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2/25/2010 Submitted by: to: Anupam Agrawal Manish Dadlani Rohan Khare Sandeep Submitted Prof. Shinu Vig
Intellectual property (IP) is a term referring to a number of distinct types of legal monopolies over creations of the mind, both artistic and commercial, and the corresponding fields of law. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property include copyrights, trademarks, patents, industrial design rights and trade secrets in some jurisdictions.
A patent is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention. The procedure for granting patents, the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims defining the invention which must be new, inventive, and useful or industrially applicable. In many countries, certain subject areas are excluded from patents, such as business methods and mental acts. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission. Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any inventions, in all fields of technology, and the term of protection available should be the minimum twenty years. Different types of patents may have varying patent terms (i.e., durations). The term patent usually refers to a right granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. The additional qualification utility patent is used in the United States to distinguish it from other types of patents (e.g. design patents) but should not be confused with utility models granted by other countries. Examples of particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents.
to make available for public inspection). Background In 500 BC. Etymology The word patent originates from the Latin patere. In 1449. in the Greek city of Sybaris (located in what is now southern Italy). These meanings reflect the original meaning of letters patent that had a broader scope than current usage. Patents in the modern sense originated in 1474. had to be communicated to the Republic to obtain the right to prevent others from using them. Certain grants made by the monarch in pursuance of the royal prerogative were sometimes called letters patent." The Florentine architect Filippo Brunelleschi received a three-year patent for a barge with hoisting gear. a precursor of modern copyright. once put into practice. This article relates primarily to the patent for an invention. which were land grants by early state governments in the USA. For other uses of the term patent see notably land patents. which originally denoted an open for public reading royal decree granting exclusive rights to a person. King Henry VI granted the first patent with a license of 20 years to John of Utynam for introducing the making of colored glass to England. and printing patent. These were often grants of a patent-like monopoly and predate the modern origins of the patent system. which means "to lay open" (i. and more directly as a shortened version of the term letters patent. when the Republic of Venice enacted a decree that new and inventive devices. "encouragement was held out to all who should discover any new refinement in luxury. the profits arising from which were secured to the inventor by patent for the space of a year.. plant breeders' rights are sometimes called plant patents. which was a government notice to the public of a grant of an exclusive right to ownership and possession. that carried marble along the Arno River in 1421.Some other types of intellectual property rights are referred to as patents in some jurisdictions: industrial design rights are called design patents in some jurisdictions (they protect the visual design of objects that are not purely utilitarian). although so-called petty patents and utility models may also be granted for inventions. . and utility models or Gebrauchsmuster are sometimes called petty patents or innovation patents.e.
The modern French patent system was created during the Revolution in 1791. Fresh legislation for granting ‘exclusive privileges’ was introduced in 1 859 as Act XV of 1859. In the United States. The Academy examined novelty. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the British Crown. 1790 (to Samuel Hopkins of Vermont for a potash production technique). including Australia. which declared that patents could only be granted for "projects of new invention. namely. several states adopted patent systems of their own. This Act was based on the United Kingdom Act of 1852 with certain departures which include 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." During the reign of Queen Anne (1702–1714). Examinations were generally done in secret with no requirement to publish a description of the invention. Patents were granted without examination since inventor's right was considered as a natural one. which prior to . the lawyers of the English Court developed the requirement that a written description of the invention must be submitted. This legislation contained certain modifications of the earlier legislation. Actual use of the invention was deemed adequate disclosure to the public. History of Indian patent system The first legislation in India relating to patents was the Act VI of 1856. The first Congress adopted a Patent Act. the Act of 1859 was consolidated to provide protection relating to designs. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. during the so-called colonial period and Articles of Confederation years (1778–1789). is based on British law and can be traced back to the Statute of Monopolies. In 1872. grant of exclusive privileges to useful inventions only and extension of priority period from 6 months to 12 months. The Act of 1872 was further amended in 1883 (XVI of 1883) to introduce a provision to protect novelty of the invention. This Act excluded importers from the definition of inventor. patents were granted by the monarchy and by others institutions like the "Maison du Roi". The patent system in many other countries. and the first patent was issued under this Act on July 31. It was renamed as “The Patterns and Designs Protection Act” under Act XIII of 1872. In France. in 1790.England followed with the Statute of Monopolies in 1623 under King James I.
This Act brought patent administration under the management of Controller of Patents for the first time. patent of addition. an Act was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the U. In 1888. it was felt that the Indian Patents & Designs Act. This Act was further amended in 1920 to enter into reciprocal arrangements with UK and other countries for securing priority. law. Other provisions were related to . 1911 was not fulfilling its objective. This Act remained in force for about 30 years without any change but in the year 1883. 23 & 23A of the Patents & Designs Act. an amendment was made to provide for filing of provisional specification and submission of complete specification within nine months. a retired Judge of Lahore High Court. 1911. The committee submitted its interim report on 4th August.making application for their protection were disclosed in the Exhibition of India. 1949 with recommendations for prevention of misuse or abuse of patent right in India and suggested amendments to sections 22. In 1930. The Indian Patents and Designs Act. in 1949 t o review the patent law in India in order to ensure that the patent system is conducive to the national interest.K. inter-alia.) Bakshi Tek Chand. certain modifications in the patent law were made in United Kingdom and it was considered that those modifications should also be incorporated in the Indian law. 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. the 1911 Act was amended in 1950(Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation. the Government of India constituted a committee under the Chairmanship of Justice (Dr. After Independence. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition. Based on the above recommendation of the Committee. (Act II of 1911) replaced all the previous Acts. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. Accordingly. further amendments were made to incorporate. provisions relating to grant of secret patents. In 1945. 1911 on the lines of the United Kingdom Acts 1919 and 1949. powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. use of invention by Government.
However. 1972. 1959.59 of 1953). the Government of India appointed Justice N. This Act remained in force for about 24 years without any change till December 1994. An ordinance effecting certain changes in the Act was issued on 31 st December 1994. Subsequently. the applicants could be allowed Exclusive Marketing Rights (EMR) to sell or distribute these products in India. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However. However. Based on the recommendations of the Committee. The first part also dealt with evils of the patent system and solution with recommendations in regards to the law. The amended Act provided for filing of applications for product patents in the areas of drugs. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The second amendment to the 1970 Act was made through the Patents (Amendment) Act. germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices. In 1952 (Act LXX of 1952) an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines. insecticide. again an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee. Meanwhile. despite its shortcomings. the Patents Act. such applications were to be examined only after 31-12-2004. In 1957. 1970 was passed. 1999 that was brought into force retrospectively from 1 st January. which however lapsed. The compulsory licence was also available on notification by the Central Government.endorsement of the patent with the words ‘licence of right’ on an application by the Government so that the Controller could grant licences. 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 bills 1953. This bill was introduced in the Lok Sabha on 21st September. 1965. the Government did not press for the consideration of the bill and it was allowed to lapse. 2002 (Act 38 0f 2002). This Act came into force on 20 th . pharmaceuticals and agro chemicals though such patents were not allowed. the 1911 Act continued to be applicable to designs. was submitted in September. The committee recommended retention of the Patent System. In 1967. which ceased to operate after six months. The report of the Committee. which comprised of two parts. 1965. subject to fulfilment of certain conditions. a bill was introduced in the Parliament in 1953 (Bill No. Most of the provisions of the 1970 Act were brought into force on 20 th April 1972 with publication of the Patent Rules. 1995. another ordinance was issued in 1999. This ordinance was subsequently replaced by t he Patents (Amendment) Act.
May 2003 with the introduction of the new Patent Rules.e. This Ordinance was later replaced by the Patents (Amendment) Act 2005 (Act 15 Of 2005 ) on 4 th April. 1972. ADMINISTRATION The Patent Office.1972. 2003 by replacing the earlier Patents Rules. 1970 (No 39 of 1970) & The Patents Rules 1972. These Rules were amended from time to time till 20 May 2003 when new Patents Rules. 2003 were brought into force by replacing the 1972 rules. 1970 the Central Government is empowered to make rules for implementing the Act and regulating patent administration.4.e. the Patents Rules. 1995 & The Patents Rules. 2005 which was brought into force from 1-1-2005.f. Accordingly. 2005 and the Patents (Amendment) Rules. Subsequently The Patents Act. The last amendments are made effective from 5 th May 2006. has been established to administer the various provisions of the Patents Law relating to the grant of Patents & The Designs Law. 2004 w. 1970 is amended effective from January 1. 1999. 1972 is amended effective from June 2. 7. MEMBERSHIP OF INTERNATIONAL TREATIES India is member of the following treaties governing patents: • • • Convention establishing World Intellectual Property Organization (WIPO) Trips Agreement under the World Trade Organization.f. relating to the registration of Industrial Designs. effective from April 20. 2005. . 20. 1972 were notified and brought into force w. Patents in India LEGISLATION The Patent system in India is governed by the Patents Act. The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance. under the Ministry of Commerce & Industry. Under the provisions of section 159 of the Patents Act. 1998. Department of Industrial Policy & Promotion. Paris Convention for the protection of Industrial Property with effect from Dec. These rules were further amended by the Patents (Amendment) Rules.1972. 1 st January. 2006.
machine or apparatus unless such known process results in a new product or employs at least one new reactant. PATENTABLE INVENTIONS An invention means any new and useful art. and includes any new and useful improvement of any of them. assignee. Application may be made jointly by two or more corporations as assignees. or substance produced by manufacture. machine. (3) The mere discovery of a scientific principle or the formulation of an abstract theory. TYPES OF PATENTS • • • Ordinary Patent Patents of addition Convention WHO CAN APPLY Application may be made. (2) An invention the primary or intended use of which would be contrary to law or morality or injurious to public health. legal representative of deceased inventor or assignee.• Patent Cooperation Treaty (PCT) with effective from Dec. (4) The mere discovery of any new property or new use for a known substance or of the mere use of a known process. apparatus or other article. . and an alleged invention. method or manner of manufacture. WHAT IS NOT PATENTABLE (1) An invention that is frivolous or that claims anything obviously contrary to well-established natural laws. 1998. either alone or jointly with another. process. The inventor is entitled to be mentioned in the patent if he applies to do so. by the inventor. (5) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. 7.
No patent will be granted in respect of claims for the substances themselves. each functioning independently of one another in a known way. Fee in cash/by local cheque/by demand draft. (9) Inventions relating to atomic energy.(6) The mere arrangement or rearrangement or duplication of known devices. apparatus or other equipment more efficient. In the case of inventions relating to substances prepared or produced by chemical processes (including alloys. Priority document (if priority date is claimed). Abstract of the invention (in triplicate). optical glass. or for the improvement or restoration of the existing machine. DOCUMENTS REQUIRED FOR FILING AN APPLICATION • • Application form in triplicate. (8) A method of agriculture or horticulture. Power of attorney (if filed through Patent Agent). Provisional or complete specification in triplicate. If the provisional specification is filed it must be followed by complete specification within 12 months (15 months with extension). or for the improvement or control of manufacture. Drawing in triplicate (if necessary). Information and undertaking listing the number. apparatus or other equipment. but claims for the methods or processes of manufacture will be patented. Declaration of inventorship where provisional specification is followed by complete specification or in case of convention application. (7) A method or process of testing applicable during the process of manufacture for rendering the machine. filing date and current status of each foreign patent application in duplicate. • • • • • • • APPROPRIATE OFFICE FOR FILING AN APPLICATION . semiconductors and intermetallic compounds) & substances intended for use or capable of being used as food.
If the applicant for the patent or party in a proceeding having no business. If all the objections are not complied with within the normal period or within the extended period the application will be deemed to have been abandoned.Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated . Register of Patents contains full details of the Patent which include Patent number. However. It is deemed laid open to the public on the date of publication in the gazette of India.. the appropriate office will be according to the address of service in India given by the applicant or party in a proceeding. Extension of one month is available. OPPOSITION Notice of opposition must be filed within four months of notification in the Gazette. but must be applied for before expiry of initial four month period. it is extendable by three months. Section2). Register of Patents can be inspected or extract from it can be obtained on payment of prescribed fee. REGISTER OF PATENTS The Register of Patents will be kept in the Patent Office and its branch offices. When the application is found to be suitable for acceptance it is published in the gazette of India (Part III. but application for extension therefore must be made before the expiry of normal period of 15 months. GRANT OR SEALING OF PATENT If the application is not opposed or the opposition is decided in favour of the applicant or is not refused the patent is granted or sealed on payment of sealing fee within 6 months from the date of advertisement. Extension of time for three months is available. EXAMINATION & PUBLICATION All the applications for patent accompanied by complete specification are examined substantively. the names and addresses . Normally all the objections must be met within 15 months from the date of first examination report. A first examination report stating the objection(s) is communicated to the applicant or his agents. place or domicile in India. Application or complete specification may be amended in order to meet the objection(s).
RENEWAL FEE Renewal fees are payable every year. WORKING Annual reports as to the extent of working.. notification of assignment etc. COMPULSORY LICENSE AND LICENSE OF RIGHT On failure to work a patent within three years from the date of its sealing. renewal fees may be accumulated and paid immediately after the patent is sealed. or drugs. He can prevent all others from making or using the patented process. These rights created by statute are circumscribed by various conditions and limitations. and must be paid before the patent’s second anniversary. If the patent has not been issued within that period. or within three months of its recordal in the Register of the Patents. No renewal fees are payable during the pendency of the application for a patent. unless the original patent is revoked and the patent of addition is converted into an independent patent. Six months’ grace is available with Extension fee. renewal fees that become overdue during pendency are payable upon sealing within three months of recordal in the Patent Register. or otherwise deal with it for any consideration. The first renewal fee is payable for third year of the patent’s life. Every patent for an invention relating to a method or process for manufacture of substances intended for use. No renewal fees are payable on patents of addition. as food.of the patentee. A patentee has also the right to assign the patent. Date of payment of Renewal fees is measured from the date of the patent. RIGHTS OF PATENTEE A patent grant gives the patentee the exclusive right to make or use the patented article or use the patented process. 31 each year for the previous year ending December. or capable of being used. renewal fees then become payable for the remainder of the term of the main patent. an interested party may file petition for grant of a compulsory license. or relating to substances prepared or produced by . by every patentee and licensee. are a statutory requirement and must be submitted by March. grant licenses under. renewals. 31. medicines. particulars in respect of proprietorship of patent etc.
LICENSE Applications must be filed on the prescribed form with the Controller for the registration of licenses and any other documents creating an interest in a patent in order for them to be valid. the duration is counted from January 1. while the patent is in force. Such use must be paid for on terms to be agreed upon before or after use. use for research. However. an assignment must be recorded within six months from the date of the document. and a complete specification is filed on January 1. copying patented substances. DURATION A patent lasts for 14 years from the date of filing the complete specification (if an application is filed with provisional specification on January 1. 1989. or five years from date of sealing. A sixmonths extension may be obtained. for food. If an overdue annuity is not paid within the extension period. INFRINGEMENT Infringement can consist of taking away essential features of the patented invention. use on foreign vessels. In order to be valid. the one-year period for seeking restoration commences from the date of recordal. Use by the government or for government purposes is not infringement. whichever is shorter. RESTORATION Application for restoration of a patent that lapses due to nonpayment of renewal fees must be made within one year of lapse. optical glass. utilizing claimed features. 1990). . do not constitute infringement. A license must be recorded within six months from the date of the document. 1990. drug and insecticide patents. taking part of the invention. Accidental or temporary use. semi-conductors and intermetallic compounds) shall be deemed to be endorsed "Licenses of Right" from the date of expiry of three years from the date of sealing the patent. the life is seven years from the date of complete specification. ASSIGNMENT Applications must be filed on the prescribed form with the Controller for the registration of assignments and any other documents creating an interest in a patent in order for them to be valid.chemical process (including alloys. mechanical equivalence.
