The Indian Patents Act

CHAPTER 14

Meaning of Patent

• A 'Patent' generally speaking, is a grant from the Government which confers on the grantee for a limited period of time the exclusive privilege of making, selling and using the invention for which a patent has been granted and also of authorizing others to do so.

• The grant of patents for inventions in India is governed by the Patents Act, 1970 and the Patents Rules, 1972.

• A patent granted under the Act is subject to the conditions stipulated in Section 47 of the Act

The Indian Patents Act

• Background : – The Patent System has been existence in India for almost a

century and a half. – It was given protection to thousand of new inventions with a view

to encourage their commercial exploitation. – When giant corporations clash in patent litigation it's headline

news– When POLAROID challenged KODAK'S rights in Instant photography

inventions, their right to manufacture and market the product were at stake or else face punitive damages of billions of dollars.

Patents

• Patent documents contain full technical details of the invention with drawings and descriptions.

• The intention is that, any person with suitable skill should be able to manufacture the product or carry out the process on his own without seeking know how from the patentee after the patent has ceased.

• Such detail is unlikely to be published in conventional journals or literature and the benefits of the Patent system are affordable, simple to appreciate and exploited a family of patents for plain paper copies

• Invention• Patent is granted to inventions. An invention must have

novel and utility if it were to be patented. S. 2(i) defines an invention as:

– (i) an, process, method or manner of manufacture;– (ii) machine, apparatus, or other article; or– (iii) substance produced by manufacture, and includes any new

and useful improvement of any of them.

• PATENTS ACT, 1970– object of patent Act is to encourage scientific research, new

technology and industrial progress, grant of exclusive privilege to own, use or sell the method or the product patented for a limited period stimulates new inventions of commercial utility

– The fundamental principle of Patents Act, 1970 is that a patent is granted only for an inven tion which is new useful and non-obvious. At must have novelty and utility.

– It is essential for the validity of a patent that it must be the inventors own discovery as opposed to mere verification of what was already known before the data of the patent.

• Assignee: – The Act defines the term 'assignee' as to include an assignee of

the assignee and the legal representative of a deceased assignee, and references to the assignee of any person include references to the assignee of the legal representative or assignee of that person;

• Controller:– It means the Controller General of Patents, Design and Trade

Marks.

• Convention application:– It means an application for a patent made by a foreign national

of a convention country.

• Convention country: – It means that country or a country which is member of a group of

countries or a union of countries or an intergovernmental organization notified as such under section 133.

• Capable of industrial application:– In relation to an invention, means that the invention is capable of

being made or used in an industry.

• Exclusive license:

– It means a license from a patentee which confers on the licensee, or on the licensee and persons authorized by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention.

– And "exclusive licensee" shall be construed accordingly.

• Food: – It means any article of nourishment for human consumption and

also includes any substance intended for the use of infants, invalids or convalescents as an article of food or drink.

• Invention: – means a new product or process involving an

inventive step and capable of indus trial application.

• Inventive step: – means a feature that makes the invention not obvious

to a person skilled in the art.

• International application: – means an application for patent made in accordance

with the Patent Cooperation Treaty

• Patent cooperation treaty: – means the patent cooperation treaty done at Washington on 19

June 1970 as amended and modified from time to time.

• Convention Application – means an application for a paten made by virtue o Section 135.

• Exclusive license – means a license from a patentee which confer on the licensee,

or on the licensee and persons authorized by him, to the exclusion of all other persons (including the patentee), any right in respect of the patented invention and exclusive licensee shall be construed accordingly.

• Food: – The term 'food' in this Act has been defined as to

mean any article of nourishment for human consumption and also includes any substance intended for use of infants, invalids or convales cents as article of food or drink.

• Invention :– Invention in this Act has been defined to mean a new

product or process involving an inventive step and capable of industrial application.

– Inventive step means a feature that makes the invention not obvious to a person skilled in the art.

• Medicine or Drug include

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

– all substances intended to be used for or in the diagnosis, treatment, mitigation or prevention of diseases in human beings or animals;

– all substances intended to be used for or in the maintenance of public health, or the prevention or control of any epidemic diseases among human beings or animals;

– insecticides, germicides, fungicides, weedicides and all other substances intended to be used for the protection or preservation of plants;

– all chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances referred to above.

• Things which are Patentable– Before we can think of protection under patents, we must know

as to what things are patentable in law in India.

• A PATENTABLE INVENTION– Must be new– Must be non-obvious– Must be useful

non-patentable inventions

• Those inventions which are injurious to public health or violate public morality or public interest.

• New method of agriculture or horticulture is non-patentable invention in order to have a more widespread benefit of such invention rather than concentrating the commercial gain of such invention in the hands of the inventor alone.

• A process of treatment of human beings, animals or plants cannot be patented

• What is an invention? – Briefly, an invention is :

• a new and useful process or method of manufacture of an article or substance, whether or not the article or substance is new or.

