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  • What is a Patent and the Process for Patent Registration in India

    In today’s competitive and innovation-driven economy, safeguarding intellectual property (IP) is crucial. A patent is one such tool that provides exclusive rights to inventors for their creations. This article explores what a patent is and outlines the process for patent registration in India.

    What is a Patent?

    A patent is a legal document granted by the government that provides the patent holder with exclusive rights to make, use, sell, or distribute an invention for a specific period, usually 20 years. It ensures that others cannot commercially exploit the invention without the patent holder’s consent.

    Key Features of a Patent:

    1. Novelty: The invention must be new and not disclosed publicly before the application.
    2. Inventive Step: It must involve a technical advancement or innovation not obvious to someone skilled in the field.
    3. Industrial Applicability: The invention should be capable of being manufactured or used in an industry.
    4. Exclusions: Abstract ideas, scientific theories, or methods of playing games are not patentable in India.

    Importance of Patents

    • Encourages Innovation: Protects the efforts of inventors and motivates further research.
    • Commercial Advantage: Provides a competitive edge by preventing others from using the invention.
    • Monetization: Patents can be sold, licensed, or used as assets for funding.

    Patent Registration Process in India

    Patent registration in India is governed by the Indian Patents Act, 1970 and administered by the Controller General of Patents, Designs, and Trademarks. Below is a step-by-step guide to the process:

    1. Determine Patentability

    • Conduct a patentability search to check if the invention is novel and non-obvious.
    • Consult the Indian Patent Office (IPO) guidelines for exclusions under Section 3 and 4 of the Patents Act.

    2. Draft a Patent Application

    • Prepare a detailed patent specification, including:
      • Title of the invention
      • Abstract
      • Background and prior art
      • Claims defining the scope of protection
      • Detailed description with drawings, if applicable.
    • Choose between:
      • Provisional Application: For incomplete inventions; grants a priority date and allows 12 months to file the complete specification.
      • Complete Specification: For fully developed inventions.

    3. File the Patent Application

    • Submit the application online or at the appropriate IPO office (Mumbai, Delhi, Chennai, or Kolkata).
    • Include necessary forms for:
      • Application for a patent
      • Patent specification
      • Statement of undertaking regarding foreign filings
      • Declaration of inventorship
    • Pay the applicable fees, which vary for individuals, small entities, and large organizations.

    4. Publication of Application

    • The IPO publishes the application in the Patent Journal after 18 months from the filing date.
    • You can request early publication.

    5. Examination

    • File a Request for Examination (RFE) within 48 months of the filing date.
    • The IPO examines the application for compliance with patentability criteria.
    • Respond to any objections raised in the First Examination Report (FER).

    6. Grant of Patent

    • If all objections are resolved, the patent is granted and published in the Patent Journal.
    • The patent is valid for 20 years from the filing date, subject to annual renewal fees.

    Cost of Patent Registration in India

    The cost of patent registration includes:

    • Filing fees (govt. fees) (INR 1,600 to INR 8,000 onwards depending on the applicant type).
    • Professional fees for drafting and consultation.
    • Renewal fees from the 3rd year onwards.

    Conclusion

    Patent registration is a crucial step for protecting innovative ideas in India. While the process may seem complex, understanding the steps and seeking professional guidance can ensure smooth registration. By obtaining a patent, inventors secure exclusive rights to their creations, fostering innovation and economic growth.

    For assistance WhatsApp on +91-8929203324

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  • Types of Patent Transfer Agreements Explained

    There are several types of agreements used to transfer patented technology, depending on the purpose, rights, and nature of the transaction. Here are some of the most common ones:

    Patent Licensing Agreement – Grants permission to a licensee to use, make, sell, or distribute the patented technology. –

      Types: –
      a) Exclusive License: Only one licensee has rights, and even the patent owner cannot use the technology.
      b) Non-Exclusive License: Multiple licensees can use the technology simultaneously. –
      c) Sole License: Only one licensee has rights, but the patent owner retains the right to use it as well. Often includes terms for royalties, duration, field of use, and geographical scope.

      Patent Assignment Agreement – By way of assignment there cab be full transfer of ownership of the patent rights from the patent owner (assignor) to another entity (assignee). The assignee gains complete control over the patented technology. Typically involves a lump-sum payment or other compensation for the transfer.

        Technology Transfer Agreement – This is comprehensive agreement that covers the transfer of technical knowledge, know-how, and intellectual property rights. May include licenses to use related patents, trade secrets, and technical documentation. Often used between universities, research institutions, and companies.

        Cross-Licensing Agreement – By way of cross licensing, two or more parties exchange licenses to use each other’s patented technology. Common in industries like electronics or automotive, where complex products require multiple patents from different parties.

        Joint Development Agreement (JDA) – An agreement between two or more parties to jointly develop a new product or technology. Specifies how the resulting intellectual property, including patents, will be shared or transferred between parties.

        Research and Development (R&D) Agreement – Defines the terms under which one party funds or collaborates on R&D activities with another. Includes provisions on how any resulting patents will be owned or licensed.

        Confidentiality Agreement (NDA) – Though not a direct transfer of rights, but crucial for protecting proprietary information during negotiations. Ensures that sensitive details about the patented technology are not disclosed without permission.

        Material Transfer Agreement (MTA) – Is used when a physical sample of patented technology (e.g., a biological material) is shared for research purposes. It defines how the material can be used and protects the intellectual property rights of the provider.

        Franchise Agreement – Used when the patented technology is part of a larger business model. The franchisee gets the right to use the patented technology, trademarks, and business methods under specific conditions.

        Each of these agreements serves a unique purpose, and selecting the right one depends on the desired control, scope of use, and commercial objectives of the parties involved.

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      1. Order Rejecting Patent Must Be Speaking Order

        In Nippon Steel Corporation vs Controller General Of Patents, Designs, The High Court of Delhi in it’s decision dated 29 August, 2024, decided on the question whether impugned order of Controller of Patents not giving sufficient reasons and without any legal basis in rejecting Patent Application is liable to be set aside?

        Brief Facts:

        The Apllicant (Appellant) Nippon Steel Corporation filed Indian Patent Application as a national phase entry involving a “method for repairing an inside of a gas flue of a coke oven and a device for repairing an inside of a gas flue”.

        The First Examination Report (FER) issued by Indian Patent Office only held that the claims lacked novelty and inventive step under Section 2(1)(j) of the Act and unity under Section 10 of the Patent Act (the Act).
        Applicant filed a response to the said FER and then filed amended Claims.
        The Controller then followed it up by a Hearing Notice raising additional objection under Section 3 of the Act

        The Applicant responded thereto by supplementing it with post- hearing written submissions, especially responding to the objection(s) of the inventive step under Section 2(1)(j) and Section 3 of the Act.

        However, the Applicant was not granted the patent as it was denied in terms of Section 15 of the Act by the Controller, and then also under Section 3(d) of the Act without specifying it in the Hearing Notice

        The Law:

        Patent Act 1970

        Section 2(1)(j):

        (j)”invention” means a new product or process involving an inventive step and capable of industrial application;

        (ja) “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art

        Section 3(d) of the Act contains the following categories/ basic elements qua an invention:
        a. “mere discovery of a new form of a known substance,”
        b. “mere discovery of any new property for a known substance,”
        c. “mere discovery of new use of a known substance,” and
        d. “mere use of a known process, machine, or apparatus.”

        As per Section 3(d) of the Act, “the mere discovery of use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant” is precluded from the patentability

        Section 15. Power of Controller to refuse or require amended applications, etc., in certain case.—

        Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the appl ication on failure to do so

        In Brief, Court’s Analysis, Reasoning And Findings:

        The core of the dispute revolves around the patent-eligibility of the invention under Section 3(d) of the Act.
        The aforesaid claims in the invention made by the appellant before the Court covered two subject matters:
        I. A device, for repairing an inside of a gas flue of a coke oven, which is for repairing a damaged portion of the gas flue of the coke oven (Claim nos. 2 and 3).
        II. A method, for repairing the inside of a gas flue of a coke oven using the device (Claim no.1).

        The impugned order addresses only the subject matter covered in Claim no.1 and decides the same as mere use of a “known device”.

        As per Controller, the subject matter of the application falls under the fourth category, i.e. “mere use of a known process, machine, or apparatus” of Section 3(d) of the Act since Claim no.1 of the invention is the mere use or application of the device covered in Claim no.2, yet, no objection qua novelty has been specified anywhere in the impugned order regarding Claim no.2, it is unclear as to what actually is the said “known process, machine, or apparatus” involved in the subject application of the appellant.

        Similarly, the impugned order is silent/bereft of any prior art document from which the device for implementing the method claimed in Claim no.1 is known.
        Though the Controller has cited a prior art document D1 in the Hearing Notice, however, there is no adverse observation on the novelty and inventive step of both Claim nos.1 and 2.
        The Delhi High Court held that aforesaid is sufficient to conclude that the Controller has acknowledged the novelty and inventive step of the claims. The device for implementing the method claimed in Claim no.1 has been claimed in Claim no.2 of the subject application. Therefore, since it cannot be presumed to be a “known process, machine, or apparatus”, the Controller has erred in holding to the contrary.

        Judgments Relied Upon by Delhi High Court to come to conclusion:

        D.S. Biopharma Limited vs. The Controller of Patents and Designs and Anr.
        Manohar v. State of Maharashtra & Ors.
        Agriboard International LLC v Deputy Controller of Patents And Designs

        The Decision:

        Court in view that impugned order did not give sufficient reasons and was without any legal basis, particularly, since it is without identification of a “known substance and/or device”, held that the impugned order not to be sustainable in the eyes of law and set aside the same with the directions that the matter be remanded to the respondent Controller of Patents for fresh consideration.

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      2. Patent Thickets: Navigating Strategies for Innovators

        Navigating through the web of patent thickets, obtaining necessary licenses is often a cause of concern for small and medium enterprises as besides the process of research and development of new innovations also high costs are also involved in obtaining necessary licenses, aimed to avoid infringement of the existing patent rights in any particular field.

        Meaning;

        With this premise let us firstly glance at what Patent thickets are ? They are set of patent rights that cover a particular technology, such patent rights are overlapping and complementary and form a cluster of patents which may be owned by same or different companies.

        If we look at the scenario of research and development of technology in any specific field, a large numbers of patents already exist, covering various major and minor new aspects of the new technological advancement and this inevitably leads to creation of Patent thickets.

        Thus, as discussed Patent thickets can be a result of natural process of continuous innovations in any field of technology, but adding to the woes of new innovator is the trend of acquiring patent protection for minor incremental advancements which can be attributed to such strategy employed by the corporates to prevent competition.

        Although not restricted to any particular field of invention, patent thickets are more so present in software or pharmaceutical fields. An example of such patent thickets can be found with regards to prescription drugs. It is not uncommon to find prescription drugs which are in demand, protected by multiple overlapping patents obtained not only for active ingredient, but for process, delivery system etc. Indian Patent law has been a deterrent to such practices since the biggest downside of this can be witnessed in delay in availability of affordable generic version of the drug in market.

        The Problem:

        Patent thickets create a difficult environment for new inventors, small or medium enterprises. It results into the process of entry of new inventors and competitors to be an uphill task. To avoid infringement, new researcher has to take many licenses in his field of research, compensating the existing patent holders in order to develop novel product or process and has to manoeuvre through network of overlapping patents covering any particular field of invention.

