INDIAN INSTITUTE OF MANAGEMENT

BODH GAYA

Indian Legal System

Assignment
On
Patents: First to file or first to invent- Analysis in India, the
US, and the EU

Submitted to

Dr. Soumya Prakash Patra

By
Dhritiraj Misra
MBA/1119/07

On
22/02/2022

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 Content
1. Introduction………………………………………………………………3
2. Cases……………………………………………………………………..6
Novartis AG v. Union of India…………………………………………..6
Bajaj Auto Ltd. v. T.V.S. Motor Company Ltd. Case…………………...7
3. US……………………………………………………………………….10
4. EU……………………………………………………………………….11
5. Conclusion……………………………………………………..………..11

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Introduction
A patent is a legal right that the government gives to the person who came up
with the idea for a new product in exchange for the person giving the idea away
so that no one else can make, sell, or import the product. A patent lasts for 20
years.
For a patent to be granted, it must have
1. Novelty- should not be disclosed in any prior art.
2. Lack of obviousness- must have a technical advancement or economic
significance or both.
3. Industrial Applications- subject matter should be capable of being
marketed for commercial purposes.
Patent is only effective in a territory. Hence patents in one country are not
applicable in other countries. There is no concept of a global patent. Countries
are generally divided on the basis of two concepts- first-to-file or first-to-invent.
Here, I try to find out if India uses the FTF system or the FTI system. Things
aren't as simple as they seem.
A section called "Section 6" is in the Patent Act 1970. It says that:
6. People who can apply for patents
(1) Subject to the rules in Section 134, anyone can apply for a patent for an
invention. That is, anyone can apply for a patent for an invention.
Or (a) by any person who claims to be its true and first inventor
It can also be made by someone else, but only if they are the owner of the right
to make such an application.
(c) By the legal representative of any deceased person who was able to make such
an application before he or she died.
(2) Any of the people named in sub-section (1) can make an application under
that section either alone or with the help of another person.
It says that someone must be the "true and first inventor." Section 6(1)(a) says
that someone must be the "true and first inventor." When someone wants a patent,
they need to show that they were actually behind the idea. It's also important that
he or she be the first person to come up with an idea for the invention. This seems
to show that India has an FTI system.

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Scholars and professionals in the field, on the other hand, think that India is a
country that uses the FTF system. How did this happen? No, this doesn't mean
that the claims of the first person to file are unassailable just because they were
filed first.
Some people think that the Indian Patent Act gives them a way to prove "true
inventorship." If someone thinks that the person who wants to get a patent, or the
person who owns the patent, got the invention or part of it from him or from
someone else under or through whom he claims, they can say that they don't want
the patent. This is what Section 25(1) and Section 25(2) of the Act say. It can also
be revoked because it was given to someone who wasn't allowed to apply for one
under this law. Section 64(1)(b) says that this can happen. People who read this
part of the law with Section 6 of the Act may be able to get their patents revoked
in favour of the "true and first inventor."
However, if we look at the history of this provision, we come to a very different
answer. The Statute of Monopolies, 1623, was the first law in the United
Kingdom that talked about patents. It is used in Section 6 of this Act. "True and
first inventor" is a term that was used in the Patents Act of 1883, which said that
if someone else gets a patent under section 6 of the Statute of Monopolies, that
patent is void. Despite this, the UK used an FTF system.
This is because the term "true and first inventor" is meaningless if no one else
knows about the invention. If no one else knows about the invention, it is as if the
invention never happened in the first place. So, just having an idea isn't worth
anything. This "first to disclose" rule became the "first to file" rule of the present
day. in his Treatise on the Law and Practice of Letters Patent, Frost said that:
If someone makes an invention and is the first to tell others about it, he or she
will be the true and first inventor in the legal sense of the term, even if it can be
shown that the invention was already made by someone else who didn't tell
anyone.
It says that the person who brings his invention to the Crown first, and then makes
it public, has the right to use it.
Thus, the "true and first inventor" is not the person who came up with the idea
first, but the person who came up with the idea first and filed it with the
government. This means that in legal terms, the first person to file is the person
who came up with the idea. It is clear that India has an FTF system when you
read the Indian Act in light of the Statute of Monopolies and English law at the
time.

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We can still make sense of the Act's provisions in their normal sense and the
history of how it was made. Section 25 of the Act says that only when the work
is stolen from the person who is trying to get a patent is it safe. In this way, there
is a protection for the "true and first inventor." If two people are working on the
same thing at the same time, the person who files the patent will be called the
"true and first inventor," even though he came up with the idea first. This is
because the other person kept the idea to himself. If you want to know more about
letters of patent, Terrell has a book called "The Law and Practice of Letters Patent
for Inventions" that we can read.

Pictured are the first Indian patent and its inventor, George Alfred DePenning, a
civil engineer. The invention is “An Efficient Punkah Pulling Machine”.

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CASES
Novartis AG v. Union of India.
Let’s see how first to file and first-to-invent dilemma is applicable in the Novartis
AG v. Union of India case. The background of the case: -
Imatinib Mesylate
Imatinib mesylate is a well-known example of targeted medicine that works by
inhibiting tyrosine kinase activity. The fact that it has an easy form of
administration and is the standard of care in CML and GIST is significant since
it has significantly altered the perception of these diseases. Imatinib plays a
significant part in the treatment of a variety of different malignancies as well.
Case: -
The Indian Patent Office denied Novartis AG's application for a patent for the
imatinib mesylate medication sold under the trade name Glivec, which was
submitted on April 1, 2013 to the Indian Patent Office. Earlier this year, the
United States Patent and Trademark Office granted Novartis a patent for the drug
"imatinib." This patent also covered pharmaceutically approved salt versions of
"imatinib." In addition, Novartis filed a product patent application in India in
1998 for the beta crystalline form of imatinib mesylate, which was approved by
the US Food and Drug Administration in 2001. When the Indian Patent Office
refused to grant Novartis' application in 2006, it did so in part because the
company failed to demonstrate "significantly enhanced efficacy" of the beta
crystalline form over the drug's original salt, imatinib mesylate, as required by
Section 3(d) of the Indian Patents Act.
In 2005, Novartis conducted experiments that revealed, among other things, a 30
percent increase in bioavailability of beta crystalline imatinib mesylate as
compared to the original chemical imatinib
According to the Court, imatinib mesylate lacked novelty because it was already
included in the claims to imatinib, the original substance in the case. On the basis
of a number of scientific studies, the Court reached its conclusion, which
describes not only the free base, imatinib, but also its salt form, imatinib mesylate,
and its anti-tumour effects. As a result, Novartis contended in patent infringement
proceedings in Europe that the imatinib patent contained claims to the salt
mesylate, which was ultimately rejected. An existing patent holder cannot
simultaneously assert an expansive scope of protection for the patent in the
context of infringement litigation while simultaneously asserting a narrow scope
of protection for a previously-issued salt derivative patent, according to the
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Supreme Court of the United States of America. Because of this, the breadth of
the original patent claims establishes the teachings relevant to the novelty test.

"Efficacy" in Section 3(d) was construed by the Court to be a reference to the

efficacy of therapeutic interventions. According to the Court, Novartis should
have demonstrated increased therapeutic efficacy of the beta crystalline form over
the immediately preceding substance, i.e. imatinib mesylate, in this context. As a
result, the Court determined that the specific physio-chemical properties of the
beta crystalline form, such as improved flow properties and thermodynamic
stability, as well as lower hygroscopicity, were meaningless for the efficacy
examination because these properties "have nothing to do with therapeutic
efficacy."

In this situation, the concepts of first-to-invent and first-to-patent are also

applicable. In this case, Novartis is not receiving the product due to a lack of
originality. The patent for imatinib had already been obtained in 1993, but the
year of acquisition was not disclosed. This was due to the fact that in 1993 (before
to India's entry into the WTO), it did not authorise patents on products. The
imatinib mesylate salt (Glivec) was not mentioned in the 1993 patent, but it was
mentioned in the 1998 patent. Initially launched in 2005, the examination of
Novartis' patent application came under fire from generic businesses that were
already selling Glivec in India as well as consumer advocacy organisations.
Patent office officials as well as an appeals board ruled in favour of the patent
office.
Bajaj Auto Ltd. v. T.V.S. Motor Company Ltd. Case
DTSI: -
Digital Twin-Spark Ignition is abbreviated as DTSI. The DTSI engine utilises
two spark plugs to alternately ignite the air-fuel mixture, increasing the flame
diameter and burning the fuel instantly. Incomplete combustion occurs as a result
of this process of firing the spark and the swirling of the air-fuel combination.
This process is electronically controlled by the Digital Twin Spark Ignition
system.
Due to the fact that the two spark plugs are located on opposite sides of the
combustion chamber, combustion is efficient and rapid. Due to the fact that it is
an electrical system with a static spark advance and no moving parts, no wear and

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tear occurs. An integrated digital electronic box maps the system and also
regulates valve timing and fuel injection.
It has two plugs per cylinder and is configured with combustion chambers and
piston heads that generate a broad and rapid flame front to ignite the air-fuel
mixture. This technology permits a more conservative ignition advance and
leaner mixtures, resulting in a lightweight yet powerful engine.
Case: -
Bajaj Auto Limited holds the patent on DTSI technology. It has branded it as
“DTS-I technology”. The patent was on priority date of 16 th July 2002.
Bajaj stated that their invention met the following criteria for patentability:
innovation, non-obviousness, and industrial use, and hence qualified for patent
protection:
1. Despite the fact that the automobile industry was aware of the use of two spark
plugs in big diameter engines, as well as in high performance or racing bikes, the
applicant's innovation was not known in the industry at the time of filing the
application.
2. Prior to the invention of DTSi technology, the vehicle industry had never
recognised the necessity or benefit of having more than one spark plug. DTSi
technology, on the other hand, was based on the use of dual plugs in a small bore
engine and shown favourable benefits in terms of enhanced fuel efficiency and
emission characteristics.
During the month of December 2007, TVS Motor Company Limited announced
the introduction of 125-cc motorbikes under the trade name 'FLAME.' The usage
of a low burn internal combustion engine with a twin spark plug design was the
source of the disagreement between the two parties. According to the applicant
(Bajaj), the Respondent (TVS)'s of such an engine constitutes a violation of the
patent owned by Bajaj.

As a result, Bajaj filed the lawsuit in order to prevent the alleged infringement
from occurring prior to the launch of TVS's product in the market.

An action was filed against the applicant before the Madras High Court, in which
TVS claimed that the comment made by the applicant constituted an unfounded
threat. A defamation suit against the applicant was also filed at Bombay High
Court by the applicants' lawyers. Approximately one week before the
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introduction of FLAME, the respondent filed an application with the Indian
Patents Appellate Board seeking cancellation of the applicant's patent for DTSi.
The application was denied. During the time that these lawsuits were pending,
the respondents launched FLAME in the month of December 2007.

During the course of the proceedings, the following aspects of the case were taken
into consideration in order to reach a decision: -

1. The Plaintiff must establish a prima facie showing that the patent is valid
and that it has been infringed upon.
2. The plaintiff has the advantage in terms of the balance of convenience.
In the event that an order of injunction is not issued in the plaintiff's favour, he
may suffer irreparable harm.
The verdict was in Bajaj's favour, according to the court.

As the court pointed out, the only element that distinguished the products of the
two parties was the employment of three different valves in their designs. In all
other aspects, the respondent's product appeared to be very similar to the
applicant's patented product, according to the evidence. For the purpose of
supporting its position, the applicant asserted that the third valve in question is
merely cosmetic in nature and has no material impact on the applicant's
innovation. The court agreed. The grant of the injunction was made possible by
the formation of a prima facie case in favour of the application, the balance of
convenience, and the inadequacy of damages in the applicant's favour.
Bajaj was able to obtain the injunction because it was the first to file the patent
for DTSI, which demonstrates the importance of being the first to file. However,
the mere issuance of a patent does not imply that the patent will be valid.
Although the grant and sealing of a patent, as well as a decision made by the
Controller in the case of opposition, do not ensure the validity of a patent, the
validity of a patent can be challenged before the High Court on a variety of
grounds in revocation or infringement proceedings.

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US
US is one of the recent (2013) countries to opt for the First-to-file in recognizing
patents. Before that, it was also under the first-to-invent camp. But, in 2013, under
the America Invents Act, 2013 it shifted to its current position.
"First to invent" has been changed to "first inventor to file." This means that for
patent applications submitted after March 16, 2013, the United States' patent
rights have been changed from "first to invent" to "first inventor to file." People
who want to make sure that a patent is valid have to look at what's called "prior
art," which is what other people have done in the past to see if it's true. As long
as the inventor's "publication-condition grace period" is up, someone else may be
able to get their own patent if they file it before the inventor's grace period ends.
It also says that certain actions and prior art that were known to the public when
an application was filed are considered prior art under the Act, and the
"publication-conditioned grace period" for the inventor could get a little longer
because of this. People still say this, even though the inventor also files for a
patent. According to the law, prior art now includes both offers for sale from other
countries and information that is available to the public. Before, it only included
information that had been published in the past. In the case of applicants who
don't make their ideas public before they apply, there isn't a grace period for them.
"Interference proceedings" will no longer be held by the U.S. Patent and
Trademark Office as a result of the Act. Priority is based on the date an
application is filed, not when an inventor comes up with an idea. They can use an
administrative process called "derivation proceedings" in the event that someone
files a patent application. This process shows that they came up with the idea first
and that the application was not based on someone else's idea.

They are called "First-Inventor-to-File (FITF)" inventors in the new standards

that the AIA has agreed to. If a person is the first person to file a patent, they get
it. If a person is the first person who comes up with a new idea, they get it. A type
of patent law called "first-to-file" is used a lot in the US (FTF). "First-to-Invent":
This new law is called that because it was the first to be passed, which makes it
so. If two separate inventors both publish or file patent applications, different
things could happen under each of these three different regimes.

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EU
Most EU countries follow the first-to-file system. Yet, formerly Germany and
UK (which was then in EU) used to follow first-to-disclose rule. Under this rule,
the inventor is provided with a grace period. Grace period, as the name implies,
allows the inventor to file for patent at a later period, after they have disclosed.
US, on 16 March, 2013 took on the grace period aspect as well.

Conclusion
As it is obvious from the above discussion, the world is shifting towards first-to-
file for patent law. First-to-file allows for simpler and less ambiguous discussion
when it comes to deciding the inventor. It is more conclusive and direct. First-to-
invent has many intricacies and also it is indecisive when it comes to inventors
working on separate projects, but making the same inventions, generally.

References
1. https://www.troutman.com/insights/u-s-becomes-first-to-file-country-for-
patents-on-march-16-2013-consider-strategic-action-now.html
2. https://www.researchgate.net/
3. https://www.wikipedia.org/

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