India: Need for Utility Patents in India

Last Updated: 28 June 2016
Article by Purvasha Mansharamani

Introduction

Intellectual Property (IP) gives the right to the owner/creator/innovator to commercially exploit their invention and stop others from using it without their permission. It gives them a monopoly of sorts to protect their creation from being exploited by others without their permission. It tries to strike a balance between the interests of innovators and public. The 5 main types of IPs recognized by WIPO are Copyrights, Trademarks, Patents, Industrial Designs and Geographical Indications[1].

A patent is an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application[2].

Once a patent is granted the owner decides who can use the invention for commercial use, distribution, importing, or selling with their consent. Any act done in contravention of which results in infringement of their rights.

The concept of patent originated to ensure that innovation can be protected and creativity can be fostered. While Patent protection does so, it also curtails those inventions which do not conform to the strict criteria of patentability (novelty, inventive step and non-obviousness, as prescribed by The Agreement on Trade Related Aspects of Intellectual Property Rights)[3]. It is under these circumstances where we believe certain relaxment should be given to the upcoming industries or startups where they can protect their inventions which the law otherwise doesn't protect. It won't only give them a boost but will also protect inventions that are useful.

This article will focus on the said alternative protection model to protect the inventions that have lower level of inventiveness, and if India should change its present Patent regime to include it in its system.

Petty Patents/Utility Model

A utility model is an exclusive right granted for an invention to the creator which entitles him to prevent others from commercially exploiting the protected invention, without his authorization, for a limited period of time. A utility model is similar to a patent. They are sometimes referred to as "petty patents" or "innovation patents."[4] They fall short of the definition of inventiveness under TRIPS.

Utility models, as an alternative, are a form of second-tier protection, they are easier to attain than patents because no strict examination is conducted before granting them, making them cheaper and easily attainable[5].

Brief outlines of the common features are as below:[6]

  1. Utility patents more often than not confer exclusive rights for the protection of the product and not the process.
  2. Novelty is a criterion in all utility patent systems, although the standards of novelty may vary in different jurisdictions.
  3. The standard of non-obviousness or inventive step is usually much lower than that of patents. This too varies from one jurisdiction to another. In most legal systems, the inventive step requirement is either waived off or diluted[7].
  4. In most jurisdictions, there is no substantive examination before the grant of a utility patent, only a preliminary procedural examination is required.[8]
  5. The duration of protection usually varies from six to fifteen years, as opposed to patents, which, in major jurisdictions, have a term of twenty years[9].

It is usually claimed that utility model systems are notably advantageous for MSMEs (Micro, Small & Medium Enterprises). As they provide for an inexpensive and speedy patent regime which can improve the legal surroundings for MSMEs. Another reason why utility models could also be good for MSMEs is that the cost factor may inhibit them from exploiting the legal system as much as they'd desire leaving them vulnerable to the widespread industrial plagiarism.

In US, Amazon recently got a patent for taking a photograph of an object infront of a white background, naming it as 'Studio Arrangement'. Although in most of the countries the Patent would have been rejected on the grounds of non-obviousness and no utility or lack of industrial application which is a requirement under the TRIPs. Even in India, under the current regime, no protection would be granted to either this or similar patents like Amazon's One Click patent or the peanut butter jelly patent.

Micro, Small & Medium Enterprises (MSME) in India

Small & Medium Enterprises are the pillars of the Indian manufacturing sector and have become significant in the stable monetary growth of India[10]. Approximately 70 percent of the employment growth comes from the SMEs in the Asian region and they contribute towards 90% of industrial units in India and 40% of value addition in the manufacturing sector. In India they accounts for 90% of the industrial units in India. As the name suggest these businesses are varied from small organization and trading concerns to large retail chains. According to the estimate, there are over 13 million SMEs in India providing employment to 42 million peoples[11].

Considering that there are n number of such enterprises which have inventive capabilities but don't have technical/legal support to pursue IP rights, or which fall short of the patentability criteria, fail to protect their inventions/creations and suffer great losses. It not only affects their business but also hampers such enterprises from growing, resulting in decrease of competition and affects consumers.

Therefore it is extremely important to safeguard the rights of these enterprises against exploitation.  And utility models take care of this by providing a less stringent procedure for registration and for a lesser duration. Thus once these incremental inventions which are currently not protected under law would be recognised under utility model in India, it will give a great boost to MSMEs and spur innovation as well.

In India, the patent registration process is usually so long that it shortens the actual term of the patent, considering the term of patent is calculated from the date of application and not from the date of granting of patent. Introduction of utility patents would reduce the time taken for registration and will protect innovations.  Although safeguards have to be incorporated to ensure that this process is not misused.


[1] WIPO-What is Intellectual Property, available at http://www.wipo.int/about-ip/en/

[2] WIPO-Patents, available at http://www.wipo.int/patents/en/

[4] WIPO, Protecting Innovations by Utility Models, available at http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

[5] N. Ayse Odman Boztosun, Exploring the Utility of Utility Models for Fostering Innovation, 15 J. INTELLEC. PROP. RIGHTS 429, 429 (2010).

[6] Uma Suthersanen, Utility Models and Innovation in Developing Countries, UNCTAD-ICTSD Project on IPRs and Sustainable Development

[7] See Supra Note 4

[8] See Supra Note 4

[9] Manual for the Handling of Applications for Patents, Designs and Trade Marks throughout the world, Kluwer Law International, Update No. 104

[10] Aayush Sharma, Intellectual Property & Small and Medium Enterprises, available at http://www.mondaq.com/india/x/209194/Trademark/Intellectual+Property+and+Small+and+MediumSized+Enterprises

[11] Neeraj Parnami, Commercialization of Intellectual Property (IP) for Small and Medium Enterprises (SMEs) in India, available at https://mpra.ub.uni-muenchen.de/8232/1/MPRA_paper_8232.pdf

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Purvasha Mansharamani
Similar Articles
Relevancy Powered by MondaqAI
S.S. Rana & Co. Advocates
Vaish Associates Advocates
Intepat IP Services Pvt Ltd
Intepat IP Services Pvt Ltd
S.S. Rana & Co. Advocates
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
S.S. Rana & Co. Advocates
Vaish Associates Advocates
Intepat IP Services Pvt Ltd
Intepat IP Services Pvt Ltd
S.S. Rana & Co. Advocates
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions