and the respective details should be disclosed in the description part of the specification.

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Provisional specification: 

A provisional specification is a broad overview of the invention that discloses the field of invention with broad scope and objective of the invention. The main purpose of submitting a provisional specification is to claim a priority date of patent application. It is useful when the invention is in its conceptual and preliminary level. A patent application can have more than one provisional specification disclosing various aspects of a single invention. If multiple provisional specifications are cognate, the Controller allows the applicant to file a single complete specification. In any case, a complete specification should be filed within 12 months from the earliest date of filing of the provisional specification. If not, the application shall be deemed to be abandoned (Reference Section 9(1) and 9(2),The Patents act, 1970).

Complete specification:

A complete specification includes a complete disclosure of all the technical and scientific details of an invention in the form of embodiments. It should include all the components, features and the best method of performing the invention so that any person skilled in the art can easily understand and recreate the same invention with the information given in the embodiments. A complete specification can be treated as a provisional specification by the Controller, if the applicant requests the Controller within twelve months from the priority date (Refer Section 9(3),The Patents act, 1970).

Content of specification:

The various content of specification as per Section 10 of The Patents act, 1970 is listed below:

(a) Title –  The description begins with a title that sufficiently indicates the subject-matter to which the invention relates and should not exceed 15 words.

(b) Name and address of the applicant – The full name and the complete address of the applicant along with the nationality should be disclosed.

(c) Preamble – Preamble is an introductory statement that is different for provisional and complete specification.

In case of provisional specification, the preamble should be “The following Specification describes the invention”.

In case of complete specification, the preamble should be “The following complete specification particularly describes the invention and the manner in which it is performed”.

(d) Field of the invention – This defines the broad technical area that relates to the invention.  

(e) Background of the invention – This includes the existing prior arts and their respective limitations or drawbacks. This should end with one or more problem statements and a corresponding solution statement using the invention. This is useful for the patent examination procedure.

(f) Objective of the invention – An invention can have more than one objectives and should be listed in this section. This includes the novel features and/or components that are part of the invention and a simplified process of performing the invention.

(g) Summary of the invention – A summary discloses the scope of the invention and recites the essential features of the invention. This also includes the advantages and application of the invention.

Drawings and Description of drawings

Drawings are provided for the better understanding of the inventions. In this section, the drawings are listed by Arabic numerals and illustrates the representation of the drawings. The same number is referred in the description wherever applicable. As per Rule 15 of The Patents Rules, 2003 (as amended), the drawings:

• Should be neatly prepared on a A4 size with a clear margin of at least 4 cm on the top and left hand and 3cm at the bottom and right hand of every sheet. 
• Scaled sufficiently large to show the inventions and the components/features are numbered sequentially.
• Should not include dimensions and any descriptions except in case of a flow chart.

Detailed description of the invention

The section should sufficiently and clearly describe the invention along with the method by which it is to be performed to enable a person possessing average skill in, and average knowledge of, the art to which the invention relates, and to work the invention. The description can be provided along with a detailed drawing to understand the invention better. In case of a product invention, the components and composition of the final product has to be described in detail. In case of a process invention, the steps of the process should be explained in detail and include all the distinguishing features of the steps. It is essential that the unique component or the step of the invention is characterized to differentiate from the components or steps in the prior art. 

If a biological material is used in the invention, it should be included in the description and if such material is not available to the public, the application shall be completed by depositing the material before filing the application to an international depository authority (Refer Section 10, The Patent Act, 1970). All the available characteristics of the material has to be correctly included in the specification including the name, address of the depository institution and the

date and number of the deposit of the material at the institution. The source and geographical origin of the biological material should be disclosed in the specification.

Claims

The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept. It shall be clear and concise and shall be fairly based on the matter disclosed in the specification. Each claim should contain a single sentence with the proper use of punctuations. 

In terms of structure, there are two type of claims namely independent and dependent claims. The first claim is an independent claims and the subsequent claims are dependent claims. There can be multiple independent claims in an application. Each independent claim defines novel and inventive features of the invention for which the monopoly of the patent is sought. Dependent claims narrow the scope of the independent claims which recites the specific features of a component in the independent claims.

