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Published by: tonymtsh on Jan 24, 2011
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  • HISTORY (contd)


‡ ‡ ‡ ‡ ‡ ‡ ‡ ‡ ‡ ‡ History and introduction Inventions not Patentable Applications for Patents Procedure for grants of patents Patents of Addition Restoration of Lapsed Patents Working of Patents, Compulsory licensing, revocation Surrender of revocation of patents Infringement and Remedies Conclusion

‡ Originated in Great Britain from the exercise of the royal prerogative to grant monopolies ‡ In India, patent is granted for inventions under the legislation ‡ 1st patent act 1856, granted exclusive patents for a period of 14 yrs to inventors of new manufacture

HISTORY (contd)
‡ Amendments 1859,1872,1883,1888 ‡ Patents and Design act passed in 1911. Amended through 1970 ‡ Patents Act 1970 was enacted and rules published in 1971 based on Ayyangar s report submitted in 1959 ‡ Act came into force in 1972, and few provisions were added in 1978

‡ India is a signatory to the agreement for the establishment of the WTO including the agreement for TRIPS ‡ Purpose ± reduction of distortions and impediments to international trade ± promotion of effective and adequate protection of IPR ± protect public health and nutrition ± promote public interest in important sectors ± Increase socio-economic and technological development

national wealth and better living standards .OBJECTIVE ‡ To encourage inventors and provide them protection ‡ To encourage and maintain a continuous flow of inventions ‡ To promote creation of new products and better products ‡ To promote employment.

SUMMARY OF THE PATENT ACT ‡ Inventor who is granted a patent has exclusive monopoly to manufacture the article\process ‡ Invention must relate to a machine. or to an improvement of an article or manufacturing process ‡ After expiry. article or substance produced by manufacture or must relate to the process of manufacturing an article. anyone can make use of the invention ‡ Obligation cast on patentee to work the invention on a commercial scale either by himself or through licenses ‡ Patent being a form of industrial property is called intellectual property ‡ Owner can sell whole or part of his patent right or grant licenses to use it .

000 ‡ The EMR was fiercly contested in court by Cipla (and other pharmacos) .20.NOVARTIS PATENT CASE ‡ November 2003 Novartis granted EMR for Glivec a drug that fights cancer ‡ In 2004 it obtained an injuction that restricted other companies from manufacturing the drug. ‡ The cost of the drug jumped from Rs 10000 (for a month s use) to Rs 1.

but was rejected ‡ It has filed a case in Madras HC. which is pending .NOVARTIS PATENT CASE ‡ They argued on the grounds that ± Novartis had obtained the patent mainly for the process of manufacture ± No patent had been obtained for ImatinibMesylate which was already being used in India ‡ The patent obtained by Novartis was revoked ‡ Novartis appealed to the IPAB.

ICAR mobilized to begin an in-depth examination of the case. Source .AIREA.edu/TED/basmati. legal bodies like CSIR. industry.htm .http://www1. ‡ The contents and implications of the patent are currently being analyzed in consultation with patent attorneys and agricultural scientists.CASE STUDY BASMATI (contd) ‡ Govt of India release It will approach the US patent office and urge them to re-examine the case ‡ A high level inter-ministerial group comprising of representatives of the ministries of commerce. external affairs. APEDA.american.

and violation of fundamental fact that Basmati rice is grown only in northern regions of India and Pakistan .RicTec Co granted patent by US patent office to call the aromatic rice it produces outside India basmati ‡ RiceTec was trying to enter the market for Basmati by giving its product names like Kasmati and Texmati without much success ‡ Now it will be able to sell its product under the name Basmati within US and export also ‡ Heavy losses faced by India and Pakistan.CASE STUDY .BASMATI ‡ 1997.

FEATURES OF A PATENT ‡ Patent must be in respect if invention and not discovery ‡ In respect of one single invention there must be one single patent ‡ Patent may be in respect of a substance or in respect of a process ‡ Patent cannot be bifurcated for a process and a product ‡ To have a complete patent the specifications and claims must be clearly mentioned ‡ It is the claims alone that constitute the patent .

INVENTION ‡ Invention new product/process involving something innovative and is capable of industrial application ‡ An invention to be patented must be a new product or process which is capable of industrial application ‡ It should not be obvious for some one skilled in the art .

‡ Patents are granted to encourage invention ‡ They are not granted to enable patentees to enjoy a monopoly ‡ To promote technological innovation and to benefit both producers and users ‡ It should not impede public health and nutrition and should promote public interest ‡ To make the invention available at reasonably affordable price to the public .SOME GENERAL PRINCIPLES .

INVENTIONS NOT PATENTABLE ‡ Contrary to natural laws ‡ Contrary to public order or morality or that can cause harm to people. animals. plants or the environment ‡ Discovery ‡ New use of a known product or process unless it results in a new product or employs at least one new reactant ‡ Aggregation product ‡ Rearrangement/duplication of known devices ‡ Methods of agriculture or horticulture .

musical or artistic work ‡ A scheme or rule of performing a mental act or method of playing a game ‡ A presentation of information ‡ Topography of integrated circuits ‡ Invention relating to atomic energy . dramatic.INVENTIONS NOT PATENTABLE(contd) ‡ Methods of medical treatments ‡ Biological processes for production and propogation of plants and animals ‡ A computer program ‡ A mathematical or business method or algorithms ‡ A literary.

his residence or place of business.APPLICATIONS FOR PATENT ‡ Who can apply for a patent? ‡ Who cannot apply for patent? ‡ Where to apply?  Applicants residence or place of invention.  If party has no place of residence or no place of business then the address of service given by the party or applicant. .  In joint application the person whose name is mentioned first.

 Proof of the right to make application. .  Every application should contain the name of the true and first inventor.APPLICATIONS FOR PATENT(CONTD) ‡ How to apply?  Every application for a patent shall be for one invention only and in the form prescribed in second schedule to the patent rules 1972.  Every application shall be accompanied by provisional or complete specification.  Two types of application: conventional & International. amendment by patents rule 2005 and the fees prescribed in first schedule.

disclose best method for performing the invention.  Provisional Specification: It contains only the description of the general nature of the invention. define scope of invention and abstract of the technical information on the invention.  Complete Specification : Fully and particularly describe the invention.APPLICATIONS FOR PATENT(CONTD) ‡ Specification  It describes the invention. ‡ Drawings .


PUBLICATION OF APPLICATION ‡ Applicant request controller to publish his application before the expiry of prescribed period ‡ Publication includes Date of Application Number of Application Name & Address of Applicant Abstract .

PUBLICATION OF APPLICATION ‡ On & from the date of publication of patent application & until the date of grant of a patent. the applicant has the privileges & rights as if the patent was granted ‡ He can t file for infringement until the patent has been granted .

EXAMINATION OF APPLICATION ‡ Only on request after the publication of application within 36 months from the date of priority of the application ‡ Referred to examiner by controller for making report on: ± Whether application & specification in accordance with law ± Whether any lawful ground of objection ± To ascertain prior claim of the invention .

SEARCH FOR ANTICIPATION Investigation to ascertain: ‡ Prior Publication ‡ Prior claim of any other specification .

OPPOSITION TO THE PATENT ‡ Before Grant of a Patent ‡ After Grant of a Patent ‡ When Controller may treat the patent as the patent of opponent .

ANTICIPATION An invention not deemed to anticipation: ‡ By prior publication ‡ By previous communication to government ‡ By public display ‡ By public working .

CONTROLLER ‡ ‡ ‡ ‡ ‡ Communicate objections Refuse or Direct Amendment Amendment of complete specification In case of anticipation & infringement Putting application in order .

agrees to mention that a person is the inventor .MENTION OF INVENTOR IN PATENT ‡ Request for being mentioned as an inventor is done in Form 8 ‡ Controller. after a thorough investigation.

GRANT OF PATENTS ‡ If all seems right. process is quick ‡ On grant. or corporate ceases to exist. before patent is granted the name of the person to whom the patent ought to go is inserted . Controller publishes that the patent has been granted and all related documents become public domain ‡ In case of death.

for its own use ‡ May be used by government for its own use ‡ May be used in R&D or for teaching purposes ‡ For a medicine or drug. govt. may use or distribute it .CONDITIONS FOR GRANT ‡ May be imported or made on behalf of the govt.

using.RIGHTS OF PATENTEES Exclusive right to prevent third parties from the act of making. selling or importing for those purposes that :± Product in India is used ± Product obtained directly by that process in India . offering for sale.

CONTROLLER S ROLE ‡ Power to give directions to co-owners ‡ Grant of patent to true and first inventor when obtained in fraud by another ‡ Provisions for secrecy of certain inventions (defence or atomic energy) .

TERM OF PATENT ‡ 20 years from the date of filing the application ‡ Renewal fees if not paid will lead to the patent no longer being entitled to protection .

obligations) ‡ Person registered as proprietor has power to assign.ASSIGNMENT OF A PATENT ‡ Assignment valid only if in writing and well documented ( rules. duties. grant licenses. deal with patent to give effectual receipts for assignment. licensing or dealing .

by way of variation. or any other change) which secures a better or different performance while retaining the essential character of the invention. there is no restriction on the number of patents of addition you can have.What is a patent of addition? A patent of addition is a special type ofpatent which is directly associated with another patent. While a patent of addition can be for only one improvement or modification. parent patent also cover the patent of addition. omission. What is an improvement or modification? It is any change to the invention of the parent complete application (eg. This applies only after we grant both patents. A patent of addition is restricted to something that is an improvement or modification of the invention in the other parent patent. .

What are the advantages of a patent of addition? Patents of addition allow you to gain patent protection for improvements or modifications to your previous invention. . without the risk of the patent being found invalid because the improvement or modification lacks an inventive step when compared to your previous invention You pay only one set of maintenance fees because fees paid in respect of the parent patent also cover the patent of addition. This applies only after we grant both patents.

.RESTORATION OF LAPSED PATENT ‡ The application for restoration of lapsed patent has to be filed within 18 months from the date on which the patent ceased to have effect by the patentee or his legal representative.

a patentee must: submit the renewal fees  provide proof of having worked the patent in the jurisdiction .WORKING OF PATENTS After being granted a patent.

giving details of the countries concerned ± licenses and sub-licences granted during the year ± whether the public requirement has been met. and the steps being taken to work the invention ± if worked. adequately or to the fullest extent. at a reasonable price either partly. the reasons for not working the invention.FORM 27 Includes following info:± whether the invention has been worked ± if not worked. . quantum and value (in rupees) of the patented product ‡ manufactured in India ‡ imported from other countries.

RULES ‡ this information should be filed every calendar year. within three months of the end of each year ‡ the latest that a patentee or licensee can file such information for a given calendar year is 31 March of the following year .

may make an application to the Controller for grant of compulsory license .COMPULSORY LICENSE Indian Patent Act allows any interested person after expiry of 3 years from grant of patent even though if he is a license under the patent.

.GROUNDS FOR COMPULSORY LICENSE (a) the reasonable requirements of the public with respect to the patented invention have not been satisfied (b) the patented invention is not available to the public at a reasonable price (c) the invention is not worked commercially to fullest extent in territory of India.

LAWS SUPPORTING COMPULSORY LICENSE ‡ Section 84 To prevent the abuse of patent as a monopoly and to make way for commercial exploitation of invention by an interested person ‡ Sections 92 (1) and 92 (3) Circumstances of national emergency or extreme urgency ‡ Section 92 A For exports of pharmaceutical products to foreign countries with public health problems .

Central Government 2. Courts .REVOCATION OF PATENT IN INDIA 3 modes 1. Controller 3.

GROUNDS FOR REVOCATION (1) (2) (3) (4) (5) The patentee is not entitled to the patent The invention is not patentable The patentee has contravened a condition in the patent The patent was obtained by fraud or misrepresentation An amendment to the request or specification was made or obtained by fraud or misrepresentation (6) The specification does not comply with the requirements of :a) Nonworking of patent b) Noncompliance with secrecy order c) In the public interest(relating to atomic energy) .

‡ Patentee not entitled to apply. . REVOCATION OF PATENTS: ‡ Invention earlier claimed. return of patent within 3 months of publication of notice. notice of offer published.SURRENDER AND REVOCATION OF PATENTS: SURRENDER OF PATENTS: ‡ Notice to the Controller. ‡ Patent wrongfully obtained.

Invention not sufficiently and fairly described. Claims not sufficiently and fairly defined. Claims not patentable. Inventions secretly used before date of claim. False suggestions.CLAUSES & CONDITIONS ‡ ‡ ‡ ‡ ‡ ‡ ‡ ‡ Subject claim not an invention. Invention not useful. Claims not new. .

REVOCATION ‡ Failure of disclosure of information . Revocation of patent is final and not appealable. ‡ Patent expired. ‡ Mischievous to state or prejudicial to public. Patents regarding to atomic energy: .

distribute or sell the invention in India.Patent Infringement in India ‡ According to INDIAN LAW patent confers the exclusive right on the patentee to make. ‡ What can amount to infringement     (1) The colourable imitation of an invention. ‡ Process Patent: Here the use of such a method or process in India by anyone other than the patentee amounts to infringement. (3) Mechanical equivalents. An infringement would be when any of three rights is violated. . ‡ Product Patents: Here rights of the patentee are infringed by any one who makes or supplies that substance commercially. (2) Immaterial variation in the invention. (4) Taking essential features of the invention.

‡ Patent Infringement Suit: Last Resort under TRIPS agreement and Indian Patent Law. .Plan of Action ‡ Legal Opinion.The filing of a suit without merit or where the patent is invalid may subject the patent owner to antitrust liability or to the defence of patent misuse. ‡ Arbitration: A patentee can also go for Arbitration and Conciliation for settlement of the case. ‡ ‡ ‡ Letter: The patent owner may want to send a letter to the infringer to offer to license the patent or to put the infringer on notice of the patent. but not the customer). there must be proof that the infringer had "notice" of the patented (perhaps the competitor. Target: Customer V/S Competitor Notice Requirement: For an owner of a patent to receive damages in any action for infringement. but such a letter must be carefully worded so that it does not trigger the filing of a declaratory judgment action by the potential infringer.

Legal Aspect TRIPS(1990) & IPA Burden of Proof (2005) High Court Shortcomings Level of Action v/s copyrights Lack of awareness Backlog: IPO has 40.000++ applications Future PIR: Patent Information Office. Nagpur Voluntary Licensing Defensive Patents .


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