Patents

What is a patent?
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.
Patent Act 1970
• The Patents Act 1970 had a very limited scope of protection wherein the essential
elements of invention were new, useful and manner of manufacture. The Act defines
‘capable of industrial application’ in relation to an invention as capable of being made
or used in an industry
• The history of Patent law in India starts from 1911 when the Indian Patents and Designs
Act, 1911 was enacted.
• The Patents Act, 1970 is the legislation that till date governs patents in India. It first
came into force in 1972.
• The Office of the Controller General of Patents, Designs and Trademarks or CGPDTM
is the body responsible for the Indian Patent Act.
• The Patents Act has been repeatedly amended in 1999, 2002, 2005, 2006 respectively.
These amendments were required to make the Patents Act TRIPS compliant. TRIPS
stands for Trade-Related Aspects of Intellectual Property Rights.
Patent Law Amendment Act 2005
• Salient features of the Patents (Amendment) Act 2005 related to product patents:
• Extension of product patent protection to products in sectors of drugs, foods and
chemical.
• Term for protection of product patent shall be for 20 years.
• Introduction of a provision for enabling grant of compulsory license for export of
medicines to countries which have insufficient or no manufacturing capacity; provided
such importing country has either granted a compulsory license for import or by
notification or otherwise allowed importation of the patented pharmaceutical products
from India (in accordance with the Doha Declaration on TRIPS and Public Health)
• Section 3 (d) regarding patentability.
PATENT REQUIREMENTS
Section 101 of the U.S. Patent Act sets forth the general requirements for patent protection in
a single sentence:
Whoever invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvements thereof, may obtain a patent,
subject to the conditions and requirements of this title.
Unfortunately, the actual test for patentability is a bit more complicated than this sentence
suggests. Under U.S. patent law, an invention is patentable only if it meets the following four
requirements, which are discussed in more detail below:
• The invention must be statutory (subject matter eligible)
• The invention must be new
• The invention must be useful
• The invention must be non-obvious
Product patent vs process patent
The Indian Patents Act, 1970 provides for two types of patents, they are process and product
patents. Let’s discuss each of these types.
Product patent
As the name suggests, this type of patent protects the product. It offers the inventor higher
protection for his invention by decreasing the level of competition of the same product. On the
other hand, a process patent protects the manufacturing process of a product but not the product.
The product patent maximises the level of monopoly and minimizes the competition. So, we
can conclude that a product patent has the following features that eventually benefits the
inventor or the patent owner:
It provides a higher level of monopoly rights to the inventor of the patent owner.
Such a grant prevents others from manufacturing the same product using the same process or
a different process.
Since the end product is given protection, the level of protection is considered higher in
comparison with process patents.
Process patent
In this type, patent protection is granted only to a particular process used in manufacturing a
product but not the end product. A process patent is often considered to provide limited
protection. The reason is, it does not bar or prevent others from manufacturing or creating the
same product by using a distinct process. Hence, it is possible that there are multiple process
patents granted for a single product. This eventually reduces the monopoly that the inventor
enjoys, thereby increasing the level of competition.
How are product and process patents different from each other?
Sr.No Basis Product Patent Process Patent
Patent protection is Process patent protection is
1 Definition provided to the ‘End provided to only the process, and
Result’ or ‘the product’. not the resulting ‘End Product’.
Once protection is granted,
2 Competition Competition shall remain
less competition
Inventors do not enjoy a monopoly
A higher level of monopoly since other persons can still
3 Monopoly
is enjoyed by the inventor manufacture the same product
using a different process.
Product Patents were Process Patents have been
introduced as part of the recognised in India ever since the
4 Implementation
Patents (Amendment) Act, Indian Patent Act, 1970 was
2005. enforced.
The patent will be provided to the
The altered DNA will be
process involved in altering the
5 Example provided protection and not
DNA as recognised by the Indian
just the process involved.
Patents Act.
What is Patent Registration?
