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PATENT ACT

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AGENDA

History and introduction

Inventions not Patentable

Applications for Patents

Procedure for grants of patents Patents of Addition

Restoration of Lapsed Patents

Working of Patents, Compulsory licensing, revocation

Surrender of revocation of patents Infringement and Remedies

Conclusion

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HISTORY

Originated in Great Britain from the exercise

of the royal prerogative to grant monopolies

In India, patent is granted for inventions underthe legislation

1st patent act 1856, granted exclusive

patents for a period of 14 yrs to inventors of

new manufacture

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HISTORY (contd)

Amendments 1859,1872,1883,1888

Patents and Design act passed in 1911.

Amended through 1970 Patents Act 1970 was enacted and rules

published in 1971 based on Ayyangars report

submitted in 1959

Act came into force in 1972, and few

provisions were added in 1978

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NEED FOR PATENT ACT

India is a signatory to the agreement for the

establishment of the WTO including the agreement for

TRIPS

Purpose reduction of distortions and impediments to

international trade

promotion of effective and adequate protection of IPR

protect public health and nutrition

promote public interest in important sectors

Increase socio-economic and technological

development

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OBJECTIVE

To encourage inventors and provide them

protection

To encourage and maintain a continuous flowof inventions

To promote creation of new products and

better products

To promote employment, national wealth and

better living standards

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SUMMARY OF THE PATENT ACT

Inventor who is granted a patent has exclusive monopoly tomanufacture the article\process

Invention must relate to a machine, article or substanceproduced by manufacture or must relate to the process of

manufacturing an article, or to an improvement of anarticle or manufacturing process

After expiry, anyone can make use of the invention

Obligation cast on patentee to work the invention on acommercial scale either by himself or through licenses

Patent being a form of industrial property is calledintellectual property

Owner can sell whole or part of his patent right or grantlicenses to use it

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NOVARTIS PATENT CASE

November 2003 Novartis granted EMR forGlivec a drug that fights cancer

In 2004 it obtained an injuction that restrictedother companies from manufacturing thedrug.

The cost of the drug jumped from Rs 10000

(for a months use) to Rs 1,20,000 The EMR was fiercly contested in court by

Cipla (and other pharmacos)

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NOVARTIS PATENT CASE

They argued on the grounds that

Novartis had obtained the patent mainly for the

process of manufacture

No patent had been obtained for ImatinibMesylate

which was already being used in India

The patent obtained by Novartis was revoked

Novartis appealed to the IPAB, but was rejected

It has filed a case in Madras HC, which is pending

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CASE STUDY BASMATI (contd)

Govt of India release It will approach the US patentoffice and urge them to re-examine the case

A high level inter-ministerial group comprising ofrepresentatives of the ministries of commerce,

industry, external affairs, legal bodies like CSIR,AIREA,APEDA,ICAR mobilized to begin an in-depthexamination of the case.

The contents and implications of the patent arecurrently being analyzed in consultation with patentattorneys and agricultural scientists.

Source - http://www1.american.edu/TED/basmati.htm

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CASE STUDY - BASMATI

1997- RicTec Co granted patent by US patent office tocall the aromatic rice it produces outside Indiabasmati

RiceTec was trying to enter the market for Basmati bygiving its product names like Kasmati and Texmatiwithout much success

Now it will be able to sell its product under the nameBasmati within US and export also

Heavy losses faced by India and Pakistan, and violationof fundamental fact that Basmati rice is grown only innorthern regions of India and Pakistan

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FEATURES OF A PATENT

Patent must be in respect if invention and notdiscovery

In respect of one single invention there must be onesingle patent

Patent may be in respect of a substance or in respect ofa process

Patent cannot be bifurcated for a process and aproduct

To have a complete patent the specifications andclaims must be clearly mentioned

It is the claims alone that constitute the patent

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INVENTION

Invention new product/process involving

something innovative and is capable of

industrial application

An invention to be patented must be a new

product or process which is capable of

industrial application

It should not be obvious for some one skilled

in the art

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SOME GENERAL PRINCIPLES.

Patents are granted to encourage invention

They are not granted to enable patentees toenjoy a monopoly

To promote technological innovation and tobenefit both producers and users

It should not impede public health and

nutrition and should promote public interest To make the invention available at reasonably

affordable price to the public

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INVENTIONS NOT PATENTABLE

Contrary to natural laws

Contrary to public order or morality or that can causeharm to people, animals, plants or the environment

Discovery New use of a known product or process unless it

results in a new product or employs at least one newreactant

Aggregation product

Rearrangement/duplication of known devices

Methods of agriculture or horticulture

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INVENTIONS NOT PATENTABLE(contd)

Methods of medical treatments

Biological processes for production and propogation ofplants and animals

A computer program

A mathematical or business method or algorithms

A literary, dramatic, musical or artistic work

A scheme or rule of performing a mental act or methodof playing a game

A presentation of information

Topography of integrated circuits

Invention relating to atomic energy

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APPLICATIONS FOR PATENT

Who can apply for a patent?

Who cannot apply for patent?

Where to apply?Applicants residence or place of invention.

In joint application the person whose name is mentioned

first, his residence or place of business.

If party has no place of residence or no place of businessthen the address of service given by the party or applicant.

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APPLICATIONS FOR PATENT(CONTD)

How to apply?Every application for a patent shall be for one invention

only and in the form prescribed in second schedule to thepatent rules 1972, amendment by patents rule 2005 andthe fees prescribed in first schedule.

Proof of the right to make application.

Every application should contain the name of the true andfirst inventor.

Every application shall be accompanied by provisional orcomplete specification.

Two types of application: conventional & International.

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APPLICATIONS FOR PATENT(CONTD)

Specification

It describes the invention.

Provisional Specification: It contains only the description

of the general nature of the invention.

Complete Specification : Fully and particularly describe the

invention, disclose best method for performing the

invention, define scope of invention and abstract of the

technical information on the invention.

Drawings

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PROCEDURE FOR GRANT OF PATENT

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PUBLICATION OF APPLICATION

Applicant request controller to publish his

application before the expiry of prescribed

period

Publication includes

Date of Application

Number of Application Name & Address of Applicant

Abstract

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PUBLICATION OF APPLICATION

On & from the date of publication of patent

application & until the date of grant of a

patent, the applicant has the privileges &

rights as if the patent was granted

He cant file for infringement until the patent

has been granted

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EXAMINATION OF APPLICATION

Only on request after the publication ofapplication within 36 months from the date ofpriority of the application

Referred to examiner by controller for makingreport on:

Whether application & specification inaccordance with law

Whether any lawful ground of objection

To ascertain prior claim of the invention

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SEARCH FOR ANTICIPATION

Investigation to ascertain:

Prior Publication

Prior claim of any other specification

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OPPOSITION TO THE PATENT

Before Grant of a Patent

After Grant of a Patent

When Controller may treat the patent as the

patent of opponent

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ANTICIPATION

An invention not deemed to anticipation:

By prior publication

By previous communication to government

By public display

By public working

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CONTROLLER

Communicate objections

Refuse or Direct Amendment

Amendment of complete specification

In case of anticipation & infringement

Putting application in order

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MENTION OF INVENTOR IN PATENT

Request for being mentioned as an inventor is

done in Form 8

Controller, after a thorough investigation,

agrees to mention that a person is the

inventor

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GRANT OF PATENTS

If all seems right, process is quick

On grant, Controller publishes that the patent

has been granted and all related documentsbecome public domain

In case of death, or corporate ceases to exist,

before patent is granted the name of the

person to whom the patent ought to go is

inserted

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CONDITIONS FOR GRANT

May be imported or made on behalf of the

govt. for its own use

May be used by government for its own use May be used in R&D or for teaching purposes

For a medicine or drug, govt. may use or

distribute it

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RIGHTS OF PATENTEES

Exclusive right to prevent third parties from

the act of making, using, offering for sale,

selling or importing for those purposes that :-

Product in India is used

Product obtained directly by that process in India

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CONTROLLERS ROLE

Power to give directions to co-owners

Grant of patent to true and first inventor whenobtained in fraud by another

Provisions for secrecy of certain inventions(defence or atomic energy)

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TERM OF PATENT

20 years from the date of filing the application

Renewal fees if not paid will lead to the patent

no longer being entitled to protection

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ASSIGNMENT OF A PATENT

Assignment valid only if in writing and well

documented ( rules, duties, obligations)

Person registered as proprietor has power to

assign, grant licenses, deal with patent to give

effectual receipts for assignment, licensing or

dealing

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What is a patent of addition?

A patent of addition is a special type ofpatent which is directlyassociated with another patent. A patent of addition is restricted to

something that is an improvement or modification of the invention in

the other parent patent.

While a patent of addition can be for only one improvement ormodification, there is no restriction on the number of patents of

addition you can have.

What is an improvement or modification?

It is any change to the invention of the parent complete application (eg. by

way of variation, omission, or any other change) which secures a better or

different performance while retaining the essential character of the

invention. parent patent also cover the patent of addition. This applies only

after we grant both patents.

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What are the advantages of a patent of

addition? Patents of addition allow you to gain patent

protection for improvements or modifications to your

previous invention, without the risk of the patentbeing found invalid because the improvement or

modification lacks an inventive step when compared

to your previous invention

You pay only one set of maintenance fees because

fees paid in respect of the parent patent also cover

the patent of addition. This applies only after we grant

both patents.

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The application for restoration of lapsed

patent has to be filed within 18 months from

the date on which the patent ceased to have

effect by the patentee or his legal

representative.

RESTORATIONOF LAPSEDPATENT

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WORKING OF PATENTS

After being granted a patent, a patentee must:-

submit the renewal fees

provide proof of having worked the patent in the

jurisdiction

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FORM 27

Includes following info:- whether the invention has been worked

if not worked, the reasons for not working theinvention, and the steps being taken to work theinvention

if worked, quantum and value (in rupees) of thepatented product manufactured in India

imported from other countries, giving details of the countriesconcerned

licenses and sub-licences granted during the year whether the public requirement has been met, at a

reasonable price either partly, adequately or to thefullest extent.

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RULES

this information should be filed every calendar

year, within three months of the end of each

year

the latest that a patentee or licensee can file

such information for a given calendar year is

31 March of the following year

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COMPULSORY LICENSE

Indian Patent Act allows any interested person

after expiry of 3 years from grant of patent

even though if he is a license under the

patent, may make an application to the

Controller for grant of compulsory license

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GROUNDS FOR COMPULSORY LICENSE

(a) the reasonable requirements of the public

with respect to the patented invention have

not been satisfied

(b) the patented invention is not available to the

public at a reasonable price

(c) the invention is not worked commercially to

fullest extent in territory of India.

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LAWS SUPPORTING COMPULSORY

LICENSE

Section 84To prevent the abuse of patent as amonopoly and to make way for commercialexploitation of invention by an interested person

Sections 92 (1) and 92 (3)Circumstances ofnational emergency or extreme urgency

Section 92 AFor exports of pharmaceuticalproducts to foreign countries with public healthproblems

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REVOCATION OF PATENT IN INDIA

3 modes

1. Central Government

2. Controller3. Courts

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GROUNDS FOR REVOCATION

(1) The patentee is not entitled to the patent

(2) The invention is not patentable

(3) The patentee has contravened a condition in the patent

(4) The patent was obtained by fraud or misrepresentation

(5) An amendment to the request or specification was madeor obtained by fraud or misrepresentation

(6) The specification does not comply with the requirementsof :-a) Nonworking of patent

b) Noncompliance with secrecy orderc) In the public interest(relating to atomic energy)

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SURRENDER AND REVOCATION OF

PATENTS:

SURRENDER OF PATENTS:

Notice to the Controller, notice of offer

published, return of patent within 3 months of

publication of notice.

REVOCATION OF PATENTS:

Invention earlier claimed.

Patentee not entitled to apply.

Patent wrongfully obtained.

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CLAUSES & CONDITIONS

Subject claim not an invention.

Claims not new.

Invention not useful.

Invention not sufficiently and fairly described.

Claims not sufficiently and fairly defined.

False suggestions.

Claims not patentable.

Inventions secretly used before date of claim.

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REVOCATION

Failure of disclosure of information .

Mischievous to state or prejudicial to public.

Patent expired.

Revocation of patent is final and not appealable.Patents regarding to atomic energy:

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Patent Infringement in India According to INDIAN LAW patent confers the exclusive right on the

patentee to make, distribute or sell the invention in India. Aninfringement would be when any of three rights is violated.

Product Patents: Here rights of the patentee are infringed by anyone who makes or supplies that substance commercially.

Process Patent: Here the use of such a method or process in Indiaby anyone other than the patentee amounts to infringement.

What can amount to infringement

(1) The colourable imitation of an invention. (2) Immaterial variation in the invention.

(3) Mechanical equivalents.

(4) Taking essential features of the invention.

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Plan ofAction Legal Opinion- The filing of a suit without merit or where the patent is invalid may

subject the patent owner to antitrust liability or to the defence of patent misuse.

Target: Customer V/S Competitor

Notice Requirement: For an owner of a patent to receive damages in any action forinfringement, there must be proof that the infringer had "notice" of the patented (perhapsthe competitor, but not the customer).

Letter: The patent owner may want to send a letter to the infringer to offer to license thepatent or to put the infringer on notice of the patent,

but such a letter must be carefully worded so that it

does not trigger the filing of a declaratory judgment

action by the potential infringer.

Arbitration: A patentee can also go for Arbitration

and Conciliation for settlement of the case.

Patent Infringement Suit: Last Resort under TRIPS

agreement and Indian Patent Law.

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LegalAspect

TRIPS(1990)& IPA

Burden of Proof(2005)

High Court

Shortcomings

Level of Actionv/s copyrights

Lack ofawareness

Backlog: IPOhas 40,000++applications

Future

PIR: PatentInformationOffice, Nagpur

VoluntaryLicensing

DefensivePatents

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THANK YOU