As per The Patent act, 1970 an invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under sections 3 and 4 of the Act.

Based on this criteria, either a product or a process can be claimed. The product claim includes apparatus, device, machine and composition of a final product. The process claim recites a series of steps that results in a product. 

Abstract

An abstract commence with a title of the invention and should not exceed 150 words. In the presence of drawings, it should be accompanied with at least one drawing that shall be published. The abstract is a concise summary of the matter contained in the specification that summarizes the technical advancement in the field of the invention, principal use of the invention, a simple process and novel features of the invention which characterise the invention from its prior art. The abstract shall contain the chemical formula or structures depending on the need. These information are particularly useful for the examination process during the prosecution stage to confine the invention to a particular field. (Reference Rule 13, The Patents Rules, 2003, as amended).

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Now the major challenge faced while applying for a Patent as a beginner is to figure out the right way to draft the patent application – which would not only ring out the best of the invention by navigating through the details, but also make it an easy go affair to get the patent granted. In this article we would take you through the crucial factors which should be borne into mind – before and while drafting the Patent – more specifically a Mechanical invention as a beginner. 

Checks to follow before initiating patent drafting

Patent is all about protecting an invention, involving research and technology which is novel, inventive and has got industrial applicability. Hence, the foremost important step before proceeding or processing the drafting of a patent application, it is the novelty and inventiveness check which needs to be done. This will ascertain the fact whether the subject-matter is likely to proceed and get a patent grant or not. Thus, in a gist, the checks required are:

• Check for patentability criteria (novelty, inventiveness, industrial applicability) – this step might some extra effort in the beginning, but then, it can prove to be a great time (and money) saver later;
•  If you are a foreign national filing a patent application in India, you need to grant Power of Attorney to an India resident to aid you in filing the patent;
• Check for relevant forms and fees requirement – which will help you to plan out the government charges required;
• Plan out whether the patent application would be filed only in India or even outside India – formal requirements change accordingly;

Segments of a patent specification and the details under each segment

Title: Title is nothing but a crisp heading of the invention which should broadly indicate the domain of the invention. Title of the invention should be not more that 15 words. 

Preamble: Preamble of the invention differs for Provisional and Complete specification and is an indicative of the fact as to whether the application is a description of invention or even the manner in which it is performed.

Preamble for Provisional Specification: ‘The following specification describes the invention’

Preamble for Complete Specification: ‘The following specification particularly describes the invention and the manner in which it is to be performed’

Field of invention: This is indicative of the subject matter to which the invention relates and also the preferable area of usage of the application. 

Background of the invention: If you had ever noticed, every story has a background which sets the plot and thereafter the entire story is based out of that plot. The background of invention in case of a patent specification is no exception – this portion highlights the present available technicalities (state of art) in the domain of the present invention for which the patent has to be drafted and thereby highlights the drawbacks of the state of art – thus indicating the problem statement. This problem statement is more like setting the plot on which the rest of the patent draft would be based upon. 

In case of a Complete Specification drafting, the background is followed by Objective of the present invention (which can be a separate sub-category as well).

Summary of the invention: According to unwritten rules of the Patenting system, the summary of patent specification should be verbatim of the independent claims of the patent specification. In case it is a provisional specification, summary is more of a gist of the inventive concept of the invention – which in future can even be amended in the complete specification stage to make it a verbatim of the independent claims of the patent specification.

Brief description of drawings: This section mentions the drawings of the invention with a very brief (on-liner) indication of which drawing is indicative of what.

Detailed description of drawings: This is the section under which a complete picture of the invention is depicted. The main object of this segment is to enable a person skilled in the art to reduce the invention into practice without further experimentation. Again, according to unwritten rules of the Patenting system, this segment should consist verbatim of all the claims – suitably placed – along with the other details of the invention. This is the segment which should detail out on the enablement of the invention, the technical advantages, comparative details (if any), industrial applicability. Overall, this is the segment which should capture all the details of the invention to bring out the essence of the invention.

