(c) 2002 Sandeep K. Rathod Patents: An Introduction A Presentation at Zydus Research Centre Oct. 19,...

(c) 2002 Sandeep K. Rathod

Patents: An IntroductionPatents: An IntroductionA Presentation at A Presentation at

Zydus Research CentreZydus Research Centre

Oct. 19, 2002Oct. 19, 2002byby

Sandeep K. RathodSandeep K. RathodB. Com, L.L.B.B. Com, L.L.B.

Sr. Exe. IPR Cell - Legal Dept.Sr. Exe. IPR Cell - Legal Dept.Cadila Healthcare Ltd.Cadila Healthcare Ltd.


Introduction to Introduction to Intellectual PropertyIntellectual Property

TThe property he property or product or product of of one’sone’s mind or mind or intellect intellect

DifferenceDifference between intellectual property between intellectual property and other forms of propertyand other forms of property::

IntellectualIntellectual property is intangible property is intangible i.e. it cannot i.e. it cannot be defined or identified by physical parameters be defined or identified by physical parameters but it needs to be expressed in some but it needs to be expressed in some discernible way to be protecteddiscernible way to be protected

In business terms In business terms -- proprietary knowledge proprietary knowledge


Types of Intellectual Types of Intellectual PropertyProperty

CopyrightsCopyrights

TrademarksTrademarks

PatentsPatents

Content/ multimedia/Undisclosed Content/ multimedia/Undisclosed informationinformation


PatentPatent::

Is a grant of a monopoly right by an Authority to Is a grant of a monopoly right by an Authority to an inventor/ assignee to use, sell,an inventor/ assignee to use, sell, distribute, distribute, license his invention his invention for a limited license his invention his invention for a limited term in return of complete disclosure that shall term in return of complete disclosure that shall be available for public use after the expiry of the be available for public use after the expiry of the term.term.

A patent provides A patent provides protectionprotection for the invention to for the invention to the the ownerowner of the patent for a of the patent for a limited periodlimited period, , generally 20 years.generally 20 years.


HistoryHistory

The Patent Law of 1856The Patent Law of 1856

The Patent and Designs Act, 1911.The Patent and Designs Act, 1911.

The Patents Act, 1970The Patents Act, 1970


Current Law in IndiaCurrent Law in India• The current law of Patents is governed by The current law of Patents is governed by

the Patents Act, 1970 along with the the Patents Act, 1970 along with the relevant rules. The Act was last amended relevant rules. The Act was last amended vide the Patent Amendment Act of 1999. vide the Patent Amendment Act of 1999.

• The latest amendment to this Act is in the The latest amendment to this Act is in the form of the Patent (SECOND form of the Patent (SECOND AMENDMENT) BILL, 1999 passed by the AMENDMENT) BILL, 1999 passed by the Parliament in May 2002.Parliament in May 2002.


ADMINISTRATIONADMINISTRATION

The Patent Office, under the Ministry of The Patent Office, under the Ministry of Commerce & Industry, Department of Commerce & Industry, Department of Industrial Policy & Promotion, has been Industrial Policy & Promotion, has been established to administer the various established to administer the various provisions of the Patents Law relating to the provisions of the Patents Law relating to the grant of Patents & The Designs Law, relating grant of Patents & The Designs Law, relating to the registration of Industrial Designs.to the registration of Industrial Designs.

There are 4 regional offices: Delhi, There are 4 regional offices: Delhi, Mumbai, Kolkata & ChennaiMumbai, Kolkata & Chennai


WHO CAN APPLY WHO CAN APPLY

Application may be made, either alone or Application may be made, either alone or jointly with another, by the inventor, jointly with another, by the inventor, assignee, legal representative of deceased assignee, legal representative of deceased inventor or assignee. inventor or assignee.

The inventor is entitled to be mentioned in The inventor is entitled to be mentioned in the patent if he applies to do so. the patent if he applies to do so.

Application may be made jointly by two or Application may be made jointly by two or more corporations as assignees.more corporations as assignees.


PATENTABLE INVENTIONSPATENTABLE INVENTIONS

An invention means any new and An invention means any new and useful art, process, method or manner useful art, process, method or manner of manufacture; machine, apparatus of manufacture; machine, apparatus or other article; or substance or other article; or substance produced by manufacture, and produced by manufacture, and includes any new and useful includes any new and useful improvement of any of them, and an improvement of any of them, and an alleged invention.alleged invention.


