A patent is in the form of industrial property, or an intellectual property.

A patent is a monopoly right

granted to a person who has invented a new and useful article or an improvement of an existing article
or a new process of making an article. It consists of an exclusive right to manufacture the new article
invented or manufacture an article according to the inventive process for a limited period. Unlike
copyright, which arises automatically on creation of a work, patents are only granted after applicant
satisfies the requirements of registration. The registration process imposes a number of limits and
safeguards on the types of inventions that are patented, the scope of monopoly granted, and the nature
of information that is disclosed in the patent. During the term of the patent the owner of the patent i.e.
the patentee can prevent any other person from using the patented invention. . The rights granted to a
patent owner cover most commercial uses of the patented invention. The owner of a patent has the
power to sell the whole or the part of its property and can also grant licenses to others to use and
exploit it. A patent granted in one country cannot be enforced in another country unless the invention
is patented in that country also. .

EVOLUTION OF PATENT SYSTEM IN INDIA:

The concept of conferring a market monopoly as incentive to innovate germinates from antiquity. A
patent for invention has always found its roots in statutes of Indian legislature.

 The first legislation in India relating to patents was the Act VI of 1856. The objective of this
legislation was to encourage inventions of new and useful manufactures and to induce inventors to
disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had
been enacted without the approval of the British Crown. Fresh legislation for granting ‘exclusive
privileges’ was introduced in 1 859 as Act XV of 1859.. This Act excluded importers from the
definition of inventor. 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.
 In 1872, the Act of 1859 was consolidated to provide protection relating to designs. It was
renamed as “The Patterns and Designs Protection Act” under Act XIII of 1872. The Act of 1872 was
further amended in 1883 (XVI of 1883) to introduce a provision to protect novelty of the invention,
which prior to making application for their protection were disclosed in the Exhibition of India. A
grace period of 6 months was provided for filing such applications after the date of the opening of such
Exhibition.
 This Act remained in force for about 30 years without any change but in the year 1883, 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. In 1888, an Act was introduced to
consolidate and amend the law relating to invention and designs in conformity with the amendments
made in the U.K. law.
 The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the previous Acts. This
Act brought patent administration under the management of Controller of Patents for the first time.
This Act was further amended in 1920 to enter into reciprocal arrangements with UK and other
countries for securing priority. In 1930, further amendments were made by Government, powers of the
Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years.

 After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling
its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in
political and economic conditions in the country. Accordingly, the Government of India constituted a
committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High
Court, in 1949 t o review the patent law in India in order to ensure that the patent system is conducive
to the national interest. The terms of reference included —
o To survey and report on the working of the patent system in India;
o To examine the existing patent legislation in India and to make recommendations for
improving it, particularly with reference to the provisions concerned with the prevention of abuse of
patent rights;
o To consider whether any special restrictions should be imposed on patent regarding
food and medicine;
o To suggest steps for ensuring effective publicity to the patent system and to patent
literature, particularly as regards patents obtained by Indian inventors;
o To consider the necessity and feasibility of setting up a National Patents Trust;
o To consider the desirability or otherwise of regulating the profession of patent agents
o To examine the working of the Patent Office and the services rendered by it to the
public and make suitable recommendations for improvement; and
o To report generally on any improvement that the Committee thinks fit to recommend
for enabling the Indian Patent System to be more conducive to national interest by encouraging
invention and the commercial development and use of inventions.
 The committee submitted its interim report on 4th August, 1949 with recommendations for
prevention of misuse or abuse of patent right in India and suggested amendments to sections 22, 23 &
 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts 1919 and 1949. The
committee also observed that the Patents Act should contain clear indication to ensure that food and
medicine and surgical and curative devices are made available to the public at the cheapest price
commensurate with giving reasonable compensation to the patentee.
 Based on the above recommendation of the Committee, the 1911 Act was amended in
1950(Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation.
Other provisions were related to endorsement of the patent with the words ‘licence of right’ on an
application by the Government so that the Controller could grant licences. In 1952 (Act LXX of 1952)
an amendment was made to provide compulsory licence in relation to patents in respect of food and
medicines, insecticide, germicide or fungicide and a process for producing substance or any invention
relating to surgical or curative devices. The compulsory licence was also available on notification by
the Central Government. Based on the recommendations of the Committee, a bill was introduced in the
Parliament in 1953 (Bill No.59 of 1953). However, the Government did not press for the consideration
of the bill and it was allowed to lapse.
 In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to
examine the question of revision of the Patent Law and advise government accordingly. The report of
the Committee, which comprised of two parts, was submitted in September, 1959. The first part dealt
with general aspects of the Patent Law and the second part gave detailed note on the several clauses of
the lapsed bills 1953. The first part also dealt with evils of the patent system and solution with
recommendations in regards to the law. The committee recommended retention of the Patent System,
despite its shortcomings. This report recommended major changes in the law which formed the basis
of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st
September, 1965, which however lapsed. In 1967, again an amended bill was introduced which was
referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the
Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law
was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions
of the 1970 Act were brought into force on 20 th April 1972 with publication of the Patent Rules,
1972.
 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, which ceased to
operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was
subsequently replaced by t he Patents (Amendment) Act, 1999 that was brought into force
retrospectively from 1 st January, 1995. The amended Act provided for filing of applications for
product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were
 not allowed. However, such applications were to be examined only after 31-12-2004. Meanwhile, the
applicants could be allowed Exclusive Marketing Rights (EMR) to sell or distribute these products in
India, subject to fulfilment of certain conditions.
 The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002
(Act 38 0f 2002). This Act came into force on 20 th May 2003 with the introduction of the new Patent
Rules, 2003 by replacing the earlier Patents Rules, 1972
 The third amendment to the Patents Act 1970 was introduced through the Patents
(Amendment) Ordinance, 2004 w.e.f. 1 st January, 2005. This Ordinance was later replaced by the
Patents (Amendment) Act 2005 (Act 15 Of 2005 ) on 4 th April, 2005 which was brought into force
from 1-1-2005.

AMENDMENT ACT OF 2005:

The Few Important Amendment of The Act Includes:

Term of every patent which is in force including a patent restorable, U/S.60 as on 20.5.2003 has now
become 20 years from date of filing. Time for restoration of a ceased patent, U/S 60 has now increased
from 12 months to 18 months as such an application for restoration of a patent ceased on or after 20th
May,2003 can be filed within 18 months from the date of ceasession. A new definition of "Invention"
means a new product or process involving inventive step and capable of industrial application; has
now come in force. A method or process of testing during the process of manufacture will now be
patentable. Process defined, U/S 3(i) in case of plants, are now patentable while a process for
diagnostic and therapeutic has now been considered as non patentable.

1) Emphasis on Indigenous manufacturers: Indigenous manufacturers are allowed to manufacture

patented products even after a patent is granted, in respect of mailbox applications, on payment of a
reasonable royalty to the patent holder, if they had been producing and marketing the concerned
product since prior to 1/1/2005. This provides a level playing field for domestic players who have
already made substantial investments and have been manufacturing the products for which applications
for patents have been received in the mailbox. This provision ensures the smooth transition from pre
patent era to post patent era.

(2) Both pre-grant and post-grant opposition avenues: The system provides for both pre-grant and
post-grant opposition avenues, and reduces the timeframe for grant of patents in a cost-effective
manner, while taking care of public interest. In fact, pre-grant opposition to patents has been
strengthened and all the 11 grounds for pre-grant opposition to patents have been specifically listed in
the Act, in the same way as before the Ordinance of December 2004. Ground of opposition U/S 25 as
well as revocation U/S 64 have been enlarged by adding following grounds:
i. Non disclosure or wrongly mentioning the source of geographical origin of biological material used
for invention;

ii. Anticipation having regard to the knowledge oral or otherwise available with in local or indigenous
community in India or elsewhere. This provision is aimed at establishing a mechanism by which
system of patent protection and provides avenues for the patent holders to challenge violation of their
intellectual property rights by unfair means.

(3) Prevent "ever greening" of patents: In order to prevent "ever greening" of patents for
pharmaceutical substances, provisions listing out exceptions to patentability (or what cannot be
patented) have been suitably amended so as to remove all ambiguity as to the scope of patentability.
This is very important in Indian context as it is very rich in traditional knowledge and heritage. The
clear-cut instructions regarding what cannot be patented would help public at large in a long run. The
healing techniques of well established in ethnic system of medicines such as Ayurveda, Siddha and
Unani system and formulations there in couldnt be patented.

(4) Conditions for obtaining compulsory license: Conditions for obtaining compulsory license have
been clarified in order to facilitate export of patented pharmaceutical products by Indian companies to
countries that do not have adequate production capacities such as least developed countries. The
compulsory licensing is an instrument that the TRIPs allows by which governments can allow
domestic manufacturers to manufacture patented products within 3 years of their introduction. The
provision of this would be an opportunity for indigenous manufacturers to export the medicines to
third world countries, which cannot manufacture their own drugs. There are many countries in Africa,
Asia and South America, which are in need of cheap drugs due to poor economic development in this
area

(5) Reasonable period for negotiations between the patent holder and companies seeking
compulsory license: Reasonable period' for negotiations between the patent holder and companies
seeking compulsory license has been fixed at six months. This provision of the Act would ensure
positive dialogues and negations to happen between indigenous manufacturers to arrive at deals
leading to win situations. In due course of time a better understanding of the situations and conditions
in the needy poor nations would resolve the conflicts as the patent holders would also appreciate the
efforts of the indigenous manufacturers efforts to sell drugs at a cheaper price. The patent holder will
not be interested to sell the drugs to the poor nations as he would find practically obstacles and
considerations are not cost effective for him.

(6) Exemption of research and development from the ambit of patents: Exemption of research and
development from the ambit of patents, including experimental and educational purposes. The basic
research and education are the pillars of applied research. The education and research methodologies
are the tolls for developing science and technology. Barring this area from the patent, government
wants to ensure availability of trained manpower for sustained growth.

(7). Product patent : Product patent has been included in all fields of the technology (that is drugs,
food and chemicals)

(8). Appellate board: Appellate boards jurisdiction has been enhanced and it now includes the
jurisdiction to revoke patents also.

(9) Inventive Step: What Are Inventions?

The Act provides for the definition of the invention, which is now compliant with the provisions of
TRIPS. The criteria for patentability of an invention are novelty, inventive step and industrial
applicability.

Section 2(1)(j) of the Patent Act, 2005, defines the "invention" as a new product or as process
involving an inventive step and capable of industrial application.

Under the Act "New invention" is defined under section 2(1)(l) of the Patents Act

"New invention" means any invention or technology which has not been anticipated by publication in
any document or used in the country or elsewhere in the world before the date of filing of patent
application with complete specification, i.e., the subject matter has not fallen in public domain or that
it does not form part of the state of the art.

Thus, according to this definition of new invention, Act talks of absolute novelty, i.e. the invention
should have neither been used anywhere in the world nor published in any part of the world. However,
the later sections of the act for the purpose of anticipation and opposition proceedings deal with the
relative novelty i.e. not used in India and not published in any part of the world. Further, entire Act
refers to the word invention and not new invention. Therefore, for all purposes relative novelty is the
criterion.

Exceptions To The Novelty Rule:

There are a few exceptions where the rule of novelty is not applicable. These cases are as follows:

 Subject matter published without the consent of the inventor.

 The invention was published in consequence of the display in an exhibition notified by the
Government or reading the paper before a Learned Society. Grace period of 12 months is given
in such cases to file the patent application.
 Previous communication to Government of India.
 Public working for reasonable trials.

"Inventive Step" is defined under Section 2 (1) (ja) of the "Act". Prior to the Amendment of 2005,
inventive step meant a feature that makes the invention not obvious to a person skilled in the art. The
new Act of 2005 defined inventive step more precisely.

"Inventive step means a feature of an invention that involves technical advance as compare to the
existing knowledge or having economic significance or both and that makes the invention not obvious
to a person skilled in the art."

Thus, in addition to the non-obviousness criterion two other conditions were added i.e. it should also
involve technical advancement as compared to the existing knowledge or having economic
significance, or both, in addition to being non-obvious.

The terms “technical advance” and “economic significance” have not been defined clearly and are
unambiguous. It cannot be left to presumption “economic significance” is synonymous to the phrase
“capable of industrial application” in section 2 (1)(ac) or in footnote 5 to Article 27. The meaning of
the phrase “technical advance” cannot be presumed either, in absence of a specific definition or
reference.

The Patents Act 1970 had a very limited scope of protection wherein the essential elements of
invention were new, useful and manner of manufacture. Even though manufacture was not defined in
the old Act, the Patent Office established the practice of interpreting manufacture as process resulting
in a tangible product. The landmark decision of Calcutta High Court on the process of production of
Bursitis virus containing vaccine Dimminaco AG v. Controller Of Patents, 2002 changed the practice
and now the definition of invention is interpreted keeping in mind the term ‘industrial application’ as
under section 2(1)(j).

The Act defines ‘capable of industrial application’ in relation to an invention as capable of being made
or used in an industry.
  An invention is capable of industrial application if it satisfies the three conditions cumulatively:
 can be made;
 can be used in at least one field of activity;
 can be reproduced with the same characteristics as many as necessary.

What Are Not Inventions?

Section 3 of the Act, deals with non patentable inventions.

 Inventions which are frivolous or contrary to well established natural laws.

For example: inventions relating to perpetual motion alleged to be giving output without any input is
not patentable as it is contrary to natural law. Merely making in one piece, articles, previously made in
two or more pieces is frivolous. Mere usefulness is not sufficient (Indian Vacuum Brake Co. Ltd Vs.
Laurd.

 Inventions whose primary or intended use or commercial exploitation could be contrary to

public order or morality (such as something against accepted norms of a culture in a society),
or which causes serious prejudice to human, animal or plant life or health or to the
environment.

For example terminator technology which involves inserting a gene sequence in a seed to stop
germination or growing recombinant plants leading to disappearance of butterflies.

 The mere discovery of a scientific principle or the formulation of an abstract theory or

discovery of any living thing or non-living substances occurring in nature. However isolation
of living thing or non-living substances is patentable as it involves human technical
intervention.
 Mere discovery of a new form of a known substance which does not result in the enhancement
of the known efficacy of that substance, or mere discovery of any new property, or new use of
a known substance, or mere use of known process, machine, or apparatus unless such known
process results in a new product or employs at least one new reactant.

Explanation to Section 3 (d): "Salts, esters, ethers, polymorphs, metabolites, pure form, particle size,
isomers, mixtures of isomers, complexes, combinations, and other derivatives of known substance
shall be considered to be the same substance, unless they differ significantly in properties with regard
to efficacy. It may be seen from section 3(d) that new use of a known substance is not permissible. It
means that claims for second medical use are not allowed in India. Further, derivatives of known
substances are considered to be the same substance unless they "differ significantly in properties with
regard to efficacy".

The term "efficacy" under section 3 (d) has been held vague, as it does not indicate the kind of efficacy
required under the provision. It is also ambiguous because it is unclear whether the phrase
"enhancement of known efficacy" is the same as the phrase "technical advance" under section 2 (1),
(ja).

However, the explanation provided to section 3 (d) does not rule out the grant of patent to derivatives,
complexes, combinations, isomers and so on, if enhancement of its efficacy as a consequence of its
properties can be shown.

 Substances obtained by mere admixture such as physical admixture are not patentable under the
Act. However, compositions consisting of combination preparations comprising of two or more
known active ingredients are patentable if "synergism" or super additive effect is shown
clearly, for example pharmaceutical compositions or any other chemical compositions.
 The mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way.
 Methods of agriculture or horticulture.

For example a method of producing a new form of a known plant even if it involved a modification of
the conditions under which natural phenomena would pursue their inevitable course is not patentable.
N.v. Philips Gloeiammpenfabrieken’s Application

 Processes for medical, surgical, curative, prophylactic, diagnostic, therapeutic, or other

treatment of human beings or animals or plants that would render them free of disease or to
increase their economic value. In United Kingdom, a method for treating an old animal with an
enzyme two hours prior to butchering was allowed to be patented as the treatment increased the
economic value of the animal by making the meat soft (Swift Application RPC 37, 1962). Such
a process would not be patentable under the Indian Patent system. The words ‘diagnostic &
therapeutic’ has to be read as diagnosis of diseases in human beings and animals. Accordingly,
method of screening antibodies for a specific activity is permissible.
 Plants and animals in whole or any part thereof other than microorganisms but including seeds,
varieties and species and essentially biological processes for production or propagation of
plants and animals. For example clones and new variety of plants are not patentable. But
process/method of preparing genetically modified organisms is patentable subject matter.
 Computer program per se, a mathematical method or a business method or algorithms.
Literary, dramatic, musical or artistic work or any other aesthetic creations including cinematographic
works and television productions are not patentable as they are covered under the copyrights, design
and entertainment laws.

 Scheme/rule/method of performing a mental act or method of playing a game.

 Presentation of information.

Unfortunately neither the Act nor the Rules defines a mathematical method, or a business method or a
computer program per se or algorithm. Under such circumstances, one has to rely on the practices built
up under Articles 52(1), 52(2) and 52(3) of the EPC, where similar provisions corresponding to the
Indian Act under section 3(k), 3(m), and 3(n) exists.

 A program producing technical effect or program having technical character is permissible in

EPO as it is not program per se. accordingly, software related inventions may be patentable if
accompanied by a novel and non-obvious technical effect which adds to the art of technology.
 Topography of integrated circuits.
 An invention falling within the scope of traditional knowledge such as the use of herbal
medicines.

Inventions relating to atomic energy are not patentable under section 4. Such applications are referred
to the Department of Atomic Energy. The decision of the Department of Atomic Energy is final and no
appeal lies to the decisions of the Department of Atomic Energy.

With the amendments effected patents are now granted for inventions relating to both product and
process. The invention must relate to a machine, article or substance capable of industrial application,
or the process of manufacture of an article. A patent may also be obtained for an improvement of an
article or of a process of manufacture. Further, with regard to medicine or drug patent is now granted
for the product and process of manufacturing the substance.

Bolar Provision:

Section 107 A (a) of the Patents Act provides that any act of making, constructing, using, selling or
importing a patented invention solely for uses reasonably related to the development and submission of
information for regulatory approval will not amount to infringement.

This provision is helpful for persons who wish to exploit the patent after the expiry of the terms of the
Patent as they can obtain the marketing approval before the term of patent expires and can immediately
manufacture after the expiry of the term of Patent.
Cross Border Licensing:

Grant of Compulsory License to manufacture and export patented pharmaceutical products to any
country having insufficient or no manufacturing capacity by an Indian manufacturer is possible either
through the importing country granting compulsory license to the Indian manufacturer or through
allowance of importation of the patented pharmaceutical products from India by notification.

This provision is based on Para 6 of DOHA Declaration on TRIPS Agreement.

Conclusion:

India has always acknowledged the importance of a strong patent system for the development of
industry and commerce, which is evident for the amendments done to bring India at par with the
modern world. With the promulgation of the product patent regime in India, most of the countries are
now looking for business opportunities. There has been a considerable rise in the patent filing.
Innovators and inventors from all fields of technology are keen on protecting their intellectual
property.