List of reference numerals: This is the segment which indicates what the numerals indicate in the drawings as mentioned (this segment is only required when drawing are provided along with the invention).

Claims: Claims are those which set the boundaries of the invention. Every claim consists of three parts – Preamble, Transitional phrase, and Body. Since the claims define the scope of the invention, it should be carefully drafted to cover all aspects of an invention and also at the same time bring out the novel aspect of invention in the independent claims and the inventive aspect in the dependent claims. Again, according to unwritten rules of the Patenting system, in India, two-part claims are most preferred ones wherein the claim should consist of non-novel parts followed by ‘characterised’ or ‘wherein’ and then novel component of the invention. It should be further kept in mind that the claims should not be too narrow – neither too broad. In case its too narrow, anything in future falling outside it and getting a patent is likely to happen. While on the other hand, if the claim is too broad, it would attract multiple prior arts and thus creating challenges to get the patent granted.

Abstract: Abstract is basically a concise summary of the matter contained in the specification. It should be indicating clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention. Abstracts should always indicate the reference (the most appropriate) figure that best describes the invention (in cases whereby the patent application comprises of drawings).

Things to keep in mind when drafting a patent specification

Some of the frequently missed things which should be borne into mind while drafting a patent application:

• Go for a provisional specification drafting when the invention is yet to reach the end results, and complete specification if otherwise;
•  Start with claims drafting in case of complete specification – that would help chalk out the boundaries of the invention;
• Always use the correct preamble for the provisional/complete specification to avoid objections in future;
• Patent office always prefers the preamble of the independent claim to be same as the title of the patent application;
• Add multiple embodiments so as to cover as many variants of the invention as possible;
• Abstract should always have the reference of the most appropriate drawing that best explains the invention;
• The specification should indicate only one invention/a single inventive concept;
• Reference numerals should be indicated in the detailed description, claims and abstract.

FAQs

Is there a word or page limitation in Indian Patent Drafting?

In the Indian Patenting system, for an application which goes beyond a total page count of 30 pages, there is an additional fees requirement. 

Furter, for the abstract, it is preferable to keep the work count up-to 150 words and similarly, for the title of the invention, the word count should not go beyond 15 words. 

Is there any language or font style or page-layout or margin details to be followed while drafting?

According to Rule 9, The Patents Rules, 2003 (as amended), these are the following criteria:

Language: Hindi or English (unless otherwise directed or allowed by the Controller)

Font style: As such text font is not specifically mentioned, but the most commonly used fonts in a patent document are Times New Roman, Arial or Courier. Nevertheless, it is mentioned that the text should be in large and legible characters not less than 0.28 centimetre high with deep indelible ink with lines widely spaced not less than one and half spaced only upon one side of the paper.

Page layout and margin: The patent document should be on such paper which is flexible, strong, white, smooth, non-shiny, and durable of size A4 of approximately 29.7 centimetre by 21 centimetre with a margin of at least 4 centimetres on the top and left-hand part, and 3 centimetres on the bottom and right-hand part thereof. The pages should be numbered in consecutive Arabic numerals in the centre of the bottom of the sheet. Further, it should contain the numbering to every fifth line of each page of the description and each page of the claims at right half of the left margin. 

Are drawings mandatory?

Drawings aren’t a mandate, but preferred – specifically in mechanical or any relevant core domain patents. No descriptive matter shall appear on the drawings except in the flow diagrams. Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the top and left hand and 3 cm at the bottom and right hand of every sheet. Additionally, drawings shall be on a scale sufficiently large to show the inventions clearly and dimensions shall not be marked on the drawings.

Do you need to be a patent attorney to draft a patent?

A patent attorney isn’t a mandate when drafting or even filing a patent application and the same can be drafted and filed by the applicant of the patent as well. Only challenge lies in the fact that the applicant might not be aware of nitty gritty of the patent application, the legalities, forms, and fees involved. Hence, it is always advisable to seek the help of an expert – which is a patent attorney in the present case to process the patent application. 

Can I club multiple inventions in a single patent draft?

