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Intellectual Property Rights:

Property:- Any thing that can be owned is called as property. Property in its wider sense constitutes all proprietary rights(exclusive rights of a person enjoyed by him/her due to ownership of a property)belonging to a person. Important characteristics of the property are possession, enjoyment and transferability. Physical Property-: A physical property is any aspect of an object that can be measured or perceived without changing its identity. Physical properties are referred to as observables. It is not a modal property. Intellectual Property-: Intellectual property (IP) is a term referring to a number of distinctive types of creations of the mind for which a set of exclusive rights are conferred to a person or group of persons/organizations by the Government of a sovereign nation. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as inventions, musical, literary, and artistic works; and words, phrases, symbols, and designs. Common types of intellectual property rights include patents, copyrights, trademarks, industrial design rights, geographical indications and trade secrets etc. It is traditionally divided in to two branches, (i) industrial property, (ii) copyright. The holders of these legal entitlements may exercise various exclusive rights in relation to the subject matter of the Intellectual Property. The term Intellectual property reflects the idea that this subject matter is the product of the mind or the Intellect.

Difference between Intellectual and Physical Property-: Physical property is the legal translation of something that exists de facto for physical assets: possession. We need to owe them for our necessity. But nobody can have it unlimited as physical property basically is limited and everybody needs these. It therefore needs to be restricted in the form of regulation. Or else there is the possibility of us fighting for its possession that may lead to a fatal end. Imagine a world where when a person gives half of his food to any other person, and magically, don't loose anything. Will he still refuse to share it with others? Ideas are like that. If you share them, you still have them in their entirety. So there is no imperious necessity for intellectual property, or any form of regulation over intellectual possession. Hence there is no parallelism between physical property and intellectual property.

Why should Intellectual Property be well protected-: There are two major reasons to protect the Intellectual Property. They are-: (i) To give statutory expression to the moral and economic rights of creators in their creations and such rights of the public in access to those creations, (ii) To promote creativity and the dissemination and application of its result to encourage fair trading which would contribute to economic and social development as it is a deliberate act of governmental policy. The Paris convention states that any act of competition contrary to honest practices in industrial and commercial matters constitutes an act of unfair competition. Inventions provide the solution to technical problems and industrial designs are aesthetic (beautiful) creations determining the appearance of industrial products. So, to check the unfair competition it is necessary to protect the industrial property (new inventions, industrial design, trademarks, service marks, commercial names & designations) and as it is a part of intellectual property as said above. Copyright deals with the rights of intellectual creators in their creation. There are some artistic and literary creations such as music or poem, whose forms of expression of ideas such as, arrangement of words, musical notes, are protected through copyright law. It is necessary to protect the owner of rights in artistic works from

those who copy their ideas in order to promote healthy competition as well as to protect against unfair competition. As artistic creations promote and enrich the national cultural heritage it must be protected. Whether it be inventions or artistic creations both of these flourish in a healthy atmosphere which guarantees them greater incentives and better recognition that is their due. On the contrary the absence of well protected intellectual property rights will debar such genius from getting their due recognition and incentives and discourage them by encouraging unfair competition like copying or misusing these without proper sanction and authority by dishonest persons.

Britishers have enacted Indian Patents and Designs Act 1911. The Patent Bill 1955 has lapsed for the dissolution of the Loksabha. The patent bill, 1965 also lapsed for the dissolution of the third Loksabha. In 1970, the patent bill 1970 was passed (Act 39 of 1970). It has received the accent of the President on 19 th September 1970. It is called as Patent Act 1970. The Patents (Amendment) Act, 1999 (17 of 1999). The Patents (Amendment) Act, 2002 (38 of 2002). The Patents (Amendment) Act, 2005 (15 of 2005).

MEANING AND DEFINITION OF PATENT: Patent is a grant of some privilege, property or authority made by the Government or the Sovereign of the country to one or more individuals. The instrument by which such grant is made is also known as patent. It has acquired the statutory meaning in India when the Patents Act was promulgated. Patentee is entitled to deal with such property in the same manner as owner of another movable property. Patentee can transfer, assign and license the property for valuable consideration which is acceptable mutually.

Requirements of the patent: New ness: (Novelty) The element of novelty in an invention is dependent upon the state of prior art i.e. the existing knowledge and similar inventions already known in the particular field. There would be no novelty if there has been prior publication and prior use of an identical invention. Ex: turmeric products in India was patented in USA. Usefulness: An invention which is new cannot be patented if it is not beneficial for the use of mankind. In some countries these are registered as Utility models. But in India it is not recognized statutorily. Non Obviousness/Inventive Step: The invention should require an inventive step or in other words, it must be non obvious to a person skilled in the art to which the invention relates. Industrial Applicability: The invention should be technically active on a large scale means, the invention should be capable of application by technical means on a large scale.

TYPES OF PATENTS: Product Patent: This is an invention relates to the manufacture of machine, article or substance which is new and novel and useful and the patent asked for is for the product, such patent is called the product patent.

As per the TRIPS agreement if a developing country did not provide Product Patent protection in a particular area of technology when the TRIPS Agreement came in to force i.e. -1st Jan 1995, it has extended the time of 10 years time for protection as a transition time/period. If the Government allows the relevant pharmaceutical or agricultural or chemical to be marketed during the transition period it must be subject to certain conditions. It can provide exclusive marketing right for the product for 5 years until a product patent is granted, whichever is shorter. PROCESS PATENT: It is an invention; that is novel, non-obvious and a useful process by which a new better cheaper multi active article or substance is made available. The patent asked for is for the process, such a patent called as the process patent. OBJECTIVES OF THE PATENT: To Encourage the research and to promote the inventive genius. To secure for inventors awards for inventing useful inventions To give protection to inventors by conferring them a monopoly in commercially exploiting their inventions. To induce industries to undertake research and development To maintain a flow of inventions, one invention leading to another. Increasing the qualitatively the production potential in the country by creating new processes and new methods in the production of goods and services. Finally to aid the industrial growth of the country and improve the quality of life of the people. To generate and promote scientific temper.

Value of Patent System: 1. A world wide exchange of technical information has been made possible by publishing patent specifications in the Patent journals, such as most of the inventions made in technology and other fields; at the patent office of different countries. 2. The publication also enables competitors to experiment and find out ways of designing around the patent granted, which encourages in bringing out substitute products for the patented goods; that are relatively cheaper than the similar patented products and in the end restricts the monopolization of the patent system to a certain level. 3. There are also provisions in the Patent Act against abuse of patent rights by providing for compulsory licensing and the patent can also be revoked due to non-working, which promotes fair trading and a competitive market globally. 4. It is almost impossible to keep an invention as a secret for an individual if s/he uses it for marketing purpose; because the knowledge of the invention may be obtained by dismantling the product in case of an apparatus or machine, and also the engaged workmen for producing the product may blow the whistle at any point of time for a meager monetary gain giving end result of a huge loss to the original inventor. On the other hand if s/he obtains the patent of that invention then s/he can get an exclusive marketing rights for a certain period which can be lawfully enforced against the infringers and in case of financial scarcity to work the patent he can get monetary reward by granting licenses to others or by assigning the patent.

5. However, In the negatives: actually a very small percentage of the granted patents lasts the full term as most of them are either unworkable or have no commercial value or superseded by subsequent inventions. 6. Also quiet a number of them are actually retained to prevent competition or for speculative reasons. Character of a Patent: A Patent behaves like a hybrid in terms of its characteristics. A patent though granted nationally but in reality it has an international character; as the application to file for grant of patent in the PCT signatory states is called as international application and no other person/s can file an application for grant of patent for the same invention in any of the PCT signatory states if the patent is already granted for the same in one of the PCT states. But the patentee can enforce his/her/its legal rights only within the boundaries of that state in which the patent is granted. So, here the character of the patent is of national nature.

Rights of a Patentee: By nature, a patent is an exclusionary right. It gives the patent owner the right to exclude others from infringing the patent. So, it is called as a negative right. Rights of a patentee is discussed in sec. 45, sec.47 to sec.53 , sec.63 and in sec 70 of the Indian Patents Act, 1970. The grant of patent confers that the patentee has the exclusive right ( sec. 47 & 48) by himself, his agent or licensees to make, use, exercise, sell or distribute the invention in India. When an invention has been patented by two or more persons as co- owners (sec. 50) all of them have equal share of the patent. They may make an agreement between themselves. A co- owner of a patent cannot assign or license any share in the patent without the consent of the co-owner. The exclusive rights of the patentee last only during the term of the patent (sec 53). Once the term of the patent expires the patentee can no longer claim exclusive rights. The term of exclusive rights of the patentee begin from the date of advertisement of the acceptance of a complete specification (sec. 45) except the rights to file a suit against infringement. Section 63 of the Act deals with the surrender of patents. A patentee may offer to surrender his patent at any time by giving notice to the Controller in the prescribed manner. If a patentee offers to do so, the Controller is required to publish the offer and notify every person other than the patentee whose name appears in the register as having an interest in the patent. Any person interested may give notice to the Controller of opposition to the surrender within the prescribed time. If this is done, the Controller must inform the patentee of such opposition. If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent. A patentee has the rights to assign or license (sec. 70) his rights completely or partially. In other miscellaneous rights, the patentee has the rights to file in court if his rights have been infringed (sec. 104 to 107).

Obligations of a Patentee:

After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed in the schedule I. For first two years, there is no renewal fee. The renewal fee is payable from 3rd year onwards. In case the renewal fee is not paid the patent will be ceased. Besides that sec. 83 of the Indian Patent Amendment Act 2005 describes the obligations of a patentee after having a patent.

Sec. 83 states: General principles applicable to working of patented inventions Without prejudice to the other provisions contained in this Act, in exercising the powers conferred by this Chapter, regard shall be had to the following general considerations, namely, (a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay; (b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article; (c) that the protection and enforcement of patent rights contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations; (d) that patents granted do not impede protection of public health and nutrition and should act as instrument to promote public interest specially in sectors of vital importance for socio-economic and technological development of India; (e) that patents granted do not in any way prohibit Central Government in taking measures to protect public health; (f) that the patent right is not abused by the patentee or person deriving title or interest on patent from the patentee, and the patentee or a person deriving title or interest on patent from the patentee does not resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology; and (g) that patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public.


IPR Regulation Before the Advent of TRIPS: Paris Regime: It consists of (a) the Paris Convention for Protection of Industrial Property, 1883, (b) Other related international Conventions on Patents, Industrial Designs and Trade Marks. Berne regime: Berne regime consists of Berne Convention 1886 for the protection of literary and artistic works and other conventions on copyrights and neighboring rights. GATT & IPR Though GATT(General Agreement on Tariffs and Trade) not dealt with IPR as such but there were some provisions like : Art IX on Marks of Origin, Art XX on Patent protection, Trade Marks, Copyrights and prevention of deceptive practices. Other articles include Articles I, III,XXII and XXIII.

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS): is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.The agreement attempts to strike a balance between the long term social objective of providing incentives for future inventions and creation, and the short term objective of allowing people to use existing inventions and creations. Patents for pharmaceuticals and other products are only part of the agreement. Actually the agreement covers a wide range of subjects, from copyright and trademarks, to integrated circuit designs and trade secrets. It came in to effect on Jan, 1995. After the Uruguay round, the GATT (General Agreement on Tariffs and Trade) became the basis for the establishment of the World Trade Organization. Because ratification of TRIPS is a compulsory requirement of World Trade Organization membership, any country seeking to obtain easy access to the numerous international markets opened by the World Trade Organization must enact the strict intellectual property laws mandated by TRIPS. For this reason, TRIPS is the most important multilateral instrument for the globalization of intellectual property laws. After the Uruguay round, the GATT (General Agreement on Tariffs and Trade) became the basis for the establishment of the World Trade Organization. Because ratification of TRIPS is a compulsory requirement of World Trade Organization membership, any country seeking to obtain easy access to the numerous international markets opened by the World Trade Organization must enact the strict intellectual property laws mandated by TRIPS. For this reason, TRIPS is the most important multilateral instrument for the globalization of intellectual property laws. The WTO/TRIPS has 153 members (almost all of the 123 nations participating in the Uruguay Round signed on at its foundation, and the rest had to get membership) as on Nov, 2011. The 27 states of the European Union are represented also as the European Communities. Some non-sovereign autonomous entities of member states are included as separate members, since WTO members do not have to be full sovereign nation-members. Instead, they must be a customs territory with full autonomy in the conduct of their external commercial relations. For Ex. Hong Kong became a GATT contracting party by the now terminated "sponsorship" procedure of the United Kingdom (Hong Kong uses the name "Hong Kong, China" since 1997).

Requirements of TRIPS: TRIPS requires member states to provide strong protection for intellectual property rights: Patents must be granted in all "fields of technology," although exceptions for certain public interests are allowed (Art. 27.2 and 27.3) and must be enforceable for at least 20 years (Art 33). Exceptions to exclusive rights must be limited, provided that a normal exploitation of the work (Art. 13) and normal exploitation of the patent (Art 30) is not in conflict. No unreasonable prejudice to the legitimate interests of the right holders of computer programs and patents is allowed. Legitimate interests of third parties have to be taken into account by patent rights (Art 30). In each state, intellectual property laws may not offer any benefits to local citizens which are not available to citizens of other TRIPS signatories under the principle of national treatment (with certain limited exceptions, Art. 3 and 5). TRIPS also has a most favored nation clause. Many of the TRIPS provisions on trademark and patent provisions were modeled on the Paris Convention for the Protection of Industrial Property.

STRUCTURE OF THE TRIPS AGREEMENT: TRIPS consists of 73 articles divided into 7 parts General provisions and basic principles (Part I- Art 1-8) IPR issues covered in TRIPS ( Part II- Art 9-40) Copyright and related rights (Art. 9-14), Trademarks (Art 15-21) Geographical Indications (Art 22-24), Industrial Designs (Art 25& 26) Patents (Art 27-34), Layout designs of integrated circuits (Art. 35-38) Protection of undisclosed information (Art 39), Enforcement of IPR (Part III- Art 41-61), Acquisition and maintenance of IPR (Part IV-Art. 62) Dispute Prevention and Settlement (Part V Art 63 & 64) Transitional Arrangements (Part VI Art 65-67) Institutional arrangements and final provisions (Part VII Art 68-73)

Part I: General Provisions & Basic Principles: The 1st part of the agreement i.e. from art. 1 to 8 lays down general provisions and basic principles of the international protection of IPR. It states the nature of obligations incurred by member states under the agreement. Accordingly they are also obliged to give effect to the provisions of the agreement and to afford to nationals of other member states the treatment provided for therein. Part I also lays down two basic principles of the agreement, namely, National treatment and Most Favoured Nation Treatment.

Part III- Enforcement of IPR: Part III consists of twenty articles (41-61) deals with enforcement of IPR. Besides laying down the obligation of the state parties in providing for enforcement of rights as per the agreement, it also provides for civil and administrative procedures and remedies as well as criminal procedures for the enforcement of these rights.

Part IV- Art. 62 of the agreement deals with acquisition and maintenance of IPRs and related inter-parties procedures. Part V- Dispute Settlement Provisions: Art. 63 and 64 of the agreement deals in dispute settlement provisions between contracting states. Art.63 states the need for transparency in the laws and procedures relating to dispute settlement. Art. 64 authorizes the TRIPS council to look into complaints and submit recommendations to the ministerial council of the WTO.

Part VI- Transitional arrangements:(Implementation in developing countries) The obligations under TRIPS apply equally to all member states(i.e. implementation period of 1 year), however developing countries were allowed extra time to implement the applicable changes to their national laws, in two tiers of transition according to their level of development. The transition period for developing countries (2 nd World) expired in 2005. The transition period for least developed countries (3rd World) to implement TRIPS was extended to 2013, and until 1 January 2016 for pharmaceutical patents, with the possibility of further extension.

Part VII- Institutional Arrangements: Art.68 to 73 of the agreement states about the institutional arrangements and final provisions relating to the subject matter of the agreement. Art. 68 provides a council for TRIPS to monitor the agreement and members

compliance with its provisions and providing assistance in dispute settlement procedures. Art. 69 provides for international co-operation among members in eliminating trade in goods infringing IP. FIVE BASIC ISSUES IN TRIPS: The agreement covers five broad issues: How basic principles of the trading system and other international intellectual property agreements should be applied. How to give adequate protection to intellectual property rights. How countries should enforce those rights adequately in their own territories. How to settle disputes on intellectual property between members of the WTO. Special transitional arrangements during the period when the new system is being introduced.

GATS & International Trade GATS (General Agreement on Trade in Services) Difference between GATS and GATT(General Agreement on Tariffs and Trade) is GATS came in to force in 1995, as compared to GATT which came in to force in 1947 and signing of the agreement by the states went through 8 grueling rounds starting in Geneva in 1947 to Doha in 2001 to agree on rules and regulations for international trade. GATS is a part of Uruguay round of trade negotiations concluded under the auspices of the GATT agreement on 1993-94.

Operation of GATS The treaty was created to extend the multilateral trading system to service sector, in the same way the GATT provides such a system for merchandise trade. Specific commitments of GATS Scope of services (4 modes) i.e.; Cross-border, consumption abroad, commercial presence and movement of natural persons. All members of the WTO are signatories to the GATS. The basic WTO principle of most favoured nation (MFN) applies to GATS as well. However, upon accession, Members may introduce temporary exemptions to this rule. Classification of GATS (160), based on UN Central Product Classification, This identified 11 basic service sector plus 12th category as miscellaneous.

Paris Convention:
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union for the protection of industrial property. The Convention is still in force as of 2011. After a diplomatic conference in Paris in 1880, the Convention was signed in 1883 by 11 countries: Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El Salvador, Serbia, Spain and Switzerland.

The Treaty was revised at Brussels, Belgium, on December 14, 1900; at Washington, United States, on June 2, 1911; at The Hague, Netherlands, on November 6, 1925; at London, United Kingdom, on June 2, 1934; at Lisbon, Portugal, on October 31, 1958 and at Stockholm, Sweden, on July 14, 1967 and was amended on September 28, 1979. The Convention now has 173 contracting member countries, which makes it one of the most widely adopted treaties worldwide Though, Taiwan and Kuwait are not parties to the Convention. However, according to Article 27 of its Patent Act, Taiwan recognizes priority claims from contracting members. The Paris Convention entered into force in Thailand on August 2, 2008. India became a member of the convention on Dec. 7, 1998. Establishment of a Union (Art. 1): Art.1, of the convention deals with the establishment of a union; which establishes a union for the protection of industrial property as its objective, comprising the states to which the convention applies (the Paris Union). Basic contents of Paris Convention: National treatment According to articles 2 and 3 of this convention, juristic and natural persons who are either national of or domiciled in a state party to the Convention shall, as regards the protection of industrial property, enjoy in all the other countries of the Union, the advantages that their respective laws grant to nationals. In other words, when an applicant files an application for a patent or a trademark in a foreign country member of the Union, the application receives the same treatment as if it came from a national of this foreign country. Furthermore, if the intellectual property right is granted (e.g. if the applicant becomes owners of a patent or of a registered trademark), the owner benefits from the same protection and the same legal remedy against any infringement as if the owner was a national owner of this right. Priority right The "Convention priority right", also called "Paris Convention priority right" or "Union priority right", was also established by article 4 of this treaty. It provides that an applicant from one contracting State shall be able to use its first filing date (in one of the contracting State) as the effective filing date in another contracting State, provided that the applicant files another application within 6 months (for industrial designs and trademarks) or 12 months (for patents and utility models) from the first filing. Implementation & Dispute Settlement: Any state that accedes to the union undertakes to give effect to the provisions of the convention within its territory. Any dispute between the members regarding the provisions of the convention , if not settled by negotiation may be submitted before the ICJ (International Court of Justice) in accordance with the Statute of the Court, unless the countries agree on some other method for settlement.

World Intellectual Property Organisation (WIPO)

The UN convention on establishing The WIPO (World Intellectual Property Organisation) was signed on July 14, 1967, in Stockholm and entered into force in 1970. But the origin of WIPO goes back to the adoptions of the Paris convention, 1883 and the Berne convention, 1886 respectively, which provided the establishment of International Secretariats and were placed under the supervision of Swiss Federal Government, located at Berne, Switzerland. The two Secretariats founded initially (one for industrial property, one for copyright) were united in 1893. Before it became WIPO, its name was BIRPI (the acronym of the French language version of the name: United International Bureaux for the Protection of Intellectual Property [in English]).

India became a member to WIPO convention on May 1, 1975. Functions of WIPO-: WIPO basically has three kinds of activities; (i) registration activity (ii) the promotion of intergovernmental co-operation in the administration of intellectual property and (iii) substantive or program activities. Registration Activity-: These types of activities serve directly to the applicants for, or owners of, industrial property rights. This includes the receiving and processing of international applications under the Patent Cooperation Treaty or the international registration of marks or deposit of industrial designs. Normally these activities are financed by the fees paid by the applicants, which is about three-fourth of the budget of WIPO. Promotion of intergovernmental cooperation in the administration of Intellectual property-: (i) The management of collections of patent documents used for search and reference, (ii) devising means for making easier the access to the information which they contain, (iii) The maintenance and updating of international classification systems, (iv) the compilation of more and more sophisticated statistics, (v) regional survey of industrial property and copyright law administration are the major functions under this activity. Substantive or program Activity-: Promoting the wider acceptance of all existing treaties, updating treaties where necessary through their revision, concluding new treaties and organizing and participating in development, cooperation activities are the major function of this activity.

Patent Co-operation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States. A patent application filed under PCT is called an international application or PCT application. A single filing of an application is made with a Receiving Officer (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied with a written opinion regarding the patentability of the invention which is the subject of the application. It is optionally followed by a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the examination (if provided by national law) and grant procedures are handled by the relevant national or regional authorities. The PCT does not lead to the grant of an international patent, which does not exist. The States party to the PCT, i.e. the contracting states, constitutes the International Patent Cooperation Union. The Patent Cooperation Treaty was signed in Washington at the very end of the Diplomatic conference on the Cooperation Treaty, i.e., on June 19, 1970. The treaty entered into force on January 21, 1978 initially with 18 Contracting States. The first international applications were filed on June 1, 1978. The treaty was subsequently amended in 1979 and modified in 1984 and 2001. Any Contracting State to the Paris Convention for the protection of Industrial Property can become a member of the PCT. A majority of the worlds countries are signatories to the PCT, including all of the major industrialized countries (with a few exceptions, including Argentina and Taiwan). India became a contracting state of PCT on Dec. 7, 1998. The treaty establishes a union called as the International patent co-operation Union for co-operation in the filing, searching and examination of applications. The treaty can be denounced by any member country by giving notice to the director general. The denunciation will be effective six months after the Director general receives the application. If any international application was filled by any one from that denouncing state and it was filled before the term of expiration (six months period) then such an international application will not be affected. (Art.66) Objectives of the Treaty: Contribute to the Progress of Science & Technology.

Perfect the legal Protection of Inventions. Protect inventions when they are sought in several countries. To facilitate & accelerate access by the public to the technical information contained in documents describing new inventions. To foster and accelerate the economic development of developing countries through the adoption of measures designed to increase the efficiency of their legal systems whether national or regional, instituted for the protection of inventions by providing easily accessible information on the availability of technological solutions applicable to their special needs.

Patent Law Treaty (PLT)

The Patent Law Treaty (PLT) is a patent law multilateral treaty concluded on 1 June 2000 in Geneva, Switzerland, by 53 States and the European Patent Organisation (an intergovernmental organization). Its aim is to harmonize formal procedures such as the requirements to obtain a filing date for a patent application, the form and content of a patent application, and representation. A country which is party to the Paris convention and WIPO can become a member of this treaty. India is not a member to this treaty. As of February 3, 2011, the PLT has 27 Contracting states, while 59 States and the European Patent Organisation have signed the treaty. The PLT entered into force for the Netherlands, the 27th Contracting State on December 27, 2010. Prior to the entry into force of the treaty in France, a bill was submitted on 14 January 2009 at the French Senate proposing the ratification of the PLT by France. In March 2009, a report from French Senator Rachel Mazuir recommended the ratification of the PLT, as soon as possible, by France. On July 24, 2009, the government was authorized to ratify the PLT. The PLT then entered into force for France on 5 January 2010. India is not a signatory to this treaty. Some other important treaties relating to Patent protection are: The Budapest Treaty on the international recognition of the deposit of micro-organisms for the purpose of Patent Procedures, 1977. The Strasbourg Agreement concerning the international Patent classification, 1971.

The Budapest Treaty

The Budapest treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure was concluded on 28th April, 1977 at Budapest. It entered into force on August 9, 1980 and was amended on 26th Sept., 1980. The accession to the Treaty is open to States party to the Paris Convention for the Protection of Industrial Property of 1883.As of Nov., 2011, 72 countries are party to this treaty. India is also a signatory to the treaty. Art.2 of the treaty defines some important terms for understanding the provisions of the Treaty. Deposit of a micro-organism: The treaty allows "deposits of microorganisms at an international depositary authority to be recognized for the purposes of patent procedure". Patent Procedure: means any administrative or judicial procedure relating to a patent application or a patent. Publication for the purposes of Patent Procedure: Usually, in order to meet the legal requirement of sufficiency of disclosure, patent applications and patents must disclose in their description the subject-matter of

the invention in a manner sufficiently clear and complete, which is to be carried out by a person skilled in the art, and it should be published officially. Industrial Property Office: means an authority of a contracting state or an intergovernmental industrial property organization competent for the grant of Patents. Depository Institution (International depositary authority): The deposits are made at an international depositary authority (IDA) in accordance with the rules of the Treaty on or before the filing date of the complete patent application. Article 7 of the Budapest treaty outlines the requirements for a facility to become an International Depositary Authority. As of March 1, 2008, there were 37 IDAs in approximately 20 countries worldwide. Depositor: Means a natural or a legal entity transmitting the micro-organism to an International Depository authority. Depositable subject matter: IDA's have accepted deposits for biological materials which do not fall within a literal interpretation of "microorganism". The Treaty does not define what is meant by microorganism. The range of materials able to be deposited under the Budapest Treaty includes: cells, for example, bacteria, fungi, eucaryotic cell lines, plant spores; genetic vectors (such as plasmids or bacteriophage vectors or viruses) containing a gene or DNA fragments; organisms used for expression of a gene (making the protein from the DNA). There are many types of expression systems: bacterial; yeast; viral; plant or animal cell cultures; yeast, algae, protozoa, eucaryotic cells, cell lines, hybridomas, viruses, plant tissue cells, spores, and hosts containing materials such as vectors, cell organelles, plasmids, DNA, RNA, genes and chromosomes; purified nucleic acids; or deposits of materials not readily classifiable as microorganisms, such as naked DNA, RNA, or plasmids.

Assembly: In this treaty the assembly will comprise of the member countries and will be represented by one delegate who can take assistance of other delegates, advisors and experts. If a state is not a member of the Union of this treaty but is a member of the Paris Union, then its delegate can attend the meetings of this assembly as an observer. International Bureau: According to this treaty, an international bureau will carryout all administrative tasks relating to the Union and specially those tasks assigned to it under the Treaty and the regulations or by the Assembly. Denunciation of the Treaty: The Treaty can be denounced by any member country (only which is a member of this treaty for five years) by giving a notice to the Director General, which will come in to force two years after the receiving of the notice by the Director General.

Indian Patent (Amendment) Act, 2005.

Chapter I of the Act comprises of Sec.1 and 2 which defines Short title, extent and commencement & Definition and interpretation respectively. Chapter II of the Act deals in inventions not Patentable comprises of Sec. 3 to 5 of which Sec. 5 (Inventions where only methods or processes of manufacture patentable) was omitted in 2005 amendment. Sec.3 defines what are not inventions and sec. 4 states that, Inventions relating to atomic energy not patentable.

How to Obtain a Patent?

In India, the procedure for granting Patents involves: An application with complete specification which is to be submitted in the Patent Office; Examination of the application by the Patent office;

Advertisement of acceptance of complete specification; Opposition to grant of Patent; Hearing the Parties; Grant/rejection of Patents.

Flow Chart of Procedure of Getting a Patent:

Filling of a Patent application: Sec. 6-11 of the Indian Patent (Amendment) Act, 2005 enumerate the conditions to be fulfilled and the manner in which an application for Patent is to be submitted. Only following persons are entitled to file an application for grant of Patent at the Indian Patent Office: (i) The inventor, or (ii) The inventors assignee, or (iii) Legal representative (Patent Agent), or (iv) Successor in title of the inventor. The application can be filed by any of the above mentioned persons single-handedly or jointly. The inventor/s is entitled to be mentioned in the Patent if s/he applies to do so. It is mandatory that every application for Patent must be for one invention only and should be filed in the FORM 1 (Patent Rules, 2006). It should be filed at the appropriate Patent office under whose territorial limits the applicant or the 1st mentioned applicant (in case of joint applicants) generally resides or has his domicile or has a place of business or the place from where the invention originated actually. Each application must be furnished with the following information:

(1) Name, address and nationality of the applicant. (2) Applicant is required to state/declare: (i) (ii) (iii) (iv) (v) (vi) (vii) (viii) (ix) Address for service in India, S/he is in the possession of the invention, Provisional/complete specification is filed along with the application, There is no lawful ground of objection to the grant of Patent. Name, address, nationality of the applicant (in case s/he is other than the inventor), Details regarding the claim of priority from the application filed in the convention country (if any), Application number in case the invention is an improvement or modification of the invention, Application divided out of his or earlier application, S/he is the assignee or the legal representative of the true and first inventor.

(3) And has also to furnish the following declaration; (i) by the applicant that to the best of his/her knowledge, information and belief; the facts and matters stated in the application are correct and that there is no lawful ground of objection to the grant of patents on the application. (ii) By a true and first inventor that the applicant is his/her assignee or legal representative. (4) Request for the Patent may be granted to him. (5) Has to attach the following: Any other relevant document, Provisional/complete description (3 copies) Drawings (3 copies) Priority Documents (3 copies) Statement/Undertaking in FORM 3 (Patent Rules, 2006) Form 5- Details of Inventorship (Patent Rules, 2006) Power of Attorney Prescribed fees.(for Individuals : Rs.750/-, for Legal entity: Rs.3000/-)

On receipt of documents, The application number and date would be allotted by Patent office. (E.g. 228/MAS/2002 dt 30/12/02.). Application is notified in Official Gazette Weekly notification (Part III Sec 2) every Saturday. Patents would be published after 18 months from the date of filing. Generally a Patent application is not open for public until the predetermined period of 18 months has expired (which is calculated from the date of filing or date of priority, which ever is earlier). If the Controller feels that it falls under the category of invention for defense purpose then the application is not published at all.

Examination of application: Sec. 11B(1) of the Patent (Amendment) Act, 2005 states about request for examination within prescribed period. Request for examination to be filed in Form 19 (Patent Rules, 2006). According to Sec. 12 of the Act, after receiving the request the Controller refers the application to the examiner . But, if the application is for grant of exclusive marketing rights(EMR) it must not be referred to the examiner; i.e. the controller has no right/power to refer an application pertaining to a claim of Patent for a particular category of medicines or drugs to be sold or distributed in India. After receiving the application for examination, the examiner has to make a report on the following aspects (Sec. 13): Whether the application and the specification along with the required documents are in accordance with the provisions of the law i.e. if the specification along with the application submitted is complete or not; Whether there is any ground for lawful objection to grant of the Patent i.e. if there is any prior art or not; and The result of investigation conducted.

As per sec. 14 of the act, after receiving the result of investigation conducted by the examiner, if the Controller finds any adverse remarks, which requires an amendment of the application (for grant of Patent) submitted by the applicant; should communicate it to the applicant and give him the time specified (12 months) by the Act or law to make the necessary amendments to his application with complete specification before disposing his claim of application.

Also as per sec. 15 of the Act, if the Controller is satisfied that, the application or specification doesnt comply with the requirements of this Act or of any rules made there under, he can send it for making necessary amendments to the application or even he has the power to refuse to proceed with the application. Power of the Controller to refuse/ amend/make division etc. of the application is described in sec. 15 to 20 of the Act. Sec 22 to 24 of the Act, states about acceptance of complete specification of the application, its advertisement and effects.

Exclusive rights & Exclusive Marketing Rights(EMR): As a signatory of the TRIPS agreement India
amended its Patent Act, 1970, in 2002 to give provisions to the terms and conditions enacted in TRIPS for the 2nd World countries (developing nations) who are members to it, according to which; those countries who are unable to grant product patents with immediate effect are required to provide a means to receive product patent applications (which are to be stored in a box called mail-box) and on the execution of certain conditions Exclusive Marketing Rights for a period of five years until the patents are granted. This provision was introduced in sec. 24(A) and sec. 24(B) of the Indian Patent (Amendment) Act, 2002. Which was parted away with in the later amendment of the act in 2005, after the provision for grant of product patent was introduced in India. Exclusive rights were provided to a holder of a patent where s/he can manufacture, sale & distribute the product in a monopolistic way for a period of 20 years. But Exclusive Marketing Rights were provided to the applicants who have applied for obtaining a product patent. It only provides the monopolistic right to sale and distribute the product for which the patent was applied and that too for a period of 5 years. As the applicant can't produce the product so, he also has the monopolistic right to import the same product from any other country.

The examination of novelty was not conducted before the grant of EMR as the application is in the process of Grant of Patent.

Opposition to Grant of Patent:

The main objective of opposition to grant of a Patent is to give an opportunity to any interested person to give a notice of objection relating to a particular application of Patent (an interested person means any one who is having a direct, present and tangible commercial interest or public interest, which has the probability of being injured once the Patent is granted, as defined by the Delhi High Court in Ajay Industrial Corporation Vs. Shiro Kamas of Iberabicity, AIR 1983). Pre-grant & Post-grant Opposition: The amended patent law brought many significant changes and one such change was in the opposition proceedings to grant of a patent. India previously had a pre-grant opposition system. The 2005 Amendment Act added to this a post-grant opposition. Under it any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds within one calendar year from the date on which the Patent was granted.

Sec. 25 of the Act stipulates that an interested person can file a notice of opposition on any of the following grounds: Wrongly acquired, Prior Publication, Prior claim in a concurrent application, Prior public knowledge, Lack of inventive step, Non-patentable invention, Inadequate description of the invention and Failure to disclose information.

