FREQUENTLY ASKED QUESTIONS ON PATENTS what is a Patent? atent is an exclusive monopoly granted . et rerention for limited period ee ie by the Government to an inventor Who can obtain a Patent? ‘An inventor or any other person/company assigned by the inventor can obtain the patent over his invention. How a patent is obtained/filed? A patent is obtained by the inventor or his assignee by filing an application with the patent office in the stipulated forms as required by the Patent Act of that country. Why one should go fora Patent? To enjoy the exclusive rights over the invention. If the inventor does not get the patent rights over his invention and introduces his product/ process based on his invention in the market, any body can copy his invention and exploit it commercially. To debar others from using, selling or working out his invention, the inventor must go for getting a patent. Why does the Government encourage filing of Patents? To encourage innovation and investment in the research and development activities so that there is economic, industrial and technological development in the country. How does a patent document help in R&D? nw Saneean ean the vole uted the patent literalv™’ may ty someone else and it is available in the pate ion might have already been found by nt literature. Which invention qualifies for the grant o! i jupatent is granted only on that invention, Upto applicability. An phat extent the inventor has t0 © Vventor has to disclose his inventio Wen i oul invention the inventor, skilled in the att shi fa Patent? which is new, non-obvious and has disclose his invention to et a Patent? to n to gt ten ner thal 2 y person, ins! a mam mal ad ‘be able to work out the n. Hoy W does a patent get expired? Patent can expire in the following W4Y* 101Intellectual Prope y « ed its full term i., the term specified by the Pa 1. Ton i hes Cenerally it is 20 years from the date of filing. ol ¥ 5 fai the renewal fee. A patent once tentee has failed to pay te ; granted * Ire dovernment has to be maintained by paying annual renewal fee. by 3, The validity of the patent has been successfully challenged p, 3. opponent py filing an opposition, either with the patent office or With the courts. tent Act What is the difference between a US Patent and an Indian Patent? AUS patent is granted by the United State Patent Office to an inventor, why ith it, whereas an Indian Patent is granted by the has filed his application wil Ir ; t Indian Patent Office to an inventor, who has filed his application with Indian Patent Office. A patent granted by a patent office is applicable within the geographical boundaries of that country only.” ‘A US Patent is applicable within USA only and has no effect in India, if the same inventor of the US Patent has not filed his application in India for the patent grant. Is there an international/Global Patent? No. There is no international or Global Patent. An inventor has to file an application in each country, where he seeks to protect his invention. There are regional and/or international treaties to facilitate the procedure to seek protection like Patent Co-operation Treaty (PCT) or European Patent Convention (EPC). Who checks the novelty features of the invention? A patent examiner checks the novelty features of the patent application with the state of the art available. Can a scientist get a patent on the invention, which he has already published in the form of a paper in a National/International Journal? No. A patent is not granted to an invention if it is already available with the public in the form of published literature of common knowledge Who is responsible to ensure that the patent has not been infringed? bent * ee soe duty?! esponsibility of the patentee to see that his patent is no! ing infringed upon by someone else. It is the patentee’s duty to file a suit of infringement against the infringer. ° St imiee tee money once a Patcal has been granted to him? entee does not get any kind of money ov . ent However, when a patentee sells his patented invention ton aon of the pas money. The patentee has all the rights to sell his invention exch Far he Pct non-exclusively to any person/party or he may choose Saciusively an royally y toany party or he may choose to sell his invention fot 2 4 g authority will ve a ey The granting authority will not give any money to the patentee, Rather the inventor has to spend lot of money to get the patent rights over h ms is invei and also to spend lot of money to maintain his patent S invention ar (pm! ed Questions on Patents quel . ft atdoes a patent application contain? tent application has the following information: jpliographic: It is in structure form: . 1. Bibliograp" ru at. It cont: date of filing, country of filing, inventor's name nc. i i > c 2. Background of the invention or State of the art: In thi i state of the art available on the date of filin hi the Inventor lists the inventor lists the shortcoming /drawbacks fon d is invention. Here the and defines his problem. in the state of the art 3.-Description of the invention: In this the inventor descri a ; duly supported by a series of workable examples alvin gevention charts, if needed. The invention has to be described in Senplee latte so that any person, who is skilled in the art can work out the invention. : 4.-Claims: In the last, the inventor has to bring out a series of claims establishing his rights over the state of the art. It is this portion, upon which the protection is granted and not on the description of the invention. This has to be carefully drafted. Who should draft the patent application? Though the inventor himself can draft the application, it is desirable that a patent attorney should be hired to do this job. A look on the closely related patent applications already filed/ granted, will render help to a great extent. When one should access the patent literature? Before the start of the research and development project or when stuck nf with a technical problem. Abour 80% of the literature covered in the patent P : i ‘entific and technical journal. Patent document is never published in any scientific literature is the goldmine of information. ; Why one should access the patent en t project, one should scan the velopmen| Before the start of the research and develop’ ete development hase, solution, or once the . du Patent literature to stop re-inventing the whee da technical when stuck up with a technical problem, to narrow i filing the patent application, i i time of filing ¢ aten narro downs b ole piste ian ine /or to dralt the application for getting a p Nn or broaden the c! fat Which are the main sources for anne National Patent offices, Internation’ Melt Que STN, and free or charge based pa title of the invention, mation? ; tion vendors like Dialog, Orbit es on the Internet. _1 Introduction ORIGIN OF THE TERM PATENT a) The term ‘Patent’ has its origin in the term “Letters Patent”. The expression “Letters Patent” meant open letters as distinguished from closed letters. These were instruments under the Great Seal of the ne of England addressed by the Crown to all the subjects atlarge, in which the Crown conferred certain rights and privileges on one or more individuals in the kingdom. In the later part of the nineteenth century new inventions in the field of art, process, method or manner of manufacture, machinery, apparatuses and other substances, produced by manufacturers were on the increase and the inventors became very much interested that the inventions done by them should not be infringed by any one else by copying them or by adopting the methods used by them. To save the interests of inventors, the then British rulers enacted the Indian Patents and Designs Act, 1911 (2 of 1911). STATEMENT OF OBJECTS AND REASONS: THE PATENTS ACT, 1970 The existing Indian Patents and Designs Act was enacted in 1911 and since then there have been substantial changes in the political and economic conditions of the country. The need for a comprehensive law so as to ensure more effectively that patent rights are not worked to the detriment of the consumer or to the prejudice of trade or the industrial development of the country was felt as early as 1948 and in that year the Government appointed the Patents Enquiry Committee to review the working of the patents law in India. The Committee submitted its final report in 1950. The Patents Bill, 1953, based largely on the United Kingdom Patents Act, 1949 and incorporating some of the recommendations of the Committee was introduced in the Lok Sabha on 7th December, 1953. The Bill, however, lapsed on the dissolution of the First Lok Sabha. In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar to examine afresh and review the patents Law in India and advised the Government on the changes necessary. The Judge submitted a comprehensive Report on Patents Law Revision in September, 1959, The Patents Bill, 1965, based mainly on the recommendations contained in his detailed report and incorporating a few more changes in the light of further examination made Particularly with reference to patents for food, drugs and medicines, was 3Intellectual Pry ery 5 65. The Bill was referr, introduced in the Lok Sabha on 21st September, 16. 7 The Jon Comre’ ta 25th November, 1965 to a Joint Committee te ted anumber of amendment after a careful consideration of the matter, a ni amended Bill, wae preees ty ee ae ee Pea Bill, 1965, as reported to the Lok Sabha on Ist November, ee in ihe Lok Sabha on Sth Dest’s y . e was formally m . : tre Joie a. proceeded with for en ee ang eventually lapsed fob, but ce . Tr a a . with the dissolution of the Third Lok Sabha on to amend and consolia ill containing comprehensive p' fon 2 pen od ‘so containing amend mente/ secommendat tons by ! Commattce referred to above was brought before the Parlia , Subseq' o 970 i porte Bill having been passed by both the Houses of Parliament receive e s Avg the assent of the President on 19th September, 1970. It came on the Statute Book as THE PATENTS ACT, 1970 (39 of 1970). ACTS ve iy thang and Amending Act, 1974 (56 of 1974). _ . The Delegated Legislation Provisions (Amendment) Act, 1985 (4 of 1986), The Patents (Amendment) Act, 1999 (17 of 1999). . The Patents (Amendment) Act, 2002 (38 of 2002). - The Patents (Amendment) Act, 2005 (15 of 2005). MEANING OF THE TERM ‘PATENT’ C It refers toa gran ivi ity made by the Government or the Sovereign of the ci 5 ore individuals. The instrument by which such grant is made is known as ‘Patent’. The term Patent’ acquired statutory Meaning in India when the Patents Act 1970 (hereinafter referred to as the Act) was enacted. Patent, under the Act, is granted by the Controller to the inventor for a period of }Sers. It is the exclusive tight to = s invention make use, exercise and vend his inventio ne Patents (Amendm ent) Act, 2005 defines patent under section _2(m)_ a “Patent” ns a patent for any inv Rules, 201 alen . ention granted under this Act. The Pater 03 provides for the application for patentsThe Patenis: (Amendimen Rules, 2006 provides for new Form of Patent. The Act conveys to the inventoy valuable monet ary right which he using it himself or by convey’ tangible something which I Some competition and is the Alter the “*Piry of the period for mventor, the invention can be whom a patent had bee: The 4 ate the he Join; ently, wp os im the © substantive rights and secures to bin by can enforce for his own advantage cing ing the Privileges to others. He receives some : from 1aS present existing value which protects him source of gain and Profit. ie oe . od to th which exclusive right is granted to pone Pul to use by any person other than the 1 granted Person to whom a p atent is Branted is called patentee.srt" PATENT—A FORM OF PROPERTY n invention is the creation of intellect applied to capital and wrt : Joie Sonating aa “useful. Such Eaton becomes the eee property of the inventor on grant of patent. The patentee's exclusive proprietary Pin ove the invention_is_an_intellectual_property right. The owner of the “patent” patentee is entitled to deal with his such property in the same manner as owner of any other movable property deals with his property. This means that the patentee can sell the whole or part of his property (patent). He can also grant licence to other(s) to use the patented property. He can also assign such properly to any other(s). Such sale, licence or assignment of patented property naturally has to be for valuable consideration, acceptable mutually. WHAT IS THE OBJECTIVE BEHIND A PATENT LAW QO The Patent Law recognises the exclusive right of a patentee to gain ct ial advantage out of his invention.{This is to encourage the inventors to invest their creative faculties, knowing that their inventions would be protected by law and no one else would be able to copy their inventions for certain period during which the respective inventor would have exclusive rights, In the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, (1979) 2 SCC 511, it has been held by the Supreme Court that, “the object of patent law is to encourage scientific research, new technology and industrial progress.)Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility! The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which after expiry of the fixed period of the monopoly, passes into the public domain”. LEGISLATIVE PROVISIONS REGULATING PATENTS The Indian Patents Act, 1970 and the Patent Rules, 2003 regulate the grant, the operative period, the revocation and infringement, etc., of the patents. The Patents Act was amended in 2005 and the Patents Rules were amended in 2005 and 2006 for the purpose of contemporary adjustment in Patent Laws. PRINCIPLES UNDERLYING THE PATENT LAW IN eS Principles upon which Indian Patent Law is based are enumerated below: Invention must be new, useful and non-obvious © To be patentable, the invention must be new product or process; useful and “pable of industrial application. Another feature of an invention to be granted Palent is that it should involve technical advance as compared to the existing, knowledge or have economic significance or both. The invention must be non- pen 10 a person possessed of ave wwe skill in the art. What is obvious toa On skilled in the art cannot be patented. For instance, an invention in car i of Pentry may be non-obvious to a laymay but it may be obvious to a carpenter a Verage skill. Such obvious inventionAould not be patentable.Intellectual Proper 6 jess invention is dependent upon the stay ‘we element of ove foveess in an inven TS already known in of pilorart, ., the exisling knowledge and-similar nO or publication elty if there has the particular field. There would be en For instance, the recent Brant of rior us or an identica’ 3 hi round. a on SA. to ‘turmeric products was attacked Challenged the em Tadian Council of Scientific and Industrial Research (C i” that the patent coulg st vat nt on turmeric by the USS. Patent Office on the Pi n. Also that what wag oF pate! ty in the invention. since there was no novelty . arati relent Fa already published in Indian texts and use of UR ave caccesery pestern made in our country since times ay revoked This instane ‘peti American com : s in getting the grant of patent to an invention to qualify fg highlights the importance of the element of novelty for an inve qualify for grant of patent. , wone.I that th ii me. It: means that the For the purpose of patent, the invention must be anew on ; - imvention_must_involve any innovation or technology which has oe anticipated by publication in any document or used in the country « , I r in_the world before the date of filing of patent application wit complet specification. That is to say, the_subject~ st not have fallen in. public domain or that it does not form part of the state of the art. Usefulness ~ The invention besides being new and non-obvious, must also be useful. An invention which is new and also non-obvious but which cannot be put to-any beneficial use of the mankind, cannot be patented. However, not so useful inventions are protected in some countries as “utility models’: But that concept is not statutorily recognized in India. Non-obviousness The invention must be non-obvious to a person skilled in the art to which the invention relates. To depict diagrametically: 1 A PATENTABLE INVENTION product or process be capable of industrial application Must be a new Must be non- [Mus be useful __ obvious _ . Exceptions Some inventions, in g ite ei 2 patented under the Act. ¢ ich nacre ble (a) Those inventions wh morality or public j animal or pl Non-obvious and useful cannot b ! able inventions would be: feta injurious to public health or violate publi elien or which causes serious prejudice to huma! r health, or to the environment,tion nro 7 b New method of agriculture i ‘ (>) acer fo Kave'a mote depen ae : non-patentable invention in concentrating the commercial gain of no such invention, rather than inventor alone. such invention in the hands of the A process of treatment of hum i i ieee the comeeanerfasett ional patented. A patient residing in iii Process of treatment being atented by 2 Bombay d a, needing treatment invented and palen' y 'y doctor, would have to go to that doctor in Bombi who invented the process of treatment, say of muscular spasms! Such a patent over a process of treatment, if granted, would run counter to public purpose which every legislative and executive act has to serve. (d) The 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 the mere discovery of any: new property, or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. (e) Any process for the medicinal, surgical, curatis _ 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. () Any invention which in effect is traditional knowledge or which is an aggregation or dup cation of known properties of traditionally known component. (g) Inventions relating to atomic energy. Invention must be disclosed fully While the Act grants the exclusive right to the ir for commercial gain for a specific period of time, it also imposes on him the duty n in the complete Specification so as to facilitate of fully disclosing the invention in s anyone from the public working the invention, once the period of protection. expires. 7 The ful disclosure of the patented invention is mandatory. If an — ale to disclose the invention fully, the patent will not be granted. They al idity ot ch patent, even if granted, can be contested by an opposing party. Phe pa revoked on such contest succeeding, Use and acquisition of patented invention The grant of a patent confers_th siv S ne inventor to exploit his invention by the Central Government » on the patenteetor i i tL recog! hat_the Centra Government may use comercial gain but the Ack scoagnises that 2 entor. For instance, y invention even wi e ; Ca > the Central Government may \ n invention being @ ee “ drs for the tell ° nN spital or other mectica Purpose of distribution in any ¢ hospi ote mmr <3? maintained by or on behalf of | ral Cov ae ihe acquire (he patents fromthe patel Palent, by paying the unsalion. ‘lis institution dispensary, he Governme! alee ob any other ps ersu+b Intellectual Pry The idea is that the invention can be put to use for ao Public bene, the Government in certain circumstances, when the patentee would have to fo! his commercial gain in the general public interest. y 8 Some restricted use of a patented invention permissible under the lay The essence of a patent is conferring of the exclusive right on the Patenteg, some restricted use of a patented invention by a person other than the pa permissible under the law. For instance, use_of a patented inve Nn i, permissible for research or experimental purposes or for imparting knowledge, instructions to pupils. fy tentegs For instance, teacher in an engineering college can depict, explain and sho, the functioning of patented invention to his pupils without violating ay, provisions of law. Use by a person other than a patentee constitutes infringement of the patent The Act expressly provides that use by a person other than the patente, Patentee’s assignee or licensee would be an infringement of the patent anda such illegal, leaving apart its use by Government for public purpose and th > permissible use for research experiments or imparting knowledge to students. Reliefs in cases of infringement The Act lays down the reliefs which the patentee is entitled to cl patent has been infringed. The Act prescribes that the civil remedy lies it institution of a suit in a court of competent jurisdiction. The prescription of relie in suits for infringement is based on the principle ‘where there is a wrong theres remedy’. The plaintiff on satisfying the court about infringement of his patent would be entitled to the following reliefs:— (1) Interlocutory injunction, (2) Dama ges. (3) Account of profits. Burden not on patentee in case of infringement Where the subject-matter of p atent is a process for obtaining a product, the defendant is to prove that the process used b » Obie duct : ve_that the process us k a rod identical to the product of the rOcegE ae re Obtain. the_p process if Patented process, is different from the patent jaim when his G) the subject-matter of the patent is a process for obtaining a new product or (ii) there is a substantially likelihoo, the process, and the patentee patent from him, has be determine the process that the identical product is made P or a person deriving title or interest in! e} si 1. Unable through reasonable efforts ' actually used, Prima facie proof of infringement The plaintiff must first establish such facts as will satisty the court that thet! are strong prim facie reasons for acting on the supposition that the patent is val"papotio™ 9 aH most cogent evidence for this purpose is either that there has been a previous rial in which the Lit oqen ey aap to be valid, or that the patentee has r > patent for many years without disputes or may be that een the parties, the plaintiff is relieved from the onus of establishin as where the defendant has admitted it or is so placed in his relationship aintiff as to be estopped from denying it. va to the pl special status of patents relating to medicines, food items and chemicals The Act accords special status to patents relating to medicines, food items and chemicals. No_product_ patent can be granted relating to any process of medicinal, surgical, curative prophylactic, diagnostic, therapeutic or other treatment of human being, food items and chemicals. Only the process of manufacturing such products can be patented. In case of grant of patents for certain substances which items or drugs as such, but are capable of being used as food and drugs, the same_are deemed to be endorsed with ‘licences of rights’. The significance is that a patent endorsed with the words ‘licences of rights’ does not retain the exclusive right of the patentee. Any other person can apply for a right tause the invention after the expiry of (hree year=irom the date of sealing of the patent. The Controller would grant patent to that person to manufacture such substance. In such cases, the inventor's (patentee’s) right of exclusive use is limited only to three years. This again is for use of the invention in certain circumstances for general public good Test of anticipation in patent cases The dictionary meaning of the word “anticipation” is act of anticipating, previous notion, etc. Any information as to alleged invention given by any prior publication must be for the purpose of practical utility equal to that given by the subsequent patent. The latter invention must be described in the earlier Publication that is held to anticipate it, in order to sustain the defence of anticipation. Where the question is solely one of prior publication, it is not enough to prove that an apparatus described in an early specification could have been used to produce this or that result. It must also be shown that the specifications contain clear and the unmistakable directions to use it. It must be shown that the public have been so presented with the invention that it is out of the power of any subsequent person to claim the invention as his own. Moreover, the antecedent statement, must, in order to invalidate the Subsequent patent, be such that a person of ordinary knowledge of the subject Would at one perceive and understand and be able to practically apply the discovery without the necessity of making further experiments and must, for the Purposes of practical utility, be equal to that given by the subsequent patent. So th opponent for such ground must satisty . i yo > the folk Publication relied upon by the lowing, requirements: ) It must have been affected be Subject of attack by the opponent. fore the priority date of the claim which isa Intellectual Prope 10 (ii) Such publication may include an application for a patent m anywhere. 'y Specification filed in pursuance Of a ade in India or any other d ocument Publisheg (ii) The claim attacked must be contained in any of the said publication. Balance of convenience and Patent The balance of convenience has also a person's investment, loss of employm life saving drug), product quality cou in size, may go against other Party. period to go before expiry of a perso size, etc. may go in favour of anoth future infringements may not tilt the an important role to play. Stultification of ent, public interest in the product (such a pled with price, or the party being smalle, The cases of bridgehead, ie., only a shor n’s or party’s patent, parties being of equal er person. The case of snow-ball, i.e., More balance in favour of a party. Protection to unused Patents Justice Douglas has stated’ in respect of common practice to make an invention and to secure a patent to block off a competitor's progress. By studying his ware and developing an improvement upon it, a concern may, “fence in” a tival, by a series of such moves it may pin the trade enemy within a technology which tapidly becomes obsolete. As often as not, such manoeuvres retard, rath ‘er than promote, the Progress of useful arts Invariably their effect is to enlarge and to prolong personal privilege within the public domain.” Justice Douglas has also stated in a dissentin used merely to protect another. The use of a ne’ preclude experimentation competitors. In this respect it can be said that in case of an invention or discovery which unlocks the doors of science and reveals the secrets of a dreaded disease, it is patentee could be permitted to Suppress that invention by the terms of a letters patent and withhold from humanity, the benefit of the cure. Guidelines for restrictive patentable sectors etc. The Government of India has formulated the draft Suidelines for the new!! amended Patent Act, 2005, As per the guidelines, Non-inventions, invention’ relating to atomic energy, or those contrary to public order or causing, serio Prejudice to human beings, animals, health or environment will not b patentable. These draft guide! any process for me. of human beings o1 however can be prefection to unused patents thus: “Itis ig judgment that one Patent is 'w patent is suppressed so as to which might result in further invention by lines have been put for public comments. They envisage th! dical, surgical, cur ‘ative, diagnostic and therapeutic treatmet! Fanimals is not patentable under the Patents Act. The patenl® obtained for surgical, therapeutic or diagnostic instruments. The draft guidelines relate to. the practice and procedure to be followed if examination of patents application in India, They also aim at making industrie* research and development erganizations, individual researchers and invent amiliar with the patents system in Indi They provide for a user-friendly syste for obtaining as well as maintaining patents under the existing legal system