• a new and useful article or substance produced by manufactured

• Should "Inventions" be Patented ?– he may broadcast the invention for free use

by public; or– he may work the invention in secrecy without

patenting it; or– he may work the invention openly without

patenting it; or– he may exploit the invention on the basis of a

patent.

• Advantages to Patent System

– The Patent system stimulates technical progress in the following ways;

– It encourages Research.– It induces an inventor to disclose his

inventions instead of keeping them as secret.– It provides an instrument to invest capital in

new lines of production to encourage technological development.

contract between the inventor and the Government and the Public gets three advantages :

– further research can be based;– Reasonable assurance that the worthwhile

inventions will be commercialized;– Free us&-of the invention by the Public after

the Patent expires.

PATENT SYSTEM IN INDIA

• Under the Patent Act 1970 the Patent Office has branches at Delhi, Mumbai and Chennai having jurisdiction over the North, West & South zones respectively.

• The head office is located at Calcutta and has jurisdiction over rest of India.

Varities of Patents

• An ordinary patent

• A Patent of Addition for improvement in or modification of an invention for which a patent has been applied for on granted.

• • A patent of addition remains in force only as

long as the patent for the original invention remains in force and no renewal fees is payable in respect thereof.

• A patent granted in respect of a convention application filed under the Sec. 135 of the act under reciprocity arrangements.

What are not 'inventions?' (Section 3)

– an invention which is frivolous or which claims anything obviously contrary to well - established natural laws:

– an invention the primary or intended use of which would be contrary to law or morality or injurious to public health;

– the mere discovery of a scientific principle or the formulation of an abstract theory.

– 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 process results in a new product or employs at least one new reactant.

– 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.

What are not 'inventions?' (Section 3)

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

• a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement of control of manufacture.

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

• 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 propaga tion of plants and animals;

What are not 'inventions?' (Section 3)

• a mathematical or business method or a computer program per se or algorithms;

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

• a mere scheme or rule or method of performing mental act or method of playing game;

• a presentation of information;

• topography of integrated circuits;

What are not 'inventions?' (Section 3)

• an invention which, in effect, is traditional knowledge or which is an aggregation or duplica tion of know properties of traditionally known component or components.

• According to Section 4 of the Act, 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.

What are not 'inventions?' (Section 3)

• In respect of food, medicine or drug, patents are granted only for the method of processes of manufacture of the substances but not the substances themselves.

• However, in respect of substances themselves intended for use, or capable of being used as medicine or drug except chemical substances which are ordinarily used as intermediate, patent can be granted in the manner provided in the. Act.

• In respect of substances prepared or produced by chemical processes which includes bio chemical, biotechnological and micro-biological process or including alloys, optical glass, semi-conductors and inter-metallic compounds, patents are granted only for the process of manufacture but not for the substances themselves.

What are not 'inventions?' (Section 3)

• Illustration– A process of treating malignant tumour cells is not patentable.– A system for aiding hearing was not considered a method of

treatment and was granted a patent.

– A method of reducing gastric secretion in mammals by administration of certain compounds was considered unpatentable being a method of treatment.

– A claim for a novel manner of use of old chemical compound for treatment of human disease has been held not patentable.

– A claim for patent on a medicine cannot be entertained

Inventions where only Methods or Processes

of manufacture patentable

• 1) provides that in the case of inventions claiming substances intended for use, or capable of being used, as food or as medicine or drug or relating to substances prepared or produced by chemical processes (including alloys, optical glass, semi conductors and inter-metallic compounds) no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable

Who can Apply for a Patent?

– Section 6 provides that an application for a patent for an invention may be made by any person claiming to be the true and first inventor of the invention;

– any person being the, assignee of the person claiming to be the true and first inventor in respect of the right to make such application;

• and the legal representative of any deceased person who immediately before his death was entitled to make such an application.

EXCLUSIVE MARKETING RIGHTS

• The Government of India in order to meet the obligations under Article 70(8) and (9) of TRIPs Agreement of WTO, inserted new Chapter IVA in the Patents Act, 1970 on Exclusive Market ing Rights containing Sections 24A -24F by the Patents' (Amendment) Act, 1999, with effect from January 1, 1995.

Application for Grant of Exclusive Rights

• Section 24A of the Patents Act provides that in respect of a claim for a patent of an invention for a substance itself intended for use, or capable of being used, as medicine or

• drug except in respect of all chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances referred to in sub-clauses (i) to (iv) of Section 2(1) (1) of the Act] the Controller shall not refer the application to an examiner for making report till December 31,2004.