After the notice is given, the patent office grants an opportunity to both the parties for presenting their arguments relating to the opposition. If the opponent is capable of establishing his/her claim, then the Patent application is rejected. Following are few of the landmark indictments wherein patent was not granted due to opposition by India. These became the precedents for the post-grant opposition system in India. (i) The Neem Patent Challenge (1995-2000), (ii) The Turmeric Patent Case (1995), (iii) The Hessian Case (2000). The case where Anticipation was regarded as prior-art & thus a ground for revocation of Patent.

The Neem Patent Challenge: In June,1995 an opposition was filed in the EPO (European Patent Office) against a Patent application (filed on Dec. 12th, 1990; jointly by W.G. Grace a MNC in agribusiness of New York and U.S. Dept. of Agriculture on the basis of a U.S. priority application of Dec 26th, 1989 on a method for controlling fungi on plant by the aid of a substance extracted from the Neem oil and to which a grant of Patent was published by the EPO on Sept. 14, 1994) by Magda Aelvoet, a MEP (on behalf of the Green Group in the EU Parliament, Brussels), Dr. Vandana Shiva (on behalf of the Research Foundation for Science, Technology and Natural Resource Policy, New Delhi) and the International Federation of Organic Agriculture Movements(Germany); On the ground that the fungicidal effect of hydrophobic extracts of Neem seeds was known and used for centuries on wide scale in India both in ayurvedic medicine and traditional agricultural practice; so, is being in public use and thus lacks the criteria of novelty and inventive step. After hearing of the objection by the EPO, in May, 2000 the Patent was rejected by it on the ground of lack of novelty as there was evidence of prior art and non-obviousness as the knowledge of it was obvious to even the general public of India and also the EPO blatantly termed it as bio-piracy by the Govt. of U.S.A. The Turmeric Patent Case: In March, 1995 two expatriate Indians at the University of Mississippi Medical Centre, were granted a U.S. Patent for turmeric to be used for healing wounds. The Indian Council for Scientific & Industrial Research (CISR) lodged an objection on U.S. Patent Office (USPTO) opposing the Patent on the grounds of prior art, i.e. existing public knowledge for thousands of years in India. After hearing the USPTO came to conclusion that, the novelty criterion was not met; thus upheld the objection and cancelled the Patent. Anticipation: In the context of Patent, it refers to the prior knowledge about an invention. The basic intention in the principle of Anticipation is that, it is incorrect to prevent a man from doing something, which he or she was lawfully doing before the grant of patent. According to the Patent Act, Anticipation has five categories. (i) Anticipation by previous publication (sec.29), (ii) Anticipation by previous communication to the Govt. (sec. 30), (iii) Anticipation by public display (sec. 31), (iv) Anticipation by public working (sec. 32), (v) Anticipation by use & publication after provisional specification (sec. 33).

The Hessian Case: In 1994 an UK based company GEOHESS was granted an European Patent by the EPO for an invention of using Hessian (a variety of jute cloth/sheet) to cover waist dumping ground. As India is the principal producer and largest exporter of Jute to the Europe; it feared the possibility of cancellation of free trade of Hessian in European countries. The Jute Manufacturers Development Council (JMDC), a statutory body established by Govt. of India along with IJMA (Indian Jute Mills Association) and IJIRA (Indian Jute Industries Research Association) filled an opposition in the EPO against the grant of Patent in March 27th, 2000. Following which the Opposition division of EPO on the ground of anticipation as a prior-art ordered in favor of JMDC, thereby revoking the Patent granted to the GEOHESS company and making such use of Hessian available free of any monopoly. Rule 57 [Indian Patent (amendment) Rule, 2006] contemplates filing of written statement of opposition and evidence.

Issuance of Patent: Sec. 43 of the act spells out provisions relating to the grant of patent. Subsequent to the acceptance of the complete specification and disposal of the opposition a patent is granted and then it is entered in to the register.

Tenure of a Patent in India:

The Patent Act, 1970 had given protection for Patent of food or medicine or perishable items for 05 years and all other cases- 14 Years. After the Amendment to Patent Act in 2002 the uniform life span of 20 years is implemented.

Specification of Patents:
as follows:

According to its character or nature the Patent can be divided in to three types. They are

1. Ordinary Patent- Based on normal application to respective patent office. (National Patent Application) 2. Patent of Addition - For an improvement or modification for applied or granted patents. 3. Patent granted under Convention Agreement- within 12 months from date of first application made locally, can be applied in a convention country accompanied by complete specifications.(PCT Application, as per Sec 135 of Indian Patent Act 1970)

Patent of Addition: When a patent is granted in respect of any improvement in or modification of a previous
invention (main invention) for which a patent was granted previously then, that type of patent is called as Patent of Addition. Provisions for Patent of addition are laid down in Sec. 54, 55 & 56 of the Indian Patent Act. The rights conferred to a Patent of Addition holder is exactly the same as of the original patent holder although it is a mere addition to the original patent and the rights are already given to the holder of that original patent.