        Navigating through Patent Thickets:

        Vital strategies that help to overcome the hurdles created by such web of patents:

        a. Comprehensive prior art searches

        The first and foremost step involves conducting prior art searches to identify existing patents and patent applications in the particular field of interest, which helps in understanding the landscape preventing infringement of existing patents. Patent Mapping is important, post patent search, as this presents a detailed information on the links between the relevant patents and areas overlapping and presents opportunities regarding areas of freedom to operate.

        b. Freedom to Operate (FTO) Analysis, this reports on the area open to research and development in a particular field of inventions. At this stage, Patent Attorneys help to analyse the scope of relevant patent and to obtain opinion on how to mitigate risk of patent infringement.

        c. Cross Licensing, by cross licensing agreements, companies agree to share their patent portfolio. Taking such cooperative measure can aid in preventing litigation and can open doors to collaborations.

        d. Patent Pools, are created when multiple organisations holding patents in a specific field, collaborate by coming together and agree to license their patents as a bundle, which definitely proves advantageous against approaching each Patent holder for acquiring license. This also helps in getting a clear picture and directing the research and development around the existing Patents avoiding the possibility of infringement.

        Patent Aggregators, though not prevalent in India, many countries have witnessed the increase in number of Patent aggregators. What are they? Patent aggregators are often referred interchangeably with patent trolls, Patent aggregators acquire patents and do not actually manufacture the products, rather they build patent portfolios and monetise by licensing such patents. Patent aggregators have acquired prominence in current scenario. They bundle and license patents. Hence, negotiations with patent aggregator can be a part of strategy while navigating through patent thickets.

        These are some of the vital steps to help effectively navigate through Patent thickets and protect your innovation while reducing legal risks. In addition engaging experienced Patent Attorneys will help in navigating through complex Patent landscapes and in conducting FTO analysis as well as Patent litigation or negotiations.

      3. Patent (Amendment) Rules 2024

        On 16th March 2024, the Indian Patent Office published the Patent Amendment Rules 2024. Here are vital changes that have been introduced in the new rules, primarily  reducing various timelines,

        Foreign Applications: The time within which the Applicant for a Patent in India is required under section 8 (1)(b) is to keep the Controller informed of the details in respect of other applications filed in any country, has been reduced from six months to three months, from the date of issuance of first statement of objections.

        Further the new rules provides for Controller to directly access online, informations regarding foreign Applications corresponding to an Indian Patent Application, while the earlier rule laid the responsibility on Patent Applicant to provide such information to Controller Hence, now the Applicant will have to provide the details of foreign applications corresponding to the Indian patent application only on getting objection against the application under rule 24 b or 24 C

        Request for examination: Another significant change is the timeline to file request for examination . Time Limit to file request for examination if now 31 months instead of 48 months.

        Changes regarding patent opposition procedure: The time limit to file reply to pre grant opposition is now 2 months instead of 3 months. Thus, on receiving representation of pre grant opposition the applicant for patent has to file his statement along with necessary evidence and documents if any in support within 2 months from the date of receiving the representation

        In case of post grant opposition The time limit for examination board to submit report on post grant opposition is now 2 months instead of 3 months

        Certificate of inventorship : The amended rules provide for Controller to issue a certificate of inventorship to an inventor in respect of a patent in force on a request made by the inventor in Form-8A along with the fee specified

        Renewal fees: The annual renewal fees payable in respect of two or more years may be paid in advance and where the renewal fees is paid in advance through electronic mode for a period of at least 4 years, a ten per cent reduction in fee shall be applicable for such renewal.

        Statement of working: The statement of working of patent in India which was submitted every year will now be required to be submitted once every three years, starting from the financial year commencing immediately after the financial year in which the patent was granted, and shall be furnished within six months from the expiry of each such period.

      4. New Criminal Laws 2023

        Three enactment, The Bharatiya Nyaya Sanhita 2023 (BNS), Bharatiya Nagarik Suraksha Sanhita 2023 (BNSS), Bharatiya Sakshya Adhiniyam 2023 have replaced Indian Penal Code 1860, Code of Criminal Procedure1973 and Indian Evidence Act 1872 respectively.

