Patent laws in India

What is Patent Law

Patent is an exclusive right (a monopoly right) conferred by the patent office on an inventor to exploit his invention subject to the provisions of the Patents Act 1970 for a limited period of time. In this period, the designer is qualified to bar any other person from commercially misusing his development. The right of patent is statutory in nature and the said right stems from the statute i.e Patent Act. As per Halsbury’s law England, the word patent is used denoting a monopoly right in respect of invention. 

 The expression “patent” connotes a right granted to a person who invents or discovers or new and useful process, product, article or machine of manufacture, or composition of matter or any new and useful improvement of those. It is not a positive right to practice or use the invention. It is right to exclude others from making, using, importing or selling patented invention , during its term. It is a right which the state grants to inventors in exchange with their covenant to share its details with the public.   

History of Patent Law 

In India the act VI of 1856 on Protection of Inventions was enacted which was based on the British Patent Law of1852. Under the Act of 1856, certain exclusive privileges were granted to inventors of new manufacturers for a period of 14 years. The Act was modified as Act XV in 1859. Under this Act, patent monopolies which were called as exclusive privileges were granted for a period of 14 years from the date of filing specifications. These privileges were making, selling and using inventions in India and authorizing others to do so. Subsequently, the Patents and Designs Protection Act was adopted in 1872. Thereafter Protection of Inventions Act was adopted in 1883. These Acts were consolidated in 1888 as the Inventions and Designs Act.  Enacted in 1911, The Indian Patents and Designs Act focuses on the need for comprehensive law on patents. The need for comprehensive law on patents was filed as it was realized that the 1911 act was not responding to the needs of the society and was not keeping pace with the industrial development. The patent bill was introduced in Parliament and was finally passed by both the houses of the Parliament in 170. The Act came into force on 20 April, 1972. 

What is not Patentable in India? 

The Section 3 of the Act talks about the inventions which are not: 

- Frivolous 

- Contrary to public order or morality, serious prejudice to human, animal or plant life.

- Mere discovery scientific principle for the formulation of an abstract theory 

- Discovery of a new form of a known substance

- Substance obtained by a mere admixture resulting only in the aggregation of the properties 

- Method of agriculture or horticulture

- Process for medicinal, surgical, curative, prophylactic plants and animals including seeds, varieties and species

- Mathematical or business method or a computer program 

- Literary, dramatic, musical, artistic work or any other aesthetic creations 

- Mere  scheme or rule or method of performing mental act

- Presentation of information

- Topography of integrated circuits

- Traditional knowledge     

Procedure for the Grant of Patent in India

After filing the application with specification for the grant of patent, a request for examination is made in the Indian Patent Office. After the issuance of First Examination Report, the Applicant is given an opportunity to meet the objections raised in the report. The Applicant has to comply with the requirements within twelve months from the issuance of the First Examination Report. If the requirements of the report are not complied with within the prescribed period, then the application is treated to have been abandoned by the applicant. After removing of the objections and compliance of requirements, the patent is granted and notified in the Patent Office Journal 

Filing of Application 

Application can be made by a person claiming to be the true and first inventor of the invention, or his assignee or by the legal representative of any deceased person who was entitled to make such application before his death. In case of an international application under the Patent Cooperation Treaty as may be filed designating India is deemed to be an application under The Patents Act, 1970. 

The application shall be accompanied by a provisional or complete specification. The specification shall be filed within twelve months from the date of filing of application and if specification is not filed then it is deemed to be abandoned. It shall describe the invention and its operation.  

Pre-Grant Opposition 

A representation for pre grant opposition is to be filed within six months from the date of publication of the application, or before the grant under Section 11A of the Patents Act, 1970. The grounds on which the representation can be filed are provided mentioned in Section 25(1) of the Patents Act. No fee is required for filing representation for pre-grant opposition. Representation for pre grant opposition can be filed even though no request for examination has been filed. The representation will be considered only after a request for examination is received within the prescribed period.

Post-Grant Opposition

Any interested person can file for opposition within twelve months from the date of publication of the grant of patent in the official journal of the patent office, after giving an opportunity of being heard to the patentee and the opponent, the Controller shall order either to maintain or to amend or revoke the patent. 

Grounds for Opposition

Some of the grounds for filing pre and post-grant opposition are listed down below:

- Patent wrongfully obtained

- Prior publication

- The invention is publicly known or publicly used in India before the priority date of that claim

- The invention is obvious and does not involve any inventive step

- The subject of any claim is not an invention within the meaning of this Act, or is not patentable under this Act

- Insufficient disclosure of the invention or the method by which it is to be performed

- In the case of a patent granted on convention application, the application for patent was not made within twelve months from the date of the first application for protection for the invention made in a convention country or in India

- The complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention 

- The invention was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Terms of Patent

The term of patent in India is twenty years from the date of filing the patent application, irrespective of the fact whether it is filed with provisional or complete specification. However, in the case of applications filed under the Patent Cooperation Treaty (PCT), the term of twenty years begins from the priority date.

Restoration of Patent

A request for restoration of patent can be filed within eighteen months from the date of cessation of patent with the prescribed fee. The matter is notified in the official journal after the receipt of the request, for further processing of the request. It is also important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.

Rights of Patentee

The Patent granted under the act shall confer if the subject matter is a product, the exclusive right to prevent third parties, who do not have his consent from the act of making, using, offering to sell, selling or importing for those purposes that product in India.  And where the subject matter of patent is a process and from the act of using, offering for sale, selling, or importing for those purposes the product obtained directly by the process in India.

All patent applications are kept as a secret up to eighteen months from the date of filing or priority date and thereafter they are published in the Official Journal of the Patent Office which is published every week. After such publication of the patent application, public can inspect the documents and may take the photocopy thereof on the payment of the prescribed fees. 

Compulsory Licensing

Section 84 states any person interested may make an application to the controller for grant of compulsory license after the expiration of three years from the date of the grant of patent on any of the following grounds:

- The reasonable requirements of the public related to invention which have not been satisfied  

- The patented invention is not available to the public at affordable prices.

- The patented invention is not worked in the territory of India

However compulsory licenses may also be granted by virtue of Section 92A

- For exports, under exceptional circumstances. 

- In case of national emergency, extreme urgency of public non-commercial use by notification of the Central Government. 

- To a country which has insufficient or no manufacturing power in the pharmaceutical sector to address public health.

If the controller is satisfied of the grounds listed above then he may grant a license upon such terms as he may deem fit

Global Perspective on Compulsory Licensing- This phenomenon of compulsory licensing is a major debated issue. Many developing countries are giving importance to the compulsory licensing because of the unavailability and non-affordability of the medicines, and they are continuously granting more and more compulsory licenses. The developed countries like Europe, USA are opposing this view as it would make innovation difficult for the pharmaceutical companies. 

Infringement of patent

Patent infringement occurs when another party makes, uses, or sells a patented product or process without the permission of the patent holder. The patent holder may sue the infringing party to stop his or her activities, as well as to receive compensation for the unauthorized use. The patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement is when there is colorable imitation of an invention or Immaterial variation in the invention, mechanical equivalents, taking essential features of the invention, all these above acts often overlap with each other when an infringement of a patent or process occurs. A suit for infringement can be defended on various grounds including the grounds on which a patent is not granted in India and revocation of patent can also be claimed.