India: Patents - The Present Indian Scenario

Last Updated: 16 August 2004
Article by Rajkumar Dubey

In the beginning of it all, everything belonged to everyone. Gradually people started associating themselves with some or the other things and became their owners. But with this possession came the threat of its being stolen or taken away. The need to develop laws to protect what had already been developed was felt here. For a long time laws were only for the protection of tangible property as understood in the historic sense. Industrialization however saw the advent of several landmark inventions and it was a matter of time before concepts and ideas of the mind became the subject of protection under law.

Patent is a universally acclaimed name for monopoly or exclusive right granted by State in favour of an inventor in respect of an invention and excludes the rights of others for a limited duration to do certain acts in relation to an invention. This right is granted to the person who fulfills the prescribed conditions laid down by the government of a particular country. Thus the patentee becomes the sole owner of the invention.

The Patent is granted protection not only under the respective laws of the various countries in the world. But, there is an effort on the International level to protect the inventor.

The World Trade Organization (WTO) is the successor to the General Agreement on Tariffs and Trade (GATT) established in the wake of the Second World War. The WTO is the governing body at the international level, which covers Trade Related Aspects of Intellectual Property Rights (TRIPs) and several allied agreements. The WTO is known to grant flexibilities to the developing member countries in implementing the obligations under the agreement. The WTO’s intellectual property agreements prescribe rules for trade and investment in ideas and creativity. These rules state how Intellectual Property Rights (IPR’s) should be protected where trade is involved.

The World Intellectual Property Organisation (WIPO) is another international organization dedicated to help ensure that the rights of creators and owners of Intellectual Property are protected worldwide and that inventors thus, recognized and rewarded for their ingenuity. It administers 23 International Treaties dealing with different aspects of Intellectual Property protection. These Treaties and Agreements seek to harmonize national intellectual property legislation and procedures, provide services for international applications for industrial property rights, exchange Intellectual Property information, provide legal and technical assistance to developing and other countries and also facilitate resolution of private Intellectual Property disputes.

The TRIPs Council (which consists of members of the WTO that is responsible for administering the TRIPS Agreement, in particular monitoring the operation of the Agreement) and the WIPO have agreed to cooperate under an agreement that helps the council implement the provisions under the TRIPs agreement.

PATENTS IN THE INDIAN SCENARIO:

The laws pertaining to Patent in India is governed by the Patents Act, 1970 which has been amended twice by The Patents (Amendment) Act, 1999 and The Patents (Amendment) Act, 2002. The new Patent Act, 2002 has although been notified on June 25th 2002, however, currently only limited sections of it have been made applicable vide Gazette Notification from the Government of India, dated May 20, 2003. Although, it is being implemented in phased manner, however, it is a matter of time before the new Act shall be applicable in its entirety.

In the current scenario, the old Acts i.e. The Patent Act, 1970 and The Patent Rules, 2003 are applicable except for the sections made applicable through the Gazette Notification, as stated above.

WHAT IS PATENTABLE:

Patents are granted in respect of any invention in goods. An invention means any new and useful art, process, method or manner of manufacture, machine, apparatus or other article, or substance produced by manufacture, and includes any new and useful improvement in any of them. No patent is granted in respect of claims for the substances themselves; however, claims for the methods or processes of manufacture are patentable. However, in compliance with its commitment under the TRIPS agreement, India has been given time to introduce product patent by the year 2005.

WHO CAN APPLY:

Both the Indian nationals and foreigners can make an application for patent in India. But, in case of foreigners applying for patent in India, it is necessary that the country of such applicant should also be providing such reciprocal rights to the Indian nationals.

Application for patents can be made by any person claiming to be the true and first inventor of the invention or by his assignee or legal representative. An application for patent can be made by any of these persons either alone or jointly with any other person. Two or more companies as assignees may also make an application jointly.

STEPS INVOLVED IN GRANT OF PATENT:

  1. Filing of an application for grant of a patent accompanied by either a provisional specification or a complete specification before any public disclosure of the invention.
  2. In case provisional specification accompanies the original application, then filing of the complete specification within 12 months from the date of filing of the provisional specification. The said period may be extended by a further period of 3 months by paying appropriate fee for extension.
  3. Over coming objections, if any laid by the examiner after the technical examination of the application by the patent office.
  4. Acceptance of the application and advertisement of such acceptance in the official gazette.
  5. Overcoming opposition, if any, to the grant of a patent.
  6. Grant and sealing of the patent.
  7. Maintenance of patent by payment of renewal fee.
  8. Enforcement/revocation.