        New provisions under the BNSS 2023 (earlier CrPC) includes provisions for electronic mode of communication and for trials and proceedings to be held in electronic mode have been included keeping in view the changing times with shift from physical to online mode.

        New provision for witness protection scheme has been provided as well as procedure for mercy petition and recording of search and seizure

        The BNS 2023 law (earlier IPC) has included punishment for crimes such as, mob lynching, organised crime, sexual intercourse by employing deceitful means.

      5. Supreme Court on Article 370

        Supreme Court of India vide its judgment dated 11th December 2023 in Writ Petition (Civil) No. 1099 of 2019 clubbed with other petition, decided questions regarding constitutionality of abrogating Article 370 of the Constitution of India which incorporated special arrangements for the governance of the State of Jammu and Kashmir.

        Issues Before The Supreme Court:

        The five judges bench of Apex Court deliberated on following issues:

        a. Whether the provisions of Article 370 were temporary in nature or whether they acquired a status of permanence in the Constitution;

        b. Whether the amendment to Article 367 in exercise of the power under Article 370(1)(d) so as to substitute the reference to the “Constituent Assembly of the State referred to in clause (3) of Article 370 by the words “Legislative Assembly of the State” is constitutionally valid;

        c. Whether the entire Constitution of India could have been applied to the State of Jammu and Kashmir in exercise of the power under Article 370(1)(d);

        d. Whether the abrogation of Article 370 by the President in exercise of the power under Article 370(3) is constitutionally invalid in the absence of a recommendation of the Constituent Assembly of the State of Jammu and Kashmir as mandated by the proviso to clause (3);

        e. Whether the proclamation of the Governor dated 20 June 2018 in exercise of power conferred by Section 92 of the Constitution of Jammu and Kashmir and the subsequent exercise of power on 21 November 2018, under Section 53(2) of the Constitution of Jammu and Kashmir to dissolve the Legislative Assembly are constitutionally valid;

        f. Whether the Proclamation which was issued by the President under Article 356 of the Constitution on 19 December 2018 and the subsequent extensions are constitutionally valid;

        g. Whether the Jammu and Kashmir Reorganisation Act 2019 by which the State of Jammu and Kashmir was bifurcated into two Union Territories (Union Territory of Jammu and Kashmir and Union Territory of Ladakh) is constitutionally valid bearing in mind: The first proviso to Article 3 which requires that a Bill affecting the area, boundaries or name of a State has to be referred to the legislature of the State for its views; and The second proviso to Article 3 which requires the consent of the State legislature for increasing or diminishing the area of the State of Jammu and Kashmir or altering the name of boundary of the State before the introduction of the Bill in Parliament;

        h. Whether during the tenure of a Proclamation under Article 356, and when the Legislative Assembly of the State is either dissolved or is in suspended animation the status of the State of Jammu and Kashmir as a State under Article 1(3)(a) of the Constitution and its conversion into a Union Territory under Article 1(3)(b) constitutes a valid exercise of power.

        The Decision:

        In brief, Supreme Court held:

        a. The State of Jammu and Kashmir does not retain any element of sovereignty after the execution of the IoA and the issuance of the Proclamation dated 25 November 1949 by which the Constitution of India was adopted. The State of Jammu and Kashmir does not have ‘internal sovereignty’ which is distinguishable from the powers and privileges enjoyed by other States in the country. Article 370 was a feature of asymmetric federalism and not sovereignty;

        b) The petitioners did not challenge the issuance of the Proclamations under Section 92 of the Jammu and Kashmir Constitution and Article 356 of the Indian Constitution until the special status of Jammu and Kashmir was abrogated. The challenge to the Proclamations does not merit adjudication because the principal challenge is to the actions which were taken after the Proclamation was issued;