APPEAL Appeal lies in the High Court. in 1911 at Washington. in 1958 at Lisbon and in 1967 at Stockholm. have to put in place a mechanism for . International treaties • Paris Convention The Paris Convention is an international convention for promoting trade among the member countries. Appeal must be lodged within three months from the decision of the Controller. 1998. 1998.PCT is a multilateral treaty. an inventor of a member country (contracting state) of PCT can simultaneously ensure priority for his/her invention in all/any of the member countries. TRIPS requires that countries not providing product patents in respect of pharmaceuticals and agrochemicals. by designating them in the PCT application. All the member countries provide national treatment to all the applications from the other member countries for protection of industrial property rights. • TRIPS Agreement TRIPS (Trade Related Aspects of Intellectual Property Rights) Agreement is an offshoot of a series of negotiations going on around the world since the inception of the Paris Convention in the year 1883. India became a member of the Paris Convention on December 7. The last amendment took place in 1979. without having to file separate application in the countries of interest. The convention was first signed in 1883. devised to facilitate protection of industrial property simultaneously in the member countries without any loss in the priority date. Through PCT. in 1925 at the Hague. Since then the Convention has been revised several times. in 1900 at Brussels. All activities related to PCT are coordinated by the World intellectual Property Organisation (WIPO) situated in Geneva. in 1934 at London. entered into force in 1978. It has been made mandatory for the member countries of the TRIPS Agreement to comply with the Article 1 to 12 and Article 19 of the Paris Convention. • Patent Cooperation Treaty (PCT) The Patent Cooperation Treaty . India joined the PCT on December 7.
necessarily give the owner of the patent the right to exploit the patent. Consequences of not working an invention vary from one country to another.accepting product patent applications w. many inventions are improvements of prior inventions that may still be covered by someone else's patent. ranging from revocation of the patent rights to the awarding of a compulsory license awarded by the courts to a party wishing to exploit a patented invention.e. the owner of the improved mouse trap can exclude the original patent owner from using the improvement. (In many jurisdictions the scope of the patent may not . for a U. To prove infringement. and will seek an injunction prohibiting the defendant from engaging in future acts of infringement. adds a new feature to make an improved mouse trap. after suitable amendments in the national patent law have been made. the patent owner will seek monetary compensation for past infringement. patented mouse trap design. This mechanism of accepting product patent application is called the "mail box" mechanism. On the other hand. patent. For example. Some countries have "working provisions" that require the invention be exploited in the jurisdiction it covers. the patent owner must establish that the accused infringer practices all the requirements of at least one of the claims of the patent. assuming the original patent is still in force. The patentee has the opportunity to challenge the revocation or license. 1 January 1995. Such applications will only be examined for grant of patents. but is usually required to provide evidence that the reasonable requirements of the public have been met by the working of invention. he or she can only legally build his or her improved mouse trap with permission from the patent holder of the original mouse trap. however. International law Effects A patent being an exclusionary right does not. and obtains a patent on the improvement. Enforcement Patents can generally only be enforced through civil lawsuits (for example.S. If an inventor takes an existing.f. by an action for patent infringement in a United States federal court). Typically. although some countries (such as France and Austria) have criminal penalties for wanton infringement.
a nation forms a patent office with responsibility for operating that nation's patent system. An important limitation on the ability of a patent owner to successfully assert the patent in civil litigation is the accused infringer's right to challenge the validity of that patent. some countries have sanctions to prevent the same validity questions being relitigated. Civil courts hearing patent cases can and often do declare patents not valid. The vast majority of patent rights. usually in return for a royalty or other compensation. within the relevant patent laws. it is equally common for competitors in such fields to license patents to each other under crosslicensing agreements in order to share the benefits of using each other's patented inventions. Patents are. A patent can be found invalid on grounds that are set out in the relevant patent legislation that vary between countries. with infringement being the remit of national courts. but are resolved privately through patent licensing. where those treaties have been given effect in national laws. The TRIPs Agreement has been largely successful in providing a forum for nations to agree on an aligned set of patent laws. Commonly.be limited to what is literally stated in the claims. It is common for companies engaged in complex technical fields to enter into dozens of license agreements associated with the production of a single product. the grounds are a subset of the requirements for patentability in the relevant country. for example due to the "doctrine of equivalents"). and also by international treaties. with the World Trade Organization (WTO) being particularly active in this area. however. Although an infringer is generally free to rely on any available ground of invalidity (such as a prior publication. therefore. for example). Conformity with the TRIPs agreement is a requirement of admission to the WTO and so compliance is seen by . Governing laws The grant and enforcement of patents are governed by national laws. The patent office generally has responsibility for the grant of patents. Moreover. An example is the UK Certificate of contested validity. Often. There is a trend towards global harmonization of patent laws.[clarification needed] Patent licensing agreements are effectively contracts in which the patent owner (the licensor) agrees to forgo their right to sue the licensee for infringement of the licensor's patent rights. territorial in nature. are not determined through litigation.
