This article is written by Dr. Jayashri Bangali.
Table of Contents
Introduction
In India, the Law related to Patents is governed by the Indian Patents Act (IPA) 1970 along with the recent Amendments. There are 23 chapters and 162 Sections in the Indian Patent Act 1970. Some of the important sections are discussed comprehensively in this article.
Section 3 of IPA 1970
Section 3 entitled ‘What are not inventions’ states about the inventions which are not patentable. According to Section 3 of IPA 1970, an invention which is frivolous or which claims anything obviously contrary to well established natural laws, an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment, the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature, the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, the machine or apparatus unless such known process results in a new product or employs at least one new reactant are not patentable [1].
Also a method of agriculture or horticulture, a mathematical or business method or a computer programme 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, an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components are not treated as inventions according to Section 3.
Section 3(a) disallows the patents for machines that give more than 100 % performance or for perpetual machines. Section 3(b) disallows the patents for gambling machines and for devices for house-breaking.
Section 3(d) has a vital role in protecting the public health and restricts monopoly of pharmaceutical companies. It prevents evergreening, a process by which a company brings minor modification in the patented product and then gets a new patent for its product (again for another 20 years) and enjoys monopoly in the market. Section 3(d) has the provision which can stop pharmaceutical companies from extracting prohibitive prices for life saving drugs. Till 1957, medicines required for human care were not easily available to common people in India. The Indian Government appointed Rajagopala Ayyangar committee which suggested process patents so that the medicines can reach the poor sections of the society. This was amended in Indian Patent act 1970 which revolutionized the economic system in India by providing the medicines at low prices.
Section 4 of IPA 1970
Section 4 entitled ‘Inventions relating to atomic energy not patentable’ disallow any invention related to atomic energy [2] according to the Atomic Energy Act 1962 [3]. This act provides the development, control and use of atomic energy for the welfare of Indian people, for other peaceful purposes and for matters connected therewith.
Section 25 of IPA 1970
Section 25 entitled ‘Opposition to the patent’ is related to pre-grant and post-grant opposition [4]. After filing the patent application, the invention is made public. This section gives an opportunity to the public to challenge the patent applications and the granted patents by raising objections by filing an opposition in the Indian Patent Office. If the opposition is raised before granting the patent then it is known as Pre-grant opposition which is stated in Section 25(1) and if opposition is raised after the grant of the patent then it is known as Post-grant opposition which is stated in section 25(2).
Pre-grant opposition and Post-grant opposition can be made on the grounds listed under Section 25(1) and Section 25 (2) (a) to (k) as:
wrongfully obtaining the invention, anticipation by prior publication, anticipation by prior date, Prior claiming in India, Prior public knowledge or public use in India, obviousness and lack of inventive step, non patentable subject matter, insufficiency of description of the invention, non-disclosure of information as per the requirement or providing materially false information by an applicant, Patent application not filed within 12 months of filing the first application in a convention country, nondisclosure/ wrong mention of source of biological material, Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
Form 7A has to be submitted in case of Pre-grant opposition and Form 7 has to be submitted for Post-grant opposition to the Indian Patent Office. Any person can file Pre-grant opposition whereas only a person interested (persons who are engaged in or promoting the same field of invention in which the patent application is filed) can file Post-grant opposition. Post-grant opposition can be filed at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of the patent.
There are no fees for Pre-grant opposition whereas some statutory fees are required to file Post-grant opposition. Infringement process cannot be initiated in case of Pre-grant opposition as the patent is not granted to the applicant. Section 25(1) of the Act does not openly allow the patent applicant an opportunity to be heard in court. In case of Post-grant opposition, infringement process can be started and hearings occur in a conventional manner in the Courts.
The main drawback of Pre-grant opposition is that competitors can file wrong opposition and thus can delay the grant of patent and subsequently shorter the life time of the patent.
Section 39 of IPA 1970
Section 39 entitled ‘Residents not to apply for patents outside India without prior permission’ states about filing the patent application by the non-resident of India [5]. In 2002, the IPA 1970 was amended according to which any resident of India should file a patent application for his own invention first in India and then after 6 months of period, he can file the patent application in countries outside India. Inventor has to obtain permission from the Controller before filing a patent application in a country outside India. This is clearly stated in Section 39 of IPA 1970. However, the term ‘Resident’ is not defined anywhere in Indian Patent Act 1970. The term ‘resident’ in this section used purposely to exclude any restrictions that can be forced on the applicability of the provision and to wide its domain.
As per Section 39, the place of residence of the inventor is more important than the place of creation of invention. Therefore, Section 39 is not applicable if the invention is created in India by persons who are not resident in India.
Infringing the clauses of Section 39 results in criminal liability under Section 118 of IPA 1970 in which the term of imprisonment may extend to 2 years or revocation of the patent even if it is already granted. So it is very important to abide by the mandatory requirements stated in Section 39.
To take the written permission from the Controller of the Indian Patent Office is a time consuming process which results in a loss of priority. So the preferred way is to file the patent application in India first and then after 6 months file in other countries.
Section 43 of IPA 1970
The title of Section 43 is ‘Grant of Patents’ briefed about the granting the patents [7].
The Controller grants the patent if the patent application is found to be in order for grant of the patent. If application has not been found to be in contravention of any of the provisions of this act, then the patent shall be granted as expeditiously as possible to the applicant or in case of a joint application, to the applicants jointly with the seal of the patent office and the date on which the patent is granted shall be entered in the register. Then the controller publishes the granted patent application, specification and other documents related to it for public inspection.
Section 47 of IPA 1970
Section 47 of IPA 1970 entitled ‘Grant of patents to be subject to certain conditions’ states certain conditions to grant a patent. According to this section, the Government may import or make or have made on its behalf any patented product or product made by a process for purposes ‘merely of its use’ [8]. According to this section, the Government may impart educational instructions and the distribution of patented medicines in government dispensaries or hospitals on account of public service. Both process and product patents can be imported by the government for the purpose merely of its own use.
Section 48 of IPA 1970
Section 48 ‘Rights of Patentees’ elaborate the rights of the patentee after granting the patent. According to this section, exclusive rights are given to the patentee for his invention. The patentee may prevent third parties who do not have his consent from the act of making, using, offering for sale, selling or importing for those purposes that product in India. Any person cannot use the patented invention without the permission of the patentee.
To the inventor, according to Section 48, patent law confers certain definite advantages. However, the rights of the patentee under Section 48 curtail some of the rights of the patentee.
Section 53 of IPA 1970
Amended Section 53 entitled ‘Term of Patent’ states about the term of granted patents [9]. According to the amended IPA (May 20 2003), the term of the patent is 20 years from the filing date. If a provisional application is filed first and then complete specification is filed within 12 months, then expiry of patent is calculated from the provisional application filing date. If the Patent of Addition (according to Section 54) is filed, then expiry of Patent of Addition is equal to term of patent granted for main invention.
For PCT (Patent Cooperation Treaty), expiry of patent is 20 years from the International filing date/PCT date.
If the patent is granted before May 20, 2003 then different sets of rules are applicable to the term of Patent. In case of method or process of manufacture of a substance, the term of patent is 5 years from the date of sealing the patent or 7 years from the date of patent whichever period is shorter. For other inventions the period was 14 years from the date of the patent.
Section 53 also states about renewal of patents. Renewal fees are only payable on an Indian Patent once it has been granted. First time renewal fees are due after 2 years of the patent filing date [10]. Subsequently fees must be paid annually in advance to the Patent office. The renewal fees ranges from Rs. 4000 to Rs. 40000. The period for payment of renewal fees may be extended till 6 months on request made in Form 4. If the renewal fee is not paid within the extension period, the patent ceases to exist and will be open to public domain.
Sections 64 of IPA 1970
Section 64 ‘Revocation of Patents’ of IPA 1970 states the grounds on which opposition to the patent grant can be filed and further patent grant may be cancelled [11]. IPA 1970 provides opposition /revocation mechanisms to make sure that undeserving patents are not granted and if they are granted, they can be opposed/revoked.
Grant of patent can be opposed under Section 25 and Section 64. Under Section 25 (2), post-grant opposition can be filed at any time after the grant of patent but before the expiry of a period of 1 year from the date of publication of grant of patent whereas under Section 64, opposition can be filed at any time after the grant of patent. As per Section 64, the person who is interested (means person working in the same field of invention) can file the petition, Central Government and the person making the counterclaim in a suit for the infringement of a patent can file petition in High court. More than 15 grounds are mentioned in Section 64 on which petition can be filed. However, revocation is not limited to the ground provided by Section 64. For post-grant opposition, grounds for opposition are limited to those provided under Section 25 (2). Section 64 allows all grounds to be used in the revocation. Therefore, to file a petition under Section 64 is more flexible as compared with Section 25.
Sections 84-92 of IPA 1970
Section 84 ‘Compulsory licenses’ brief about licensing the patent [12]. Sections 85 to 92 are related to the laws of compulsory licenses. A patent is an exclusive right granted to the patentee for his invention. So any third person cannot use this invention without the permission of the patentee. The patentee can give exclusive right of his invention to a third party for a period of 20 years. However, according to Section 84, the Controller makes use of a patented product and issues a compulsory license to a third party under certain circumstances without the permission of the patent owner. There are some prerequisites which need to be fulfilled if a compulsory license is to be granted to any third party.
As per Section 84, any person who is interested or already the holder of the license under the patent can make a request to the Controller for grant of compulsory license on expiry of 3 years from the date of patent grant when any of the following conditions is fulfilled [11]:
- 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; and
- the patented invention has not worked in the territory of India.
Further, compulsory license can also be issued by the Controller under Section 92 if Central Government issues either ‘national emergency’ or ‘extreme urgency’ or in case of ‘public non-commercial use’. The Controller has to consider some factors such as the nature of invention, capability of the applicant to use the invention. However, the ultimate discretion lies with the Controller to grant or not to grant compulsory license.
The concept of compulsory licensing is very important and beneficial to developing countries, as they can provide for example medicines at affordable cost to the common public. Most of the developed countries are opposing this concept as it makes it difficult for the pharmaceutical companies to sustain their inventions.
Sections 100 of IPA 1970
Section 100 of IPA 1970 entitled ‘Power of Central Government to use inventions for purposes of Government’ states about the power of the Central Government to use any invention. Section 100 of IPA 1970 provides the power to the Government or any person authorized by it to use the patented invention ‘for purposes of Government’. As per Section 47 also, the Government can make use of patented inventions for the purpose of its own use. However, the scope of Section 100 is wider than Section 47. As per Section 100, the Government or any person authorized by it is empowered to use the patented invention for the purpose of Government. Section 47 and Section 99 to 101 of IPA 1970 empowers the Government to make use, sell or even import any medicine or drug, any medical equipment or other equipment for use or distribution in public health centres owned by the Government or notified by the Government for that purpose.
Sections 104-114 of IPA 1970
Section 104-114 of IPA 1970 states guidelines related to patent infringement [14]. Section 104 states that no suit of infringement can be brought before a court inferior to the District Court having jurisdiction to try the suit and in the event of a counterclaim for revocation of the patent made by the defendant. According to Section 104 (A), if the patent is granted for a process to obtain a product then it is the duty of the defendant to prove that the process used by him is different from a patented process. Section 104(A) has ‘reversed burden of proof’ incase of infringement of patented process. As per Section 104(A), if the subject matter of the patent is a process for obtaining a new product or there is a substantial similarity that an identical product is made by the patented process then the court can shift the burden of proof on the defendant.
From Section 104-114, two types of patent infringement are defined- Direct Infringement and Indirect Patent Infringement (Doctrine of Equivalents). Direct Infringement occurs when a product is close to any patented product or invention is used commercially without the permission of the owner of the patent. Indirect Patent Infringement or Doctrine of Equivalents occurs when each element claimed is identical to the allegedly infringing device or process. It is also known as literal infringement. A claim under doctrine of equivalents if it falls under the ‘triple test’ that means equivalence holds when the substituted elements perform the same function in the same way to obtain the same results.
Sections 159 of IPA 1970
Section 159 0f IPA 1970 entitled ‘Power of Central Government to make rules’ empowers the Government to propose changes in draft rules to amend Patent Rules 2003. The proposed amendments are related to submission of priority document and its English translation and submission of Annual working report. The proposed rules aim to offer better execution of existing rules and to provide clarity over the respective timelines.
Summary of Amendments in the Indian Patent Act 1970
The Indian Patent Act 1970 came into force in 1972 and the act remained in force for about 24 years without any change till 1994. Then the patent act was amended in 1999, 2002 and in 2005. The recent amendments in this act are proposed in 2018.
The first amendment in IPA 1970 was done in 1999 which introduced chapter IV. This chapter deals with exclusive marketing rights. Section 24 was amended which mandated the controller to refer every application. Under Section 3, the controller has to verify whether invention is patentable or not within 90 days to avoid delays. According to this Act, only process patents are allowed in India.
In 1994, India joined the World Trade Organization (WTO) and became signatory of Trade Related Intellectual Property Systems (TRIPS). After 10 years, in 2004 India achieved complete compliance with TRIPS agreements and IPA 1970 was amended in 2005. The IPA 2005 introduces product patents. The 2005 Act allows pharmaceutical patents and prevents patent evergreening. According to Section 3 of IPA, India can take the benefits and opportunities by incremental pharmaceutical innovation. Compulsory license is issued for various public interest reasons where the patent owner refused to make the invention available. The IPA 2005 has an impact on the world market. The Act attempts to balance and satisfy the variety of stakeholders including domestic research and development community, foreign pharmaceutical companies, civil society groups, medicine production companies.
References
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps3.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps4.html
- https://indiacode.nic.in/handle/123456789/1413?sam_handle=123456789/1362
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps25.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps39.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps43.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps43.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps47.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps53.html
- http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_11_1/Fees.pdf
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps64.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps84.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps100.html
- http://ipindia.nic.in/writereaddata/Portal/ev/sections/ps104.html
LawSikho has created a telegram group for exchanging legal knowledge, referrals and various opportunities. You can click on this link and join:
