EXPLORING-THE-ATTRACTIVE-FEATURES-OF-PATENT-PROTECTION-AND-PROCEDURE-IN-INDIA

View News

Submit Query

04 Jul 2023

EXPLORING-THE-ATTRACTIVE-FEATURES-OF-PATENT-PROTECTION-AND-PROCEDURE-IN-INDIA

EXPLORING THE ATTRACTIVE FEATURES OF PATENT PROTECTION AND PROCEDURE IN INDIA

INTRODUCTION

A patent is a special right given by the government to an inventor. It allows the inventor to stop others from using, making, or selling their invention for a certain time. Patents encourage inventors to contribute to their field by giving them exclusive rights to their inventions.

To get a patent, an invention must meet three basic tests. First, it must be new, meaning it shouldn't exist already. Second, it must be non-obvious, which means it should be a significant improvement. Third, it must be useful and not used for illegal purposes.

The patent lasts for about 20 years from the date the inventor applies for it. It is valid only in the country where it's granted. If someone infringes on a patent, the inventor can take legal action in that country. To protect an invention in different countries, the inventor needs to apply for a patent in each country. The Patent Cooperation Treaty (PCT) allows filing an international patent application that covers multiple countries.

In India, a patent can be obtained for a new and useful invention related to machines, articles, substances, or manufacturing processes. Some things cannot be patented, like methods of medical treatment or diagnosis and new plant or animal varieties. Patents are not granted for inventions that go against public order or morality.

Inventions like discoveries, scientific theories, mathematical methods, art, literature, mental acts, games, business methods, and computer software are generally not considered patentable.

The Indian Patent Act of 1970 is the primary legislation governing patents in India. It provides the legal framework for the grant and protection of patents, which are exclusive rights granted to inventors for their inventions. The Act has undergone several amendments over the years, aligning with international standards and addressing the changing needs of the Indian economy.

MEANING OF PATENT:

A patent is a legal right granted by the government to an inventor or assignee, providing exclusive rights to make, use, and sell an invention for a limited period of time. It is a form of intellectual property protection that encourages innovation by granting inventors a monopoly over their inventions in exchange for disclosing their invention to the public.

HISTORY OF PATENT:

The concept of patents can be traced back to ancient civilizations, but the modern patent system originated in Europe during the 15th century. The first patent law was enacted in Venice, Italy, in 1474. Over time, other countries developed their patent systems, and the need for international harmonization led to the establishment of the World Intellectual Property Organization (WIPO) and the Patent Cooperation Treaty (PCT).

WHAT CAN BE PATENTED?

Under the Indian Patent Act 1970, the following can be patented:

Inventions related to products or processes.
Inventions that are new, involve an inventive step, and have industrial applicability.
Inventions that are not specifically excluded under the Act, such as discoveries, scientific theories, methods of agriculture or horticulture, and computer programs per se.

RIGHTS AND OBLIGATIONS OF THE PATENTEE:

Rights of Patentee:

Exclusive Rights: The patentee has the exclusive right to prevent others from making, using, selling, importing, or offering for sale the patented invention without their consent.

License: The patentee has the right to grant licenses to others, allowing them to use the patented invention in return for royalties or other considerations.

Transfer: The patentee can transfer their patent rights, either wholly or partially, to another person or entity through assignments or licenses.

Obligations of Patentee:

Working of the Invention: The patentee is obligated to work the patented invention in India. The invention should be manufactured or used in the country to the fullest extent possible within three years of the patent grant or four years from the filing date, whichever is later. Failure to fulfill this obligation may lead to compulsory licensing or revocation of the patent.

Disclosure: The patentee must disclose the invention sufficiently to enable a person skilled in the art to work the invention based on the information provided in the patent specification.

PROCEDURE OF PATENT:

Filing of Application:

The patent procedure begins with filing a patent application with the Indian Patent Office (IPO).

The application can be filed using Form 1 (Application for Grant of Patent).

The application should include a complete specification (Form 2) describing the invention in detail.

Examination:

After filing, the patent application undergoes examination to assess its compliance with the patentability criteria.