the principles of the convention are incorporated into all notable current patent systems. Application and prosecution A patent is requested by filing a written application at the relevant patent office.e. and receive the benefit of the original filing date. initially signed in 1883. and although the convention does not have direct legal effect in all national jurisdictions. such as the procedures under the European Patent Convention (EPC) [administered by the European Patent Organization (EPOrg)]. Because the right to a patent is intensely date-driven. that centralize some portion of the filing and examination procedure. The Paris Convention sets out a range of basic rules relating to patents. and the nine CIS member states that have formed the Eurasian Patent Organization. the Constitution empowers Congress to make laws to "promote the Progress of Science and useful Arts.. which may historically have developed different laws to aid their development. The application contains a description of how to make and use the invention that must provide sufficient detail for a person skilled in the art (i. In some countries there are .. A key international convention relating to patents is the Paris Convention for the Protection of Industrial Property. In addition." The laws Congress passed are codified in Title 35 of the United States Code and created the United States Patent and Trademark Office. In the United States. the analogous treaties among African countries.many nations as important. The authority for patent statutes in different countries varies. In the UK. The person or company filing the application is referred to as "the applicant". the relevant area of technology) to make and use the invention. substantive patent law is contained in the Patents Act 1977 as amended. The applicant may be the inventor or its assignee. enforcing patents laws in line with global practice. The most significant aspect of the convention is the provision of the right to claim priority: filing an application in any one member state of the Paris Convention preserves the right for one year to file in any other member state. this right is fundamental to modern patent usage. and the Patent Cooperation Treaty (PCT) (administered by WIPO and covering more than 140 countries). This has also led to many developing nations. there are international treaty procedures. Similar arrangements exist among the member states of ARIPO and OAPI..
Without patents. to disclose the invention once made. the claims define what a patent covers or the "scope of protection". objections are communicated to the applicant or their patent agent or attorney and one or more opportunities to respond to the objections to bring the application into compliance are usually provided. These fees are generally payable on a yearly basis. or the technical problem or problems solved by the invention. Once granted the patent is subject in most countries to renewal fees to keep the patent in force. The claims set out what the applicant is seeking to protect in that they define what the patent owner has a right to exclude others from making. and to design around and improve upon earlier patents. they may be liable for damages. although the US is a notable exception. For a patent to be granted." While this term does not confer legal protection. After filing. an application is often referred to as "patent pending. Many large modern corporations have annual R&D budgets of hundreds of millions or even billions of dollars.g. R&D spending would be significantly less or eliminated altogether. using. the European Patent Office) also require annual renewal fees to be paid for a patent application before it is granted. The application also includes one or more claims. Most patent offices examine the application for compliance with these requirements. If the application does not comply. as the case may be. Rationale There are four primary incentives embodied in the patent system: to invent in the first place. Drawings illustrating the invention may also be provided. although it is not always a requirement to submit these when first filing the application. and a patent cannot be enforced until granted. limiting the possibility of technological advances or . it serves to provide warning to potential infringers that if the patent is issued. that is to take legal effect in a particular country. In other words. Some countries or regional patent offices (e. • Patents provide incentives for economically efficient research and development (R&D).requirements for providing specific information such as the usefulness of the invention. produce and market the invention. to invest the sums necessary to experiment. the patent application must meet the patentability requirements of that country. or selling. the best mode of performing the invention known to the inventor.
Furthermore. the files. when a patent's term has expired.) is far more than the initial conception cost. Buckminster Fuller wrote of the patent application process in the United States: At present. once an invention exists. software. they would prefer or tend to keep their inventions secret. (For example. the internal "rule of thumb" at several computer companies in the 1980s was that post-R&D costs were 7-to1). • Criticism One effect of modern patent usage is that a small-time inventor can use the exclusive right status to become a licensor. for exploitation by anyone after the patent expires. R. Unless there is some way to prevent copies from competing at the marginal cost of production. and pharmaceuticals for example)." patents facilitate and encourage disclosure of innovations into the public domain for the common good. or for further improvement by other inventors. the cost of commercialization (testing. This second justification is closely related to the basic ideas underlying traditional property rights. tooling up a factory. Thus the inventor's time and energy can be spent on pure innovation. as third parties would be free to exploit any developments. If inventors did not have the legal protection of patents. in many cases. Awarding patents generally makes the details of new technology publicly available. developing a market. In many industries (especially those with high fixed costs and either low marginal costs or low reverse engineering costs — computer processors.breakthroughs. companies will not make that productization investment. In 1938. This allows the inventor to accumulate capital from licensing the invention and may allow innovation to occur because he or she may choose to not manage a manufacturing buildup for the invention. etc. • In accordance with the original definition of the term "patent. allowing others to concentrate on manufacturability. the public record ensures that the patentee's idea is not lost to humanity. Patents have been criticized for being granted on already-known inventions. are so extraordinarily complex and the items so multitudinous that a veritable army of governmental servants is required to attend them and sort them into some order of distinguishable categories to . Corporations would be much more conservative about the R&D investments they made.
