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INTELLECTUAL

PROPERTY AND
PATENTS ACT 1970
Presented Ashish Rakheja
Pankaj
by

Deshpande
Sarthak Chandra
Shruti Shukla
Sreeda P

TOPICS
COVERED
Concept of
IP Laws

Compulsory
Licences

Patent Law

Restoration of
Lapsed Patent

Procedures
for Grant of
Patent

Patent of
Addition

Surrender &
Revocation of
Patents

Infringement
of Patents and
Remedies

CONCEPT OF IP
LAWS

INTRODUCTION
Property: Something capable of ownership
Characteristics:
Possidendi: the right to possess
Utendi: the right to use
Dispodendi: the right to dispose
Types:
Tangible
Intangible

IP INCLUDES

Industrial Property
Inventions
Industrial Design
Trade service names and marks
Copyright
Trademark

Source: http://previews.123rf.com/

NEED AND ORIGIN


Need
Origin

Encourages people to invest


time, money and effort in the
process of creation
Right of creator to earn a
reasonable return on
investment

TRIPS Agreement on Trade Related Aspects of IP


rights

Ensures minimum IP rights

Ensures their effective enforcement

Agree to submit dispute at WTO Dispute


Settlement System

PATENT LAW

FEATURES OF A PATENT
Novelty
Utility
Product/process
Exclusive rights
Limited grant period
Description of specifications
Based on claims
Source: http://www.particlesciences.com/

NON PATENTABLE
INVENTIONS Medical, surgical, diagnostic process
Frivolous Inventions
Usage contrary to law

Plants & animals excluding microorganisms

Mere discovery of

Mathematical & business model

Scientific principle

Literary, dramatic, musical, aesthetic work

New property

Method of performing a mental act

New use of known

Traditional knowledge

substance
Substances obtained by just
mixing

Atomic Energy
Topography of integrated circuits

WHO CAN APPLY?


True and first inventor of the invention
Legal representative of the deceased person
Assignee of the person claiming to be inventor
Who cant apply??
A member of non convention country

WHERE TO APPLY?
Head office or branch office of the Patent Office in whose
territorial jurisdiction
The applicant resides
Residence of the first mentioned applicant in case of joint
application
Address of service in India if no place of business or
domicile in India

FORM OF APPLICATION
For 1 invention only
States
That applicant possess the invention
Names the first and true inventor
Accompanied by provisional/complete specification

http://ipindia.nic.in/ipr/patent/patent_
formsfees/

FOREIGN APPLICATION
PROCEDURE
Can apply for patent outside India only if:
Application to be made in India 6 weeks before making outside India
Written authorization from controller
No secrecy direction
Prior consent from centre government

Intimating the controller about foreign application


Detailed particulars to be given
Undertaking to inform Controller of every other foreign application

PROCEDURES FOR
GRANT OF PATENTS

OPPOSITION TO GRANT OF
PATENT
Within 4 months
On the grounds:
Wrongfully obtained invention
Prior publication
Earlier priority date claim
Obviousness
Non patentable invention

Unclear description
Non disclosure of information
Time barred convention
application
Anticipated invention

Procedure for filing of Opposition


In Form 7 to Controller in triplicate

Form-7

PATENTS OF
ADDITION

COMPULSORY
LICENCES
(Section 84 94)

GROUNDS OF APPLYING FOR COMPULSORY


LICENCE
After 3 years from date of sealing patent
Non-satisfaction of reasonable requirement of
public w.r.t the patent invention
Non-availability of the patented invention to
public at affordable price
Non-working of patent invention in the
territory

WHO CAN APPLY?

Central Government
Person engaged in or promoting research
in the same field as that to which
invention relates
Person notwithstanding that he is already
a holder of a licence under the patent

PROCEDURE OF GRANT OF COMPULSORY


LICENCE
Make application
Matters to be taken into consideration by the Controller
Service of copies of application on the patentee
Notice of opposition
Furnishing the notice of opposition to the applicant for compulsory
license
Providing an opportunity of hearing to the applicant & the
opponent
Giving a decision on the application

POWER OF CONTROLLER IN GRANTING


COMPULSORY LICENSE
To grant licences if the manufacture, use or
sales of material not protected by patent, is
prejudiced due to conditions imposed by
patentee on grant of licences, or on the
purchase, hire, use etc., of the patent article
To order cancellation or amendment of
existing license
To grant licence in respect of other patents to
enable the licensee to work the patent in
respect of which the licence has been granted
To order revision of terms and conditions of
licence

TERMS & CONDITIONS OF COMPULSORY


LICENCE
Reasonable royalty and remuneration
Working of the inventions
Providing patented article to the
public at reasonably affordable prices
Granting of licence on a exclusive
basis
Providing a non-assignable right to
the licence
Licence is for the balance period of
the patent
Purpose of licence

INDIAS FIRST COMPULSORY


LICENCE
Natco Pharma Ltd. Vs Bayer Corporation - 9 March 2012
Bayer received a licence to import and market the drug Sorafenib tosylate under
the brand name Nexavar in India on 1 August 2007
Controller decided against Bayer on all 3 grounds enlisted in Patent Act
In its defence, Bayer argued that the operation Cipla is the reason for not maximize
the distribution of the drug in India
Decision in favour of Natco Pharma Ltd. - pay a quarterly royalty at 6 per cent of the
net sales of the drug
Under the terms of the compulsory licence
Provide the drug for free to at least 600 needy and deserving patients pear year
Sell the drug at no more than 8,880 Indian rupees (about US$178) for a pack of 120
tablets
Prohibited from outsourcing the manufacturing of the drug

OTHER SECTIONS RELATED TO


COMPULSORY LICENCE
Licencing of Related Patents
Compulsory Licence on notification by Central
Government
Grant of Licence to Operate as a Deed
Termination of Compulsory Licence
Licence of Right
Effect of Endorsement

RESTORATION OF
LAPSED PATENTS

PROCEDURE OF RESTORATION OF LAPSED PATENT


Make an application [Sec. 60]
Controller to grant opportunity of hearing
Advertising the application for restoration in the Official Gazette
Notice of opposition [Sec. 61]
Payment of renewal fee
Advertisement of Controllers decision in the Official Gazette [Rule 69
& 70]

Form-15

Form-14

RIGHTS OF PATENTEE ON PATENT


RESTORATION
Subject to such provisions as may be prescribed & to such other provisions
as the Controller thinks fit to impose for the protection or compensation of
persons who may have begun to avail themselves of, or have taken
definite steps by contract or otherwise to avail themselves of, the patented
invention between the date when the patent ceased to have effect and the
date of publication of the application for restoration of the patent
No suit or other proceeding shall be commenced or prosecuted in respect
of an infringement of a patent committed between the date on which the
patent ceased to have effect and the date of the publication of the
application for restoration of the patent

SURRENDER AND
REVOCATION OF
PATENTS

Surrender of Patents

Section 63
How can a patentee surrender a
patent?

Revocation of Patent (Sec 64,


66, 84)
Grounds for Revocation of
Patent:

Prior Public Knowledge


Existence of prior claim
Absence of sufficient & fair description of
No right to apply
invention
No innovation

No sufficient & clear definition of the claim

No usefulness

False suggestion

Obviousness

Non patentable

Continued
Earlier secret use
Contravention of security
Fraudulent amendment in the specification
Interest of security of India

Revocation of Patent

Amendment of complete specification on directions from


Central Government in cases relating to atomic energy
Revocation of Patent in public interest

INFRINGEMENT OF
PATENTS AND
REMEDIES

What is Infringement ?
Unauthorized making, selling or distributing, using, exercising of patented
method/ process
In the suit, the following must be established:
Existence of aPatent in favor of the plaintif
The defendant must be shown to have used, exercised, counterfeited,
imitated, sold or distributed the invention without a license from the
plaintif
Colorable Imitation
Alteration of one or more additional features or
Additional features along with the essential features

Continued
Jurisdiction to entertain suits for Infringement
District court
High court
Time frame: within 3 years

Defenses against
Infringement

Every ground of revocation

Challenge the validity of the patent


Dispute about the plaintiff being the first and true inventor
No knowledge of the existence of the patent
Non renewal by the patentee
In accordance with the conditions imposed
Innocent Infringement
Holding of license

Suit for Declaration as to Non


Infringement
(Sec 105)

Relief against groundless threats of Infringement (Sec


106)
Declaration that threats are unjustified.
Injuction against continuance of threats
Damages, if any, sustained by breach of contract due
to threats
Acts not constituting Infringement (Sec 107A)
Parallel imports

Relief against Infringement ?


(Sec 108)
Injunction
Claim for damages or for an account of
profits