FAQ Section

Q1. What is a patent?
Patent is a techno-legal document granted by the government that provides legal protection to an invention. Patents are territorial in nature and granted in return of the full disclosure of the invention by the inventor. Upon the expiry of the term of the patent, the information given in the patent document becomes public to enable other users to benefit typically carrying out R&D. A patent confers limited monopoly to the inventor which ensures that the invention is not used, sold, and/ or otherwise commercialized by anyone without consent of the owner of the patent.

Q2. What is the distinction between patented inventions and know how?
Often, information/data disclosed in the patent application that is made public as patent specification may not be sufficient for ‘working the invention’ or commercial exploit of the invention to make a product or use as a process to make a product. Typically, in the patent document, inventors disclose only the most relevant/minimal data/information for substantiating the claims mentioned in the patent. In other words, the patent granting authority only needs to be satisfied that the claims made in the patent application are substantiated by the data provided. Knowhow, on the other hand, covers all the critical data/information necessary to execute the implement to commercialize the invention such as; exact operating conditions, details of the production methods, setting up a production plant, plant layout designs and drawings etc. This knowhow that is available only with the inventor(s) as only they are familiar with the invention. Know-how is critical for making a product or using a process and is critical in the licensing of technology to a commercial entity. Know how is usually kept as a trade secret and is neither shared with public (disclosure in the patent application) nor protected through patents as it means disclosure of critical data/knowledge available only with the inventor(s). Knowhow developed around an existing patent is made available to the licensee while the process of up scaling and manufacturing of a product during the commercialization of an invention. Knowhow is therefore required to successfully work the invention to bring out a product or use the new process by a company.

Q3. Who is an inventor for a Patent?
All the people who have significantly contributed for achieving the result(s) reported in the invention are eligible to be called as the inventor(s) of a patent. They could be scientists or technical personnel who have contributed to the development of the patent. The sequence of inventors is decided collectively or as per the institutional IP policy. Typically, those who have contributed significantly feature in the beginning as primary inventors. Their role as inventors will decide their share of the royalty received by the selling/renting of the invention.

Q4. Is a patent granted in one country automatically enforceable in other countries?
Patent rights are essentially territorial in nature and are granted only for a country (or countries), where it has been applied for and granted. There is nothing like a global patent or a world patent. For obtaining patent rights in several countries, the applicant has to file patent application in each of the country of interest for grant of a patent separately. This would entail payment of official fees and all associated expenses, like the attorney fees, essential for obtaining patent in each country.

Q5. Does grant of a patent in one country affect its grant or refusal in another country?
Each country has its own patent system and law accordingly each country is free to grant or refuse a patent on the basis of scrutiny by its patent office as each country has clear-cut legal provisions under its patent law. Thus, granting of a patent in one country does not necessarily mean that other countries have to grant the patent for the same invention. Similarly, the refusal of the patent in one country does not mean that granting of patent will be denied by other countries.

Q6. What is expected from patentee as an obligation to the State?
Patents are granted by the Government, for a limited period for potential commercial exploitation of an invention in consideration of the disclosure of the invention. A patentee must disclose the invention in enough detail in the patent document for person skilled in the art can 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 patent. As the right is conferred by the State, it can be revoked by the State under very special circumstances in public interest even if the said patent has been sold, licensed, manufactured, or marketed in the meantime.

Q7. Where to submit patent application?
Application for the patent has to be filed in the respective patent office of a country from where the applicants belong. The territorial jurisdiction of the applicant is decided based on whether any of the following occurrences falls within the territory
a) Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants).
b) Place from where the invention actually originated.
c) Address for service in India given by the applicant when he has no place of business or domicile in India. A foreign applicant should give an address for service in India and the jurisdiction will be decided upon that. An applicant (Indian or foreigner) also can give his Patent Agent‟s address as address for serving documents if he/she wishes.