WHAT IS NOT PATENTABLE WHAT IS NOT PATENTABLE (1)(1)(1) An invention that is frivolous or that (1) An invention that is frivolous or that

claims anything obviously contrary to claims anything obviously contrary to well-established natural laws; well-established natural laws;

(2) An invention the primary or intended (2) An invention the primary or intended use of which would be contrary to law or use of which would be contrary to law or morality or injurious to public health; morality or injurious to public health;

(3) The mere discovery of a scientific (3) The mere discovery of a scientific principle or the formulation of an abstract principle or the formulation of an abstract theory; theory;


WHAT IS NOT PATENTABLE WHAT IS NOT PATENTABLE (2)(2)

(4) The mere discovery of any new property or (4) The mere discovery of any new property or new use for a known substance or of the mere new use for a known substance or of the mere use of a known process, machine or apparatus use of a known process, machine or apparatus unless such known process results in a new unless such known process results in a new product or employs at least one new reactant; product or employs at least one new reactant;

(5) A substance obtained by a mere admixture (5) A substance obtained by a mere admixture resulting only in the aggregation of the resulting only in the aggregation of the properties of the components thereof or a properties of the components thereof or a process for producing such substance; process for producing such substance;


WHAT IS NOT PATENTABLE WHAT IS NOT PATENTABLE (3)(3)(6) The mere arrangement or rearrangement (6) The mere arrangement or rearrangement

or duplication of known devices, each or duplication of known devices, each functioning independently of one another functioning independently of one another in a known way; in a known way;

(7) A method or process of testing applicable (7) A method or process of testing applicable during the process of manufacture for during the process of manufacture for rendering the machine, apparatus or other rendering the machine, apparatus or other equipment more efficient, or for the equipment more efficient, or for the improvement or restoration of the existing improvement or restoration of the existing machine, apparatus or other equipment, or machine, apparatus or other equipment, or for the improvement or control of for the improvement or control of manufacture; manufacture;


WHAT IS NOT PATENTABLE WHAT IS NOT PATENTABLE (4)(4)

(8) A method of agriculture or horticulture;(8) A method of agriculture or horticulture;

(9) Inventions relating to atomic energy. (9) Inventions relating to atomic energy.

• In the case of inventions relating to substances In the case of inventions relating to substances prepared or produced by chemical processes prepared or produced by chemical processes (including alloys, optical glass, semiconductors and (including alloys, optical glass, semiconductors and inter-metallic compounds) & substances intended for inter-metallic compounds) & substances intended for use or capable of being used as food. No patent will use or capable of being used as food. No patent will be granted in respect of claims for the substances be granted in respect of claims for the substances themselves, but claims for the methods or processes themselves, but claims for the methods or processes of manufacture will be patented. of manufacture will be patented.


APPROPRIATE OFFICE FOR APPROPRIATE OFFICE FOR FILING AN APPLICATIONFILING AN APPLICATION

Application is required to be filed according to Application is required to be filed according to the territorial limits where the applicant or the the territorial limits where the applicant or the first mentioned applicant in case of joint first mentioned applicant in case of joint applicants for a patent normally resides or has applicants for a patent normally resides or has domicile or has a place of business or the domicile or has a place of business or the place from where the invention actually place from where the invention actually originated. If the applicant for the patent or originated. If the applicant for the patent or party in a proceeding having no business, party in a proceeding having no business, place or domicile in India, then appropriate place or domicile in India, then appropriate office will be according to the address of office will be according to the address of service in India given by the applicant or party.service in India given by the applicant or party.


DOCUMENTS REQUIREDDOCUMENTS REQUIRED

Application form in triplicate. Application form in triplicate.

Provisional or complete specification in Provisional or complete specification in triplicate. If the provisional specification is filed triplicate. If the provisional specification is filed it must be followed by complete specification it must be followed by complete specification within 12 months (15 months with extension). within 12 months (15 months with extension).

Drawing in triplicate (if necessary). Drawing in triplicate (if necessary).

Abstract of the invention (in triplicate). Abstract of the invention (in triplicate).

Information and undertaking listing the Information and undertaking listing the number, filing date and current status of each number, filing date and current status of each foreign patent application in duplicate.foreign patent application in duplicate.


DOCUMENTS REQUIRED DOCUMENTS REQUIRED (2)(2)

Priority document (if priority date is Priority document (if priority date is claimed). claimed).

Declaration of inventorship where Declaration of inventorship where provisional specification is followed by provisional specification is followed by complete specification or in case of complete specification or in case of convention application. convention application.

Power of attorney (if filed through Patent Power of attorney (if filed through Patent Agent). Agent).

Fee in cash/by local cheque/ by demand Fee in cash/by local cheque/ by demand draft. draft.


EEXAMINATION & XAMINATION & PUBLICATIONPUBLICATION All the applications for patent accompanied All the applications for patent accompanied by complete specification are examined by complete specification are examined substantively. A first examination report substantively. A first examination report stating the objection(s) is communicated to stating the objection(s) is communicated to the applicant or his agents. Application or the applicant or his agents. Application or complete specification may be amended in complete specification may be amended in order to meet the objection(s). Normally all order to meet the objection(s). Normally all the objections must be met within 15 the objections must be met within 15 months from the date of first examination months from the date of first examination report.report.


OPPOSITIONOPPOSITION

Notice of opposition must be filed Notice of opposition must be filed within four months of notification in within four months of notification in the Gazette. Extension of one month the Gazette. Extension of one month is available, but must be applied for is available, but must be applied for before expiry of initial four month before expiry of initial four month period. period.

There are specific grounds that can There are specific grounds that can be raised in an opposition proceeding.be raised in an opposition proceeding.


GRANT/ SEALING OF GRANT/ SEALING OF PATENTPATENT If the application is not opposed or If the application is not opposed or the opposition is decided in favour of the opposition is decided in favour of the applicant or is not refused the the applicant or is not refused the patent is granted or sealed on patent is granted or sealed on payment of sealing fee within 6 payment of sealing fee within 6 months from the date of months from the date of advertisement. However, it is advertisement. However, it is extendable by three months.extendable by three months.


TERM OF PATENTTERM OF PATENT

A patent lasts for 14 years from the date A patent lasts for 14 years from the date of filing the complete specification (if an of filing the complete specification (if an application is filed with provisional application is filed with provisional specification on January 1, 1989, and a specification on January 1, 1989, and a complete specification is filed on January complete specification is filed on January 1, 1990, the duration is counted from 1, 1990, the duration is counted from January 1, 1990). However, for food, January 1, 1990). However, for food, drug and insecticide patents, the life is drug and insecticide patents, the life is seven years from the date of complete seven years from the date of complete specification, or five years from date of specification, or five years from date of sealing, whichever is shorter.sealing, whichever is shorter.


That’s the end of basics!That’s the end of basics!

These are the basics of the Patent These are the basics of the Patent Act, 1970.Act, 1970.

If interested, we can look at the If interested, we can look at the advanced aspects of Patent Law in advanced aspects of Patent Law in India.India.


Salient features of the Salient features of the Indian Patent Act, 1970:Indian Patent Act, 1970:

A more elaborate definition of invention;A more elaborate definition of invention;Abolition of product patents for drugs Abolition of product patents for drugs and medicines including certain classes and medicines including certain classes of chemicals;of chemicals;Declaration of certain inventions as non-Declaration of certain inventions as non-patentable; more stringent patentable; more stringent requirements regarding the description requirements regarding the description of the invention;of the invention;Extension of the area of search for Extension of the area of search for novelty among documents published novelty among documents published anywhere in the world;anywhere in the world;Extension of the grounds for opposing Extension of the grounds for opposing the grant of a patent;the grant of a patent;


Salient features of the Salient features of the Indian Patent Act, 1970:Indian Patent Act, 1970:

Exempting certain categories of prior Exempting certain categories of prior publication, prior communication and publication, prior communication and prior use from anticipation; provisions prior use from anticipation; provisions for secrecy of inventions relevant for for secrecy of inventions relevant for defense purposes;defense purposes;Provision for use of inventions for the Provision for use of inventions for the purpose of Government or for research purpose of Government or for research or instruction to pupils;or instruction to pupils;A more precise definition of the rights A more precise definition of the rights of co-owners of patents; of co-owners of patents; Reduction in the term of patents Reduction in the term of patents relating to drugs, medicines and relating to drugs, medicines and substances used as food;substances used as food;


Features of the 1999 Features of the 1999 AmendmentAmendment Retrospective operation (w.e.f. Retrospective operation (w.e.f.

January 1, 1995) and revalidation of January 1, 1995) and revalidation of all black box applications received by all black box applications received by the Indian Patent Office.the Indian Patent Office.

Black box applications for product Black box applications for product patents are limited to "medicine or patents are limited to "medicine or drug" defined as follows: drug" defined as follows:

all medicines for internal or all medicines for internal or external use of human beings or external use of human beings or animals;animals;


Features of 1999 Act Features of 1999 Act (Contd.)(Contd.)

Black box applications for product Black box applications for product patents are limited to "medicine or patents are limited to "medicine or drug" defined as follows:drug" defined as follows:

All substances intended to be used for All substances intended to be used for or in the maintenance of public or in the maintenance of public health, or the prevention or control of health, or the prevention or control of any epidemic disease among human any epidemic disease among human beings or animals; and;beings or animals; and;

Insecticides, germicides, fungicides, Insecticides, germicides, fungicides, weedicides and all other substances weedicides and all other substances intended to be used for the protection intended to be used for the protection or preservation of plants.or preservation of plants.


EMRs (EMRs (1999 Act) 1999 Act)

Exclusive Marketing Rights (EMRs) for Exclusive Marketing Rights (EMRs) for products as above may be acquired products as above may be acquired subject to fulfillment of following subject to fulfillment of following conditions:conditions:An application in India seeking patent An application in India seeking patent protection for product per se is filed on or protection for product per se is filed on or after January 1, 1995 (Black Box after January 1, 1995 (Black Box application); application); Corresponding application is filed in a Corresponding application is filed in a convention country before Indian filing convention country before Indian filing but not before January 1, 1995 and a but not before January 1, 1995 and a patent is granted on such application on patent is granted on such application on or after the Indian filing; or after the Indian filing;


EMRs (1999 Act) (2)EMRs (1999 Act) (2)

Exclusive Marketing Rights conditions Exclusive Marketing Rights conditions (Contd.)(Contd.): :

Marketing approval has been Marketing approval has been granted in such convention country granted in such convention country on or after the Indian filing; and on or after the Indian filing; and

Marketing approval has been Marketing approval has been granted in India by the concerned granted in India by the concerned Indian authorities.Indian authorities.


New Bill passed by New Bill passed by Parliament (Both Houses) in Parliament (Both Houses) in May 2002.May 2002.Salient Features at a glance:Salient Features at a glance:

Increase in term of patents from 14 Increase in term of patents from 14 to 20 years.to 20 years.

Simpler definition of Invention.Simpler definition of Invention. A group of inventions linked to single A group of inventions linked to single

inventive concept can be covered in inventive concept can be covered in a single application. a single application.


New Bill (May 2002) New Bill (May 2002) (2)(2)

Salient Features at a glance:Salient Features at a glance:Burden of proving that the patented Burden of proving that the patented process is not violated is on the process is not violated is on the alleged infringer.alleged infringer.

Making and using of patented Making and using of patented invention for obtaining marketing invention for obtaining marketing approval within three (3) years approval within three (3) years before the expiry of patent.before the expiry of patent.

The concept of “inventive step” has The concept of “inventive step” has been defined for the first time.been defined for the first time.



Salient Features at a glance:Salient Features at a glance:Definition of “Food” is restricted to Definition of “Food” is restricted to food for human consumption.food for human consumption.

Barring patenting of testing methods Barring patenting of testing methods now deleted.now deleted.

The patentability of community/ The patentability of community/ traditional knowledge is now barred.traditional knowledge is now barred.



New additions to NOT patentable New additions to NOT patentable category.category.

Discovery of any living thing or non-Discovery of any living thing or non-living substance occurring in nature;living substance occurring in nature;

Process for diagnostic, therapeutic Process for diagnostic, therapeutic treatment of human, animals or treatment of human, animals or plants; Plants and animals other than plants; Plants and animals other than micro-organisms in whole or any part. micro-organisms in whole or any part.

Mathematical or business method or a Mathematical or business method or a computer program or algorithmscomputer program or algorithms

(c) 2002 Sandeep K. Rathod Patents: An Introduction A Presentation at Zydus Research Centre Oct. 19,...

Documents

Transcript of (c) 2002 Sandeep K. Rathod Patents: An Introduction A Presentation at Zydus Research Centre Oct. 19,...