Patent Registration is a legal procedure that provides inventors with exclusive ownership and
usage rights for their product, service, or technology. This means the inventor has a monopoly
over their creation for as long as the patent is valid. Inventors and businesses must safeguard
their innovative ideas and stop others from using, selling, or making their inventions without
permission.
Criteria for Filing a Patent Application
When applying for a patent in India, several criteria must be met:
• Novelty: The invention must be entirely new and not published in India before the
patent application’s filing date.
• Non-Obviousness: The invention should not be an obvious development and should be
considered unexpected or surprising by someone skilled in the relevant field.
• Industrial Applicability: The invention should be capable of practical use in an industry.
• Process for Patent Registration in India
• The patent registration process involves several stages, starting with Patent Search and
ending with issuing a Patent Registration Certificate. Here’s a detailed explanation of
the Patent Registration process in India:
Step 1: Indian Patent Search
The first step in the Patent Filing process in India is conducting a worldwide search to
determine the uniqueness of your invention. It’s generally recommended to perform patent
searches before applying for a patent. If your invention is found in prior art or closely resembles
existing inventions, the novelty of your invention could be challenged by the Indian Patent
Office. Therefore, conducting prior patent searches is crucial to assess the likelihood of your
patent being approved.
Step 2: Drafting Patent Specification
After conducting comprehensive global searches, you need to draft a patent specification. This
specification is written in technical and legal language and may or may not include the
inventor’s claims. If it doesn’t include claims, it’s a provisional specification; if it does, it’s
considered a complete specification. The specification delineates the scope of the invention,
providing an in-depth description of the invention along with practical examples and the
optimal method for utilizing it. Legal protection for the patent is conferred when the
specification is crafted with the inventor’s claims and is comprehensive. Legal protection for
the patent is granted when the specification is drafted with the inventor’s claims and is
complete.
Step 3: Patent Application Filing
Following the drafting of the Patent Specification, you can initiate the process of filing a Patent
Application in India. As mentioned earlier, patent applications can be provisional or complete,
depending on the specifications drafted. The provisional or complete specification is filed in
Form 2, while the Patent Application form is filed in Form 1, as per the Indian Patent Act. If a
provisional patent specification is filed, a complete specification with the inventor’s claims
must be filed within 12 months of the initial filing. There are six types of Patent Application
forms, each serving different purposes, depending on the applicant’s needs.
Step 4: Patent Publication for Public Opposition
After the patent application process, the patent is published in an official journal and available
for public viewing and inspection. This allows the general public to raise objections to the
patent on valid grounds.
Step 5: Requesting Patent Examination
Examination of the patent application occurs only when a request for examination has been
filed. This request must be submitted within 48 months of the patent filing date or the priority
date. The patent examiner reviews the application and issues an examination report containing
objections raised by the examiner. Responding to the examination report must be filed within
12 months of issuance. The examiner can call the applicant or agent for a show-cause hearing
to resolve objections if necessary. This phase is also known as patent prosecution.
Step 6: Grant of a Patent
After all objections in the examination report have been addressed and the examiner is satisfied
with the applicant’s response, the patent application is prepared for the grant of a Patent
Registration. This marks the end of the patent registration process. However, if the examiner is
not satisfied with the response and arguments from the applicant, they can reject the patent
application. In such a case, the applicant must repeat the entire patent procedure in India to
seek patent protection again.
Transfer of Intellectual Property Rights
Intellectual property rights which can broadly be classified in forms of trademarks, copyrights
and patents can be transferred in terms of ownership or right to use depending upon the type of
intellectual property.
Copyright
In case of a copyright, which may be a single right, or a bundle of rights vested in the owner’s
literary, artistic, musical, dramatic or other type of work, is governed by the Indian Copyright
Act 1957. Copyright Act therefore grants not only the substantive rights to the parties for their
original works but also lays down the procedure to be followed for the assignment or transfer
of original work.
According to Section 2(d) of the Act, author refers to the individual who has created the artistic
work and is the first owner of the creation. However, in the event of transfer of such right to a
third party, such party becomes the owner of the creation post transfer. Additionally, according
to Section 17 of the Act, the above rule is subject to certain exceptions. For instance, in the
case of a contract of employment, the owner or the employer of the employees becomes the
first owner of such creation and the copyright automatically transfers from the creator to the
employer. Under Section 2(z) of the Act, the concept of “Joint Ownership” is laid down
wherein work produced under collaboration or joint efforts of two parties is concerned. Under
such circumstances, the rights of one party are not separate or distinct from the other party and
both of them collectively own the rights.
Assignment of Intellectual Property Rights
Assignment, as the term suggests, refers to transfer of interests of intellectual property from
the assignor to the assignee. According to assignment, the ownership and rights of a particular
work are transferred to the second party either in full or part as per the provisions of Section
18, 19 and 19A of the Copyright Act. For instance, an author of a book can assign the rights to
make an adaptation of a movie while retaining the original rights of the book.
The assignor is entitled to receive the consideration for the same in form of royalty or pecuniary
consideration as opposed to lumpsum settlement. Any assignment contrary to the provisions
laid down under the statute is void and can only be made in writing and be duly signed by the
authorised signatory. Moreover, any assignment in the future work is also valid if the territory,
terms and duration of the assignment are duly satisfied.
What is Revocation of Patent?
Revocation, in its broadest sense, is the action of taking back something that has previously
been granted. The same is true with patents, which cannot be regarded as permanent once
issued. Revocation of a patent refers to the revocation of the patentee’s previously obtained
rights. Any interested party may file a petition for the revocation of a patent, or the Central
Government may do so as well.
Appellate Board.
1[116. Appellate Board. --(1) Subject to the provisions of this Act, the Appellate Board
established under section 83 of the Trade Marks Act, 1999 (47 of 1999) shall be the Appellate
Board for the purposes of this Act and the said Appellate Board shall exercise the jurisdiction,
power and authority conferred on it by or under this Act:
Provided that the Technical Member of the Appellate Board for the purposes of this Act shall
have the qualifications specified in sub-section (2).
(2) A person shall not be qualified for appointment as a Technical Member for the purposes of
this Act unless he--
(a) has, at least five years, held the post of Controller under this Act or has exercised
the functions of the Controller under this Act for at least five years; or
(b) has been for at least ten years, functioned as a Registered Patent Agent and possesses
a degree in engineering or technology or a masters degree in science from any University
established under law for the time being in force or equivalent;
Restriction on power of court to grant damages or account of profits for infringement
(1) In a suit for infringement of patent, damages or an account of profits shall not be granted
against the defendant who proves that at the date of the infringement he was not aware and
had no reasonable grounds for believing that the patent existed.
Explanation.—A person shall not be deemed to have been aware or to have had reasonable
grounds for believing that a patent exists by reason only of the application to an article of the
word "patent", "patented" or any word or words expressing or implying that a patent has been
obtained for the article, unless the number of the patent accompanies the word or words in
question.
(2) In any suit for infringement of a patent the court may, if it thinks fit, refuse to grant any
damages or an account of profits in respect of any infringement committed after a failure to
pay any renewal fee within the prescribed period and before any extension of that period.
(3) Where an amendment of a specification by way of disclaimer, correction or explanation
has been allowed under this Act after the publication of the specification, no damages or
account of profits shall be granted in any proceeding in respect of the use of the invention
before the date of the decision allowing the amendment, unless the court is satisfied that the
specification as originally published was framed in good faith and with reasonable skill and
knowledge.
(4) Nothing in this section shall affect the power of the court to grant an injunction in any suit
for infringement of a patent.
What is Compulsory License?
A compulsory License authorised by the government allows the company or an individual
seeking other’s intellectual property to use it without having to seek the consent of the owner/
the right holder by paying a predetermined fee for the license. The compulsory licence is
regulated by the Indian Patents Act 1970.
It is one of the flexibilities in the field of patent protection included in the WTO’s agreement
on intellectual property — the TRIPS (Trade-Related Aspects of Intellectual Property Rights)
Agreement.
It existed in the TRIPS Agreement, ever since it took effect in January 1995.
Indian Patent Act,1970 provides that after three years from the date of the grant of a patent, any
person can apply for the compulsory license, on certain grounds:
The reasonable requirements of the public with respect to the patented invention have not been
satisfied the patented invention is not available to the public at a reasonably affordable price
Lastly, the patented invention is not used in the territory of India.
Indian Patent Act,1970 authorizes the central government to issue a compulsory license at any
time after the grant of the patent, in the case of:
• National emergency; or
• Extreme urgency; or
• Case of public non-commercial use
How many Compulsory Licenses have been issued in India?
Only 1 compulsory license has been issued in India by the Patent Office on March 9, 2012. The
license was issued to Natco Pharma for the generic production of Bayer Corporation’s Nexavar,
which is a life-saving medicine used for treating Cancer(Liver & Kidney).
Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an
invention simultaneously in each of a large number of countries by filing an "international"
patent application. Such an application may be filed by anyone who is a national or resident of
a PCT Contracting State. It may generally be filed with the national patent office of the
Contracting State of which the applicant is a national or resident or, at the applicant's option,
with the International Bureau of WIPO in Geneva.
NEW DEVELOPMENT IN TRADEMARKS LAW:
The Internet:
Trademark owners throughout the world are struggling with new issues presented by increased
electronic communication, primarily that occurring through the Internet
The Internet derives from a network set up in the 1970s by the Department of Défense to
connect military and research sites that could continue to communicate even in the event of
nuclear attract.
In the 1980s, the National Science Foundation expanded on the system, and its first significant
users were government agencies and universities.
In the early1990s, however, it became apparent that the system could provide a global
communication network, allowing people from all over the world to talk with each other; send
written messages, pictures, and text to each other; and establish web pages to advertise their
ware and provide information to their customers.
Assignment of Domain Names:
A company’s presence on the internet begins with its address or domain name not only serves
as a locator for a company but also functions as a designation of origin and a symbol of
goodwill---a trademark.
There are two portions to a domain name: the generic top-level domain, which is the portion
of the name to the right of a period (such as .gov or .com) and the secondary level domain,
which is the portion of the name to the left of a period (such as “kraft” in Kraft.com”).
Disputes frequently arise between owners of registered mark and owners of domain names
whose domain names similar or identical to the registered marks
Protection of Computer-Related Inventions: An Indian Perspective
As technology continues to evolve at an unprecedented pace, Computer-Related Inventions
(CRIs) have become a crucial component of modern innovation. CRIs are inventions that are
based on computer software or hardware and are becoming increasingly important in a variety
of fields, including finance, healthcare, and telecommunications. The Patents Act, 1970,
provides for the protection of CRIs, but there has been significant debate over the years
regarding the patentability of such inventions in India. The article delves into the legal
framework surrounding CRIs in India, through the lens of case laws and guidelines issued by
the Indian Patent Office.
COMPUTER RELATED INVENTIONS
A CRI comprises inventions that involve the use of computers, computer networks, or other
programmable apparatus including inventions which have one or more features that are realized
by wholly or partially employing a computer program or programs.
We see the use of CRIs in various industries such as medicine, telecommunication and finance.
Computer algorithms used to analyze medical imaging data, such as X-rays or MRIs, is one
such example, which can help doctors identify potential health issues that might otherwise have
been missed. In the finance industry, CRIs have enabled the development of new trading
algorithms and financial models that can process vast amounts of data in real time, providing
traders with valuable insights and helping them make more informed investment decisions. In
the telecommunications industry, CRIs have led to the development of new networking
technologies that can process and transmit data at higher speeds and with greater reliability.
These are just a few examples of how CRIs are being used to drive innovation and improve the
quality of life in a variety of fields.
Although it is undeniable that the development of such innovations involves intellectual
property, the crux of the matter revolves around the manner and degree to which they can be
safeguarded.