the pharmaceutical industry has contributed US$2 billion for healthcare in developing countries. owns a portfolio of patents. effectively. no one can take advantage of them as to do so would require an agreement between the owners of all of the fragments. In one response to these criticisms. One study concluded that marketing expenditures for new drugs often doubled the amount that was allocated for research and development. Also. A holding company. one review concluded that less than 5 percent of medicines on the World Health Organization's list of essential drugs are under patent. Patents have also been criticized for conferring a negative right upon a patent owner. as those who are most in need of basic essential medicines are unable to afford such high priced pharmaceuticals. permitting them to exclude competitors from using or exploiting the invention. even if the competitor subsequently develops the same invention independently. This may be subsequent to the date of invention. Pharmaceutical patents prevent generic alternatives to enter the market until the patents expire. depending upon the relevant patent law. make patents more liquid. and sues others for infringement of these patents while doing little to develop the technology itself. Based on Heller's theory of the tragedy of the anticommons. Another theoretical problem with patent rights was proposed by law professors Michael Heller and Rebecca Sue Eisenberg.which reference may be made when corresponding with patent applicants for the purposes of examiner citation of "prior art" disclosure. and thus maintains high prices for medication. or to the priority date. Patents may hinder innovation as well in the case of "troll" entities. Critics also question the rationale that exclusive patent rights and the resulting high prices are required for pharmaceutical companies to recoup the large investments needed for research and development. This complexity makes it inevitable that the human-equation involved in government servants relative to carelessness or mechanical limitations should occasion the granting of multitudes of "probably" invalid patent claims. providing HIV/AIDS drugs . Other commentators suggest that patent trolls are not bad for the patent system at all but instead realign market participant incentives. the authors argued that intellectual property rights may become so fragmented that. This can have significant effects in the developing world. pejoratively known as a "patent troll". and clear the patent market.
showing that public campaigns have had a concern for "preventing the over-reach" of IP protection including patent protection. a multinational based in Switzerland. Novartis began enforcing the EMR for Glivec by asking for an injunction against generic manufacturers of the drug in the Madras High Court. towards referring to them in terms of property and rights. a change that encouraged a change of view of the relation of sovereign governments towards them. In January 2004.G. Case Study In November 2003. and has used differential pricing and parallel imports to provide medication to the poor.. . selling. The injunction was later made absolute by a single Judge of the High Court. restraining companies such as Cipla. Other groups are investigating how social inclusion and equitable distribution of research and development findings can be obtained within the existing intellectual property framework. The Controller General of Patents & Trademarks of India granted exclusive marketing right (EMR) of Glivec. Ranbaxy and Sun from manufacturing. 2005.at lower cost or even free of charge in certain countries. and "to retain a public balance in property rights" of this kind. although these efforts have received less exposure. the blood cancer drug to Novartis A. EMR was granted for a period of 5 years in expectation of the product patent regime that was due to be enacted in India by January 1. away from something that the government "may grant" towards a "duty to uphold them". The same source also noted the shift that had taken place away from the historical classification of such rights as "grants of privilege". Concerns of a similar order have also been documented elsewhere. the court granted Novartis an injunction. distributing or exporting the drug. Brazil filed a proposal in 2010 with the WIPO Standing Committee on the Law of Patents about the imbalance of rights between IP title holders and the society as a whole with emphasis on the imbalance of benefits from strong IP rights between the few developed countries and the majority of member states. The EMR . gave Novartis the right to be the only company that can produce and market the drug in India. Such imbalance is also recognized between freedom rights and exclusion rights by the computing profession. which is the first such granted in the country.
