PATENT
- A patent is a
legal monopoly exclusive right granted by statute of a country
- It will grant
for a limited time to the owner of an invention over a new and useful
invention that involves inventive step.
- The patentee
or his agent or licensees has the exclusive right to use and have the
benefits of patented invention.
- It excludes
others from manufacturing, using, importing or selling the patented
invention.
- Period during
which the owner enjoys the benefits is called term of the patent.
- Registration
is a prerequisite for patent protection and the protection granted is
territorial in nature i.e., patent granted in a country will give the
owner of the patent right only within that country.
History of Indian patent
system.
The
first legislation in India relating to patents was the Act VI of 1856.
The objective of this legislation was to encourage
inventions of new and useful manufactures and to induce inventors to disclose
secret of their inventions. The Act was subsequently repealed by Act IX of 1857
since it had been enacted without the approval of the sovereign.
Legislation
for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1859.
This legislation contained certain modifications of
the earlier legislation, namely, grant of exclusive privileges to useful inventions
only and extension of priority period from 6 to 12 months. The Act excluded importers
from the definition of inventor. The 1856 Act was based on the United Kingdom
Act of 1852 with certain departures including allowing assignees to make application
in India and also taking prior public use or publication in India or United
Kingdom for the purpose of ascertaining novelty.
The Act of 1859
provided protection for invention only and not for designs
Whereas United Kingdom had been protecting designs
from 1842 onwards. To remove this lacuna, the ‘Patterns and Designs Protection
Act’ (Act XIII) was passed in 1872. This Act amended the 1859 Act to include
any new and original pattern or design or the application of such pattern to
any substance or article of manufacture within the meaning of ‘new manufacture’.
The Act XV of 1859 was further amended in 1883 by XVI of 1883 to introduce a provision
to protect novelty of the invention, which prior to making application for
their protection were disclosed in the Exhibitions of India. A grace period of 6
months was provided for filing such applications after the date of the opening of
such Exhibition.
In 1888, new legislation was introduced to consolidate
and amend the law relating to invention and designs in conformity with the
amendments made in the UK law. The modifications introduced in the Indian law,
by Act V of 1888, over the UK legislation, inter alia, include:
Shifting of authority to administer the Act from the Home department to Secretary
to Government of India;
Extension of the jurisdiction of the Act to other courts apart from High
Courts of Madras, Calcutta and Bombay;
Ø Reduction in
the fee from Rs. 100 to Rs. 10 only at filing stags;
Ø Graduation of
fee as to amend approximately with the increasing value with the invention acquires
as it becomes more commonly known and used.
Ø Provision for
detailed disclosure of the invention, including best mode of working the
invention in full clear, concise and exact terms so as to enable any person
skilled in the art or science to make use of the invention;
Ø Provision of
powers to call for a model of the invention;
Ø Change of time
for filing petition in respect of patent granted in United Kingdom from 12 months
from the ‘letters patent’ to 12 months from the ‘date of sealing’;
Ø Powers to
extend the term of exclusive privileges by 7 years ordinarily and 14 years in exceptional
cases.
Ø Provision for
granting compulsory licence where invention is not made accessible to public,
on reasonable terms;
Ø Appointment of
Agents to encourage filing by foreign inventor;
Ø Introduction of
provision for protection of new or original design;
Ø Provision for
counting the grace period for filing application for invention displayed in the
Exhibition from the date of admission of the invention into the Exhibition
instead of the date of the opening of the Exhibition.
In 1911, the
Indian Patents and Designs Act, 1911, (Act II of 1911) was brought in
replacing all the previous legislations on patents and designs. This Act brought
patent administration under the management of Controller of Patents for the
first time. This Act was amended in 1920 to provide for entering into
reciprocal arrangements with UK and other countries for securing priority. In
1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent
of addition, use of invention by Government, powers of the Controller to
rectify register of patent and increase of term of the patent from 14 years to
16 years. In 1945, another amendment was made to provide for filing of
provisional specification and submission of complete specification within nine
months.
After Independence, it was felt
that the Indian Patents & Designs Act, 1911 was not fulfilling its
objective. It was found desirable to enact comprehensive patent law owing to
substantial changes in political and economic conditions in the country.
Accordingly, the Government of India constituted a committee under the
Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High
Court, in 1949, to review the patent law in India in order to ensure that the
patent system is conducive to the national interest.
The terms of
reference included —
Ø To survey and
report on the working of the patent system in India;
Ø To examine the
existing patent legislation in India and to make recommendations for improving
it, particularly with reference to the provisions concerned with the prevention
of abuse of patent rights;
Ø To consider
whether any special restrictions should be imposed on patent regarding food and
medicine;
Ø To suggest steps
for ensuring effective publicity to the patent system and to patent literature,
particularly regarding patents obtained by Indian inventors;
Ø To consider the
necessity and feasibility of setting up a National Patents Trust;
Ø To consider the
desirability or otherwise of regulating the profession of patent agents
Ø To examine the
working of the Patent Office and the services rendered by it to the public and
make suitable recommendations for improvement; and
Ø To report
generally on any improvement that the Committee thinks fit to recommend for
enabling the Indian Patent System to be more conducive to national interest by
encouraging invention and the commercial development and use of inventions.
The Committee submitted its interim report on 4th August,
1949 with recommendations for prevention of misuse or abuse of patent right in
India and for amendments to sections 22, 23 & 23A of the Patents &
Designs Act, 1911 on the lines of the United Kingdom Acts of 1919 and 1949.
The main
recommendations of the Committee were as follows:-
(a) Any interested person may apply
for a compulsory licence or revocation of the patent on any of the following grounds, namely —
Ø Patented
invention, being capable of being commercially worked in India, is not being
commercially worked therein to the fullest possible extent;
Ø Demand for the
patented article in India is not being met to an adequate extent or on
reasonable terms;
Ø Commercial
working of the invention in India is being prevented or hindered by the
importation of the patented articles; and
Ø The refusal of
the patentee to grant a licence or licences on reasonable terms, whereby the
commercial or industrial activities in India are prevented or hindered;
(b) For obtaining
relief against abuse of patent rights, an application can be made to the Controller
of Patents and Designs any time after the sealing of the patent and the order
of the Controller to be appealable before the appellate authority which should
be an ad-hoc Special Tribunal nominated by the Central Government consisting of
–
Ø A sitting or
retired judge of a High Court ( as the President),
Ø A barrister or
advocate of not less than ten years standing, preferably conversant with patent
law and procedure, and
Ø A technical
expert in the particular subject with which the patent in question is concerned
the functions of the Special Tribunal should be judicatory and not advisory,
and its decisions should be final and it should have the power to award costs.
The committee also observed that the Patents Act
should contain clear indication to ensure that food and medicine and surgical
and curative devices are made available to the public at the cheapest price
commensurate with giving reasonable compensation to the patentee.
Based on the above recommendation of the Committee,
the 1911 Act was amended in 1950 (Act XXXII of 1950) in relation to working of
inventions and compulsory licence/revocation.
Following grounds were provided for making applications
for compulsory licence:
Ø patented
invention, being capable of being commercially worked in India, is not being
commercially worked therein to the fullest possible extent;
Ø demand for the
patented article in India is not being met to an adequate extent or on
reasonable terms;
Ø commercial
working of the invention in India is being prevented or hindered by the
importation of the patented articles;
Ø the refusal of
the patentee to grant a licence or licences on reasonable terms, the commercial
or industrial activities in India are prevented or hindered;
a market for the export of the patented article
manufactured in India is not being supplied;
Ø the working or
efficient working in India of any other patented invention which makes a substantial
contribution to the establishment or development of commercial or industrial
activities in India is unfairly prejudiced; and
Ø Conditions of
licence unfairly prejudiced the establishment or development of commercial or
industrial activities in India.
The time period prescribed for making the applications
was “at any time after expiration of three years from the date of sealing.” The
application could also be made by the licencee. The term, ‘patented article’
included any article made by a patented process. Other provisions were related
to endorsement of the patent with the words ‘licence of right’ on an application
by the Government so that the Controller could grant licences. In 1952, an
amendment was made to provide compulsory licence in relation to patents in
respect of food and medicines, insecticide, germicide or fungicide and a process
for producing substance or any invention relating to surgical or curative
devices, through Act LXX of 1952 . The compulsory licence was also available on
notification by the Central Government. Based on the recommendations of the
Committee, a bill was introduced in the Parliament in 1953 (Bill No.59 of
1953). However, the bill lapsed on dissolution of the Lok Sabha.
In 1957, the Government of India appointed Justice N.
Rajagopala Ayyangar Committee to examine the question of revision of the Patent
Law and advise government accordingly. The report of the Committee, which
comprised of two parts, was submitted in September, 1959. The first part dealt
with general aspects of the patent law and the second part gave detailed note
on the several clauses of the lapsed bill of 1953. The first part also dealt
with evils of the patent system and solution with recommendations in regard to
the law. The committee recommended retention of the patent system, despite its shortcomings.
This report recommended major changes in the law which formed the basis of the
introduction of the Patents Bill, 1965. This bill was introduced in the Lok
Sabha on 21st September, 1965, which, however, lapsed. In 1967, an amended bill
was introduced which was referred to a Joint Parliamentary Committee and on the
final recommendation of the Committee, the Patents Act, 1970 was passed. This
Act repealed and replaced the 1911 Act so far as the patents law was concerned.
However, the 1911 Act continued to be applicable to designs. Most of the
provisions of the 1970 Act were brought into force on 20th April, 1972 with the
publication of the Patents Rules, 1972.
Indian Patent Law
The salient features of the Patents Act, 1970 are:
Ø Elaborate
definition of invention
Ø No product
patents for substances intended for use as food, drugs and medicines including
the product of chemical processes
Ø Codification of
certain inventions as non-patentable
Ø Mandatory
furnishing of information regarding foreign application
Ø Adoption of
absolute novelty criteria in case of publication
Ø Expansion of
the grounds for opposition to the grant of a patent
Ø Exemption of
certain categories of prior publication, prior communication and prior use from
anticipation
Ø Provisions for
secrecy of inventions relevant for defence purposes
Ø Provision for
use of inventions for the purpose of Government or for research or instruction
to pupils
Ø Reduction in
the term of patents relating to process in respect of substances capable of
being used as food or as medicine or drugs
Ø Enlargement of
the grounds for revocation of a patent
Ø Provision for
non-working as ground for compulsory licences, licences of right, and
revocation of patents
Ø Additional
powers to Central Government to use an invention for purposes of government
including Government undertakings.
Ø Prevention of
abuse of patent rights by making restrictive conditions in licence agreements/contract
as void
Ø Provision for
appeal to High Court on certain decisions of the Controller
Ø Provision for opening
of branches of the Patent Office.
This Act remained in force for about 24 years till
December 1994 without any change. An ordinance effecting certain changes in the
Act was issued on 31st December 1994, which ceased to operate after
six months. Subsequently, another ordinance was issued in 1999. This ordinance
was later replaced by the Patents (Amendment) Act, 1999 that was brought into
force retrospectively from 1st January, 1995. The amended Act provided for
filing of applications for product patents in the areas of drugs,
pharmaceuticals and agro chemicals though such patents were not allowed.
However, such applications were to be examined only after 31st December, 2004. Meanwhile,
the applicants could be allowed Exclusive Marketing Rights (EMRs) to sell or
distribute these products in India, subject to fulfillment of certain
conditions.
The second amendment to the 1970 Act was made through
the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on
20th May, 2003 with the introduction of the new Patents Rules, 2003
by replacing the earlier Patents Rules, 1972. Salient features of the Patents
(Amendment) Act, 2002 were:
Ø
Further codification of non patentable inventions
Ø
20 years term of patent for all technology
Ø
Provision for reversal of burden of proof in case of
process patents
Ø
Provisions of compulsory licences to meet public
health concerns
Ø
Deletion of provision of licence of right
Ø
Introduction of system of deferred examination
Ø
Mandatory publication of applications after 18 months
from the date of filing
Ø
Provision for process patent for micro organisms
Ø
Establishment of Appellate Board
Ø
Provision for parallel imports
Ø
Provision for exemption from infringement proceedings
for use of a patented invention for obtaining regulatory approval for a product
based on that patented invention
Ø Provision to
protect biodiversity and traditional knowledge.
The third amendment to the Patents Act, 1970 was
introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January,
2005. This Ordinance was later replaced by the Patents (Amendment) Act, 2005
(Act 15 Of 2005 ) on 4th April, 2005 which was brought into force from 1st January,
2005.
The salient
features of this amendment are-
Extension of product patents to all fields of technology including food,
drugs, chemicals and micro organisms
Ø Deletion of the
provisions relating to Exclusive Marketing Rights (EMRs)
Ø Introduction of
a provision for enabling grant of compulsory licence for export of medicines to
countries which have insufficient or no manufacturing capacity to meet emergent
public health Situations
Ø Modification in
the provisions relating to opposition procedures with a view to streamlining
the system by having both pre-grant and postgrant opposition in the Patent
Office
Ø Strengthening
the provisions relating to national security to guard against patenting abroad
of dual use technologies
Ø Rationalisation
of provisions relating to time-lines with a view to introducing flexibility and
reducing the processing time for patent application.
Patents Rules
Section 159 of the Patents Act, 1970 empowers the Central
Government to make rules for implementing the Act and regulating patent
administration. Accordingly, the Patents Rules, 1972 were notified and brought
into force w.e.f. 20th April, 1972. These Rules were amended from time to time
till 20th May, 2003 when new Patents Rules, 2003 were brought into
force by replacing the 1972 rules. These Rules were further amended by the
Patents (Amendment) Rules, 2005 and the Patents (Amendment) Rules, 2006. The last
amendments were made effective from 5th May, 2006.
There are four Schedules to the Patents Rules which provide details of
fees and forms pertaining to various types of actions required under Patents
Act and Rules:
Ø The First
Schedule prescribes fees to be paid.
Ø The Second
Schedule specifies the list of forms and the texts of various forms which are
to be used wherever required in connection with various activities under the
Patents Act.
Ø The Third
Schedule prescribes the Form of the patent to be issued on the grant of patent.
Ø The Fourth
Schedule prescribes costs to be awarded in various proceedings before the
Controller under the Act.
.
Posted in: INDIAN PATENT SYSYTEM,PATENT IN INDIA