A request for examination must be filed using Form 18 within 48 months from the priority date or filing date.

The IPO conducts a substantive examination to evaluate the novelty, inventive step, and industrial applicability of the invention.

Publication:

If the application is found to be in order, it is published in the official patent journal after 18 months from the filing date or priority date.

The publication can be deferred by filing a request for early publication (Form 9) or by requesting a secrecy direction (Form 13).

Opposition:

After publication, third parties have an opportunity to file pre-grant opposition within six months from the date of publication.

The opposition can be filed using Form 7 along with the prescribed fees.

Grounds for opposition include lack of novelty, inventive step, or industrial applicability, among others.

Examination Report and Response:

The IPO issues an examination report (First Examination Report - Form 18) after the examination process.

The applicant needs to file a response to the examination report within six months from the date of issuance using Form 29.

Hearing and Grant:

If the IPO is satisfied with the response, it proceeds with the grant of the patent.

The patent is granted to the applicant, and a patent certificate (Form 18A) is issued.

GROUNDS FOR OPPOSITION:

Under the Indian Patent Act 1970, the grounds for opposition to a patent include:

- Lack of novelty or inventive step.

- Lack of industrial applicability.

- Insufficient disclosure of the invention.

- Contrary to public order or morality.

- Non-patentable subject matter.

AUTHORITIES CONCERNING PATENT:

The authorities concerning patents in India include:

Controller of Patents: The Controller is responsible for the administration, examination, and granting of patents.

Intellectual Property Appellate Board (IPAB): The IPAB hears appeals against decisions of the Controller and has the authority to revoke patents.

Courts: The courts, including the High Courts and the Supreme Court of India, have jurisdiction over patent disputes, infringement cases, and appeals.

PATENT INFRINGEMENT:

Patent infringement is an important aspect of the Indian Patent Act 1970. As per the Act, patent infringement occurs when any person, without the consent of the patentee, engages in any of the following activities in India:

Making, using, selling, or importing a patented product or a product obtained directly by the patented process.
Using a patented process or a process similar to the patented process without the authorization of the patentee.

It is essential to note that for an act to be considered patent infringement, it must fall within the scope of the claims of a granted patent. The claims of a patent define the extent of the exclusive rights granted to the patentee.

In case of patent infringement, the patentee or any person authorized by the patentee may file a civil suit for infringement in the appropriate court. The court may grant several remedies to the patentee, including:

Injunction: The court may issue an injunction to prevent further infringement of the patent. An injunction restrains the infringing party from engaging in activities that infringe upon the patentee's rights.

Damages: The patentee may claim damages for the losses suffered due to the infringement. The damages can be calculated based on the actual loss suffered by the patentee or based on a reasonable royalty that would have been payable by the infringing party.

Account of Profits: The court may order the infringing party to provide an account of the profits made by them through the infringement. This allows the patentee to claim a share of the profits derived from the unauthorized use of their patented invention.

Delivery Up/Seizure: The court may order the delivery up or seizure of the infringing products or materials

DOCTRINE OF EQUIVALENTS AND DOCTRINE OF COLOURABLE VARIATION:

Under the Doctrine of Equivalents, a product or process may infringe a patent even if it does not literally fall within the claims but is an equivalent variation. It allows for considering the substance of the invention rather than the strict literal interpretation of the claims. The Doctrine of Colourable Variation refers to a deliberate or deceptive alteration of an invention to evade patent infringement.