PATENT COOPERATION TREATY:

Patent Cooperation Treaty is the sister treaty of the Paris Convention, which is administered by the World Intellectual Property (WIPO). The PCT facilitates filing of patent applications under a single umbrella and provides for simplified procedure for the search and examination of such applications.

Under the Paris convention an inventor gets a grace period of 12-months to file a patent application in other member countries after filing in the home country. This period of grace is extended to 30-months under the PCT, whereby an inventor can file an "international patent application" in each of the PCT member countries within this prescribed period. In India a grace period of 31 months is granted for such "international patent application".

FILING PROCEDURE UNDER THE PCT:

1) International Phase

2) National Phase

1. International Phase

India being one of the contracting state in the "PCT", any Indian applicant may file an international application in the standard format [Form "PCT" /RO/101] through any of the Indian Patent Offices as the Receiving Office i.e. The Patent Office, Kolkata, and its branch Offices at New Delhi, Mumbai, Chennai (RO/IN) along with the copy of Specification and Statutory Fees. Language of filing may be either in English or Hindi.

At the time of filing the said application the applicant is also required to mention the number of countries wherein eventually registration of patent is desired to be sought and also has to specify the name of the International Search Authority and the International Preliminary Examination Authority.

The following are the documents that must accompany a PCT Application filed through an Indian Patent office as the receiving office:

  1. PCT Request (Form PCT/RO/101).
  2. The complete specification in triplicate.
  3. Power of Attorney
  4. Certified priority Document.

On the receipt of the application, the patent office shall prepare a certified copy of the priority documents and transmit the same to the International Bureau and the International Search Authority with intimation to the applicant. Thereafter the international search is conducted and the copy of the search report is also forwarded to the applicant.

2. National Phase

Once the formalities under step one are duly complied and the applicant receives the International Search Report or once the Final International Preliminary Examination Report is complete and issued, the application enters the National Phase.

Filing of National Phase Application in India requires the request for the grant of patent to be made to the competent Receiving Office i.e. The Patent Office, Kolkata, and its branch Offices at New Delhi, Mumbai, Chennai in the prescribed form i.e. Form 1A. Language of filing may be either in English or Hindi.

Further the following information/ documents are also required to be submitted along with the necessary fees with the Patent office:

  1. Request (PCT/RO/101)
  2. Drawings (where applicable)
  3. P.A./G.P.A. (where applicable)
  4. The Specification including drawing figures as published in the "PCT" Gazette;
  5. Verified English translation of international application, if not in English;
  6. International Search Report;
  7. International Preliminary Examination Report (if India is elected for using the IPE results);
  8. Certified Copies of the Priority Documents;
  9. Particulars of amendments made to the specification/claims during the "PCT" International Phase;
  10. Verified English translation of amendments filed during the international phase.
  11. Such other information and documents that the patent office may require to be submitted.

Duration of Patents and Payment of renewal fees for the same:

The term of every patent granted shall be twenty years from the date of filing of the application with complete specification as per the Patents (Amendment) Act, 2002. A renewal fees is to be paid for the same every year. The first renewal fee is payable for third year of the patent’s life, and must be paid before the patent’s second anniversary. If the patent has not been issued within that period, renewal fees may be accumulated and paid immediately after the patent is sealed, or within three months of it’s recordal in the Register of the Patents. Such renewal fee is not payable in case of patents of addition.

PROTECTION AVAILABLE TO A PATENTEE:

A Patentee has the exclusive right to make, use, exercise, sell or distribute the patented article or substance in India or to use or exercise the method or process. He can assign or give licence and can even surrender his patent. After the Patents (Amendment) Act, 1999, the provisions relating to the grant of Exclusive Marketing Rights (EMR) to the patentee were incorporated. These rights can be exercised either by the patentee himself or by his agents or licensees during the term of patent.

In addition to the above privileges the patentee has a statutory right to protect his patent right from being infringed by others. In case of such violation of rights the patentee has civil remedies at his disposal. The civil remedies are in the nature of- Injunction; Damages or Account of profits and Seizure, forfeiture or destruction of infringing material.

IMPORTANT AMENDMENTS IN THE PATENT ACT:

The Amendment to the Patents Act, 1970 namely, the Patent (Amendment) Act, 2002 has been notified in the Gazette of India as on 25/06/2002.