• If, on receipt of report from the examiner, the application for exclusive right to sell or distrib ute an article or a substance is not rejected by the controller, he may proceed to grant exclusive right in the manner provided in Section 24B of the Act

Grant of Exclusive Rights

• invention, made whether in India or in a country other than India and before filing such a claim, filed an application for the same invention claiming identical article or substance in a convention country on or after the 1st day of January, 1995 and the patent and the approval to sell or distribute the article or substance on the basis of appropriate tests conducted on or after the 1st day of January, 1995, in that country has been granted on or after the date of making a claim for patent covered under Sub-section (2) of Section 5; or

• made a claim for patent on or after the lsl day of January, 1995 for method or process of manufacture for that invention relating to identical article or substance and has been granted in India the patent there for on or after the date of making a claim for patent covered under Sub-section (2) of Section 5 and, the applicant has received the approval to sell or distribute the article or substance from the authority specified in this behalf by the Central. Government

Compulsory Licenses in Relation to Exclusive Right to Sell or Distribute

– i) the working of the invention shall be deemed to be selling or distributing of the article or substance;

– (ii) references of patent shall be deemed to be references to "right to sell or distribute“

– (iii) references to "patented article" shall be deemed to be references to an article for which exclusive right to sell or distribute has been granted.

Special Provision for Selling or Distribution

• Section 24D empowers the Central Government to sell or distribute in the public interest, an article or substahce, by itself or through any person (other than a person to whom an exclusive right has been granted) authorised in writing by it in this behalf, to sell or distribute the article or substance.

STEPS IN THE PROCEDURE FOR OBTAINING A PATENT

• The following are the successive steps in the procedure for obtaining a patent:

– Filing an application for a patent at the appropriate office with a provisional or complete specification ;

– Filing complete specification, if a provisional specification accompanies the application;

– Examination and acceptance of the application– Advertisement of acceptance of complete speciation– Opposition to grant of patent to the applicant– Hearing of the parties.– Overcoming opposition, if any, to the grant of a patent; and– Grant and Sealing of the Patent.

APPLICATION FOR PATENTS

• Who can apply for a Patent?

• An application for a patent for an invention may be made by any of the following persons, that is to say :

– by any person claiming to be the true and first inventor of the invention;– 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.– by the legal representative of any deceased person who immediately before

his death was entitled to make such an application

Who can apply for a Patent?

• The application may be made by one of the persons either along or jointly with any other person.

– An application for an ordinary Patent for an invention may be made by any person, whether a Citizen of India, or not, claiming to be the true or first inventor of the invention or his assignee or by the legal representative of any deceased person who immediately before his death was entitled to make an application for Patent.

– An application f w a Patent of Addition may be made only by the applicant for the original patent to which it is an addition, if the application for the original patent is pending; or by the registered proprietor of such original patent, if it has been granted.

– A convention application may be made by any person who has made an application for a patent in respect of that invention in a convention country or by his assignee or his legal representative.

Following are the documents needed to be along with the application for patent:

• Application : – An application in prescribed form in triplicate: – Every application for a patent should contain an

address for service in India, to which all official communications may be made and must be signed by the Applicant.

– In case the applicant is absent from India, the application may be signed on his behalf by his authorized agent resident in India.

Following are the documents needed to be along with the application for patent

• A provisional specification – drawn or a complete specification drawn along with drawings,

if any, in triplicate. In case of convention application only a complete specification can be filed.

• Proof of right to apply for the grant of a patent under Sec. 7(2) of the Act.

– This is necessary in case the application is filed by virtue of an assignment. It may be in the form of Deed of Assignment or Endorsement and should either be filed along with the application or within three months from the date of filing the application for a patent.

– This period of three months may be extended by the Controller under exceptional circumstances on a petition made under rule 124 with the prescribed fee by the applicants.

Following are the documents needed to be along with the application for patent

• A Declaration as to inventorship on under Sec. 10(6) of the Act of the Act.

– Both in the case of an application accompanied in the first instance by a provisional specification and in the case of a convention application a declaration as to Inventorship of the invention disclosed in the complete specification must be filled (in triplicate) either with the complete specification / convention application or within from date of filing of the complete specification / convention application after obtaining the necessary extension of time on an application with prescribed fee.

• A statement and undertaking under Sec. 8 of the Act– A person resident outside India need not file a statement and

undertaking.

SPECIFICATION

• Provisional Specification

• should contain – (i) title indicating the subject matter to which

the invention relates; – (ii) the name, address and nationality of the

applicant; (iii) preamble; – (iv) description of the nature of the invention;

and. – (v) date and signature of the applicant's)

• Provisional Specification

• Since provisional specification is regarded as a mere document of record, no amendment that would add any fresh matter to or extend the scope of the invention described in the provisional specification is allowable without 'post dating'.

Complete Specification

• It should be filed in triplicate and should contain – (i) title indicating the subject matter of the invention,– (ii) name, address and nationality of the applicant; – (iii) full description of the invention and its operation or

use and the best method by which it is performed,– (iv) statement of claims preceded by preamble "I (we)

claim" and– (v) the date and signature of the applicant.

GRANT OF PATENT

• On the acceptance of the complete specification, the Controller shall advertise the acceptance in the official gazette and thereupon the application and the specification with the drawings, if any, filed in pursuance thereof shall be open to public inspection.