GIST OF IMPORTANT SECTIONS OF INDIAN PATENT ACT 1970

Chapter	Section	Title	Description
I	1	Short title, extent and commencement	Specifies the short title, extent, and commencement of the Indian Patent Act, 1970.
I	2	Definitions and interpretation	Provides definitions and interpretations of various terms used in the Act.
II	3	What are not inventions	Specifies the categories of subject matter that are not considered inventions and are therefore not patentable.
II	4	Inventions relating to atomic energy not patentable	Declares that inventions relating to atomic energy are not patentable.
II	5	[Omitted]	This section has been omitted and is not applicable.
III	6	Persons entitled to apply for patents	Determines the individuals or entities that are eligible to apply for patents in India.
III	7	Form of application	Outlines the prescribed form and requirements for filing a patent application in India.
III	8	Information and undertaking regarding foreign applications	Requires the applicant to disclose information regarding any corresponding foreign patent applications filed for the same invention.
III	9	Provisional and complete specifications	Explains the option of filing a provisional specification as an initial step in the patent application process.
III	10	Contents of specifications	Describes the essential contents that must be included in the specifications accompanying a patent application.
III	11	Priority dates of claims of a complete specification	Establishes the priority dates for the claims mentioned in a complete specification filed within the prescribed time frame.
IV	11A	Publication of applications	Deals with the publication of patent applications after a certain period from the date of filing or priority date.
IV	11B	Request for examination	Addresses the requirement of filing a request for examination of a patent application within the prescribed time frame.
IV	12	Examination of application	Outlines the process of examination of a patent application by the Patent Office.
IV	13	Search for anticipation by previous publication	Discusses the search for anticipation of the claimed invention through prior publications.
IV	14	Consideration of the report of examiner by Controller	Pertains to the examination report prepared by the examiner and the consideration of the report by the Controller.
IV	15	Power of Controller to refuse or require amended apps.	Grants the Controller the authority to refuse or request amendments to an application based on certain specified grounds.
IV	16	Power of Controller to make orders respecting division	Empowers the Controller to issue orders regarding the division of a patent application into multiple applications.
IV	17	Power of Controller to make orders respecting dating	Grants the Controller the power to make orders regarding the dating of applications in cases of division or merging.
IV	18	Powers of Controller in cases of anticipation	Deals with the Controller's powers when an invention claimed in an application is anticipated by prior publication.
IV	19	Powers of Controller in case of potential infringement	Specifies the powers of the Controller when there is a potential infringement of a patent application.
IV	20	Powers of Controller to make orders regarding substitution	Provides the Controller with the authority to issue orders regarding the substitution of applicants or the correction of errors in the names of applicants.
IV	21	Time for putting application in order for grant	Stipulates the timeframe within which an applicant must comply with the requirements of the Controller for the grant of a patent.
IV	22-24	[Omitted]	These sections have been omitted and are not applicable.

IVA	Omitted		This chapter has been omitted and is not applicable.
24A-24F	Omitted		These sections have been omitted and are not applicable.
V	25	Opposition proceedings to grant of patents	Addresses the opposition proceedings for the grant of patents and the process for filing opposition by interested parties.
V	26	In cases of "obtaining" Controller may treat the patent as the patent of opponent	Deals with the situation where an opponent claims to be the true inventor or first applicant, and if the Controller determines the claim to be valid, the opponent's patent may be treated as the valid patent.
V	27	[Omitted]	This section has been omitted and is not applicable.
V	28	Mention of inventor as such in patent	Specifies the requirement to mention the inventor's name in the patent.
VI	29	Anticipation by previous publication	Explains the concept of anticipation of an invention through prior publication before the date of filing the patent application.
VI	30	Anticipation by previous communication to Government	Covers the anticipation of an invention through its previous communication to the government.
VI	31	Anticipation by public display, etc.	Deals with the anticipation of an invention through its public display or use before the date of filing the patent application.
VI	32	Anticipation by public working	Discusses the anticipation of an invention through its public working or use before the date of filing the patent application.
VI	33	Anticipation by use and publication after provisional specification	Covers the anticipation of an invention through its use or publication after the filing of the provisional specification but before the complete specification is filed.
VI	34	No anticipation if circumstances are only as described in sections 29, 30, 31, and 32	Specifies that there will be no anticipation of an invention if the circumstances fall within the scope of Sections 29, 30, 31, and 32, and the invention has not been made available to the public.
VII	35	Secrecy directions relating to inventions relevant for defence purposes	Addresses the secrecy directions that may be imposed by the government on inventions deemed relevant for defense purposes.
VII	36	Secrecy directions to be periodically reviewed	Requires periodic review of secrecy directions issued for defense-related inventions.
VII	37	Consequences of secrecy directions	Explains the consequences and limitations arising from the imposition of secrecy directions on certain inventions.
VII	38	Revocation of secrecy directions and extension of time	Covers the revocation of secrecy directions and the extension of time period for maintaining the secrecy of relevant inventions.
VII	39	Residents not to apply for patents outside India without prior permission	Restricts residents of India from filing patent applications outside India without obtaining prior permission from the Controller.
VII	40	Liability for contravention of section 35 or section 39	Specifies the liability for contravening Section 35 (secrecy directions) or Section 39 (filing patents outside India without permission).
VII	41	Finality of orders of Controller and Central Government	Declares the finality of orders issued by the Controller or the Central Government under the Act, subject to certain provisions for appeals and reviews.
VII	42	Savings respecting disclosure to Government	Provides protection against any disclosure made to the government or its authorized representatives under the Act.
VIII	43	Grant of patents	Covers the grant of patents by the Controller once the application complies with the requirements of the Act.
VIII	44	Amendment of patent granted to deceased applicant	Addresses the amendment of a patent granted to a deceased applicant in certain circumstances.
VIII	45	Date of patent	Specifies the date of the patent, which is the date of filing the application or the date of priority, whichever is earlier.
VIII	46	Form, extent, and effect of patent	Explains the form, extent, and effect of a granted patent in terms of its territorial jurisdiction and the rights conferred to the patentee.
VIII	47	Grant of patents to be subject to certain conditions	Subject patents to certain conditions, restrictions, and limitations as specified under the Act.
VIII	48	Rights of patentees	Enumerates the exclusive rights granted to the patentees, including the right to exclude others from making, using, selling, or importing the patented invention.
VIII	49	Patent rights not infringed when used on foreign vessels, etc. temporarily or accidentally in India	States that using a patented invention temporarily or accidentally on a foreign vessel, aircraft, or other means of transport that temporarily or accidentally enters Indian territory does not constitute patent infringement.
VIII	50	Rights of co-owners of patents	Addresses the rights and obligations of co-owners of a patent.
VIII	51	Power of Controller to give directions to co-owners	Grants the Controller the power to issue directions to co-owners for the exercise and implementation of their rights.
VIII	52	Grant of patent to true and first inventor where obtained by another in fraud of him	Provides for the grant of a patent to the true and first inventor if another person obtained the patent by fraud or wrongful means.
VIII	53	Term of patent	Specifies the duration or term of a patent granted under the Act.
IX	54	Patents of addition	Explains the concept of patents of addition, which are filed for improvements or modifications of an already patented invention.
IX	55	Term of patents of addition	Determines the term or duration of patents of addition in relation to the main patent.
IX	56	Validity of patents of addition	Specifies the conditions and factors that determine the validity of patents of addition.
X	57	Amendment of application and specification before Controller	Covers the process of amending an application or specification before the Controller during the patent prosecution stage.
X	58	Amendment of specification before Appellate Board or High Court	Addresses the amendment of a specification before the Appellate Board or High Court during the appeal or legal proceedings.
X	59	Supplementary provisions as to amendment of application or specification	Provides supplementary provisions related to the amendment of an application or specification, including the procedure, timelines, and considerations for such amendments.
XI	60	Applications for restoration of lapsed patents	Covers the process for filing applications seeking the restoration of patents that have lapsed due to non-payment of renewal fees.
XI	61	Procedure for disposal of applications for restoration of lapsed patents	Specifies the procedure for handling and disposing of applications for the restoration of lapsed patents.
XI	62	Rights of patentees of lapsed patents which have been restored	Addresses the rights granted to patentees of lapsed patents that have been restored through the restoration process.
XII	63	Surrender of patents	Explains the process and requirements for surrendering a granted patent.
XII	64	Revocation of patents	Covers the circumstances and process for revoking a granted patent.
XII	65	Revocation of patent or amendment of complete specification on directions from Government in cases relating to atomic energy	Addresses the revocation of a patent or amendment of a complete specification based on directions from the government in cases related to atomic energy.
XII	66	Revocation of patent in public interest	Covers the revocation of a patent in the public interest if the patented invention is not being worked in India or is being worked on a non-commercial scale.
XIII	67	Register of patents and particulars to be entered therein	Establishes the Register of Patents, which records the particulars of granted patents and other relevant information.
XIII	68	Assignments, etc., not to be valid unless in writing and duly executed	Specifies that assignments, transmissions, licenses, and other transactions related to patents are valid only if they are in writing and duly executed.
XIII	69	Registration of assignments, transmissions, etc.	Covers the registration process for assignments, transmissions, licenses, and other transactions related to patents.
XIII	70	Power of registered grantee or proprietor to deal with patent	Grants powers to the registered grantee or proprietor of a patent to deal with the patent, including granting licenses and initiating legal proceedings.
XIII	71	Rectification of register by Appellate Board	Allows for the rectification of the patent register by the Appellate Board in case of errors, omissions, or disputes.
XIII	72	Register to be open for inspection	Ensures that the Register of Patents is open for public inspection and provides details on the procedure for inspecting the register.
XIII	73	Correction of clerical errors	Provides for the correction of clerical errors in documents related to patents.
XIV	74	Patent office not to be bound by anything done in contravention of Act	Specifies that the Patent Office is not bound by any action or transaction done in contravention of the provisions of the Act.
XIV	75	Reference to Controller to be construed as reference to Appellate Board in certain cases	In certain cases, a reference to the Controller is considered as a reference to the Appellate Board.
XIV	76	Power of Controller to correct clerical errors	Grants powers to the Controller to correct clerical errors in patents or any other documents filed with the patent office.
XIV	77	Power of Central Government to make rules	Authorizes the Central Government to make rules for the implementation and administration of the Act.
XIV	78	Publication of rules, etc.	Specifies the requirements for publishing the rules, notifications, and other official documents related to the Act.
XIV	79	Publication of patents	Covers the publication of granted patents in the Official Gazette of India.
XIV	80	Power of Controller to make orders, etc.	Grants powers to the Controller to issue orders, directions, and notifications for the administration and implementation of the Act.
XIV	81	Power of Central Government to make rules relating to international arrangements	Authorizes the Central Government to make rules concerning international arrangements and treaties related to patents.
XIV	82	Certain patents to be of no effect except with the consent of Central Government in certain cases	Specifies that certain patents relating to atomic energy or defense inventions are not effective without the consent of the Central Government.
XIV	83	Power of Central Government to revoke patents in public interest	Provides the power to the Central Government to revoke patents in the public interest in certain cases.
XIV	84	Power of Controller to authorize use of invention for purposes of Government and Government undertaking	Grants powers to the Controller to authorize the use of patented inventions for government purposes or by government undertakings without the consent of the patentee.
XIV	85	Power of Central Government to use invention for purposes of Government	Provides powers to the Central Government to use any patented invention for government purposes without the consent of the patentee.
XIV	86	Power of Controller to make orders, etc., during the period of emergency	Grants additional powers to the Controller to issue orders and directions during periods of emergency as declared by the Central Government.
XIV	87	Power of Central Government to apply Act to British possessions, etc.	Provides the power to the Central Government to apply the provisions of the Act to British possessions or foreign countries.
XIV	88	Power of Central Government to exclude certain inventions from provisions of Act	Authorizes the Central Government to exclude certain inventions from the provisions of the Act.
XIV	89	Power to make rules retrospectively	Grants the power to the Central Government to make rules retrospectively to validate any proceedings or acts under the Act.
XIV	90	Power of Central Government to make rules generally	Authorizes the Central Government to make rules generally for carrying out the provisions of the Act.
XIV	91	Repeal and savings	Repeals the Indian Patents and Designs Act, 1911, and provides for savings related to actions, proceedings, or anything done under the repealed Act.

GIST OF CASE LAW

Novartis AG v. Union of India (2013):

Facts: Novartis sought a patent for the anti-cancer drug "Glivec," which contained the compound Imatinib Mesylate. The Indian Patent Office rejected Novartis' patent application, stating that it did not meet the requirements of Section 3(d) of the Indian Patent Act.

Issue: The main issue was whether Glivec qualified for patent protection under Section 3(d), which requires an invention to demonstrate enhanced efficacy.

Observation: The Supreme Court of India upheld the decision of the Patent Office, ruling that Glivec did not meet the enhanced efficacy requirement. The Court clarified that Section 3(d) was enacted to prevent the evergreening of patents by pharmaceutical companies, and it was not intended to stifle genuine innovations.

Monsanto Technology LLC v. Nuziveedu Seeds Ltd. (2018):

Facts: Monsanto, a biotechnology company, developed genetically modified hybrid cotton seeds, known as Bt cotton seeds. It claimed patent rights over these seeds and entered into licensing agreements with various seed companies. Nuziveedu Seeds Ltd., one of the licensees, challenged Monsanto's patent rights.

Issue: The main issue was whether genetically modified hybrid cotton seeds could be patented under the Indian Patent Act.

Observation: The Delhi High Court ruled that genetically modified hybrid cotton seeds fell within the scope of methods of agriculture under Section 3(e) of the Indian Patent Act. It held that Section 3(e) excluded inventions related to methods of agriculture or horticulture from patentability. This case clarified the boundaries of patentability in the agricultural sector.

Bayer Corporation v. Natco Pharma Ltd. (2012):

Facts: Bayer Corporation held a patent for the anti-cancer drug "Nexavar." Natco Pharma Ltd., a generic drug manufacturer, applied for a compulsory license to manufacture and sell a generic version of Nexavar at a lower price.

Issue: The main issue was whether Natco Pharma could be granted a compulsory license under Section 84 of the Indian Patent Act due to the high price of Nexavar.

Observation: The Controller of Patents granted Natco Pharma a compulsory license, citing the high cost of Nexavar and the need to make it more affordable and accessible to patients. The case highlighted the importance of access to essential medicines and the provision for compulsory licenses in cases of public health emergencie

CONCLUSION

In conclusion, the Indian Patent Act 1970 provides a legal framework for the protection and enforcement of patent rights in India. The act defines the meaning of a patent, establishes the criteria for patentability, and outlines the rights and obligations of patentees.

A patent is an exclusive right granted to an inventor for a specified period, allowing them to prevent others from using, making, selling, or importing their invention without their consent. The patent system aims to incentivize innovation and technological progress by rewarding inventors with exclusive rights for their inventions.

To obtain a patent, an invention must be new, non-obvious, and useful. It must be a significant improvement over existing knowledge and have practical utility. Certain inventions, such as discoveries, mathematical methods, and aesthetic creations, are not considered patentable.

The rights of patentees include the exclusive right to exploit their invention, grant licenses, and assign their rights to others. Patentees have the responsibility to disclose their invention and comply with the requirements of the patent system.

The procedure for obtaining a patent involves filing a patent application, examination by the patent office, publication, and potential opposition. If the application meets the patentability criteria and no opposition is successful, the patent is granted, and a patent certificate is issued.

Infringement of a patent occurs when someone without the patentee's consent uses, makes, sells, or imports a product or process that falls within the scope of the patent claims. In such cases, the patentee can seek remedies such as injunctions, damages, account of profits, and delivery up/seizure of infringing products.

Overall, the Indian Patent Act 1970 provides a robust framework for the protection and enforcement of patent rights, encouraging innovation and economic growth. It is essential for inventors and businesses to understand the provisions of the act and seek legal guidance to navigate the patent system effectively.

“Unlock the Potential of Legal Expertise with LegallMantra.net - Your Trusted Legal Consultancy Partner”

Article Compiled by:-

Mayank Garg

(LegalMantra.net Team)

+91 9582627751

Disclaimer: Every effort has been made to avoid errors or omissions in this material in spite of this, errors may creep in. Any mistake, error or discrepancy noted may be brought to our notice which shall be taken care of in the next edition In no event the author shall be liable for any direct indirect, special or incidental damage resulting from or arising out of or in connection with the use of this information Many sources have been considered including newspapers, Journals, Bare Acts, Case Materials , Charted Secretary, RBI etc.