This Act makes the Indian patent law not only TRIPs compliant but also incorporates safeguards for the protection of public interest, national security, bio-diversity, traditional knowledge, etc. The opportunity has also been utilised to harmonise the patent granting procedures with international practices and to make the system user friendly.

CERTAIN IMPORTANT AMENDMENTS CAN BE ENUMERATED AS FOLLOWS:

The term of all patents including the pharmacy patent has been extended to twenty years from the date of filing of the application for the patent. Also the patents, which have not expired or ceased to exist on 25/06/02, have been provided the opportunity of benefiting from the extended term protection.

The concept of compulsory licence has been incorporated. The Central Government of India by notification can grant compulsory licence, if there are circumstances of national emergency, extreme urgency, or a case of public non–commercial use, which may arise or is required, as the case may be, including public health crises, relating to Acquired Immuno Deficiency Syndrome, human immunodeficience virus, tuberculosis, malaria, or other epidemics.

A provision of Exclusive Marketing Rights (EMR) has been provided for in the Patent Act, in India. At present India does not recognize product patent for medicines and agro chemicals. But, persons applying for such patent can apply for and enjoy EMR for the same till the time product patent is not recognised. Hence EMR shall be offered during the interregnum.

To make the understanding of the term clearer, Invention has been redefined as "a new product or process involving an inventive step and capable of industrial application.

Recognition to an international patent application has been provided for. The international application is defined as an application for patent made in accordance with the Patent Cooperation Treaty.

Any process for the treatment of plants to render them free of disease or to increase their economic value or that of their products is now patentable.

The discovery of any living thing or non-living substance occurring in nature has been barred from being patented.

The time for restoration of patent has been increased from 12 months to 18 months as such an application for restoration of a patent ceased on or after 20th May 2003 can be filed within 18 months from the date of cessation.

For the examination of the application, a request for the same is now required. This request can be made either by the applicant or any other interested person. Also the request for such examination should be made within 48 months and in case the application is filed before the Amendment, 2002, then the request for the same is to be made within 12 months from the date of such commencement or 48 months from the date of application, whichever is later.

The application for patents shall be published after the expiry of 18 months from the date of filing or the date of priority, whichever is earlier. The biological material and other details contained in such application shall be made available to the public on the payment of requisite fees.

Time for putting the application in order for acceptance has now been reduced from 15 months to 12 months.

The opposition proceedings have been simplified and shortened, to fix a hearing is not compulsory, if the applicant does not file reply statement and evidence, application will be deemed to have been abandoned. Also, the grounds for opposition and revocation have been enlarged and the following grounds have been added:

  • Non-disclosure or wrongly mentioning the source of geographical origin of biological material used for invention.
  • Anticipation having regard to the knowledge oral or otherwise available within local or indigeneous community in India or elsewhere.

No person, without the permission of the Controller, can make an application outside India for grant of a patent for an invention relevant for defence purposes or related atomic energy.

The current provision has been added for the safety purposes of the country.

Patent application and other documents (except PCT International application) are now required to be filed only in duplicate. Documents can now be filed, one copy in electronic form with one hard copy (paper form).

In case of suit for process patent, the concept of reversal of burden of proof has been introduced. Whereby, at the discretion of the court, the defendant may be directed to prove that the process used by him to obtain a particular product, which is identical to the product of the patented process, is different from the patented process.

CONCLUSION:

The Amendment of 2002 has enabled India to comply with the conditions laid down by the TRIPs Agreement, except that product patent in case of food and drug is restricted. India maintains the freedom to incorporate this provision any time before January 1, 2005.

With the amendment of 2002 a lot of positive changes have taken place in patents like reduction in certain fees payable under the Act, extension of term of protection for all kinds of patent, simplified procedure for application for patents, recognition to international applications, protection to traditional knowledge, and a more clear and crisp definition of invention.

Thus, the present Patent (Amendment) Act, 2002 covers all aspects and relevant provisions of TRIPS, Paris Convention and other conventions, and also the Doha Declaration. India has made successful efforts in removing the ambiguities in the Act and making use of the flexibilities offered by the Agreement to serve the best interest of the nation.

Disclaimer

Actual resolution of legal issues depends upon many factors, including variations of fact and laws of the land. Though the firm has taken utmost care in the preparation of this article, the information contained herein is not intended to constitute any legal advice and the firm cannot accept any responsibility towards those who rely solely on the contents of this article without taking further specialist advice. The reader should always consult with legal counsel before taking action on matters covered by this article.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions