FEATURES

OF
PATENT LAW
ASST. PROF. EISHA VASHISHTHA
 INTRODUCTION

➢ The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972,
replacing the Indian Patents and Designs Act 1911.

➢ The Patents Act was largely based on the recommendations of the Ayyangar Committee Report
headed by Justice N. Rajagopala Ayyangar.

➢ One of the recommendations was the allowance of only process patents with regard to inventions
relating to drugs, medicines, food and chemicals.

➢ India also became signatory of the Paris Convention and the Patent Cooperation Treaty on 7th
December 1998 and thereafter signed the Budapest Treaty on 17th December 2001.
 UNDER PATENT LAW

Section 2 (1)(m) define Patent:

“Patent" means a patent granted under this Act and includes for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57, 58, 63, 65,
66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and Chapters XVI, XVII and XVIII, a patent granted under the Indian Patents and
Designs Act, 1911.

Section 2(1)(j) defines the "invention"

“Invention” is a new product or as process involving an inventive step and capable of industrial application. Invention means any new
and useful-

➢ art, process, method or manner of manufacture

➢ machine, apparatus or other article

➢ substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention
 HISTORY

➢ Being a signatory to TRIPS, India was under a contractual obligation to amend its Patents Act to comply
with its provisions. India had to meet the first set of requirements on 1st January 1995 to give a pipeline
protection till the country starts granting product patent.
➢ On 26th March, 1999, Patents (Amendment) Act, 1999 came into force retrospective effect from
1st January, 1995. The main amendments are as follows:

1. Section 5(2) was introduced which provides for filing of applications for patent in the field of drugs, medicines
and Agro-chemicals. These applications were kept pending in the mailbox or black box. This mailbox was to
be opened on 1st January 2005.
2. Provision of Exclusive Marketing Rights (EMR) was brought in by way of Chapter IV A. Thus, pipeline
protection was provided for pharmaceutical and Agro-chemical manufacturers whose applications for product
were lying in black box.
3. Section 39 was omitted from the Act, thereby enabling the Indian residents to file the applications for in an
outside India simultaneously.
4. Chapter II (A) was inserted in the Indian Patent Rules dealing with International Applications under PCT.
 HISTORY
CONTD.
The second phase of amendment was brought in by the Patents (Amendment) Act, 2002 which came into force on 20th May
2003. The main features of the amendments included:
1. Term of patent was extended from 14 to 20 years, wherein the date of patent was the date of filing of complete
specification. Also the difference in term of a drug/food patent and other patent was removed.
2. The definition of "invention" was made in conformity with the provisions of TRIPS Agreement by introducing the
concept of inventive step, thereby enlarging the scope of invention.
3. Deferred examination system was introduced.
4. Introduction of the provision of publication of application after 18 months from the date of filing thereby bringing India
at par with the rest of the world.
5. Microorganisms became patentable, whereas inventions relating to traditional knowledge were included in the list of
"what are not inventions".
6. The concept of unity of invention in accordance with EPC and PCT.
7. Section 39 was reintroduced thereby prohibiting the Indian residents to apply abroad without prior permission or first
filing in India.
8. Provisions of Appellate Board were brought in by inserting section 116. All appeals to the decision of the Controller
would be appealable before the Appellate Board. The Head Quarter of the Appellate Board is to be in Chennai.
9. Section 117 provided for provision for the benefit of agrochemical and pharmaceutical industry.
 HISTORY
CONTD.

➢ The third and final amendment to the Patents Act, 1970 came by way of Patents (Amendment)
Ordinance, 2004, which was later replaced by The Patent (Amendment) Act, 2005, and Patents
(Amendment) Rules, 2006 with retrospective effect from 1st January, 2005.
➢ With the third amendment India met with the international obligations under the TRIPS.
Significant achievements of this amendment were:

1. Deletion of section 5, opening of mailbox and grant of product patents. Thus this amendment led to
the dawn of the "product patent regime" in India.
2. Abolition of Exclusive Marketing Rights (EMR).
 IMPORTANT TERMS

NEW INVENTION

It 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.

INVENTIVE STEP

"Inventive Step" is defined under Section 2 (1) (ja) of the "Act". It 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."
 IMPORTANT TERMS
CONTD.

➢ 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

a) can be made

b) can be used in at least one field of activity

c) can be reproduced with the same characteristics as many as necessary

 TYPES OF PATENTS

PROVISIONAL PATENTS (PP)

➢ A provisional patent application (PPA) allows filing without a formal patent claim. It establishes a filing
date for the applicant. So, if any one has an idea, and if he does not have the time and resources needed
for filing a patent, then he can go for a provisional patent. This will establish the date of application.
Though the actual patent should not differ significantly from the provisional patent description.
UTILITY PATENTS
➢ Utility patents are the most common types of patents. They are usually valid for twenty years.
PLANT PATENTS
➢ Plant patents can be taken for the plant varieties, which have been asexually reproduced. These patents
may include mutants, hybrids, seedlings, etc. They are also valid for 20 years.
DESIGN PATENTS
➢ Design patents refer to new original ornamental design for an article to be manufactured.
 PATENTABLE INVENTION

➢ A new product or process, involving an inventive step and capable of being made or used in an
industry is called as patentable invention.

➢ It means the invention to be patentable should be technical in nature and should meet the following
criteria.

1. Novelty: The matter disclosed in the specification is not published in India or elsewhere before the
date of filing of the patent application in India.

2. Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior
publication/knowledge/ document.

3. Industrially applicable: Invention should possess utility, so that it can be made or used in an
industry.
 INVENTIONS NOT PATENTABLE

➢ An invention which is frivolous or which claims anything obviously contrary to well established
natural laws.

➢ An invention the primary or intended use or commercial exploitation of which could be contrary
public order or morality or which causes serious prejudice to human, animal or plant life or
health

➢ 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

➢ The mere discovery of a new form of a substance which does not result in the enhancement of a
known efficacy of that substance or the mere discovery of a new property or new use of a known
process, machine or apparatus unless such known process results in a new product or employs at
least one new reactant.
 INVENTIONS NOT PATENTABLE
contd.

➢ 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.
➢ Mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way.
➢ A method of agriculture or horticulture.
➢ Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other
treatment of human beings or any process for a similar treatment of animals to render them free
of disease or to increase their economic value or that of their products.
➢ An invention which in effect, is traditional knowledge or which is an aggregation or duplication of
known properties or traditionally known component or components.
 INVENTIONS NOT PATENTABLE
contd.

➢ 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.
➢ A mathematical or business method or a computer program per se or algorithms.
➢ Literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including
cinematographic works and television productions.
➢ A mere scheme or rule or method of performing mental act or method of playing game.
➢ A presentation of information.
➢ Topography of integrated circuits.
 SALIENT FEATURES OF THE PATENTS ACT, 1970

➢ Elaborate definition of invention.

➢ No product patents for substances intended for use as food, drugs and medicines including the
product of chemical processes.
➢ Codifying certain inventions as non-patentable.
➢ Furnishing of information made mandatory for foreign application.
➢ Absolute novelty criteria adopted in case of publication.
➢ Grounds for opposition to the grant of a patent expanded.
➢ Certain categories exempted of prior publication, prior communication and prior use from
anticipation.
 SALIENT FEATURES OF THE PATENTS ACT, 1970
CONTD.
➢ Provisions for secrecy of inventions relevant for defense purposes.
➢ Provisions for use of inventions for the purpose of Government or for research or instruction to
pupils.
➢ Reduction in the term of patents relating to process in respect of substances capable of being used as
food or as medicine or drugs.
➢ Grounds for revocation of a patent enlarged.
➢ Provision for non-working as ground for compulsory licenses, licenses of right, and revocation of
patents.
➢ Additional powers to Central Government to use an invention for purposes of government including
Government undertakings.
➢ Preventing the abuse of patent rights by making restrictive conditions in license agreements/contract as
void.
➢ Provisions for appeal to High Court on certain decisions of the Controller.
➢ Provisions for opening of branches of the Patent Office.
 CURRENT STATUS OF PATENT LAW IN INDIA

➢ The present Indian position in respect of patent law is governed by the provisions of the Patents
Act, 1970 as amended by the Patents (Amendment) Act, 2005 (hereinafter referred to as the Act)
and Patents Acts Rules, 2006 (hereinafter referred to as the Rules)
➢ The Head Patent Office is located at Kolkata and its branch offices are located at Delhi, Mumbai
and Chennai. Patent system in India is administered by the Controller General of Patents,
Designs, Trademarks and Geographical Indications.
➢ Each office has its own territorial jurisdiction for receiving patent applications and is empowered
to deal with all sections of Patent Act.
➢ The jurisdiction for filing the patent application depends upon:
1. Indian applicant(s): determined according to place of residence, place of business of the
applicant or where the invention actually originated.
2. Foreign applicant(s): determined by the address for service in India.
THE END