• Opposition to Grant of Patent

• (i) that the applicant has wrongfully obtained the invention or any pan thereof:

• (ii) that the invention claimed was publicly known or publicly used in India before;

• (iii) that the invention does not clearly involve any inventive step;• (iv) that the subject of any claim of the complete specification is not

an invention within the meaning of the Act or is not patentable under the Act;

• (v) The invention as claimed by the applicant in his complete specification is obvious and does not involve any inventive step.

• (vi) The invention is not patentable or its patenting is prohibited under the Act.

Opposition to Grant of Patent• (vii) that the complete specification does not sufficiently and clearly describe

the invention or the method by which it is to be performed;

• (viii) En case of foreign application, the failure to disclose information relating to such application filed in a foreign country.

• (ix) that the applicant has failed to disclose to the Controller the information required or has furnished false information; or

• (x) that in the case of a Convention application, the application was not made within 12 months from the date of the first application for protection for the invention made in a Convention country by the application or a person from whom he derived title, but on no other ground.

• (xii) In case the complete specification does not disclose or wrongly mentions the source or geographical origin or biological material used for the invention.

• (xii) In case the invention so far as claimed in any claim of the complete specification is antici pated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Notice of Opposition

• The opponent must give notice of objection to the Controller.

• The Controller in turn shall give a copy of opposition to the applicant for patent.

• After hearing the opponent or applicant whoever desires to be heard the Controller shall decide the opposition and notify his opposition to the parties giving reasons thereof.

Grant and Sealing of Patents• Where a complete specification in pursuance of an application for a patent

has been acceptedand either- ,– the application has not been opposed under Section 25 and the time for

the filing of the opposition has expired; or

– the application has been opposed and the opposition has been finally decided in favour of the applicant; or

– the application has not been refused by the Controller by virtue of any power vested inn him by the Patent Act, the patent shall be granted to applicant.

– In the case of joint application the patent shall be granted to the applicants jointly.

– A request for the sealing of a patent shall be made.

– The Controller shall cause the patent to be sealed with the seal of the patent office and the date on which the patent is sealed shall be entered in the register.

Grant of Patents Subject to Conditions

• The grant of a patent shall be subject to the conditions that:

– any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;

– any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;

– any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and

– in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the official gazette.

DRAWINGS

• If the invention can be illustrated with the help of the drawings, such drawings should be prepared in accordance with rules 16 to 19 of the patents rules 1972 and should be filed.

• The drawings are deemed to form part of the specification, provisional or complete which they accompany and may be regarded as a silent application for the features they disclose.

• Care should be taken to file the drawings wherever necessary, failing which the controller may post date the application to the specification.

• The drawings with provisional or complete specification should be filed in triplicate;

• at least one copy (original copy) of the drawings should be prepared on tracing cloth, or transparent or semi-transparent sheets may be of A4 size, with a margin of 1.5 cm all around.

DRAWINGS

• Black ink and should be drawn in an upright position in regard the top and bottom of the drawing sheet.

• Drawings should bear – (i) in lefty hand top corner the name of the applicant– (ii) in the right hand to corner the number of sheets and sheet

number, and – (iii) in the right hand bottom corner, the signature of the applicant

or his agent.

Date and Term of Patent

• The term of patent starts from the date of filing the complete specification and this date is entered in the Register of patents as the date of the patents.

• The term of patent in respect of Food, Drug and medicine cases will be 5 years from the date of sealing or 7 years from the date of patent whichever is shorter. In respect of any other inventions the period will be 14 years from the date of patent.

• Renewal Fees :

• To maintain a patent in force, renewal fees have to be paid from the beginning of 3rd year, otherwise the patent ceases to have to have effect. It is the sole responsibility of the patentee to pay renewal fees on due date or pay in advance to avoid the patents from getting lapsed.

Restoration of Lapsed Patents (Section 60 - 62)

• The Act patent provides that where a patent ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within extended period the patentee or his legal – representative (where the patent was held by two or more persons jointly,

then, with the leave of the Controller, one or more of them without joining the others) may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent,

– containing a statement verified in the prescribed manner and fully setting out the circumstances which led to the failure to pay the prescribed fee.

• Controller ray however require the applicant to furnish such further evidence as he may think necessary. (Section 60)

Commercial Working of Patents

• Every patentee should furnish periodical statements as to the extent to which the patented invention has been worked on a commercial basis in India.

• The non-worked patents are classified according to Chemical Engineering, Electrical Engineering in the Gazette of India for any persons who are interested to approach the controller for license to work the patent.

Register of Patents (Sections 67 - 72)

• The Patent Office and its branches maintain Register of Patents wherein entries in respect of patents granted rn India are kept up to date.

• Section 67 provides that a Register of Patents shall be kept at the patent office. The following particulars are required to be entered:– (i) the names, addresses of grantees of patents;

– (ii) notification of assignments and of transmission of patents, of licenses under patents and of amendments, extensions, and revocations of patents; and

– (iii) particulars of such other matters affecting the validity or proprietorship of patents.