Unity of invention is one of the crucial factors of a patent application, thus, clubbing multiple inventions in a single patent draft isn’t allowed. A complete specification shall always relate to a single invention, or to a group of inventions linked so as to form a single inventive concept (Section 10(5), the Patents Act, 1970).

How can you file a patent application post drafting of the same and till grant?

Post drafting of a patent application, it is the relevant forms and fees requirement which comes into play to process the application for filing.

Author: Priyanka Chakraborty

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If you have an invention that is capable of passing all three of the tests for patentability, the next step is to choose the type of patent that you want to use for your invention. Utility, product, process, design, plant, and provisional patent applications are the categories of Patents that can be protected in India. Each category has its own set of requirements to qualify, and it protects a separate category of ideas, innovations, or discoveries.

Different Patents

Utility Patent/ Patents

Patents granted in India and utility patents provide essentially the same form of protection, although they are described using different terminology. In India, “patent” is used as opposed to “utility patent.” In order to obtain a patent in India, one must adhere to the stringent requirements enumerated in the country’s patent laws. The invention must be novel, inventive, have industrial application, and not fall under the Indian Patents Act’s list of non-patentable subject matter. Patents and utility patents are granted in India for new inventions that satisfy legal requirements. The patent holder enjoys exclusive rights for twenty years, including the ability to prevent others from selling, using, manufacturing, offering for sale, or importing the patented invention.

Product Patent

A product patent, as the name suggests is granted for the end product. It provides increased protection for the inventor’s creation by reducing the amount of competition from other companies producing the same products. On the other hand, a process patent safeguards just the steps involved in the production of a good and not the good itself. The product patent increases the level of monopoly while decreasing the amount of competition in the market.

Process Patent

Protection under a process patent is only given to a particular procedure that is employed in the manufacturing of a product and not to the product itself. Many people believe that a process patent offers just a limited level of protection. The reason for this is that it does not restrict or hinder others from producing or generating the same product by making use of a different procedure. As a consequence of this, it is feasible for a single product to be the subject of many method patents that have been awarded. This will, in the long run, make the inventor’s monopoly less effective, which will result in an increase in the number of competitors.

Provisional Patent

When an invention is still in the process of being developed, a provisional patent application might be filed for it. A provisional patent is essentially an application that does not require the disclosure of the details of the invention, but it is utilised as a tool to protect your concept for a period of one year. If the final patent application is not submitted within one year of the provisional patent application being filed, the provisional patent application will cease to exist if this requirement is not met.

As was indicated earlier, a provisional application is distinct from a conventional patent application in that it does not require formal drawings or extensive explanations of the invention. Instead, all that is required is an abstract and some fundamental information about how your idea functions. Because of this, it is simpler to file early even if one does not have all of the facts nailed down.

Design Patents

According to the Designs Act of 2000, the term “Design” refers to characteristics of an object’s shape, pattern, configuration, ornament, or composition of colours or lines that are applied in three dimensional or two dimensional or in both forms using any of the processes, whether manual, chemical, mechanical, separate, or combined, and which, in the finished article, appeal to or are judged wholly by the eye.

Design patents are a type of patent that can be obtained in several countries, including the United States, China, and the European Union. Design patents are granted for novel and creative designs. However, in India, a “Design” is not considered to be a type of patent, and the “Designs Act, 2000” is the piece of legislation that governs the process of filing for and registering a “Design.”

Additionally, filing for a design is much cheaper than filing for a patent of any kind.

Plant Patents

Under section 3(j) of the Patent Act of 1970, plant and animal patents are not deemed inventions and are therefore not eligible for patent protection. Asexually produced or found in their natural, uncultivated state, plants cannot be patented either. While it is not possible to patent a plant itself in India, a patent holder may still claim patent rights to a genetically modified plant by patenting the method by which the plant was modified. This way is also considered as a loophole in the said clause of the Patents Act,1970.

How to choose?

Before proceeding with the patent application, it is essential to thoroughly comprehend your invention. One must evaluate the type of their invention, whether it is a machine, process, product, plant, or design. If the invention is a design, it will not be eligible for patent protection in India but will be governed by the Industrial Design law. In addition, if your invention has not yet been completed, it will fall under the provisional patent, and so forth.

What mistakes to avoid?

The next stage is to determine whether your inventions pass all three patentability tests. Even if the requirements for novelty are met, a bogus invention with no practical applicability is equivalent to nothing. Therefore, an invention must satisfy all three criteria for patentability; meeting only one or two will not suffice.

Lastly, initiating the filing process for a patent is always time- and resource-intensive, but seeking professional assistance from patent attorneys is always a good idea, and filing a patent will become a breeze for those who are struggling to do so.

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Revocation, in its broadest sense, is the action of taking back something that has previously been granted. The same is true with patents, which cannot be regarded as permanent once issued. Revocation of a patent refers to the revocation of the patentee’s previously obtained rights. Any interested party may file a petition for the revocation of a patent, or the Central Government may do so as well.

Ground for revocation of Patent:

The grounds for revocation of Patent is given in Section 64 of the Indian Patent act, 1970:

• An invention having identical specifications in another Indian patent that was issued with a preceding filing date or priority date.
• The grant of Patent was done to a person who was not entitled for the same.
• A person who is legally entitled to the Patent received it from another without authorization. A different person who is legitimately entitled to the patent may submit a request for its revocation. 
• According to Section 2(1)(j) of the 1970 Patent Act, the invention claimed in the awarded patent is not real.
• The invention claimed in the patent lacked novelty in light of past public use or prior knowledge.
• The innovation has no practical application, which means that the Patent is not being used at all or is not producing the expected outcomes as described in the Patent specifications.
• The Patent lack any inventive step.
• The claimed invention, which is a product of import to India, is not a recent development. The invention was widely publicized and in use in India prior to the publication date or priority date.
• The specifications of the patent do not sufficiently or clearly explain the scope of any claim.
• The patent specification falls short of accurately or sufficiently describing the invention or its processes.
• A misleading representation or implication was used to obtain the Patent. The claim or suggestion must be in accordance with any fact or representation made in connection with the grant of the patent or with any of the specifications thereof.
• In accordance with Section 8 of the Patent Act of 1970, the patent applicant has not revealed all the necessary information. Additionally, the applicant provided inaccurate information about the invention.
• In accordance with Section 35 of the Patent Act of 1970, the Patent Applicant failed to comply with the Controller’s request for confidentiality.
• The Controller’s failure to abide by the confidentiality directive when a patent application was filed outside of India without his or her prior consent.
• The applicant secured the right to change a patent’s whole specification under Sections 57 or 58 of the Patent Act of 1970 by fraud.
• The geographical origin or source of the biological material used in the invention are not fully disclosed in the patent’s specification.
• Any local or indigenous community in India or elsewhere has access to the traditional knowledge asserted in the patent specification.

The Supreme Court (SC) explained in its ruling in the case of Dr. Aloys Wobben & Anr. vs. Yogesh Mehra & Ors that, in accordance with Section 64 of the Patent Act, 1970, a patent may be revoked either through the submission of a revocation petition to the Intellectual Property Appellate Board (IPAB) or through the filing of a counterclaim in a lawsuit alleging patent infringement. The patent holder cannot be sued in both cases at the same time by the person challenging the validity of the patent. The challenger won’t be able to use the other remedy if the court tries to use one of the remedies.

Other provisions for revocation of patents:

Section 65-Revocation in cases related to Atomic Energy:

The Central Government may revoke a patent, according to Section 65 of the Patent Act of 1970. The Central Government may only revoke a patent after proving that the invention covered by the patent has something to do with atomic energy. According to the restrictions outlined in the Atomic Energy Act of 1962, patents cannot be granted for inventions relating to atomic energy. As a result, the Central Government of India does not permit the grant of a patent for an invention involving atomic energy.

Section 66-Revocation of Patent in Public Interest:

According to Section 66 of the Patent Act of 1970, where the Central Government believes that a patent or the way in which its connected rights are exercised is damaging to the general public or the State, the patent should be cancelled. The patent holder should be given a fair chance to exercise his or her right to be heard. The decision to revoke the patent will be made in accordance with the circumstances after the patent holder has been given an opportunity to respond.