SCOPE OF PROTECTION UNDER COPYRIGHT LAW
The Copyright Act, of 1957 defines “literary work” under section 2(o), to include computer
programs, tables and compilations including computer databases. Copyright can protect certain
kinds of CRIs, mainly computer software inventions. Specifically, copyright can protect the
specific code, software program, or user interface that is created.
However, copyright protection does not extend to the ideas, concepts, or functionality of the
CRIs. In other words, copyright does not prevent others from creating a similar software
program or user interface, as long as they do not copy the original code or design. As a result,
it is apparent that patent law offers a broader scope of protection in contrast to copyright law,
which is primarily relied upon by inventors in this field.
PROTECTION UNDER PATENTS ACT, 1970
The protection of CRIs has not been a straightforward journey. Section 3(k) of the Patents Act,
of 1970 provides a bar on the patentability of the invention related to a mathematical or business
method or a computer program “per se” or algorithms. The term “per se” was interpreted and
reinterpreted to include CRIs, other than computer programs.
In 2002, the Indian Patent Office issued guidelines on the patentability of CRIs. These
guidelines provided that computer programs per se were not patentable inventions. But, those
inventions which involved technical advancements or technical effects and had industrial
applicability could be patentable. The revised guidelines of 2004 provided that inventions
which involved a novel hardware component or those that produced a technical effect were
patentable. However, inventions that were purely software-based and did not produce a
technical effect were not patentable.In 2013, the Patent Office issued further guidelines and set
forth that inventions involving a technical effect or those which solved a technical problem
were patentable.
The existing examination guidelines for CRIs were issued by the Office of Patents on 30th June
in the year 2017. These guidelines focus on the “technical contribution” of the invention along
with the basic parameters of patentability. For example, a method of encoding and decoding
video data may be patentable, while a method of hedging risks in commodity trading may not
be patentable. Therefore the level of “technical contribution” remains open to interpretation.
JUDICIAL INTERPRETATIONS
This issue has frequently been brought before the courts of the country, with numerous cases
addressing this question – “to what extent is a CRI protected under the Indian patent regime?”
One of the leading cases here is Ferid Allani v.Union of India (2018). In this case, the Petitioner
had filed a national phase application for an invention titled “Method and Device for Accessing
Information Sources and Services on the Web”. The IPO refused the patent because the method
claims made by the applicant were a “computer program per se” and did not constitute to be a
patentable invention as defined in Section 3(k) of the Patents Act, 1970. The Intellectual
Property Appellate Board upheld this decision.
The petitioner then filed a writ petition challenging the exclusion of CRIs from patentability
under the Patents Act, o1970. While upholding the validity of Section 3(k), the Court still
maintained that “computer-related inventions must have a technical contribution or technical
effect to be patentable.” The ruling unambiguously establishes that there is no complete
prohibition on granting patents for CRIs, and thus provides a fresh perspective on how the
patent office should handle future applications pertaining to claims of CRIs.
In the case of Yahoo! Inc. v. Controller of Patents & Rediff.com India Ltd. (2012) the petitioner
challenged the Indian Patent Office’s rejection of its patent application for an online advertising
invention, which utilized machine learning techniques. The Patent Office had rejected the
application on the basis that it was a computer program per se and not an invention eligible for
patent protection. Upon appeal, the Delhi High Court overruled the Patent Office’s decision,
holding that the invention involved a technical advancement and was not merely a computer
program per se.
Data Access Corporation v. Controller of Patents (2020) is a more recent case where Data
Access Corporation applied for a patent for a “Method and System for Generating a Database”.
The Patent Office rejected the application on the grounds that it related to a “mathematical
method” and did not involve any technical effect. The IPAB overturned the rejection, stating
that the invention involved a technical effect and solved a technical problem.
Therefore, we can gather that a key factor in determining whether a CRI is patentable or not
depends on whether it involves a technical effect, advancement or contribution to already
existing innovations. The interpretation of what entails the phrase “computer programs per se”
is what determines whether a particular CRI is patentable in India.