        c) The exercise of power by the President after the Proclamation under Article 356 is issued is subject to judicial review. The exercise of power by the President must have a reasonable nexus with the object of the Proclamation. The person challenging the exercise of power must prima facie establish that it is a mala fide or extraneous exercise of power. Once a prima facie case is made, the onus shifts to the Union to justify the exercise of such power

        d) The power of Parliament under Article 356(1)(b) to exercise the powers of the Legislature of the State cannot be restricted to law-making power thereby excluding non-law making power of the Legislature of the State. Such an interpretation would amount to reading in a limitation into the provision contrary to the text of the Article

        e) It can be garnered from the historical context for the inclusion of Article 370 and the placement of Article 370 in Part XXI of the Constitution that it is a temporary provision

        f) The power under Article 370(3) did not cease to exist upon the dissolution of the Constituent Assembly of Jammu and Kashmir. When the Constituent Assembly was dissolved, only the transitional power recognised in the proviso to Article 370(3) which empowered the Constituent Assembly to make its recommendations ceased to exist. It did not affect the power held by the President under Article 370(3);

        g) The exercise of power by the President under Article 370(1)(d) to issue Order is not mala fide. The President in exercise of power under Article 370(3) can unilaterally issue a notification that Article 370 ceases to exist. The President did not have to secure the concurrence of the Government of the State or Union Government acting on behalf of the State Government under the second proviso to Article 370(1)(d) while applying all the provisions of the Constitution to Jammu and Kashmir because such an exercise of power has the same effect as an exercise of power under Article 370(3) for which the concurrence or collaboration with the State Government was not required

        h) Paragraph 2 of Order issued by the President in exercise of power under Article 370(1)(d) applying all the provisions of the Constitution of India to the State of Jammu and Kashmir is valid. Such an exercise of power is not mala fide merely because all the provisions were applied together without following a piece-meal approach; 

        i) The President had the power to issue a notification declaring that Article 370(3) ceases to operate without the recommendation of the Constituent Assembly. The continuous exercise of power under Article 370(1) by the President indicates that the gradual process of constitutional integration was ongoing. The declaration issued by the President under Article 370(3) is a culmination of the process of integration and as such is a valid exercise of power. Thus, such Order issued is valid.

      6. Delhi HC Basmati GI Decision (Pakistan vs India)

        Delhi High Court vide it’s judgement dated 28th November 2023, decided the suit filed by Trading Corporation of Pakistan Pvt Ltd (alongwith Rice Exporters of Pakistan and Basmati Growers Association) against Government of India seeking injunction against India approving “Super Basmati” rice, as evolved Basmati for the purpose of export as per its notification dated 24th May 2006.

        Basmati As Geographical Indication In India:

        The center of case being Plaintiff disputing India’s claim to “Basmati” rice. Historically the produce of “Basmati” crop can be traced to certain parts of India and in 2016 this variety of rice was granted registration as a geographical indication under registration no. 145 as per the provisions of the Indian Geographical Indications of Goods (Registration and Protection) Act 1999.

        What does grant of geographical indication granted to Basmati rice result in ? It puts restrictions, meaning that the crop can only be grown in the areas for which registration is sought. Thus giving priviledge to the farmers from specific geographical area in India. We can say that the quality and reputation of the product is associated with its geographical origin and other areas are prohibited from producing the same product.
        The production of basmsti rice registered under geographical indication and notified under section 5 of the Seeds Act (vide notification dated 15th February 2016) was restricted specifically to the states of Punjab, Haryana, Himachal Pradesh, Delhi, Uttarakhand, parts of western Uttar Pradesh and the state of Jammu and Kashmir.

        Decision of Delhi High Court:

        Proceedings in this case remained stalled due to non appearance of Plaintiffs since September 2020. Further the Advocates of the Plaintiffs sought discharge in the matter. Due to non appearance on behalf of plaintiffs and considering that the suit could not be prosecuted effectively since 2020 and in view of government of India’s stand the suit was dismissed for non prosecution

      7. Maintainability Of Divisional Patent Application: Syngenta Limited v Controller of Patents and Designs

        Understanding the recent Delhi High Court decision in Syngenta Limited vs Controller of Patents and Designs, decided on 13th October 2023 in reference to section 16 of the Patents Act of 1970.

        Relevant Sections Concerning Division of Patent Application:

        As per the India patent law, one patent application can relate to only one invention or there should be a single inventive concept. While filing patent application , it is vital that the invention claimed passes the test of unity of invention . As per section 10(5) of the Patents Act 1970, the claim or claims of a complete specification of a patent application shall relate to a single invention or to a group of inventions linked to form a single inventive concept .
        Incase where a patent application embodies plurality of inventions, the practice is to divide the application in a way as laid down under section 16, which details the law on division of a patent application before the grant of patent and the power of Controller to make orders in respect of such division of application.

        Let’s glance at what Section 16 of the Patent Act 1970 says

        Section 16
        Power of Controller to make orders respecting division of application
        (1) A person who has made an application for a patent under this Act may, at any time before the grant of the patent, if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
        (2). The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.
        (3). The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.
        Explanation.—For the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.

        Questions of law :

        Questions with regards to section 16 was deliberated upon in a recent Delhi High Court decision in “Syngenta Limited vs Controller of Patents and Designs”, The first question stemmed from the fact that, general trend is in favour of filing for divisional patent application only with a view to remedy objections raised in examination report issued by Controller of Patents , when the objection is aimed at plurality of invention.
        The Court in this case opined on whether the requirement of a plurality of inventions being contained in the parent application, in order for a Divisional Application to be maintainable, apply even where the Divisional Application is filed by the applicant suo moto, and not on the basis of any objection raised by the Controller?

        Second question pertained to whether the basis of plurality of invention for filing a divisional application to be maintainable needs to be reflected specifically in the claims of the parent application or is it sufficient if the plurality of inventions is reflected in the disclosures in the complete specifications accompanying the claims in the parent application? In other words whether the plurality of invention should be restricted to claims of the original patent application or it can be inferred from what is embodied in the literature of the complete specification.

        The Appellant Syngenta’s original application for agrochemical concentrate comprising an adjuvant and hydrotope, was granted post examination. In the meantime a divisional application was also filed by it which was rejected on the ground that plurality of invention was not disclosed in the claims. Appellant contented that it was sufficient that plurality is inferred from the description of complete specification for filing a divisional application

        While deciding this case the correctness of earlier decision on this issue in Boehringer Ingelheim came into question, where the view as taken that

        … if any specification claims either a single invention or a group of invention linked to form a single inventive concept the requirement of “unity of invention” is satisfied…
        if there is no objection on the ground of plurality of distinct inventions‚ means the claims of the complete specification, contains either a single invention or a group of inventions linked so as to form a single inventive concept and in such a scenario, no divisional application is allowable        .

        What it declares is that if plurality of invention is not contained in the claims of specification, divisional application is not maintainable.

        The Verdict :

        The factors considered while resolving these issues include
        firstly, as per section 16(1) an applicant divisional application can be filed if plurality exists in provisional patent application or complete specification.
        Keeping in mind that it is not mandatory as per patent manual that provisional specification contain claims. It is filed primarily with an aim to claim priority date. Thus it can be inferred that if plurality of invention is to be assessed in provisional application, it may be from the literature of the description and not necessarily from claims.

        Also, on reading section 16, we can infer from subsection (1) that Applicant can file a divisional application either on its own motion or to remedy objections raised by the Controller.

        Analysing various judgments and legal provisions relied on by the parties to the dispute, the court overruled Boehringer Ingelhein decision and held that a Divisional Application moved in terms of Section 16 of the Act would be maintainable provided the plurality of inventions is disclosed in the provisional or complete specification that may have been filed. We are further of the considered opinion that Section 16 does not suggest or conceive of a distinction between the contingency of a Divisional Application when moved by the applicant of its own motion or where it comes to be made to remedy an objection raised by the Controller. In either of those situations, the plurality of inventions would have to be tested based upon the disclosures made in either the provisional or complete specification.

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      8. Rights of an actor under Copyright law in India

        Actors don’t have copyright in their work. Their right is categorised under “performer’s rights”. The whole payment system for actors remain mostly unregulated in India. While the world grooves to oscar winner “Natu Natu” from India and more filmmakers from huge Indian entertainment industry show a desire for international recognition, when it comes to recognising a system of royalty income for the actors, Indian film and television industry has nothing in common to United States and has shied away from discussing this issue.

        Reformative changes brought in Indian Copyright Law, with respect to actors haven’t seen much of day light. While the top stars have a say in finalising the terms of contract on remuneration, profit sharing etc in a movie, the remaining chunk of actors have no say in the matter. In December 2021 actor Ravi Kishan made headlines by proposing Royalty income for actors in lok sabha. The Indian television industry often has voiced complaints against no regulation of working hours and payments on time, let alone the royalty system. Although the covid pandemic lockdown period also witnessed demand of royalty for reruns of programs on television.

        In general actors have no copyright in their performances, provided the contract states otherwise. The Supreme Court in 1979, in the famous copyright dispute involving actor Dev Anand (Fortune Films International v. Dev Anand [AIR 1979 Bom 17) gave the verdict against any right of an actor in the case of a film.

        Performers rights:

        “Performers rights” were introduced in India by the way of The Copyright (Amendment) Act 1994, an attempt at filling a lacunae in law by incorporating certain rights to “performers” which were not available earlier. Actor is included in the definition of “performer”. According to the definition of a “performer” under section 2(qq) of Indian Copyright Act, a “performer” includes an actor, singer, musician, dancer, acrobat, juggler, conjurer, snake charmer, a person delivering a lecture or any other person who makes a performance. Provided that in a cinematograph film a person whose performance is casual or incidental in nature and in the normal course of the practice of the industry , is not acknowledged anywhere including the credits of the film shall not be treated as a performer

        International Treaty:

        If we look at international aspect of this law, 3 vital international treaties addressing performers rights have been,

        i) The Rome Convention of 1961
        ii) WIPO Performers and Phonograms Treaty 1996
        iii) Beijing Treaty on Audio Visual Performance 2012.

        In respect of the rights of actor, the 2012 Beijing Treaty is most important , as it deals with intellectual property rights of a performer in audiovisual performances,thus including the performances of actors in different media. This treaty came into force on April 28, 2020 updating the rights in view of the new digital era.

        The Preamble of this treaty states that it aims to develop and maintain the protection of the rights of performers in their audiovisual performances in a manner as effective and uniform as possible.

        Actors are granted economic as well as moral rights, moral rights include claim to be identified as the performer of his performances, and to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation, taking due account of the nature of audiovisual fixations

        Article 12 of Beijing Treaty lays that that once a performer has consented to fixation of his or her performance in an audiovisual fixation, the exclusive rights of authorization shall be owned or exercised by or transferred to the producer of such audiovisual fixation, subject to any contract to the contrary between the performer and the producer of the audiovisual fixation as determined by the national law.

        Further such consent or contract should be:

        a)in writing and
        b)signed by both parties to the contract or by their duly authorized representatives and

        most importantly independent of the transfer of exclusive rights described above, national laws or individual, collective or other agreements may provide the performer with the right to receive royalties or equitable remuneration for any use of the performance,

        The term of protection:

        The term of protection to be granted to performers under this Treaty is until the end of a period of 50 years computed from the end of the year in which the performance was fixed.

        The corresponding section under the Indian Copyright Act 1957 can be found in Section 38, 38A and 38B.

        Cinematograph is a collaborative effort, in which the producer, director, actor, musician and others contribute in the process of acheiving the final product i.e a film. In India, if an actor is not successful enough to demand terms and conditions in his/her favour, trend is to deny them the rights in their work specifically since no system exists for royalty income.