Register of Patents (Sections 67 - 72)

• Section 68 – provides that the assignment, transfer, mortgage, license etc. must

be in writing and the agreement between the parties concerned is to be reduced to the form of a document.

– An application for registration of the assignment etc. is to be made in a prescribed form within 6 months from the execution of the document.

• Section 69 – provides for the registration of assignment, transmission etc. of a

patent.

• Section 70– empowers a registered grantee or proprietor to assign, or grant

licenses under the patents.

Register of Patents (Sections 67 - 72)

• Section 71 – empowers a Appellate Board to order for the rectification of

Register of patents if an application is made by any person aggrieved due to the following reasons:

– (a) by absence or omission from the register of any entry; – (b) by any entry made in the Register without sufficient

cause; or (c) by any entry wrongly remaining on the Register; or

– (d) by any error or defect in any entry in the Register.• Section 72

– provides that the Register of Patents shall at all convenient times be open to inspection by the public.

– The certified copies, sealed with the seal of the patent office, of any entry in the Register shall be given to any person requiring them, on payment of the prescribed fee.

– Further the Register shall be prima facie evidence of any matters required to be entered therein.

Register of Patents (Sections 67 - 72)

• Surrender of Patents (Section 63)

• The Act entitles the patentee to surrender the patent, at any time by giving notice in the prescribed manner to the Controller.

• The Controller on receipt of such an offer is under obligation to advertise the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.

• Any person interested may, with the prescribed period after such advertisement give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.

• If the Controller satisfied after hearing the patentee and any opponent desirous of being heard, that the patent may properly be surrendered, he may accept the offer and by order, revoke the patent

REVOCATION OF PATENT (Section 64 - 66)• A patent, may be revoked by the High Court Appellate on any of the following grounds (i) on

the petition by

• (a) any person interested or • (b) of the Central Government or

• (ii) on a counterclaim in a suit for infringement of the patent:• (i) the invention, so far as claimed in any claim of the complete specification• was claimed in a valid claim of earlier priority date contained in the complete specifica tion of

another patent granted in India;

• is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in Section 13;

• is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;

• is not useful;

• was secretly used in India, otherwise than as mentioned in Sub-section (3), before the priority date of the claim;

• was anticipated having regard to the knowledge oral or otherwise, available within any local or indigenous community in India or elsewhere.

REVOCATION OF PATENT (Section 64 - 66)

• (ii) the patent was granted on the application of a person not entitled to apply therefor.

• (iii) the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;

• (iv) the subject of any claim of the complete specification is not an invention within the meaning of the Act;

• (v) the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed;

• (vi) the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;

• (vii)the patent was obtained on a false suggestion or representation;• (viii) the subject of any claim of the complete specification is not patentable

under the Act;• (ix) the applicant for the patent has failed to disclose to the Controller the

information required or has furnished information which in any material particular was false to his knowledge;

• (x) the applicant contravened any direction for secrecy passed under Section 35;

• (xi) the leave to amend the complete specification, under Section 57 or Section 58, was obtained by fraud.

• (xii)the complete specification does not disclose or wrongly mentions the source or geographical origin or biological material used for the invention.

Revocation of patent in public interest (s.66)

• Where the Central Government is of opinion that patent or the mode in which it is exercised is mischievous to the state or generally prejudicial to the public, it may make a declaration to that effect in the official gazette.

• It shall give an opportunity to the patentee to be heard before making such a declaration.

• Then the patent shall be deemed to be revoked.

Assignment of Patents (Section 68)

• Section 68 – makes the assignment of a patent, share in a patent,

mortgage, licencje or the creation of any other interest in a patent, invalid unless it is in writing containing terms and conditions governing rights and obligations of the parties and the application for registration of the same is filed prescribed manner with the Controller within six months from the execution of the document or within such further period not exceeding six months,

– However, when document is registered, it shall have effect from the date of execution.

Appeals to the Appellate Board

• The Patents (Amendment) Act, 2002 – has substituted new chapter XIX titled Appeals to the Appellate

Board in place of the original Chapter XIX dealing with Appeals. – The New Chapter contain ing Sections 116-117 H deals with the

establishment of Appellate Board; – Staff of Appellate Board, Appeals to Appellate Board; – Procedure and Powers of Appellate Board; Bar on Jurisdiction of

Courts;– Procedure for Application for Rectification etc. before Appellate

Board; – Appearance of Controller in Legal Proceedings; – Costs of Controller in Proceedings before Appellate Board;– Transfer of pending Proceedings to Appellate Board; and – Power of Appellate Board to Make Rules.

Penalties• Chapter XX containing Sections 118-124 deals with penalties

for the violation of various provisions of the Act. Their description is as follows:

– (i) Contravention of secrecy provisions relating to certain inventions have been made punishable with imprisonment upto two years or with fine or both (Section 118).

– (ii) Falsification of entries in the register etc. have been made punishable with imprisonment upto two years or fine or both (Section 119).

– (iii) Unauthorized claim of patent rights attracts a fine upto ten thousand rupees (Section 120).

– (iv) Wrongful use of words Patent office is punishable with imprisonment upto six months or with fine or both (Section 121).

– (v) Refusal or failure to supply information by any person shall be punishable with fine upto twenty thousand rupees or imprisonment upto six months or both (Section 122).

– (vi) Practicing as Patent agent without registration shall be punishable with fine upto ten thousand rupees for first offence and forty thousand rupees for second and subsequent offence. (Section 123).

Penalties• (vii) In the case of offences by companies, the company as well as every

person in charge of and responsible to, the company for conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against accordingly,

– unless he proves that the offence was committed without his knowledge and that he had exercised all due diligence to prevent the commission of such offence (Section 124).

• is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;

• is not useful;

• was secretly used in India, otherwise than as mentioned in Sub-section (3), before the priority date of the claim;

• was anticipated having regard to the knowledge oral or otherwise, available within any local or indigenous community in India or elsewhere.

• (ii) the patent was granted on the application of a person not entitled to apply therefore.

Penalties

• the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;– (iv) the subject of any claim of the complete specification is not

an invention within the meaningof the Act;

– (v) the complete specification does not sufficiently and fairly describe the invention and themethod by which it is to be performed;

– (vi) the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in thespecification

Penalties• (vii) the patent was obtained on a false suggestion or

representation;• (viii) the subject of any claim of the complete specification is not

patentable under the Act;

• (ix) the applicant for the patent has failed to disclose to the Controller the information required or has furnished information which in any material particular was false to his knowledge;

• (x) the applicant contravened any direction for secrecy passed under Section 35;

• (xi) the leave to amend the complete specification, under Section 57 or Section 58, was obtained by fraud.

• (xii) the complete specification does not disclose or wrongly mentions the source or geographical origin or biological material used for the invention.

Penalties

• Revocation of patent on directions from Central Government in cases relating to atomic energy (s.65). – Where the Central Government is satisfied that a patent is for an

invention relating to atomic energy for which no patent can be granted, then it may direct the controller to revoke the patent.

– Then the controller may revoke the patent.

• Revocation of patent in public interest (s.66). – Where the Central Government is of opin ion that patent or the

mode in which it is exercised is mischievous to the state or generally prejudicial to the public, it may make a declaration to that effect in the official gazette.

– It shall give an opportunity to the patentee to be heard before making such a declaration.

– Then the patent shall be deemed to be revoked.

Assignment of Patents (Section 68)

• Section 68 makes the assignment of a patent, share in a patent, mortgage,– license or the creation of any other interest in a

patent, invalid unless it is in writing containing terms and conditions governing rights and obligations of the parties and

• the application for registration of the same is filed prescribed manner with the Controller within six months from the execution of the document or within such further period not exceeding six months,

• However, – when document is registered, it shall have effect from

the date of execution.

Appeals to the Appellate Board

• The Patents (Amendment) Act, 2002 has substituted new chapter XIX titled Appeals to the Appellate Board in place of the original Chapter XIX dealing with Appeals.

– The New Chapter contain ing Sections 116-117 H deals with the establishment of Appellate Board;

– Staff of Appellate Board, Appeals to Appellate Board; – Procedure and Powers of Appellate Board;– Bar on Jurisdiction of Courts; Procedure for Application for Rectification

etc. before Appellate Board; – Appearance of Controller in Legal Proceedings; – Costs of Controller in Proceedings before Appellate Board; – Transfer of pending Proceedings to Appellate Board; and – Power of Appellate Board to Make Rules.

PATENTAGENT

• The work relating to drafting of specifications, making of application for a patent, subsequent correspondence with the Patent office on the objections raised, representing the applicants case at the hearings, filing opposition and defending application against opposition is entrusted to a qualified patent Agent.

• Sections 125-132 of the Patents Act, 1970 and Rules 93-105 of the Patents Rules, 1972 deal with the Patent Agent.

• To practice as a Patent Agent under the Act, a person has to get his name registered as a Patent Agent by making an application in the prescribed form at the Head office or the Patent Office.

• Register of Patent Agents– New Section 125 substituted by the Patents (Amendment) Act, 2002

requires the controller to maintain the register of patent agents containing names, addresses and other particulars of all persons qualified to have their names so entered under Section 126.

– This Section makes it lawful for controller to keep the register of patent agents in computer floppies, diskettes or any other electronic form.

• Qualifications for Registration as Patent Agent

– Section 126 as amended by the Patents (Amendment) Act, 2002 provides that a person shall be qualified to have his name entered in the register of patent agent,

• if he is a citizen of India, completed the age of 21 years, • has obtained a degree in science, engineering or technology from

any university established under the law for the time being in force and an Advocate within the meaning of the Advocates Act, 1961 or has passed the qualifying examination prescribed for the purpose and paid prescribed fees.

