On December 26, 2004 the President of India promulgated an Ordinance to amend the national patents law. The Ordinance came into force on January 1, 2005 marking the culmination of a decade long efforts by the Government of India to make the Patents Act compliant with the TRIPS Agreement. A Presidential Ordinance is, however, a temporary legislative measure. It will cease to operate at the expiration of six weeks from the reassembly of the Parliament. The Government of India has the onerous task of getting the Patents Amendment Bill, 2003 passed by the Parliament, which contains the same provisions as that of the Ordinance.
This Memo highlights some of the major amendments introduced by the Patents (Amendment) Ordinance, 2004.
(1) Product Patents for ‘Food’, ‘Drug’, and ‘Pharmaceuticals’
The Ordinance repealed the controversial Section 5 of the Indian Patents Act, 1970. For over three decades only processes were patentable in respect of inventions relating to ‘food, drug, and medicines’ and ‘substances produced by chemical processes’. From January 1, 2005, patents will be granted for all categories of inventions.
(2) Restrictions on ‘New Use’ diluted
The ‘new use for a known substance’ was not patentable so far. The Ordinance amended this provision and qualified the word ‘new use’ with the prefix ‘mere’. This makes only ‘mere new use’ unpatentable. While the interpretative scope of this amendment is yet to be seen, it is likely that this provision would lead to the acceptance of ‘Swiss-Type Claims’ in India.
(3) Patentability of Computer Programs – India moving closer to the EPO practices
The Patents Act originally excluded Computer program per se and mathematical and business methods from patentability. There has been wide spread criticism on the ambiguity of the wording of the law. The Ordinance attempts to remove this ambiguity by specifying that a computer program in combination with hardware is patentable. Also, it is specified that the technical applications of computer programs to industry is patentable.
(4) No more ‘Exclusive Marketing Rights’ and ‘Mail Box’ Applications
The Ordinance repealed the provisions concerning ‘Exclusive Marketing Rights’ (EMRs) and ‘the WTO/Mail Box’ Applications. This is yet another provision that was subjected to heated debates at the WTO and in the Indian Parliament. EMRs are transitional protection for inventions relating to medicines and agro-chemicals that India had to provide for 10 years ending January 1, 2005. India failed to do so, until 1999, which lead to disputes at the WTO. The Ordinance recognizes all EMRs granted and provides that all EMR applications currently pending will be treated as the Request for Examination of the corresponding Mail Box Application.
(5) WTO Doha Concessions recognized - Compulsory License for export of patented pharmaceutical products
The Doha Declaration on TRIPS and Public Health permitted export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity. The Ordinance recognizes this provision. Compulsory license shall be available for export of patented pharmaceutical products like the antiretroviral drugs to countries like the South Africa.
(6) Representations can be made opposing the grant of patent (known in India as pre-grant opposition
So far India provided for opposition to patent applications once the application is accepted and the acceptance is advertised in the Gazette of India. The Ordinance has provided for post grant opposition, however includes a provision to file Representations by any person as soon as the application is published opposing the grant of patent. The Representation may include a statement and evidence to prove that the subject invention is not patentable. However, a Representation shall be entertained only when a request for examination of the application has been filed.
(7) Forms Simplified
Now, a single Form [Form 1, as amended] is prescribed for filing all types of patent applications (Convention Application, PCT National Phase Application, Divisional Application or Patent of Addition). This substantially simplifies the filing formalities. The format of the Form 1 has also been changed into a computer friendly one, keeping in view of the prospect of moving into an e-filing system in the near future.
(8) Information Disclosure
The timeline to submit details of the prosecution of the corresponding applications has been increased from 30 days to 3 months from the date of receipt of a communication in this regard from the Controller of Patents. The provision as originally contained made it difficult for applicant’s to comply with this requirement.
(9) Only 1 year to file the Complete Specification.
The extension of 3 months to file Complete Specification after filing a provisional application has been omitted. Now only a period of 12 months from the date of filing of the application shall be allowed to file the complete specification.
(10) Request for Examination
A request for examination can be filed only after the publication of the application in case of applications filed after January 1, 2005, but within 36 months from the date of priority or the date of filing of the application, whichever is earlier. In case of Mail Box Applications, a request has to be filed within 36 months from the date of priority or the date of filing of the application or 12 months from January 1, 2005. In case of Divisional Applications, a Request for Examination has to be filed after the publication of the parent application, but within 36 months from the date of filing of the application (parent application) or from the date of priority of the parent application or within 6 months from the date of filing of the divisional application, whichever is later.
In cases of applications filed before January 1, 2005, the timeline to file a Request for Examination shall be 48 months from the date of application or 36 months from the date of priority/date of application whichever is later.
It is possible to request early publication of an application by making a request to the Controller in Form 9. In such cases applications will be published earlier than the 18 months deadline.
(12) Examination of patent applications going to be on a fast track
When the Controller refers an application to an Examiner, he/she must issue the first office action within 1 month. The earlier timeline was 18 months. This shows the Government’s determination to cut down the delay in prosecuting patent applications in India.
Applicant also has a reduced timeline to put the application in order for grant. The final deadline to re-file the application after removing all objections raised by the Examiner is 6 months from the date of communication of the first office action. However, an extension upto a maximum of 3 months is allowed. Also a timeline has been accorded for scheduling a hearing. Now, for seeking an opportunity to be heard, a request has to be made on a date earlier than 10 days of the final date of putting the application in order for grant. However, if a request for hearing is made within a period of 1 month from the date of communication of First statement of objections, the Controller may fix a date and time for hearing irrespective of whether the Applicant has refiled his application.
(13) Timeline to file Opposition is increased
The timeline to file notice of opposition has been increased to 1 year from the date of publication of grant of a patent. Earlier this period was 4 (+1) months from the date of publication of the acceptance of the complete specification.
(14) 1 Year Grace Period
The period within which an application can be filed after a public display of the invention without the application being anticipated has been increased to 12 months from 6 months.
(15) Permission for Foreign Filing
An Indian resident has to seek prior permission for filing any patent application outside India. However, this provision shall not be applicable if an application for a patent for the same invention has been made in India, not less than 6 weeks before filing the overseas application. The Controller will dispose of foreign filing requests within 3 months of the request. This provision shall not be applicable in cases of inventions for which a person resident outside India has first filed an application outside India.
© Lex Orbis 2004