The Patents Act

(India)Legal Environment for Business

Importance of Patents

Exclusive Rights

Strong Market

Position

Opportunity to

License or Sell

Invention

Introduction

Patent

A Patent is a form of intellectual property which grants an exclusive right to the patent holder (patentee) to use his own invention, in any manner he or she desires for a limited or defined period of time.

Patentable Invention

Non-Patentable Invention

The following types of Inventions are non patentable:

Contrary to well established natural laws or public order

Discovery of natural substances

A method of agriculture or horticulture

A mathematical or business method or a computer programme per

se or algorithms

Literary, dramatic, musical or artistic work

An invention which in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally

known component or components

Non-Patentable Invention

If a new form of known substance is found it should contribute to

enhancement of known efficacy of the existing substance.

Case: Gilead a US Pharma Company applied for a patent for Sovaldi, used

in Hepatitis C treatment, which Gilead sells for $84,000 for a normal 12

week course.

The Controller General of Patents, Designs and Trademarks of the India

ruled that the patent claim lacks novelty and inventive step, and also

doesn't demonstrate it's significantly more effective than already known

compounds. There are a number of earlier compound structures that are

very close to what Gilead is trying to get a patent for.

Therefore it ruled to allow Indian pharmaceutical companies to produce

Sofosbuvir, the generic version of Sovaldi.

Non-Patentable Invention

Sections 4 provides inventions relating to atomic energy not

patentable.

Section 5 which provided for inventions where only methods or

processes of manufacture as patentable, has been deleted by

Amendment Act 2005. Therefore provisions for “process

patent” have been removed.

The Patents Act 1970

Commencement: 21 September 1970

Objective: To encourage inventions by promoting their

protection and utilization so as to contribute to the

development of industries, which in turn, contributes to the

promotion of technological innovation and to the transfer and

dissemination of technology.

Significance: The Patents Act 1970 describes the procedure for

the grant of patent and protects the patentee’s rights against

infringement.

Application For Patents (Sec 6-11)

Persons entitled to apply for the patents (Sec 6):True and first inventorAssignee or legal representative of true and first inventor

Form of Application (Sec 7):Application to be filled for one invention only, in the

prescribed form. Applicant must be in possession of the invention.When the applicant is other than the true and first inventor,

the application must also include a declaration that he believes the person named in the application is the true and first inventor. Provisional or complete specification must also be attached.

Application For Patents (Sec 6-11)

Provisional and Complete SpecificationA description of the invention is called the specification.

An applicant providing provisional specification must give complete

specifications within 12 months from date of filing of application.

Contents of Complete Specification:an abstract providing technical information

full description of invention and its usage

best method of performing the invention known to applicant

claim(s) defining scope of invention for which protection is claimed

Foreign applicants must provide complete specifications and keep the

Controller informed about details and developments in any patent

application filed outside India.

Working of PatentsCompulsory License and Revocation

Pate

nt Inventions

Obligations

Licenses

19

70Rights

• Commercial scale and to the fullest extent

• Contribute to the promotion of technological innovation, mutual advantage of producers and users of technological

• knowledge and to a balance of rights and obligations

• Benefit of the patented invention available at reasonably affordable prices to the public

• No monopoly

• Should not impede protection of public health and nutrition, should act as instrument to promote public interest especially in sectors of vital importance for socio-economic and technological development of India

• Do not in any way prohibit Central Government in taking measures to protect public health

• Does not resort to practices which unreasonably restrain trade or adversely affect the international transfer technology

Must Must not

• Invention is not worked in the territory of India. that 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

• The patented invention is not working in the territory of India

• Can existing trade or industry or the development thereof or the establishment of any new trade or industry in India or the trade or industry of any person or class of persons trading or manufacturing in India is prejudiced

• The demand for the patented article has not been met to an adequate extent or on reasonable terms

• A market for export of the patented article manufactured in India is not being supplied or developed

• The establishment or development of commercial activities in India is prejudiced

Compulsory License

Granted Denied

The Controller shall take into account :

• the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention

• the ability of the applicant to work the invention to the public advantage

• the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted

• as to whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit

Public deemed not to have been satisfied if :

• If the patented invention is not being worked in the territory of India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable

• if the working of the patented invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by :

(i) the patentee or persons claiming under him(ii) persons directly or indirectly purchasing from him(iii) other persons against whom the patentee is no taking or has not taken

proceedings for infringement.

Revocation

• Patented invention has not been working in the territory of India• reasonable requirements of the public with respect to the patented invention

has not been satisfied• patented invention is not available to the public at a reasonably affordable price

Every application shall contain such particulars as may be prescribed, the facts upon which the application is based

Publication of Application

An application for patent is not open to the public for a

prescribed period. The applicant may, however, request the

controller to publish his application anytime during the

prescribed period.

On the expiry of the prescribed period, every application or a

patent shall be published except where:

1. secrecy direction is imposed for defence purpose under section 35

2. the application has been abandoned under section 9

3. the application has been withdrawn 3 months prior to the prescribed period

Publication of Application

Upon publication of an application for a patent, the depository institution has to make the biological material mentioned in the application available to the public. the patent office shall make the specifications and drawings available to the general public on payment of prescribed fees in this regard.

On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application.

Case Study- Publication of

Application (Application abandoned)

The applicant had instructed his agent to abandon the earlier application ‘B’

on 26th March 2015. But the agent didn’t act upon the instruction in time

and on 8 May 2015 the agent received a notice from the Patent Office stating

that the application would be published on 4 June 2015. On 12 May 2015 the

Patent Office received letter from the agent for withdrawal of the application

‘B’. The agent felt it appropriate to involve common sense to the meaning of

the Act and said that if an application is withdrawn before preparations and

by some administrative error it is published, then any action after withdrawal

should be considered not to have happened. The examiner however was of

the opinion that the intimation for withdrawal was received after the

preparations for publication were complete.

It was declared that the application ‘B’ was withdrawn only after the

preparations for publication were over.

Examination of Application

An applicant or any other interested person can make a request in the prescribed manner for the examination for a patent within the prescribed period. Upon receipt of the request for examination, the Controller of Patents shall refer to both the application and complete specification to the examiner for making a report to him as regards:

1. whether the application complies with the requirement of the Act and the Rules

2. whether there exists any ground of objection to the patent

3. whether the invention has already been published or claimed by any other person

4. any other matter which may be prescribed

Examination of Application

Whether the report of the examiner as received by the controller of the patents is adverse, the controller is required to issue a notice to the applicant, giving a gist of the objections. The Controller is under an obligation to give an opportunity of being heard, if so required by the applicant.

Where the Controller is satisfied that the application does not comply with the requirements of the act, he may reuse the application or may require the applicant to make suitable amendments to the application. If the amendments are not carried out to the satisfaction of the Controller, he may finally refuse the application.

Opposition Before Grant of Patent

The grant of patent may be opposed on the following grounds:1. that the invention for which patent has been claimed was publicly

known or used in India2. the the applicant wrongfully obtained the invention or any part of

it3. that the invention is obvious and does not involve any inventive

step4. that the invention is not patentable under the Patents Act, 19705. that the complete specification does not disclose or wrongly

mentions the source or geographical origin of biological material used for the invention

Opposition After Grant of Patent

After the grant of a patent but before the expiry of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the controller of patents in the prescribed manner on the same specified grounds as given above under the heading,“Opposition before grant of patent”. The Controller of patents shall notify the patentee about the notice of opposition received by him. The Controller shall constitute an “Opposition board” consisting of such officers as he may determine appropriate.The controller would then refer the notice of opposition to the “Opposition board” along with the documents for examination and submission of his recommendations to him.

If the Controller finds that the invention was obtained wrongfully from the opponent and he revokes the patent on that ground, he may, on request by such opponent direct that the patent shall stand amended in the name of the opponent.

Opposition Proceedings

Where any notice of opposition has been given, the Controller shall notify the applicant. He may give, both, the applicant and the opponent the opportunity to be heard before deciding the case.

If a person makes a request or a claim that he is the inventor of an invention in respect of a patent application then the Controller shall mention his name as an inventor in the patent granted.

case study

Chef Balsoor from New Delhi runs a restaurant where he offers

cuisines invented by him on his menu. He gets them patented as

soon as he comes up with any new recipes. This time he

claimed to have come up with this new recipe which he called,

“green pickle”, he had made using spinach and curry leaves. He

applied for the patent for his recipe and the application was

published within the prescribed period. A week after the

application was published, chef Pablo from Mumbai opposed the

grant of patent and claimed that the cuisine was originally

invented by him about 6 months before Chef Balsoor came up

with it. The Controller found that the recipes were identical in

major prospects and Chef Pablo was speaking the truth.

Controller decided to finally revoke the application of patent by

Chef Balsoor, and on request of Chef Pablo, directed the patent

to stand amended in the name of Chef Pablo.