Section 85-Revocation by Controller for Non-Working:

According to Section 85 of the Patents Act of 1970, a patent may be cancelled for failure to function. Any interested party or the government may submit an application to the Controller for the revocation of a patent with regard to a patent for which a compulsory license has been issued. Within two years of the compulsory license being granted, the patent revocation must be filed.

The grounds for Revocation are

• The patented invention does not function in Indian territory;
• The patent is not being used in a way that satisfies the reasonable requirements of the general public;
• The patented invention is not accessible to the general public for an affordable price.

Conclusion

The exclusive rights that have been given to the patentee with regard to an invention are cancelled when a patent is revoked. A patent may be revoked under Section 64 of the Act on a petition from any interested party, on a request from the Central Government made to the Appellate Board, or on a counterclaim made in a lawsuit brought by the High Court alleging patent infringement.

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1. Before submitting a patent application, do not publicly disclose your invention

One of the most crucial points to be aware of when looking to patent your concept is that the specifics of your invention cannot have been made publicly available or publicly disclosed prior to the first time you submit a patent application. This is due to the requirement that an invention be novel at the time a patent application is filed in order for it to qualify as patentable. As a result, if you have already disclosed your invention’s specifics to the public, it no longer qualifies as unique and violates one of the key requirements for patentability.

2. Before submitting your patent application, conduct a thorough patent search

An invention must meet the fundamental criteria of novelty and be regarded as innovative at the time your patent application is filed in order to be recognized patentable and hence protectable. Knowing the most relevant inventions that were made before the invention you are claiming as your own will help you decide whether or not these requirements have been met. Therefore, it is advisable to conduct some basic patent research before submitting a patent application in order to ascertain whether the specifics of your invention are previously known or perhaps obvious in light of some prior identical disclosures. The most efficient way to do this is through online searches, both general and through specialized patent databases with public patent specifications. The European Patent Office manages Espacenet, a freely available online patent database, where users can find examples of patent specifications. Preferably, generic searches should be conducted in addition to patent searches, such as online, in trade journals, or elsewhere.

3. Obtain NDAs, confidentiality agreements, and IP agreements that have been signed

You should not publicly release any information about the product or innovation before consulting a patent attorney to protect your concept with a patent. Public disclosure sets off various legal processes through which rights may be irreparably lost.

To prove that you are the true inventor, you should also have written records of each step that went into creating your idea, signed with the help of a witness. If any of your staff are likely to be inventors, you should have them sign contracts in advance specifying that as ideas develop, the company will own the rights to them.

4. Build a prototype

It is necessary to create a prototype for some inventions. You will better understand the invention with the aid of the prototype. Additionally, it will assist with product troubleshooting. The principle behind the invention frequently works brilliantly. After creating the prototype, you can discover that the product doesn’t perform as well as you anticipated. That is advantageous. Your product may be an invention if you included any additional engineering or design to address such flaws.

5. Ensure Good Preparation for Provisional and International Patent Applications

To protect your idea or discovery quickly and without spending a lot of money, you can think about submitting a provisional patent application. As long as you don’t have the financial and material resources necessary to support and submit a non-provisional patent application, a provisional patent protects your rights for a year.

Patent pending refers to inventions or innovations covered by a provisional patent. It suggests that an invention’s rights continue to be protected by the patent infringement statute even if a product does not have a complete patent.

As a condition of exchange agreements, several nations uphold one another’s patents. To completely protect yourself and your rights, you might seek a global patent.

Conclusion

In light of the foregoing explanation, it may be said that if a concept can eventually be transformed into an invention, it may be patentable. An inventor may originally submit a patent application for his or her idea, but he or she must first assess the idea to see if it is currently realizable. The application will be denied and no patent will be issued if the concept cannot be used in general industrial applications and function satisfactorily.

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What is a patent?

A patent is a particular privilege granted to the creator of a novel idea. He can take advantage of his patent rights up until the end of the patent’s term. 

Who is Patentee?

A patentee is the individual who creates a new product, an enhancement to an existing product, or a brand-new method of producing an existing product.

Rights and obligation of the Patentee:

In India, patentees are given specific rights and obligations upon the issuance of the patent. The Patent Act grants the patentee specific rights, so that he can make profit out of his patent.

What are the rights of patentees?

1. Exclusive right:

The exclusive right to patent is provided by Section 48 of the Patent Act of 1970. As is well known, a patent can cover either a method or a product. By prohibiting the patent in both cases—whether it involves a product or a process—Section 48 grants exclusive rights.

• If a product is the subject of the patent manufactured by the patentee, the exclusive right to patent prohibits third parties from manufacturing, putting up for sale, selling, importing, or using the product developed by the patentee without his approval.
• If the patentee has obtained a patent for a method, the patentee’s exclusive right prohibits third parties from using, selling, or importing the product made using that method without the patentee’s permission.

2. Right to Exploit the Patent:

In India, the right to produce, use, market, and distribute the patented goods is granted to the patent holder. If the innovation involves a manufacturing method, the patentee has the right to assign the process to another individual who has been given their permission. The agent of the patent holder may exercise this authority.

3. Right to Assign and License:

The power to assign or give license to third parties for the purpose of producing and distributing the patented goods is provided to the patent holder under Section 69(5) of the Patent Act of 1970. For a patented product with multiple patent owners, all patent owners must concur to grant the license to a third party collectively. The license is not considered to have been issued until the administrator has correctly authorized the request. Thus, for the assignment or license to be legal and valid, it must be in writing and submitted to the Patent Authority.

4. Rights to surrender:

The patent holder has the right to give up his patent after requesting approval from the controller. After that, in compliance with the Indian Patents Act, the controller advertises this surrender. The controller can then be contacted by those who are eager to own a patent. The controller looks into the parties’ claims and gives up ownership if necessary.

5. Right before selling:

A patent is sealed from the date of notification for acceptance until the date of acceptance of the notification, as per Section 24 of the Indian Patents Act. After the notification of acceptance is presented, the patentee’s rights are in effect.

6. Right to Sue For Infringement:

Any violation of the rights of a patent holder is referred to as a patent infringement. In the event that their rights have been violated, patent holders have the option of going before either a district court or a high court. If the defendant is found guilty of infringement, the courts may award both damages and a permanent injunction.

7. Right to Apply for the Patent of Addition:

The Patents Act of 1970, sections 54 to 56, contain this clause. The provision allows modifications to the current invention. The patent holder is entitled to the enhanced innovation in these circumstances as soon as the notification of approval is made public. When the notification is presented, the owner is awarded the same rights as those of the earlier patent.

What are the obligations of patentees?

1. Duty to Disclose the Patent:

It is the patentee’s responsibility to provide the controller with all information that is required. The applicant must reveal the innovation to the public, according to Section 8 of the Patent Act of 1970. At the time of filing a patent application or within six months of applying, the patentee is categorically required to disclose all necessary information regarding the remote application of an identical or nearly identical invention that has been documented, according to Section 8(1) of the Patent Act of 1970.

2. Duty to request for examination:

The patent registration process does not provide for any type of scheduled examination for the grant of a patent application, in contrast to other intellectual property rights. According to section 11(B) of the Patents Act of 1970, it is the patentee’s responsibility to ask the Controller to look at how the patent has developed or grown.

3. Duty to respond to objections:

The Patent Controller sends the inspection request to an analyst, who evaluates the growth before sending the First Examination Report (FER) back to the Patent Controller. In some cases, the First Examination Report will mention some objections. Responding to such reports of objection is required of patentees. They must also communicate within a year after the FER’s issuance. The patentee’s application will automatically be rejected if this is not done.

4. Duty to clear all objections:

It is the applicant’s responsibility to address any and all complaints and oppositions made against his invention, as well as to respond to such objections. If the controller is still unsatisfied, he could also request a meeting. Additionally, it is the applicant’s responsibility to attend the consultation and address all objections and oppositions (if any have been lodged) made against the invention.

5. Duty to pay statutory fees:

To be eligible for a patent, patentees must also pay any statutory fees connected to the registration process. If the payment is not made, the patent will not be considered for the grant. Section 142 of the Patent Act addresses the payment of appropriate fees and the penalties of failing to pay certain costs.

Conclusion

According to the Patent Act of 1970, the patentee receives a number of rights and duties in addition to receiving a patent. In light of this, it is essential that the patentee adhere by the rights and obligations set forth in the Patents Act of 1970.

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The fact that patent rights are territorial is significant in terms of patents. If you patent your business in India, for instance, it will only be applicable there. Apart from India, you will need to file separate patent applications in each nation where you need patent protection in order to obtain it.

Why you should file a patent in India?

Here are the top considerations for why you should file a patent in India and why patent protection is essential.

1. Patents Establishes Exclusive Rights

A patent gives its owner the only authority to stop anyone from using their original concept or the goodwill they have built up for their goods and services by producing, importing, offering for sale, selling, or using the patented invention. 

2. Patent Provides Competitive Advantage

By discouraging unlawful usage and stopping them from replicating the invention or doing something that competes with the business’s intellectual assets, protecting patent assets and rights may provide a company the competitive edge over rivals. This would lower the danger of patent infringement by eliminating or lessening imitational competition or preventing competitors from copying the inventions. As a patent holder, it may assist the owner in gaining market dominance in a certain area that is essential to the technological sector. Patents prevent competitors from harming the owner’s success.

3. Increase Profit or Returns

The owner of a patent has the opportunity to make money from the invention’s commercial exploitation. Patent holders will be able to increase their market dominance and be the ones profiting from the invention because they will have the sole right to create, import, sell, and use the invention. A patent can help an innovation be sold at a higher price by providing buyers with a new method of accomplishing something or something novel and distinctive. Since the rivals aren’t allowed to provide a similar product, returns and sales would normally increase.

4. Additional Revenue Stream from Licensing

By granting the right to use or manufacture the patented ideas in exchange for royalties or other compensation, patent owners can licence their patents to businesses. In such a licencing, the patent holder will continue to be the licensee, and throughout the period of the contract, royalties will be paid at a predetermined rate by the licensee. A proportion of sales from the goods and/or processes covered by the patent under licence may be used as the royalty or licence fee. This payment may be made once or on an ongoing basis. The patent owners may receive a steady stream of income in the future as a result. While the invention is being licenced, the patent holder may still be able to utilise or manufacture it.

5. Technology Transfer

Owners of patents may sell their patented inventions and receive a one-time transfer fee in exchange, or they may assign their patent rights to other businesses. In this case, the patent will no longer belong to its original owner.

6. New Technology Access Through Cross-Licensing

The owner of a patent portfolio frequently possesses a technology that is commercially desired by others, who may in turn own a patent portfolio for a different technology that the first patent owner finds interesting. This additional party might be a client or a rival. In this case, the patent owners may agree to a cross-licensing agreement in which both parties agree to exchange access to each other’s patent portfolios in exchange for permission to use each other’s inventions in accordance with the agreement’s terms.

7. New Markets Exposure

A patent may also be useful commercially for opening doors to new markets via partnerships, joint ventures, and mergers. Patent portfolios may enhance a business’ reputation for innovation. A patent can open the door to new markets and commercial partners, which can be helpful for start-ups and investors alike.

8. Increase Valuation

By allowing the patent holder to regulate access to the technology in the market, patent protection may help to develop and maintain the entry barriers to competition that may raise the value of the technology in the market or improve the commercial value of the product. In investment talks, patent protection can also be used to raise and improve a company’s value. Additionally, patents invariably increase the value of the company when the owner sells it.

9. Attract Investment

When assessing a business prospect, investors may view an issued patent as a proof of concept for advanced technological capability. Potential investors want to feel secure in their investments because they recognize the value of a patent as an intangible asset.

Click the below link to file a patent in India with best patent filing services in Bangalore, India.

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