Right of patent agents

• Every Patent Agent shall be entitled to practice before the Controller and prepare all docu ments, transact all business and discharge such other functions as may be prescribed by the Control ler. Patent Agent is authorized to sign all applications and communications to the Controller on behalf of the person concerned, upon his being authorized in writing to do so by that person.

Disqualification for Registration as a Patent Agent

• No person is eligible to be registered as a patent agent, if he – (i) has been adjudged to be of unsound mind by a competent

court;– (ii) is an undischarged insolvent;– (iii) being a discharged insolvent, has not obtained from the court

a certificate to the effect thathis insolvency was caused by misfortune without any misconduct on his part;

– (iv) has been convicted by a competent court whether within or outside India of an offence toundergo a term of imprisonment;

– (v) being a legal practitioner has been guilty of professional misconduct; or

– (vi) being a chartered accountant, has been guilty of negligence or misconduct.

INFRINGEMENT & REMEDIES

• Jurisdiction of Court (where a suit is to instituted) (Section 104)– A District Court shall have jurisdiction to try the suit for

a declaration as to non infringement or for any relief in cases of groundless threats of infringement proceedings or for infringement of a patent.

– However, where a counter claim for revocation of the patent is made by the defendant, the suit along with the counter claim, shall be transferred to the High Court for decision.

What is infringement?

• The rights of the patentees are infringed by anyone who makes or supplies that substance commercially for use by others even though he does not know that it is that substance that he is making or supplying.

• Relief's in the Infringements (Section 108)– An action for infringement may be instituted by way of

a suit either in District Court or in the High Court. – District Court or High Court where cause of action

arises shall have jurisdiction.

When a Suit Can Be Instituted

• A suit for infringement can be instituted only after the patent has been sealed.

• When a specification has been accepted and advertised and infringement occurs before the sealing of the patent, i.e., during the period when opposition has been called and is being decided,

• the applicant cannot institute a suit for infringement, but damages sustained due to the infringement committed during the period between the date of advertisement of acceptance of complete specification and the date of sealing – may be claimed in another suit; a separate suit for damages but

not a suit for infringement.

• Suit is required to be filed within 3 years from the date of infringing act and not from the date of grant.

– Whether a Notice the Suit to Be Served on the Defendant• Who is Entitled to Sue

– Only the person who has a right in the patent can institute a suit for infringement. The following persons are entitled to sue:

– The patentee.– The exclusive licensee if the licence is registered.– A compulsory licensee when the patentee refuses or neglects to institute

proceedings.– A licensee other than the above two licensees can bring an action for

infringement depending upon the terms of the contract between the licensor and licensee.

– Assignee• He can sue only after the application for registration of the assignment in his

favour has been filed. • If a patent is assigned after the commencement of action, the assignee is to be

joined as a co-plaintiff. • An assignee cannot sue for infringement which occurred prior to the assignment.

– Co-owners of a patent-When a patent is jointly owned by two or more co-owners, one of them can institute a suit for infringement, but the other co-owner (s) have to be joined as co-plaintiff or co-defendant.

Persons who can be Sued

• Person who infringes the patent that violates the monopoly right of patentee can be sued for infringement.

• When two or more persons have jointly infringed the patent, both of them have to be sued as co-defendants.

• Agents and servants of a principal who is responsible for the infringement can also be sued either individually or collectively along with their employer/principal.

• The consignees of an infringing article can be made a party to the proceedings in an infringement suit.

The reliefs which a Court may grant in any suit for infringement of a patent include -

• (i) an injunction (inter locating/ inter injunction/ permanent injunction subject to such terms, if any, as the Court thinks fit); and

• (ii) damages; or• (iii) an account of profits.

Defenses in Suit for Infringement: (Section 107)

• In any suit for infringement of a patent, every ground on which a patent may be revoked, shall be available as a ground of defense.

• Any suit for infringement of a patent by the making, using or importation of any machine, apparatus or other article or by the using of any process or by the importation, use or distribution of any medicine or drug,

– it shall be a ground for defense that such making, using, importation or distribution is in accordance with any one or more of the conditions imposed for the grant of a patent.

• Remedies against Infringement of Patent– A suit against infringers of patent can be filed either before

District Court of High Court. Court may grant following reliefs :– (i) An injunction– (ii) Damages or an account of profit.

Advantages of Obtaining Patents

• Right to exploit the Patent: – The patentee would have the exclusive right to use his invention

and it would make no difference • if the invention becomes well-known to others from the date of the

patent (which would be the date on which the complete specifications is filed).

• Right to sue for infringement: – The patentee would be able to bring a suit for infringement of a

patent and pray for an injunction, damages or an account of profits against a person who infringes his patent.

• Right to assign / Right to license : – The patentee, if he does not have the means or is not – he would be able to sell his patent it, to assign the patent to

another and grant licenses to other persons to exploit the patent, and thereby earn money.

Kinds of assignment

• There can be three kinds of assignments:• (i) Legal assignment.• (ii) Equitable assignment.• (iii) Mortgage.

– The difference between assignment and license– A license merely confers a personal privilege to do

some particular act (s) which the licensee can perform.

– There is no transfer of interest in licence

Kinds of assignment

• The holder of an exclusive license would have the rights of a patentee and would also to enforce rights by taking proceedings against the infringement of the patent.

• Right to Patent of addition :

– A patentee could make improvements in or modification of an invention described or disclosed in the complete specification of the main invention and obtain the grant of a patent for the improvement or modification as a "Patent of Addition".

• Right to surrender the Patent

How the Rights of a patentee are Enforced?

• The question of enforcement arises after the rights have been given to a person and there has been infringement of such rights.

• The rights of a patentee can be enforced by:

– a suit for infringement of a patent.– an action for specific performance of a contract, e.g., a contract between a

patentee and a licensee.– an action for recovery of royalties

Duties of a Patentee

• The patentee is duty-bound to ensure that the monopoly right created by a patent is not used unfairly and does not act prejudicial to the public interest.

• The responsibility of the patentee to work the patent in India in such a manner is that the reasonable requirements of the public with respect to patented invention are satisfied and the patented product is available in the market in appropriate quantity and reasonable price.

• Section 122 of the Act provides that refusal or failure to furnish any information to the Central Government or the Controller shall be punishable with fine which may extend to twenty thousand rupees.

THE PATENT OFFICE AND ITS ESTABLISHMENT (SECTIONS 74 - 76)

Office Territorial Jursdication

CO The Patent Office Branch, Todi Estates, Bird Floor, Sun Mill Compound, Lower Parel (West), Mumbai-400 013.

The States of Maharashtra, Gujarat and Madhya Pradesh and the Union Territories of Goa, Daman and Diu and Dadra and Nagar Haveli.

00 The Patent Office Branch, Rajaji Bhavan, Besant Nagar, Chennai-600 090.

The States of Andhara Pradesh, Kerala, Tamil Nadu, Karnataka and the Union Territories of Podichery, Laccadive, Minicoy and Aminidivi Islands.

(iii) The Patent Office Branch, Unit No. 401 to 405,3rd Branch Municipal Market Building, Saraswati Marg, Karol Bagh, New Delhi-110005.

The State of Haryana, Himachal Pradash, Jammu and Kashmir, Punjab. Rajasthan and Uttar Pradesh and the Union Territories of Chandigarh and Delhi

(iv) The Patent; Office214, Acharya JagadishBose Road, Kolkatta - 700

017.

The rest of India

Power of Controller Generally

• Sections 77 to 81 confer certain powers on controller of patents. In any proceedings before him under this Act, he shall have the powers of a civil court while trying a suit under the code of civil procedure, 1908 in respect of certain matters.

• Further, he may correct any clerical error in any patent or in any specification or other document filed in pursuance of an application for patent or any clerical error in any matter which is entered in the Register of Patents.

• Further, in any proceeding under this Act before the controller, he may take oral evidence in lieu of, or in addition to evidence by affidavit, or may allow any party to be cross-examined on the contents of his affidavit.

International Arrangements

• With a view to fulfilling a treaty, convention or arrangement with any country outside India which affords to applicants for patents in India or to citizens of India similar privileges as are granted to its own citizens in respect of the grant of patents and the protection of patent rights, the Central Government may, by notification in the Official Gazette declare such country to be a convention country.

• A declaration may be made for the purposes of either all or some of the provisions of the Patents Act.

International Arrangements

• country shall be entitled either solely or jointly with any other person-– to apply for the grant of a patent or be registered as the

proprietor of a patent;– to be registered as the assignee of the proprietor of a patent; or– to apply for a license or hold any license under a patent granted

under the Patents Act.

CASE LAW ON PATENT

• Cadila Pharmaceuticals Ltd. v. Instacare Laboratories Pvt. Ltd., 2001 PTC 472 (Guj).

• The High Court after going through the entire material facts of the case held that the process of making combination drugs of a chemical material and a– micro-organism is a well accepted process and

isolation of one of the ingredients by giving it a coating is also a well accepted process

Imperial Chemical Industries Ltd. v. Controller General of Patents, Designs & Trade Marks and Another, Cal HC.

• The court held that the following propositions of law are well settled:• The patent must be in respect of an invention and not a discovery.• A patent may be in respect of a substance or in respect of a

processes.• But it is not possible to bifurcate a patent and state that one relates

to the substance and the other to the process.• In order to have a complete patent the specifications and the claims

must be clearly and distinctly mentioned.• It is the claims and claims alone which constitute the patent.

• Taylor and Scott v. Anand

• The court observed that the way to ascertain whether a novel and useful improvement in machinery is an invention in the true sense is to consider how matters stood just before improvement was discovered.

End of Chapter