This article is written by Jisha Garg, from Rajiv Gandhi National University of Law, Punjab. This is an exhaustive article dealing with the rights of a patent holder. The article also deals with the limitations on these rights. At last, the article analyzes the various landmark judgments pronounced by the courts relating to patent infringement.
Table of Contents
Introduction
The enforcement of a patent ensures that the intellectual property rights of the inventor are protected. It provides exclusive rights to the patent holder in respect to the manufacture and sale of the patented product. The patent enthrones the patentee with the total rights to the invention. This right empowers the inventor to regulate who uses the product, how it can be used and to what extent it can be applied. In order to enforce his rights, an inventor will have to file an application for the grant of a patent to his invention. After the completion of formal considerations and processes, the exclusive rights will be granted to the inventor.
Patent
A patent is a legal document that defines and provides the bearer with exclusive rights to exclude others from producing, selling or distributing invention. Patent is provided for a period of 20 years. It is granted for the encouragement of creativity and development of innovation and technology. The primary legislation regulating patent laws in India is the Indian Patents Act, 1970. It lays down three parameters on the basis of which patents are granted:
- The product should have a useful purpose.
- It should be a novel invention.
- The invention should be non-obvious.
Patent is not granted for mere ideas but for new inventions which have the potential to solve technical problems. Processes, systems, methods, devices, compositions, products, uses etc are some examples for which a patent can be granted. Section 3 and 4 of the Indian Patents Act, 1970 specifies various items that cannot be patented. These include- mathematical formulas, scientific principles, substances found in nature, surgical methods and procedures. Patents prevent:
- Theft;
- Ensure exclusivity;
- Help in commercialisation; and
- Add brand and money value to the invention.
Patent holder
The patent holder enjoys various rights including the right to assign licenses to other persons and authorise them to manufacture and sell the patented item. However, these are not absolute rights and are subject to various constraints and limitations. In order to get your invention patented and become an official patent holder, the following procedure needs to be followed-
- Invention disclosure
- Patentability search
- Decision to file an application for patent
- Patent drafting
- Filing the patent application
- Request for examination
- Responding to objections
- Grant of patent
- Renewal of your patent
Rights of a patent holder
Exclusive rights according to Article 28 of the TRIPS agreement
Article 28 of the TRIPS agreement provides the following rights:
A patent shall confer on its owner the following exclusive rights:
- where the subject matter of a patent is a product, to prevent third parties not having the owner’s consent from the acts of making, using, offering for sale, selling, or importing for these purposes that product;
- where the subject matter of a patent is a process, to prevent third parties not having the owner’s consent from the act of using the process, and from the acts of using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process.
Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.
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Right to exploit the patent
In India, the patent holder is provided with the right to manufacture, use, sell and distribute the patented product. In case the invention is a process of production, the owner of the patent has the right to direct the procedure to the other person who has been authorised by the patentee. This right can be enforced by the agent of the patent holder.
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Right to assign and license
The patent holder is granted with the rights of assigning or granting licenses for manufacture and distribution of the patented products to others. In case there are co-owners of the patented product, the permission to grant license to the other person shall be sought from the co-owners. The license would be considered to be granted when the request has been duly authorised by the controller.
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Right to surrender the patent
The owner of the patent has the right to surrender his patent after seeking permission from the controller. The controller then advertises about this surrender as per the procedure laid down in the Indian Patents Act. The parties interested in getting the ownership of the patent can then approach the controller. The controller examines the party’s claims and.surrenders the ownership respectively.
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Right before sealing
Section 24 of the Indian Patents Act implies that a patent is sealed from the date of notification for acceptance to the date of acceptance of the notification. The right of the patentee begins after the notification for acceptance has been presented.
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Right to apply for the patent of addition
This provision is provided in Section 54 to 56 of the Indian Patents Act. This provision provides for the modifications in the existing invention. In such a case, the patent holder is granted the right to the modified invention after the notification of the acceptance comes out. Once the notification is presented, the owner is provided with the same rights as provided to the previous patent.
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Right in case of infringement
When any of the rights of the patent holder is violated, then it is termed as patent infringement. This is to mean that if the patented invention is used, manufactured or sold for commercial purposes by any person, then it will be accused of patent infringement. In case of violation of patentee’s rights, the patentee can approach either the district court or a high court. If the person is proven guilty of infringement, the courts will either grant permanent injunction or damages or both.
Limitation of patent rights
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Limitation on private and non-commercial use
Under this limitation, the patent holder is restricted from using the invention for private purposes or asserting a monopoly over commercial activity. If the government is of the opinion that the patent holder is not using the patented invention for profit, then it can grant a compulsory license to a third party. Section 84 and Section 92 of the Patents Act provides for compulsory license. It can be invoked when the patented item is not available to the general public at affordable prices. This is generally done in cases of pharmaceutical drugs. Another provision in the patents act relating to the limitations on private and commercial use is provided in Section 85 of the act. It provides for revocation of patents by the controller in case of non-use.
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Exception of experimental/scientific use
This limitation is provided under sub-section 3 of Section 47 of the act. This exception provides that the patented process/product can be used by any person for the purpose of undertaking any scientific experiment or carrying out research. The introduction of this exception was important to protect those conducting ‘bona fide’ research and experiments. It permits the third parties to conduct research using the patented material without being accused of infringing the patent holder’s rights.
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Regulatory-use/prior-use exemption
Although providing patent rights to the patentees incentivizes them for new inventions, it also leads to monopolies and private use of the patented products. It was due to this fear that Section 107 A was added through the Indian Patents Amendment Act, 2005. This provision provides an exemption to the manufacturers of generic drugs so that they can use the patented product to extract information and hence allows them to seek marketing approval outside the country. This is also known as bolar provision. However, the manufacturers can only use, manufacture and sell the product in the market after the expiry date of the patented products which is 14 years from the date of filing the patent application.
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Exhaustion of patent rights
This provision says that once the patented product is sold in the market, the patent rights of the inventor gets exhausted. According to this limitation, the patent holder loses his control over the product after the first unrestricted sale of the invention takes place. The rationale behind the formulation of this limitation was that once the patent holder has sold his invention in the market, the purpose behind granting a patent for the particular product would get defeated. This implies that the patent holder has given the right to manufacture, use and sell the patented product to another person, in turn, losing his own exclusive rights.
Landmark judgments
Symed Labs v. Glenmark Pharmaceuticals
This case was filed by symed labs against Glenmark Pharmaceuticals for infringement of two of its patents. The Court, in this case, held that there was prima facie evidence against Glenmark that they have misused Symed’s patented products for manufacturing and selling in the market. It was due to this misuse that symed has suffered irreparable loss. The Court, as a result, ordered an interim injunction on the sale of the patented product by Glenmark. The Court also held that in this particular case, providing damages would not reverse the loss suffered by the plaintiff. Therefore, providing protection to the patented process was inevitable to safeguard Symed’s patent rights.
Vringo v. ZTE case
This case was filed by Vringo in the Delhi High Court against ZTE’s alleged violation of its patent rights. The Court ordered an interim injunction against ZTE’s manufacture and use of the patented product. ZTE, in turn, questioned the patentability and innovativeness of the patent granted to Vringo for its product. As a result, the Court ordered the formation of a committee to look into the patentability of the product. This case was evidence of the fact that the patentability of the product can be questioned even after the patent has been granted. This also meant that the mere grant of a patent does not absolve the patent holder from its liability. The validity of the patent can also be questioned once the patent is enforced.
Bayer Corporation v. Union of India
The Indian Patent Office granted India’s first compulsory license to Natco Pharma Ltd. in public interest. The license was granted for the production of the drug Nexavar which was originally produced by Bayer Corporations. There were certain restrictions put on the manufacture of the drug. The manufacture could only be done inside the premises of Natco Pharma Ltd. and the product could not be used for export purposes. Bayer Corporation filed an appeal in the Court. The Court, in this case, had decided that the grant of the compulsory license in this case was valid since it was necessary for public interest and it was made available at nominal prices.
Maj. Sukesh Behl and Anr. v. Kononklijke Philips case
In this case, a counterclaim for revocation of the suit was filed by Sukesh Behl against Kononklijke under Section 64(1)(m) of the Indian Patents Act. In the original case, Koninklijke filed a suit against Sukesh Behl for the infringement of his patent rights demanding a permanent injunction against Koninklijke Philips. The Court finally decided that Kononklijke had failed to comply with the requirements mentioned under Section 8 of the Indian Patents Act and hence would be made liable under Section 64(1)(m) of the Patents Act.
Conclusion
The patent holder is provided with numerous rights in order to protect and promote their invention. However, this does not stop the criminal from committing patent infringements. There have been numerous court cases in India on copyright and trademark violations which are more than patency litigations. Infringement of patentees can only be curtailed when the rights laws are put in place and obsolete ones updated to accommodate the changing situations. Patentees have the exclusive right to file suits against all forms of infringements and in this, creativity and productivity are encouraged.
References
- https://www.lawnn.com/patent-infringement/#:~:text=Right%20to%20exploit%20the%20patent,patentee%20can%20enforce%20this%20right.
- https://www.vakilno1.com/slider/5-important-judgments-intellectual-property-rights-cases.html#:~:text=IPR%20Law%2D%20Dispute%20over%20Patent,in%20the%20courts%20in%20India.
- https://www.mondaq.com/india/patent/325620/exceptions-limitations-to-patent-rights-in-india
- https://www.alrc.gov.au/publication/genes-and-ingenuity-gene-patenting-and-human-health-alrc-report-99/5-domestic-legal-framework/rights-of-a-patent-holder/#:~:text=5.41%20A%20patent%20holder%20is,provisions%20in%20the%20Patents%20Act.
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