India: Patents - The Present Indian Scenario

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 25^th 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.

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.

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.

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".

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.

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.

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.

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.

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 20^th 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.

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.

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