Q8. How are the jurisdictions divided territorially in India?
The Indian patent office operates from four regional offices situated at Mumbai, Kolkata, Delhi and Chennai with its headquarters at Kolkata. Each patent office manages its separate territorial jurisdiction as follows:
Mumbai: Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli. Delhi: Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union Territory of Chandigarh. Chennai: Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Puducherry and Lakshadweep. Kolkata: States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of Andaman and Nicobar Islands

Q9. When should an application for a patent be filed?
A patent application should be filed as soon as possible after the completion of the invention without any public disclosure. Applications can also be filed with provisional specification disclosing the essence of the nature of the invention without detailed claims of a patent. This will help in claiming of priority of an invention.

Q10. Can a published or disclosed invention be patented?
Publication or any other public disclosure of an invention anywhere or in any form by the inventor before filing of a patent application would disqualify the invention to be patentable. It is therefore very important to file a patent application before publicly disclosing the details of the invention. In general, any invention which is made public before an application is filed would be considered ‘prior art’ (generally disclosure made available to the public anywhere in the world by written or oral disclosure). Hence, inventors should not disclose their inventions in any form before filing of a patent application in India.

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Q1. What is Invention?
An invention means a new or unique product, device, method, composition or process which involves an inventive step and has industrial applicability.

Q2. What is Innovation?
Innovation is the successful exploitation of new ideas in the form of conversion into a useful machinery or process, by any person, using own intellect.

Q3. What is difference between an invention & innovation?
In its purest sense, “invention” can be defined as the creation of a product or introduction of a process for the first time. “Innovation,” on the other hand, occurs if someone improves on or makes a significant contribution to an existing product, process or service. Every innovation may not be a patentable invention but almost every invention is an innovation and patentable.

Q4. How is ‘novelty’ component established in an invention for patenting?
Novelty is a feature which did not exist previously and which has not been disclosed in the prior art of a patent application. For an invention to be judged as novel, the disclosed information in a patent should not be available in the ‘prior art’. This means that there should not be any prior disclosure of any information contained in the patent application anywhere in the public domain, either in a written or in any other form, or in any language, before the date on which the application has been first filed i.e. the ‘priority date’.

Q5. How is ‘inventiveness’ element established in an invention?
According to the Indian patent law, inventiveness is the second major criteria in establishing the patentability of an invention. It is defined as a feature that involves technical advancement as compared to the existing knowledge and having social or economic significance or both and ultimately which controls the invention as not obvious to a person who is specialized in particular subject matter or is skilled in the art. The complexity or the simplicity of an inventive step does not have any barring on the grant of a patent. In other words a very simple invention can qualify for a patent. A mere part of invention is sufficient to establish a valid patent. In other words, even a simplest invention, if it qualifies the patent criteria (novelty, non-obviousness and utility) can be patented.

Q6. How is ‘utility’ defined in an invention?
Usefulness is one of the major criteria in patent to establish patentability. In fact, a patent can be obtained only for an invention that has usefulness and applicability. Usefulness should not be limited to commercial gain, but it must be ultimately beneficial for the society.

Q7. How are biological inventions different from other biomedical inventions?
Inventions pertaining to a material containing biological material , capable of reproducing itself or being reproduced in a biological system product consisting or a process by which such materials are produced, processed or used are known as Biological inventions Biomedical inventions, on the other hand, employ principles of natural science to develop knowledge, interventions, or technology of use in healthcare or public health.

Q8. What are the necessary components contained in a patent document?
A patent application must have the following information:
Bibliographic: Title of the invention, date of filing, country of filing, inventor’s name, assignee name and reference of cited documents etc in a structured format.
Background of the invention or State of the art:
Information on the state of art available on the date of filing his invention. It must also include shortcomings/drawbacks of the state of the art and the problems faced by the inventor.
Summary of the Invention: A brief summary of the invention indicating the nature and substance of the object of the invention. The summary will indicate the advantages of the invention. This section should present the general idea of the claimed invention in summarized form.
Description of the invention: Detailed description of the invention, duly supported by a series of workable examples. The invention has to be described in complete detail, so that any person, who is skilled in the art, can work out the invention.
Drawings: The drawings of a patent application describe the invention visually, using a chemical or mechanical structure, charts and graphs, and detailed relationships of features.
Claims: This is the most important component of the patent establishing inventor’s rights over the state of the art. It is for this portion protection is granted. This has to be carefully drafted.
Also, Biotechnology inventions must have sequence listing if the application includes nucleic acid or amino acid sequences. If sequences are disclosed, every nucleic acid molecule that is at least ten nucleotides, and every protein that is at least four amino acids, must be included in the list. Sequence listing is required to be filled in a specific text format.

Q9. How can one define the claims?
Claims are the most important part of the patent specification. Patent claims are the part of a patent or patent application that defines the scope/boundaries of protection/ownership granted by the patent. The claims are brief descriptions of the subject matter of the invention, eliminating unnecessary details and distinguishing the invention from what is old. The claims are the operative part of the patent. Novelty and patentability are judged by the claims, when patent is granted.
The major function of the claim or claims is to clearly define the scope of protection granted. The claims must be clear and concise and also be supported by and agree with the invention/innovation disclosed in the descriptive part of the patent specification.

Q10. How can one define Unity of Invention?
All the claims in the application for a patent must refer to the same inventive idea, i.e. they must all share one inventive concept. This is called as “Unity of invention”.

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Q1. What is Traditional Knowledge?
Traditional Knowledge (TK) is defined as the knowledge continually developed, acquired, used, practiced, transmitted and sustained by the communities/individuals through generations. TK is a collectively owned asset and indicates the cultural or spiritual identity of the social group in which it operates and is preserved. In other words, TK is an open-ended way to refer to tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs and handicrafts marks, names and symbols; undisclosed information; and all other tradition based innovations and creations resulting from intellectual activity.
In India, Traditional knowledge refers to the knowledge, innovations and practices of indigenous communities which they have developed over many generations with traditional utilization of natural resources including environment, flora, land etc. TK is mostly undocumented and typically inherited via word of mouth from generation to generation. The World Intellectual Property Office (WIPO) defines TK as indigenous knowledge relating to categories such as agricultural knowledge, medicinal knowledge, biodiversity related knowledge, and expressions of folklore in the form of music, dance, song, handicraft, designs, stories and artwork. Examples are as follows:
• Use of turmeric (Curcuma longa) for medicinal purposes.
• Use of ashwagandha (Withania sominifera) to treat heart related ailments.
• Traditional healing practices such as Yoga.

Q2. What are the important features of TK?
Traditional knowledge is sustained through generations. TK therefore is holistic, qualitative, moral, spiritual, intuitive, etc.

Q3. What is the patentability status of Traditional Knowledge?
Indian patent laws do not permit protection of TK Under section 3 (p) of the Indian Patent Act, 1970, An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components is not an invention and cannot be patented.
However, if there is a substantial improvement in the existing TK to enable the invention fulfill the criteria under the Indian IP law, IP protection can be sought.

Q4. How does Indigenous Traditional Knowledge differ from western science?
In our country, TK systems exist principally in the form of songs, proverbs, stories, folklore, community laws, common or collective property and inventions, practices, rituals etc. Unlike the western custom of disseminating knowledge through Courtesy: publication, academic and literary modes, the TK is transmitted from forefathers to the community, not private to one individual or small group, whereas western science possesses a systemic, analytical and compartmentalized approach.

Q5. What are the key issues for IP protection of TK?
The key issue for protecting TK is prior disclosure of the innovation as much of TK is already in public domain being passed on orally or through documentation through generations. This makes most TK ineligible for IP protection as most information is already part of “prior art‟ and therefore there is very little in terms of novelty that needs to be established for patent protection.

Q6. How important is Traditional Knowledge?
TK is an integral part of strength of local community knowledge. Attempts to exploit TK owned by local communities for industrial or commercial benefit is a major issue as it is unfair exploitation of knowledge owned by local communities as IP protection creates monopoly of patent owner Governments the world-over including India have enacted laws to prevent such unfair exploitation of TK.

Q7. What is TKDL?
TKDL stand for Traditional Knowledge Digital Library and it is collaborative project of the Government of India through the Council of Scientific and Industrial Research (CSIR) and the Ministry of AYUSH. to provide information on traditional knowledge existing in India, in various languages and format as a single repository. TKDL serves as a reference of prior arts for patent examiners at International Patent Office’s (IPOs).

Q8. What are the features of TKDL?
The two main features of TKDL are ‘Accessibility’ and ‘Availability’. TKDL provides accessibility in terms of ‘Language, format and Classification’. The Indian traditional knowledge exists in local languages such as Sanskrit, Urdu, Arabic, Persian, Tamil, etc, and TKDL translates this traditional knowledge into the native languages of the patent examiners, including the five languages of “English, French, Spanish, German and Japanese.”
The format of TKDL is also unique and laid down in a format similar to the “patent application format, which is easily understandable by patent examiners.” The full listing for each TK entity contains a bibliography of traditional Indian documents, and the bibliography contains links to scanned images of these documents in the original language.
Other feature is the classification. TKDL has created a new classification system for the traditional knowledge, known as the “Traditional Knowledge Resource Classification (TKRC)” and is “based on the structure of International Patent Classification (IPC).” Each listing in the TKDL includes both TKRC codes and IPC codes.
Another main feature is the availability of TKDL. TKDL in complete form is available only to certain national patent offices for use by patent examiners. However, a “representative” version of the database is available at the TKDL website. This database has 1,200 representative listings.

Q9. What is TKRC?
TKRC stands for Traditional Knowledge Resource Classification (TKRC) is an innovative classification system of TKDL. TKRC has structured and classified the Indian Traditional Medicine System in approximately 25,000 subgroups for Ayurveda, Unani, Siddha and Yoga. TKRC has enabled incorporation of about 200 sub-groups under A61K 36/00 as defined in the International Patent Classification instead of few sub-groups earlier available on medicinal plants under A61K 35/00 thus enhancing the quality of search and examination of prior-art with respect to patent applications field in the area of traditional knowledge.

Q10. What are the legal aspects for the utilization of TK?
For IP protection and utilization of TK following issues needs to be considered:
i. Prior Informed Consent: A prior consultation or documented consent from traditional knowledge holders must be acquired by third parties before using their knowledge.
ii. Equitable Benefit Sharing: This balances the interests of the right holders and the general public, i.e., the knowledge holders must be appreciated with compensatory payments or other non- monetary benefits for using their traditional knowledge for commercial or public health purposes.
iii. Unfair Competition: The TK and its practitioners must be protected against any unfair practices such as false claims, illegal use of knowledge, etc. The unfair completion law has been extensively used for protection of integrated circuits, layout designs, geographical indications, undisclosed information and test data and this could be extrapolated for the protection of TK.
iv. Distinctive signs: Traditional signs, symbols and terms associated with TK may be protected as distinctive marks. Such signs may be exploited as trademarks, collective marks, certification marks and geographical indications.
v. Customary laws: These laws define how traditional communities develop, hold and transmit TK.
vi. Contracts: Legally binding documents between parties to outline and enforce access and benefit sharing agreements as well as trade secrets. For example: Confidentiality/non-disclosure agreements, Exclusive licenses etc. Contracts relating to TK.

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Q1. What is World Trade Organization (WTO)?
World Trade Organization (WTO) is an international organization which administers the rules of trade globally for liberalization and expansion of international trade by developing agreements, frameworks and dispute resolution processes. The WTO came into effect on January 1, 1995 under the Marrakech Agreement which replaced the General Agreement on Tariffs and Trade (GATT) of 1948. Majority of WTO‟s current work comes from the 1986–94 negotiations called the Uruguay Round and earlier negotiations under GATT. World Trade Organization has 162 members as on November 2015. It is headquartered in Geneva, Switzerland.

Q2. What is the mandate of WTO?
The WTO‟s main functions are to regulate trade negotiations and enforcement of negotiated multilateral trade rules. These two functions are performed with mandates such as: Assisting in developing and transition of economies, specialized help for export; including establishment of International Trade Centre, global economic policy-making, establishing a transparent system between WTO and Public worldwide.

Q3. What is GATT?
GATT stands for General Agreement on Tariffs and Trade (GATT), which came into effect on January 1, 1948. GATT is a multilateral agreement for regulating international trade. As per its preamble, the purpose was “substantial reduction of tariffs and other trade barriers and the elimination of preferences, on a reciprocal and mutually advantageous basis.” It lasted with 123 countries as members till Uruguay Round of Agreements dated April 14, 1994, and then the World Trade Organization (WTO) were established on January 1, 1995.

Q4. What is WIPO?
The World Intellectual Property Organization (WIPO) is a specialized agency of the United Nations set up in 1974. The WIPO administers 26 international treaties in the area of intellectual property. WIPO has 148 member states and was established by a convention on 14 July 1967, entering into force in 1970. It is headquartered in Geneva, Switzerland.

Q5. What are the main objectives of WIPO?
Following are the main objectives of WIPO:
• Intellectual property protection globally through cooperation among member states and, where appropriate, in collaboration with any other international organization.
• Ensuring administrative cooperation among the intellectual property unions created by the Paris and Berne Conventions and sub-treaties concluded by the members of the Paris Union.

Q6. What is International Bureau?
The International Bureau is the secretariat of the WIPO, which centralizes the administration of the unions created under the various conventions. International Patent applications may be filed directly with the International Bureau as Receiving Office to WIPO’s headquarters as an alternative to filing with the competent national or regional Office.

Q7. What are the linkages between WIPO and WTO?
There is an agreement of cooperation between WIPO and the WTO that came into force on 1 January 1996. The agreement provides cooperation in three main areas:
• National laws and regulations: Their access, translation and notification.
• Protection of national emblems by implementation of appropriate procedures.
• Technical cooperation.

Q8. What is GATS?
The World Trade Organization introduced a treaty known as “General Agreement on Trade and Tariff in Services (GATS)”in January 1995 as a result of the Uruguay Round of negotiations. The major objectives of GATS are: forming a reliable system of international trade rules; equal and fair treatment of participants, stimulating economic activity through guaranteed policy bindings; and liberalization in trade and its development.

Q9. What is Paris Convention?
Paris Convention is an international convention for promoting trade by encouraging protection of industrial property among member countries. All the member countries provide national treatment to all the applications from the other member countries for protection of industrial property rights.
The Convention was first signed in Paris, France, on March 20, 1883. Since then, the Convention has been revised several times latest being in 1979. India became a member of the Paris Convention on December 7, 1998. The convention currently has 176 members.

Q10. What are the principal features of the Paris Convention?
The fundamental extracts of the Paris Convention are listed below:
• National treatment,
• Right of priority,
• Independence of patents,
• Parallel importation,
• Protection against false indications and unfair competition.

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Q1. What is licensing?
A license is a legal agreement by which the owner of an invention (licensor) grants rights to the licensee to make, use, and/or sell the invention within the framework of license agreement. Any entity that aims to manufacture and market a patented product needs a license from the licensor.

Q2. How do you license an invention?
Licensing, in simple terms, is the buying or renting of the rights to intellectual property (the invention) with the intent to produce and market, typically on commercial terms. . The inventor who licenses his or her invention receives a fee for the invention being licensed. Such a payment could be a one-time payment (lumpsum payment) and/or percentage of revenue generated as royalty. The Licensing Agreement therefore paves the way for an invention into a marketable product. The process of licensing of invention varies from organization to organization but is typically negotiated between teams from licensor and the licensee. The major parameters in licensing include:
• Exclusivity of the licence
• Lumpsum upfront payment
• Rate and mode of payment of royalty.
• Territory for the licensing agreement
• Liability issues

Q3. What issues are to be considered before collaborating with a company?
The inventor must enter into a properly drafted Non Disclosure Agreement (NDA) with the company before initiating discussions to ensure that the invention is protected from unfair exploitation. If the collaborator and/or the company seek material for testing and evaluation, a properly drafted Material Transfer Agreement (MTA) must be signed or a commercial evaluation license or an internal commercial use license may be signed.

Q4. What is a Material Transfer Agreement?
Tangible research materials created by researchers must be protected through a specific legal agreement. Such agreements are called Material Transfer Agreements and are useful for commercial development or even for further R&D. It is important to contact the IPR or Technology Transfer Units prior to receiving or sending out any research materials to enable protection of IPR from unfair exploitation.

Q5. What is a Confidential Disclosure Agreement?
The transfer of proprietary information, even in a casual conversation, could legally be considered a public disclosure and hence loses protection. In the worst case scenario, such a disclosure could allow the individual or a company, to whom this information was disclosed to use or transmit to others your confidential information, thus placing it in the public domain. Further, this would preclude the possibility of obtaining intellectual property protection and therefore may lose commercial value of the invention. Therefore a legal agreement between the transferor of proprietary information (such as a researcher) to another entity (such as a corporate representative of a researcher) is necessary. Such a legal document for the protection of proprietary information is called a Confidential Disclosure Agreement or Non-Disclosure Agreement.

Q6. What is a Commercial Evaluation license?
Commercial Evaluation License typically grants a non-exclusive right of limited duration to make and use an invention for the purpose of evaluating its commercial potential. The license does not grant the right to sell or otherwise distribute the invention. Companies are required to obtain a commercial patent license for further use and/or development of the invention.

Q7. What is an Internal Commercial Use license?
Internal Commercial Use License, grants the non-exclusive right to the licensee to make and use the invention as a tool in the Research &Development and/ or production activities. These licenses do not grant the right to sell or otherwise distribute the invention, but allow the licensee to use the invention.

Q8.What is non-exclusive and exclusive patent license?
Both non-exclusive and exclusive Patent Licenses allow a company to commercialize the invention as per the licensing agreement. An exclusive license limits the use of the invention to a single entity barring others from use. Non-exclusive license, on the other hand, is given to multiple licensees to different entities for commercial exploitation.

Q9.What are the advantages of licensing a technology?
Licensing an intellectual property will help:
• Ensuring commercialization of an invention
• Bring the product to market for public use.
• Generates revenue to the inventor(s) and the agency.
• Enhances the image of the organization as the product carries the details of the licensor.
• Helps the economy of the country.

Q10. What is compulsory licensing?
Compulsory licensing is a system when a government allows a company to produce a patented product or utilize a patented process without the consent of the patent owner. It is well defined under the patent act of a country.

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Abstract
A summary statement of the important points of a text. Brief description of the essential content of an the patent document

Access Rights
Licensees and user rights to practice knowledge or pre-existing know-how often owned by another person.

Access and Benefit Sharing (ABS)
Refers to granting permission to enter an (geographic) area for the purpose of sampling, collecting, and removing genetic or other resources. Benefit sharing refers to all forms of compensation for the use of genetic resources, whether monetary or non-monetary. This could also include participation in scientific research and development of genetic resources, and sharing the findings of any potential benefits resulting from this work.

Agreement
A negotiated and usually legally enforceable understanding between two or more legally competent parties. Although a binding contract can result from an agreement, an agreement typically documents the give-and-take of a negotiated settlement and a contract specifies the minimum acceptable standard of performance.

Annuity
Annual payment to keep a patent or patent application alive in countries where it has been filed.

Appeal
Asking a higher legal authority to review a decision.

Applicant
The entity filing the patent application. The patent applications are filed in the name of the actual inventors, who may then assign their rights to, for example, their employer. In India, the “assignee” and the “applicant” are the same.

Assignee
The person(s), agency or corporate body to whom all or limited rights under a patent are legally transferred. Assignee can be a natural person or other than natural person like registered company, research organization, educational institute or Government. Assignee also includes assignee of the assignee and the legal representative of a deceased assignee.

Assignor
A person who assigns the rights of a patent to assignee is called assignor.

Berne Convention
The Berne Convention is meant for the Protection of Literary and Artistic Works. It is an international agreement governing protection of copyright, which was first accepted in Berne, Switzerland, in 1886. It has been amended several times.

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