the price of the drug jumped from approximately Rs. 2003. 2005 The Assistant Controller held imatinib mesylate is already known from prior publications because the claims 6 to 23 of the US Patent claim a pharmaceutically acceptable salt of the base compound and the patent term extension certificate. Further the US Patent discloses methanesulphonic acid as one of the salt forming groups and the patent specification clearly states that the required acid addition salts are obtained in a customary manner.3(d) of the Patents Act. Cipla Limited along with other generic producers filed their representation under the Patents Act. 000 for a month's requirement to around Rs. Whether the product applied for patents qualified to be an invention as the product was anticipated by prior publication and obviousness Whether the Patent Specification brought out any improvement in the efficacy of the beta crystals over the known substance as required by Sec. By way of opposition.10. The EMR has been fiercely challenged in courts by generic producers of the drug on the grounds that the compound being a derivative of a molecule known prior to 1995 did not satisfy the novelty criterion in the Patents Act. The Amendment Act 2005 granting product patent. Novartis in 1997 applied for grant of patent for the drug glivec in the patent office in Chennai. Novartis said that the EMR was conferred for a period of five years. and Canada in respect of 'pyramadine derivatives and processes for preparation thereof'.S. They contended that Novartis had obtained a patent in the U. Also that imatinib . or until an order was passed on the patent claim in India. 55 as amended by Patents (Amendment) Rules. 1970 as amended by Patents (Amendment) Act.Once the generic manufacturers stopped producing Glivec.1. Indian drug companies went in appeal. 2005. which was heard by a Division Bench of the Madras High Court. The following two issues will be argued. 1970 sec.000. 20. the patent act was amended. whichever was earlier. provides that EMRs would either be replaced by patents (if granted) or cancelled (if patents were rejected). 25(1) as amended by Patents (Amendment) Act. specifically mentions imatinib mesylate as the product. In 2005. 2005 and the Patents Rules. They argued that no patent was filed in India for imatinib mesylate. r.
Controller of Patents & Designs. the learned judge in the present case refused to proceed with the application for Patent. Asst. This decision has stymied Novartis move to challenge the rejection of patent application by the patent office. On Aug 1 2007 Novartis filed an appeal in the Madras HC challenging IPAB s decision. The court held that s3 (d) of the Patents Act as amended in 2005 along with its explanation is valid. hence not an invention under the Patents Act. Aggrieved by the decision of the Indian Patent Office in Chennai. Mr. The court transferred the case to IPAB after the government announced the setting up of IPAB and declared the transfer of all pending IP related appeals to it The IPAB has appointed former Patent Controller General S Chandresekaran to hear the appeal. which is thermodynamically most stable product and thus the invention is obvious and anticipated by prior publication. Novartis has filed a Writ Petition before the Chennai High Court in Jan 2006 challenging the constitutional validity of Section 3 (d) of The Patents Act and also for quashing of the order of the Patent Office for its refusal to grant product patent. The appeal against the rejection of patent has to be decided by the IPAB. It asked the court to declare s3(d) as being non compliant with TRIPS and arbitrary and in violation of Ar14 of the constitution. Novartis filed a petition in the IPAB to appoint new member in place of S Chandresekaran on the ground that he was responsible for the patent application rejection.V. 3(d) of the Patents Act. On Aug 7 2007 the Madras HC dismissed the petition filed by the Swiss pharma. The Controller agreed with the contention of the opponent that a difference of 30% on comparing the relative bioavailability of the freebase with that of the beta crystal form of imatinib mesylate which could be due to difference in their solubility in water.mesylate normally exist in the beta crystals form. The appeal is pending for hearing in the HC. The . The decision of the Madras HC is a landmark decision after the amendment act of 2005.Rengaswamy. IPAN dismissed the petition. Also the appeal against decision of patent office rejecting the patent for Glivec is pending. did not bring out any improvement in the efficacy of the beta crystals over the known substance and thus could not be patnetable under Sec.
htm . Amity Law school. Author: Vidya Sunderam .5th Year. thus drugs being available at economic rates throughout the county.decision makes the appeal for rejection of patent weak.com/articles/no.legalserviceindia. New Delhi http://www.