Indian Patents Act, 1970

Indian Patents Act, 1970Harsh SaxenaHistoryThe first patenting related act in India was passed in 1911 by the name of patent and design Act ,1911.

Later after Independence the patent bill was unsuccessfully introduced before the parliament in 1949 & 1965 and finally the bill was passed in the year 1970 and the act came into force in 1972.

The patent system in India is governed by the Patent Act 1970 (No.39 of 1970) and the patent Rules 2003.

The patent act has been amended several times in 1974, 1985, 1999 ,2002 and in 2005 and the rules have been amended in 2006.What is a patent? A patent is a grant from the government which confers on the guarantee for a limited period of time the exclusive privilege of making, selling and using the invention for which a patent has been granted

A patentable invention can be a product or a process that gives a new technical solution to a problem. It can also be a new method of doing things, the composition of a new product, or a technical improvement on how certain objects work.

What can be Patented?In order to be patentable , an invention must pass four test :The invention must fall into one of five statutory classes: Processes Machine Manufactures composition of matter and, New uses of any of the above 2. The invention must be useful.3. The invention must be Novel.4. The invention must be Non obvious.Inventions not Patentable(section 3-5)The following are not inventions within the meaning of this Act, (a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws; (b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;

Section 3(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

Explanation.For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy; (e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

(g) Omitted by the Patents (Amendment) Act, 2002

(h) a method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

j) plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

(k) a mathematical or business method or a computer programme per se or algorithms;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

(m) a mere scheme or rule or method of performing mental act or method of playing game;

(n) a presentation of information;

(o) topography of integrated circuits;

(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. Section 4 & 5Inventions relating to atomic energy not patentable.No patent shall be granted in respect of an invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962). 5. Inventions where only methods or processes of manufacture patentable: [Omitted by the Patents (Amendment) Act, 2005] Application for Patents(Section 6-11)An application for a patent for an invention may be made by any of the following persons, that is to say, (a) by any person claiming to be the true and first inventor of the invention; (b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application; (c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

Section 7(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor. (4) Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification. Section 8Filing of Application for Grant of Patent in India by Foreigners

India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883 and the Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the aforesaid routes for filing of application for grant of patent in India.

Where an application for grant of patent in respect of an invention in a Convention Country has been filed, then similar application can also be filed in India for grant of patent by such applicant or the legal representative or assignee of such person within twelve months from the date on which the basic application was made in the Convention Country i.e. the home country. The priority date in such a case is considered as the date of making of the basic application. Procedure for Grant:After filing the application for the grant of patent, a request for examination is required to be made for examination of the application by the Indian Patent OfficeAfter the First Examination Report is issued, the Applicant is given an opportunity to meet the objections raised in the report. The Applicant has to comply with the requirements within 12 months from the issuance of the First Examination Report.

If the requirements of the first examination report are not complied with within the prescribed period of 12 months, then the application is treated to have been abandoned by the applicant.

After the removal of objections and compliance of requirements, the patent is granted and notified in the Patent Office Journal.

Opposition Proceedings to Grant of Patents 1). Pre Grant Opposition A representation for pre-grant opposition can be filed by any person under Section 11A of the Patents Act, 1970 within six months from the date of publication of the application, as amended (thePatents Act) or before the grant of patent There is no fee for filing representation for pre-grant opposition

2). Post-Grant opposition : Any interested person can file post-grant opposition within twelve months from the date of publication of the grant of patent in the official journal of the patent office.

Grounds for OppositionSome of the grounds for filing pre-and post-grant opposition are as under:

(a) Patent wrongfully obtained; (b) Prior publication; (c) The invention was publicly known or publicly used in India before the priority date of that claim; (d) The invention is obvious and does not involve any inventive step; (e) That the subject of any claim is not an invention within the meaning of this Act, or is not patentable under this Act; (f) Insufficient disclosure of the invention or the method by which it is to be performed; (g) That in the case of a patent granted on convention application, the application for patent was not made within twelve months from the date of the first application for protection for the invention made in a convention country or in India; (h) That the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention; and (i) That the invention was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

TERM OF PATENTThe term of every patent in India is twenty years from the date of filing the patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under the Patent Cooperative Treaty (PCT), the term of twenty years begins from the international filing date. Restoration of Patent

A request for restoration of patent can be filed within eighteen months from the date of cessation of patent along with the prescribed fee. After the receipt of the request, the matter is notified in the official journal for further processing of the request. Patent of Biological MatterIf the invention uses a biological material which is new, it is essential to deposit the same in the International Depository Authority (IDA) prior to the filing of the application in India in order to supplement the description. If such biological materials are already known, in such a case it is not essential to deposit the same. The IDA in India located at Chandigarh is known as Institute of Microbial Technology (IMTECH). 43. Grant of patents.(1) Where an application for a patent has been found to be in order for grant of the patent and either (a) the application has not been refused by the Controller by virtue of any power vested in him by this Act; or (b) the application has not been found to be in contravention of any of the provisions of this Act, the patent shall be granted as expeditiously as possible to the applicant or, in the case of a joint application, to the applicants jointly, with the seal of the patent office and the date on which the patent is granted shall be entered in the register.

(2) On the grant of patent, the Controller shall publish the fact that the patent has been granted and thereupon the application, specification and other documents related thereto shall be open for public inspection. 48. Rights of patentees.

If the grant of the patent is for a product, then the patentee has a right to prevent others from making, using, offering for sale, selling or importing the patented product in India. If the patent is for a process, then the patentee has the right to prevent others from using the process, using the product directly obtained by the process, offering for sale, selling or importing the product in India directly obtained by the process.

Maintainability of SecrecyAll patent applications are kept secret up to eighteen months from the date of filing or priority date, whichever is earlier, and thereafter they are published in the Official Journal of the Patent Office published every week. After such publication of the patent application, public can inspect the documents and may take the photocopy thereof on the payment of the prescribed fee. Compulsory Licensing(Section 92)One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent subject to the fulfillment of certain conditions. At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller of Patents for grant of compulsory license of the patent, subject to the fulfillment of following conditions, i.e. the reasonable requirements of the public with respect to the patented invention have not been satisfied; or that the patented invention is not available to the public at a reasonable price; or

that the patented invention is not worked in the territory of India.

It is further important to note that an application for compulsory licensing may be made by any person notwithstanding that he is already the holder of a license under the patent. For the purpose of compulsory licensing, no person can be stopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not available to the public at a reasonable price by reason of any admission made by him, whether in such a licence or by reason of his having accepted such a licence. The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may order the patentee to grant a licence upon such terms as he may deem fit. However, before the grant of a compulsory license, the Controller of Patents shall take into account following factors: The nature of invention; The time elapsed, since the sealing of the patent; The measures already taken by the patentee or the licensee to make full use of the invention; The ability of the applicant to work the invention to the public advantage; The capacity of the applicant to undertake the risk in providing capital and working the invention, if the application for compulsory license is granted; As to the fact whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions; National emergency or other circumstances of extreme urgency; Public non commercial use; Establishment of a ground of anti competitive practices adopted by the patentee.

Patent InfringementPatent infringement is the unauthorized making, using, offering for sale, selling any patented invention within India, or importing into India of any patented invention during the term of a patent. In India, Section 104 to section 114 of the Indian Patents Act 1970 provides guidelines relating to patent infringement.

Patent infringement occurs when a product infringes one or more patents. To determine patent infringement, firstly a product or a process is analyzed and compared with all relevant patents that may claim an invention similar to the product. Secondly, the product or the process is scrutinized to see if the product or the process .reads on. one or more patents and is substantially described by the claims of the one or more patents.Direct infringement

Direct patent infringement. is the most obvious and the most common form of patent infringement. In the most basic definition, direct patent infringement occurs when a product that is substantially close to a patented product or invention is marketed, sold, or used commercially without permission from the owner of the patented product or invention..Indirect patent infringement. suggests that there was some amount of deceit oraccidental patent infringement in the incident.

For e.g. a person A holds a patent for a device and a person B manufactures a device which is substantially similar to the person A.s device. The person B is supplied with a product from a Person C to facilitate manufacturing of the person B.s device. If the device so manufactured by the person B infringes on the Person A.s patent, then the person C indirectly infringes the Person A.s patent. Further, if such a product is knowingly sold or supplied, it may lead to .contributory infringement.. For example, in the above example if the person C knowingly supplies the product to the Person B then the infringement is construed as contributory infringement..As per section 104(A) of the Indian Patents Act, 1970, in a patent infringement suit, where the subject matter of patent is a process for obtaining a new product or there is substantial likelihood that an identical product is made by the patented process and the patent holder or a person deriving title or interest in the patent from him, has proved that the product is identical to the product directly obtained by the patented process but the patent holder could not establish through reasonable efforts to determine the process actually used by the infringer, then the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process.Exception to the Infringement or Non-Infringing ActivitiesGovernment Use:As per section 47 of the Indian Patents Act, 1970, an invention can be used anytime after the application for a patent is filed, or after the patent is granted by the Central Government and by any person authorized by it. The patented product may be imported or made by or on behalf of the government. Similarly, the patented process may be used by or on behalf of the government for its own use.

Research Exemption:Any person may use or make the patented invention merely for the purposes of experiment or research including and imparting instructions to students.

Supply of Patented Drugs to Health Institutions:A patented invention in respect of any medicine or drug may be imported by the Government for the purpose merely of its own use or for distributing in any dispensary, hospital or medical institution maintained by or on behalf of the government.