PATENT ACT

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
 HISTORY
• Originated in Great Britain from the exercise
of the royal prerogative to grant monopolies
• In India, patent is granted for inventions under
the legislation
• 1st patent act – 1856, granted exclusive
patents for a period of 14 yrs to inventors of
new manufacture
 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 Ayyangar’s report
submitted in 1959
• Act came into force in 1972, and few
provisions were added in 1978
 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
 OBJECTIVE
• To encourage inventors and provide them
protection
• To encourage and maintain a continuous flow
of inventions
• To promote creation of new products and
better products
• To promote employment, national wealth and
better living standards
 SUMMARY OF THE PATENT ACT
• Inventor who is granted a patent has exclusive monopoly to
manufacture the article\process
• Invention must relate to a machine, article or substance produced
by manufacture or must relate to the process of manufacturing an
article, or to an improvement of an article or manufacturing process
• After expiry, anyone can make use of the invention
• Obligation cast on patentee to work the invention on a commercial
scale either by himself or through licenses
• Patent being a form of industrial property is called intellectual
property
• Owner can sell whole or part of his patent right or grant licenses to
use it
 NOVARTIS PATENT CASE
• November 2003 – Novartis granted EMR for
“Glivec” a drug that fights cancer
• In 2004 it obtained an injuction that restricted
other companies from manufacturing the drug.
• The cost of the drug jumped from Rs 10000 (for
a month’s use) to Rs 1,20,000
• The EMR was fiercly contested in court by Cipla
(and other pharmacos)
 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
 CASE STUDY – BASMATI (contd)
• Govt of India release – It will approach the US patent
office and urge them to re-examine the case
• A high level inter-ministerial group comprising of
representatives of the ministries of commerce, industry,
external affairs, legal bodies like CSIR,AIREA, APEDA,ICAR
mobilized to begin an in-depth examination of the case.
• The contents and implications of the patent are currently
being analyzed in consultation with patent attorneys and
agricultural scientists.

Source - http://www1.american.edu/TED/basmati.htm
 CASE STUDY - BASMATI
• 1997- RicTec Co granted patent by US patent office to
call the aromatic rice it produces outside India “basmati”
• RiceTec was trying to enter the market for Basmati by
giving its product names like “Kasmati” and “Texmati”
without much success
• Now it will be able to sell its product under the name
“Basmati” within US and export also
• Heavy losses faced by India and Pakistan, and violation
of fundamental fact that Basmati rice is grown only in
northern regions of India and Pakistan
 FEATURES OF A PATENT
• Patent must be in respect if invention and not discovery
• In respect of one single invention there must be one
single patent
• Patent may be in respect of a substance or in respect of a
process
• Patent cannot be bifurcated for a process and a product
• To have a complete patent the specifications and claims
must be clearly mentioned
• It is the claims alone that constitute the patent
 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
 SOME GENERAL PRINCIPLES….
• Patents are granted to encourage invention
• They are not granted to enable patentees to
enjoy a monopoly
• To promote technological innovation and to
benefit 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
 INVENTIONS NOT PATENTABLE
• Contrary to natural laws
• Contrary to public order or morality or that can cause
harm 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 new reactant
• Aggregation product
• Rearrangement/duplication of known devices
• Methods of agriculture or horticulture
 INVENTIONS NOT PATENTABLE(contd)
• Methods of medical treatments
• Biological processes for production and propogation of plants
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 method of
playing a game
• A presentation of information
• Topography of integrated circuits
• Invention relating to atomic energy
 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 business
then the address of service given by the party or applicant.
 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 the
patent rules 1972, amendment by patents rule 2005 and
the fees prescribed in first schedule.
 Proof of the right to make application.
 Every application should contain the name of the true and
first inventor.
 Every application shall be accompanied by provisional or
complete specification.
 Two types of application: conventional & International.
 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
PROCEDURE FOR GRANT OF PATENT
 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
 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 can’t file for infringement until the patent

has been granted
 EXAMINATION OF APPLICATION
• Only on request after the publication of
application within 36 months from the date of
priority of the application
• Referred to examiner by controller for making
report on:
– Whether application & specification in accordance
with law
– Whether any lawful ground of objection
– To ascertain prior claim of the invention
 SEARCH FOR ANTICIPATION
Investigation to ascertain:

• Prior Publication

• Prior claim of any other specification

 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
 ANTICIPATION
An invention not deemed to anticipation:
• By prior publication
• By previous communication to government
• By public display
• By public working
 CONTROLLER
• Communicate objections
• Refuse or Direct Amendment
• Amendment of complete specification
• In case of anticipation & infringement
• Putting application in order
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
 GRANT OF PATENTS
• If all seems right, process is quick
• On grant, Controller publishes that the patent
has been granted and all related documents
become 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
 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
 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
 CONTROLLER’S ROLE
• Power to give directions to co-owners

• Grant of patent to true and first inventor when

obtained in fraud by another

• Provisions for secrecy of certain inventions

(defence or atomic energy)
 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
 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
What is a patent of addition?
A patent of addition is a special type ofpatent which is directly
associated 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 or

modification, 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.
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 patent
being 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.
 RESTORATION OF LAPSED PATENT

• 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.
 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
 FORM 27

Includes following info:-

– whether the invention has been worked
– if not worked, the reasons for not working the invention,
and the steps being taken to work the invention
– if worked, quantum and value (in rupees) of the patented
product
• manufactured in India
• imported from other countries, giving details of the countries
concerned
– licenses and sub-licences granted during the year
– whether the public requirement has been met, at a
reasonable price either partly, adequately or to the fullest
extent.
 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
 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
 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.
LAWS SUPPORTING COMPULSORY LICENSE

• Section 84—To prevent the abuse of patent as a

monopoly and to make way for commercial
exploitation of invention by an interested person

• Sections 92 (1) and 92 (3)—Circumstances of

national emergency or extreme urgency

• Section 92 A—For exports of pharmaceutical

products to foreign countries with public health
problems
 REVOCATION OF PATENT IN INDIA

3 modes
1. Central Government
2. Controller
3. Courts
 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 made or
obtained by fraud or misrepresentation
(6) The specification does not comply with the requirements
of :-
a) Nonworking of patent
b) Noncompliance with secrecy order
c) In the public interest(relating to atomic energy)
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.
 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.
 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:
 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. An
infringement would be when any of three rights is violated.

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

• Process Patent: Here the use of such a method or process in India by

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.
 Plan of Action
• 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 for
infringement, there must be proof that the infringer had "notice" of the patented (perhaps the
competitor, but not the customer).

• Letter: The patent owner may want to send a letter to the infringer to offer to license the patent
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

Future Shortcomings TRIPS(1990) &
• PIR: Patent • Level of Action v/s IPA
Information Office, copyrights • Burden of Proof
Nagpur • Lack of awareness (2005)
• Voluntary • Backlog: IPO has
Licensing 40,000++ • High Court
• Defensive Patents applications
Legal Aspect
THANK YOU