Patent Historical Background

Introduction
Newness, then is the sign of growth, it is the scale of
development and a canon of our civilizations
- Being innovative has been a hobby for all, a passion
for few and a realization for very few.
- It is only the elemet of newness which enlivens all of
these viz, the world , the thoughts and the things.
- Minus newness society remains static even while
moving, we remain dead
It has been practice in all ages to encourage people to do
new things.
History
British system Crown fountain head of justice, the
preserver of their rights and the protector of their
interests.
Crown had got immense powers and prerogatives
One of which is to grant letters patent to person who
came forth with something new and beneficial for its
subjects.
-provided the grantee of monopoly to merit such a
reward.
Darcy v. Allein (I602 )( first year of James I reign)
Facts: the queen had granted to the plf. a monopoly of
the right of making and trading in playing cards, he
sued the deft.for infringement.
Held: Court of King’s Bench, relying upon the courtly
doctrine that the Crown could never have intended to
make a grant injurious to the realm ,
Held grant sued on was restrictive of trade and industry
 and was therefore void
8 years from I602 King James I in the year I6I0 made
his famous declaration expressing the will of the
Crown not to grant monopolies in general.
Reserved right to entertain suits from its subjects and
reward them in projects of new invention.
Result – misuse of or royal prerogative
-therefore Statute of Monopolies , I624 was passed
during the reign of Charles I
Granted privilege for a term of I4 years
Conditions
i) Grantee should be the true and first inventor
ii) Subject matter of the grant be a manner ‘if new
manufacture’
iii) New manufacture should neither be contrary to law
or mischievous to state nor hurtful to trade nor
inconvenient in general.
Patent Law Amendment ,I852
- It was cheap and simple in concept
- Designed to attract capital for small ventures
- Patenting activity at once increased markedly
- Mere filing of P Specification – P granted
- Result- many fraudulent claims made on pre-existing
inventions
- Successive govts reluctant to search prior literature
and examine against search results
I90I- Fry Committee showed 40% or more P granted
were for inventions already specified in British
specification
I905- Office began to search British Specifications for 50
years - but confined to novelty.
Act of Parliament, I883, I907 are based mainly on
provisions of Statute of Monopolies
-Patents issued under the Great Seal of England.
- Lord Chancellor keeper of this Seal – letter of grants
was issued by him this was in vogue till Patent, Designs
and Trade Marks Act, I883
- I907 new Act- I9I9 provides that “every patent may be
made in the prescribed form.”
- Impression of the seal of the Patent Office shall be
judicially noticed and admitted in evidence
Signing of Paris Industrial Property Convention of I883
by Britain, Patent Cooperation Treaty (PCT) in
Washington in I970 led to The European Patent
Convention(EPC) in I973, European Patent Office.
Patents Act, I977 been modeled on EPC
Crown’s prerogative has now been converted into pure
administrative action
Evolution Patent law in India
Ancient Law- seers who invented new things or
processes were devoted to the cause of humanity.
- No idea to exploit this invention commercially
- All they desired was appreciation from king( jewels etc)
- that is the reason we have no knowledge of
Shushrut( the father of Indian surgery)
- Charak ( the father of Indian medicine) were given
monopoly right of use over their inventions
Commercialization is aspect of Western culture .
-they evaluated ideas and works on a commercial scale and to
provide incentives to inventors
Mughal period-inventors encouraged, given Wazifa
( Scholarship), some given permanent seat in Council of
Ministers or advisors of king.
-no monopoly right
Ex – Taj Mahal, forts ( quilas) Artist no right conferred
With advent of British sudden turn I7th Century- they tried to
give India a western look.
British rulers enacted the Indian Patent and Designs Act,I9II-
according to them intention to protect the interests of
inventors of India
- It was a comprehensive piece of legislation
Two committee report s ,after several amendments I970 Act,
passed
A. Justice Bakshi Tek Chand Report,I950
Considered failure of Indian Patent law,
To stimulate invention and encourage exploitation of new
inventions for industrial purpose following measures
suggested:
i) CL should be issued
ii) An efficient machinery should be evolved to tackle
the issue of abuses
Included in I950
B. Justice Rajagopala Ayyangar’s Report, I959
-identified the essential pre-requisites for a nation to
assimilate the benefits of a patent system
Features include-
- technological advancement of the country,
-need for encouragement of inventors and for
rewarding them
-increasing emphasis on technical education in India
- “ no. of quality research institutes
- Believed system of patent protection should be
modified to suit Indian environs.
Suggestions- 3 prolonged strategies
i) Identifications of inventions which are to be
protected :
ii)Determination either to protect foreigners from taking
patents in India or to make them work the patent in
India
iii)Determination to withstand any pressure to sign any
international conventions
Bill proposed by committee to LS in I966 but the House
was dissolved –Bill lapsed
New LS was presented with another Bill in Aug, I967-
Deliberations by Joint Committee of the Parliament-
Patent Act, I970 passed. Force- April 20, I972
 salient features of Act, I970
-reflects the concerns of a developing country,
- Balanced with the interests and needs of the inventors
- Encouraged inventions and secured it is worked in India
on a commercial scale.
- Recognised 2 kinds of Patent: Product, and Process
patents.
- this Act granted only process patent to food, medicine or
drug and substances produced by chemical process.
Amendments- I974,I985, I999, 2002, 2005
I999 – Establishment of WTO, & adoption of TRIPS-
revolutionary changes in IPR
Tune IPR legal regime within I0 years
2002-Amendment
i) defn, of assignee enlarged including assignee of the
assignee
ii) New defn, “ capable of industrial application” added
TRIPS- India ratified- being member of WTO
Scheme required modification before I-I-2005
iii) defn, of ‘convention country’ amplified to include a
country or country which is a member of group of
countries
2002- excluded from patentability
i)Plants & animals in whole or part , seeds, varieties and
species and essentially biological process for
production and propagation of plants and animals
ii) Mathematical or business method or computer
programme
iii) literary, dramatic and musical works
iv) Method of playing game
v) Topography of integrated circuit
vi) Traditional knowledge
Term- 20 yrs
Appeals- IPAB –of TM will be appellate Board.
-any decisions, order or directions of the controller or
C.Govt.
Limitation-3 months of date of order
Civil Court Jurisdiction- barred
Increase in penalty
Unauthorised claim- increased from Rs.500 to Rs.
I0,000
Refusal or failure to supply information – raised from
Rs. 20000/- from Rs.I000/-
Non- registered patent agent practices – max fine
Rs.40,000/- instead of Rs. 2000/-
2005- developing country to introduce product patent
of medicines and drugs from I-I-2005
Amendment carried out- defn of ‘inventive steps’, ‘new
inventions’, ‘pharmaceuticals’ changed
- Provision for grant of CL for export of patented
medicines to countries which have insufficient of no
manufacturing capacity to meet public health.) Doha
Declaration on Public Health)
- Provision for acquisition of patent for public health
- Govt, can revoke a patent if found mischievous
Registration of Patent
Introduction Sec. 6-II
Persons entitled to apply for P
i) True and first inventor of the invention
ii) Assignee of “ “ “
iii) LR’s of any deceased person
Appln. May be made alone or jointly
First to apply system=
Meaning of true & first inventor- person who is the first one
to convert the ideas and scientific principles in to a
working invention
Ex: a physics teacher explains a principles in his class. One
of his students makes a working invention producing a
new result by putting into use the principle taught by his
teacher. Who has patent right?
Invention made by employee-
One invention one application
Application procedure-
I.Specification- Patent specification is a technical
document describing the invention.
It is essential part of a patent applin.
Contents and form of specification
i) Title sufficiently indicating the subject matter of the invention
Driverless Car
ii) Full description of the invention and the method by which it is to be
performed
iii) It must end with a claim or claims defining the scope of the invention for
which protection is claimed
iv) Abstract to technical information on the invention
v)declaration
Divided into a) Provisional Specification
b) Complete Specification
a) PS- inventor in process of finalising his invention may file it
-contains only a general description , field of application and
anticipated results, it need not contain claim(s)
Object- to fix the priority date of the patent
PS to be followed by CS within I2 months max.I5
months-fails – deemed abandoned
Complete Specification
- Is full description of the invention containing all the
claims over which the applicant seeks monopoly
right
-Object to define clearly & with precision the monoply
Claimed.
Others may know the exact boundaries of the monopoly
right of the applicant
Contents of CS
i) Title sufficiently indicating the subject matter of
invention
ii) Full & particular description, its operation or use&
method by which it is to be performed
iii) Claim(s) defining the scope of the invention. One
invention only. Must be clear and precise
iv) Abstract to provide technical information on the
invention
v) Disclosure of the best method of performing
invention known to applicant
vi) Intln. Application- designating India, title,
description, drawings, abstract and claims to filled
with the application
vii)Declaration as to inventorship of the invention
viii) Developments of, additions to, after filing PS .
Claims
a) Main claims- state what the invention is in the
broadest possible terms
b) Subordinate Claims(s)- refers to the additional
feature(s) of the invention
c) Omnibus claim- relates to arrangement
substantially as described and as shown in the
drawings
Whether specification can be amended?
a) Amendment before acceptance
Controller may require amendment if he finds that
specification or any document filed does not comply
with Act or rules
Applicant himself may seek for it
- Priority date remains intact.
- It should not add new dimensions to inventions
b)After acceptance
-application after acceptance-published in official
gazette
- objections/opposition sought
- Controller finds merits – direct applicant to amend
the specifications
- If suit is pending before court for infringement
Controller can’t pass any order
c) Amendment before the grant of patent
-Before grant of patent a person other than patentee
can apply fro revocation of patent before the HC.
-HC instead of revocation may order for amendment to
preserve the rights of the patentee
Conditions for amendment
Patentee himself can’t amend on his own at any stage
Disclaimer-
II. Acceptance of Specification-
III. Publication & Examination of the application
Publication only after I8 months from the date of
application or date of priority application
Exception-
i) In which secrecy direction is imposed
ii) Has been abandoned
iii) Has been withdrawn 3 months prior to the prescribed
period as prescribed.
Application includes
i)Particulars of the date of application
ii) no. of application
iii) Name & address of the applicant
Applicant shall not file a suit for infringement until
patent is granted.
Application must request for examination of the
application within 36 months from the date of filing
the application- default- treated as withdrawn
When request made- Controller refer to examiner for
making a report on the following aspects
a) Whether the appln. And the specifications and other
documents related thereon are in accordance with
requirement of Act?
b) Whether there is any lawful ground of objection to
the grant of patent?
c) The result of investigation made under sec.I3 (
previous Publication)
d) Any other matters
Examiners to report-within I month to Controller .
Extended to 3 months
Search for anticipation by previous publication and by
prior claim-PS or CS before the application.
Examiner to report on anticipation within in India or
elsewhere
IV. Communication to the Applicant
Examiner raises objections- drafting of specifications of
claims, anticipation of claims.
Applicant to make amendments ( within I5 months)
extended max.I8 months
Default- deemed abandoned.
If rectified – but not satisfactory after giving an
opportunity , Controller refuse application.
V. Opposition Proceedings- publication
Any person in writing to Controller make opposition
i) Wrongfully obtained the complete invention or part
thereof (two inventors one dead)
ii)Prior publication in India or elsewhere
iii) It is a subject matter of prior claim (prior in time)
iv)It is publicly known or used publicly in India
v) No inventive step
vi) It is not patentable or prohibited under the Act
vii) CS does’nt sufficiently and clearly describe the
invention or the method by which it has to be performed
viii)Foreign application, failure to disclose information in
the application
ix)Convention application, application was not made
within I2 months form the date of first application for
protection of invention
x)CS does not disclose or wrongly mentions the source
or geographical origin or biological material used
xi)Claim in CS is anticipated regard to knowledge, oral
or otherwise available within the local or indigenous
community in India or elsewhere
Notice to Applicant- both parties heard-Controller
decides
After grant of patent within I year from date of
publication of grant of patent raise opposition
Controller- issue notice to Patentee
- Constitute a Board( provide all documents)
Board- both parties heard- recommendation to
Controller – may order either to maintain or to
amend, or to revoke the patent
VI Grant of Patent
a) Application not refused by Controller
b) Application not found to be in contravention
- Patent granted with the seal of the patent office
- Date entered in the register
- Controller will publish, open to public inspection
- One invention one patent
- Date of patent- effective from filing of CS
Term – 20 years
Joint Inventors- Can assign only with consent of other
patentee
-death- LR’s name entered
CL- is patentee fails to work the invention
Conditions on which patent is granted
i) Import an manufacture by Govt for its own use
( process and product)
ii) use for experiment, research and teaching
iii) In case of drugs and medicines- govt has power
i) File application in patent office
ii)PS/CS
iii) Acceptance of specification- Division of application
iv) Publication of application
v) Request for examination of application
vi) Report of examiner a) approval---P granted
b) objections- amendment- P granted
- valid- application rejected
Rights of Patentee
Introduction
- Its negative rights of patentee
- Monopoly right for a fixed term
- But subject to certain conditions and obligations
- Rights and duties
Rights Sec 48
i) To exploit the patent- to make, use, exercise, sell,
distribute, import
(exclusive)
ii)Right to licence- (Co-owner Consent)
iii) “ “ assign-(“)
iv)Rights before sealing-date of acceptance of CS till the date of
sealing of Patent-privileges as if it has been sealed
But cannot sue for infringement until it is sealed
v)Rights in case of infringement- sue – civil, criminal or
administrative
vi)” to be issued duplicate patent-lost, destroyed ( non-
production explained satisfactorily)
vii) Rights to be supplied copies and certificates- certified copies
and entries in Registers or other public documents- pay fee
viii)Right to apply for ‘patents of addition’- improvement
or modification of invention----- (term----)
ix) Right to surrender the patent-give notice in prescribed
manner to Controller-advertise ?-
x) Right to make a convention application- or basic
application in other convention countries( if Intl
instrument India has signed)
- ‘Reciprocity’ and ‘ national instrument’
Limitations of the rights
i) Use for experiment, research & teaching
ii)Use by Govt.-
iii) Invention for defence purposes- subject to secrecy
provisions of the Controller.- publication prohibited –
patent not rejected- but not granted.
- govt. debar applicant from use of the invention- royalties
paid
iv)Compulsory Licences – Sec.84
a)reasonable requirements of public not satisfied
b) Not available at a reasonable price
c) Not worked in territory of India
Procedure
Application to Controller with grounds
Reasonable requirements
i) Trading or manufacturing industries in India is
prejudiced or
ii) Demand not met by patentee
iii) Market for export of manufactured article in India is not
be supplied or developed
iv) Not being worked in India in commercial scale
v) Imposes conditions on grant of licences
Bayer Corporation of India v. U.O.I W.P No.1323 of 2013 Bom. H.C
15th July 2014( first case on CL in India)
Facts: petitioner , a U.S. Corporation got a patent for the drug
Sorafenib Tosylate ( Brand name Nexavar) in India
- Used in treatment of patients suffering from kidney cancer i.e., Renal
Cell Carcinoma (RCC) & liver cancer i.e, Hepatpcellular Carcinoma (HCC)
-cost of the drug Rs,2,80,428/- per month therapy- 120 tablets for
month.
- On 6th Dec , 2010 Natco a drug manufacturer in India approached
the petitioner for grant of voluntary licence for manufacturing and
selling in India –Rs.10,000/- per month of therapy.
Reason given- reasonable requirement not met, nor was
reasonably priced , nor worked in the territory of India.
27th Dec.2010 – petitioner rejected application of Natco
29th July 2011-Natco applied to the Controller of Patents for CL
9th March 2012- Controller granted CL – to manufacture and
sell the patented drug, pay royalty at 6% of its net sales
- Allowed to be sold at Rs .8,800/- for 120 tablets for month
treatment.
- It was non-exclusive, non-assignable for balance of term of
patent
-4 March 2013, - referred to Tribunal – upheld order of CL
- increased royalty from 6% to 7% of sales of drug
-Petitioner – filed Writ of Certiorari in Bom. H.C to quash order of
Tribunal
-HC –stated applicant attempt to request for voluntary licence
-CL terms & conditions were valid
- considered- ‘reasonable requirement’- context of no. of patients
requiring patented drug.( it was determined by authorities –
Controller)
- ‘adequate extent’- vary from article to article ( luxury article &
medicines)
- Medicine- 100% or fullest extent ( Doha Declaration – CL)
- Next concept- ‘reasonably available at affordable price to
public’- determined by relative price offered by patent holder
and the applicant
- Held in this case it is applicant price
- ‘invention whether worked in India’ – patent holder to
satisfy why it was not worked in India
- Held in conclusion- law of patent was a compromise b/w
interest of inventor and the public.
- drug was meant for healing Cancer patients
- Public interest is and should always be fundamental in
deciding a lis (drugs)
Licence of Natco is till 2021- Bayer filed patent in 2001-granted
in 2008
Govt direction to Natco- supply free drug to at least 600 needy
and deserving per year
liable to pay royalty on net sales to Bayer on quarterly basis it
has to manufacture only at its own plant & not allowed to
outsource production.
II .Controller satisfied with applicant- direct applicant to serve
copies of application to patentee and other interested persons
III Patentee or interested – give notice of opposition to
Controller
- Controller –notify applicant- both parties heard- order passed
Purpose of granting CL
i) it is worked on a commercial scale in India without delay and
to fullest extent possible that is reasonably practicable
ii)Patentee are not unfairly prejudiced
Adjournment of CL application- 12 months
Terms& conditions
i) Royalty paid is reasonable- regard to nature of invention
ii) Patented invention is worked to fullest extent with
reasonable profit
iii)Made available at reasonable price to public
iv) Licence is not exclusive
v) Non- assignable
vi) Licence is for balance term of patent
CL on notification by C. Govt.- National Emergency or extreme
urgency declaration in official Gazette- any person can apply for
CL
Ex. HIV/AIDS, Epidemic
Patent( Amendment) Act. 2005 inserted sec92A - CL available
for manufacture and export of patented pharmaceutical
products to any
Country having insufficient or no manufacturing capacity in
pharmaceutical sector
Termination of CL-
i) Circumstances no longer exists nor it will re-occur
Duties of Patentee
ii) To work out patent and make it available to public,
reasonable price
iii) To furnish information demanded by Controller fails
penalty of Rs.10 lakh
iv) Work the patent in India
Rights of Patentee
Introduction
- Its negative rights of patentee
- Monopoly right for a fixed term
- But subject to certain conditions and obligations
- Rights and duties
Rights Sec 48
i) To exploit the patent- to make, use, exercise, sell,
distribute, import
(exclusive)
ii)Right to licence- (Co-owner Consent)
iii) “ “ assign-(“)
iv)Rights before sealing-date of acceptance of CS till the date of
sealing of Patent-privileges as if it has been sealed
But cannot sue for infringement until it is sealed
v)Rights in case of infringement- sue – civil, criminal or
administrative
vi)” to be issued duplicate patent-lost, destroyed ( non-
production explained satisfactorily)
vii) Rights to be supplied copies and certificates- certified copies
and entries in Registers or other public documents- pay fee
viii)Right to apply for ‘patents of addition’- improvement
or modification of invention----- (term----)
ix) Right to surrender the patent-give notice in prescribed
manner to Controller-advertise ?-
x) Right to make a convention application- or basic
application in other convention countries( if Intl
instrument India has signed)
- ‘Reciprocity’ and ‘ national instrument’
Limitations of the rights
i) Use for experiment, research & teaching
ii)Use by Govt.-
iii) Invention for defence purposes- subject to secrecy
provisions of the Controller.- publication prohibited –
patent not rejected- but not granted.
- govt. debar applicant from use of the invention- royalties
paid
iv)Compulsory Licences – Sec.84
a)reasonable requirements of public not satisfied
b) Not available at a reasonable price
c) Not worked in territory of India
Procedure
Application to Controller with grounds
Reasonable requirements
i) Trading or manufacturing industries in India is
prejudiced or
ii) Demand not met by patentee
iii) Market for export of manufactured article in India is not
be supplied or developed
iv) Not being worked in India in commercial scale
v) Imposes conditions on grant of licences
Bayer Corporation of India v. U.O.I W.P No.1323 of 2013 Bom. H.C
15th July 2014( first case on CL in India)
Facts: petitioner , a U.S. Corporation got a patent for the drug
Sorafenib Tosylate ( Brand name Nexavar) in India
- Used in treatment of patients suffering from kidney cancer i.e., Renal
Cell Carcinoma (RCC) & liver cancer i.e, Hepatpcellular Carcinoma (HCC)
-cost of the drug Rs,2,80,428/- per month therapy- 120 tablets for
month.
- On 6th Dec , 2010 Natco a drug manufacturer in India approached
the petitioner for grant of voluntary licence for manufacturing and
selling in India –Rs.10,000/- per month of therapy.
Reason given- reasonable requirement not met, nor was
reasonably priced , nor worked in the territory of India.
27th Dec.2010 – petitioner rejected application of Natco
29th July 2011-Natco applied to the Controller of Patents for CL
9th March 2012- Controller granted CL – to manufacture and
sell the patented drug, pay royalty at 6% of its net sales
- Allowed to be sold at Rs .8,800/- for 120 tablets for month
treatment.
- It was non-exclusive, non-assignable for balance of term of
patent
-4 March 2013, - referred to Tribunal – upheld order of CL
- increased royalty from 6% to 7% of sales of drug
-Petitioner – filed Writ of Certiorari in Bom. H.C to quash order of
Tribunal
-HC –stated applicant attempt to request for voluntary licence
-CL terms & conditions were valid
- considered- ‘reasonable requirement’- context of no. of patients
requiring patented drug.( it was determined by authorities –
Controller)
- ‘adequate extent’- vary from article to article ( luxury article &
medicines)
- Medicine- 100% or fullest extent ( Doha Declaration – CL)
- Next concept- ‘reasonably available at affordable price to
public’- determined by relative price offered by patent holder
and the applicant
- Held in this case it is applicant price
- ‘invention whether worked in India’ – patent holder to
satisfy why it was not worked in India
- Held in conclusion- law of patent was a compromise b/w
interest of inventor and the public.
- drug was meant for healing Cancer patients
- Public interest is and should always be fundamental in
deciding a lis (drugs)
Licence of Natco is till 2021- Bayer filed patent in 2001-granted
in 2008
Govt direction to Natco- supply free drug to at least 600 needy
and deserving per year
liable to pay royalty on net sales to Bayer on quarterly basis it
has to manufacture only at its own plant & not allowed to
outsource production.
II .Controller satisfied with applicant- direct applicant to serve
copies of application to patentee and other interested persons
III Patentee or interested – give notice of opposition to
Controller
- Controller –notify applicant- both parties heard- order passed
Purpose of granting CL
i) it is worked on a commercial scale in India without delay and
to fullest extent possible that is reasonably practicable
ii)Patentee are not unfairly prejudiced
Adjournment of CL application- 12 months
Terms& conditions
i) Royalty paid is reasonable- regard to nature of invention
ii) Patented invention is worked to fullest extent with
reasonable profit
iii)Made available at reasonable price to public
iv) Licence is not exclusive
v) Non- assignable
vi) Licence is for balance term of patent
CL on notification by C. Govt.- National Emergency or extreme
urgency declaration in official Gazette- any person can apply for
CL
Ex. HIV/AIDS, Epidemic
Patent( Amendment) Act. 2005 inserted sec92A - CL available
for manufacture and export of patented pharmaceutical
products to any
Country having insufficient or no manufacturing capacity in
pharmaceutical sector
Termination of CL-
i) Circumstances no longer exists nor it will re-occur
Duties of Patentee
ii) To work out patent and make it available to public,
reasonable price
iii) To furnish information demanded by Controller fails
penalty of Rs.10 lakh
iv) Work the patent in India
Transfer of Patents
Introduction
Patent is transferable property
Forms of Transfer
a) Assignment
b) Licence
c) Transmission of patent by operation of law
a)Assignment- Assignor and Assignee
Assignee dead-----
Assignment to two or more persons- co-owners of patent
Kinds of assignment
i) Legal A- through an agreement, duly registered, legal
assignee has right to register his name entered in the
Register of patent as proprietor of patent.
ii) Equitable A- any document as letter but not being an
agreement, duly registered with Controller in which
patentee agrees to give another person certain rights
in patent
-assignee can’t enter his name in register of patent
- Only enter his interest
- Can convert E.A into LA by written agreement
ex. A writes a letter to E whereby he assigns his right to
make and sell the invention within the territory of
Delhi.
iii) Mortgage- is also form of assignment. To secure
loan. Patent re-transferred on re-payment of
amount.
Mortgagee can’t enter his name in the register of
patent
Conditions for valid assignment
i)Writing in a document- terms & conditions, rights
and obligations
ii)Duly registered under PA
Limitation- filed within 6 months of execution
b) Licence
It merely confers a personal privilege to do some
particular act which licensee can perform.
Licence agreement contains all the T&C of licensing
Kinds of licence
i) Voluntary licence –written authority, empowered to
make , use, sell the patented article, T&C are settled b/w
parties .
Controller & Govt has no role
ii) Statutory Licence-
CL – Controller and the C.Govt. play an important role
T&C determined by them
iii) Exclusive/limited Licence- depending on the extent of
rights conferred on the licencee- exclusive or non-exclusive
Exclusive L- confers all exclusive rights ( to make,
distribute or sell) excludes all others
A , a patentee grants licence to B to exploit his invention
in India.
Limited L- impose certain limitations on licencee, it may
relate to time, place, persons, manufacture , use or
sale.
Ex. A grants a licence to B to manufacture the patented
article and gives C the licence to sell it in the territory
of UP only.Both B & C get limited licence.
iv) Express/Implied L-
E.L- permission given in express term- written
I.L- implied from circumstances
A buys a patented article either directly or indirectly
from the patentee or his licensee, there is an I.L to
the buyer to use the article in any way or to resell it.
c) Transmission of patent by operation of law
- Patentee dies LR’s inherit
Restrictive conditions cannot be imposed
i)Prohibit him from acquiring any article other than the
patented article
ii)Prohibit the licensee or restrict him to use an article
other than patented article
Revocation and Surrender of Patents
Protection of Security of India- Sec.I57 A inserted in
Patent Amendment Act, I999 and substituted by
Patents (Amendment) Act, 2002
C.Govt. –shall not disclose any information as to
patentable invenion if it is cause prejudice to the
interests of security of India .
‘Security of India’
i)Relates to traffic in arms , ammunition & implements
of war
Revocation Sec 64-66
The following persons may petition to H.C
i) Any person interested
ii) C.Govt in public interest
iv) Relating to atomic energy
v)For non-working
vi) By HC on petition for failure to comply with the requirements
of the C.Govt to use the invention.
vii)By HC on a petition by persons interested by various specified
grounds
viii) Person making a counter claim in a suit for infringement of
patent.
Grounds -3 categories
a) Relating to rights of the patentee and his conduct
b)Relating to the invention and its quality
c) Relating to the description of the invention
I. Relating to rights of patentee-grounds
i) Patentee is not entitled to the patent
ii) “ had obtained the patent wrongfully
iii) “ obtained patent by false suggestion or
representation
iv) There was non-compliance with directions for
secrecy and
v) The amendment of specification was obtained by
fraud
II. Relating to invention and its quality-grounds
i)Subject matter not patentable
ii) Claim is not invention
iii) Prior secret use of invention before the priority date
iv) Lack of inventive-step
v) Is not useful
vi) Already subject matter of a prior grant
III. Relating to description of invention
a)Insufficient description and non-disclosure of best
method of performing the invention
b) Unclear definition of claims and claims not fairly
based.
Lapsing of patent for non-payment of renewal fee
-within fixed period or extended period
Restoration of lapsed patent
-Controller within I2 months from date of lapse allow
-renewal fee & additional fee
- No legal proceedings for infringement of patent
fuirng period of lapse of patent
Surrender-
Patentee may surrender at any time by giving notice to
Controller.
-Controller –publish the offer and also notify every
person
-opposition within 3 months
-parties and heard, properly surrendered.
-aggrieved party may appeal against the decision of the
Controller of Patent
20I2-20I3- India exported generic drugs worth
Rs,75,000 crores to 200 nations across the world
including USA, Europe, Australia, Japan Latin America
, Africa and Asian countries
Traditional knowledge
Introduction
IP- protection of individuals, limited period,
monopoly right, public domain
TK- created owned managed and continued by the
communities for considerable durations in time
-passed from generation to generation, time
immemorial
It is the result of experiences , culture and need
based action of certain communities
Controversy- MNC’s of developed countries
commercial exploitation of TK
Medicines as ayurveda, indigeneous system of
medicine, agriculture methods, folklore, traditional
designs, textile etc.
India being rich in bio-diversity and third world
countries are accused of committing theft of IP of
the developed countries.
IK- fits into TK
WIPO-concerns
i) Loss of traditional life styles and of TK
ii) Reluctance of the younger generation to carry forward TK
iii) Lack of respect for TK and holders of TK
iv) Misappropriation of TK including use of Tk without any
benefit sharing
v) Lack of recognition of need to preserve and promote the
further use of Tk
Bio-Piracy-
I.Turmeric Case-(Cucuma Longa)- plant of ginger family
- saffron-coloured rhizomes, used as spice for flavouring
indian cooking
-effective ingredients in medicines, cosmetics and a color
die
- In public domain time immemorial
Facts:I995, 2 Indian nationals at University of Mississippi
Medical Centre were granted US patent .No. 540I504 “
use of turmeric in would healing”
-Indian Council for Scientific and Industrial Research
(CSIR) opposed and sought for revocation
Argued – used for wound healing and rashes,
- in public domain I000 of years
Documents- sanskrit text, paper published in Journal of
Indian Medical Association(I953)
USPTO- upheld the arguments & revoked the patent
First time developing country successfully challenged
the TK – landmark case
II. Neem controversy-( Azadirachta indica)
- tree grown in India and other parts of South and Southeast
Asia
-Purpose- natural medicine, pesticide and fertilizer,
-neem extract used against pests, fungal disease that
attack food and crops
- oil extracted from seeds used to treat colds and flu
- mixed in soap
- low cost relief from malaria, skin diseases
I994-US Corporation W.R. Grace and USDA were granted patent
By EPO for “method for controlling fungi on plants by
the aid of a hydrophobic extracted neem oil”
I995 Group of Intl NGO’s and representatives of Indian
farmers filed a legal opposition against the patent
Ground- known from centuries , not novel
2000- patent revoked
III. Basmati case-
Description- grown in Punjab provinces of India &
Pakistan
Uniqueness-slender, aromatic and long
- Major export crop for both countries
- Annual exports - $300 millions and represent
livelihood of thousands of farmers
I997 -USPTO- granted Patent to US Rice Breeding firm
Rice Tec
- Relating to plants and seeds, seeking monopoly over
various rice lines including some having similar
characteristic of Basmati lines
India requested for re-examination of patent
2000- patentee withdrew number of claims including
covering Basmati type lines
Controversy continues for Texmati, Kasmati and Jasmati
on the ground that Basmati is a generic term
IV Hoodia Cactus Controversy
Facts: Kalahari Desert in South Africa- San Tribe
To stave- off hunger and thirst on long hunting trips had
eaten Hoodia Cactus
A Dutch Anthropologist had documented in I937
-CSIR- Scientist at the South African Council and
Industrial Research ( CSIR) found the report
- Patented Hoodia’s appetite – suppressing element
(P57) in I995
I997- They licensed to UK bio-tech company ,
Phytopharm
I998-leading pharmaceutical company Pfizer acquired
the rights to develop and market P57
-potential slimming drug and cure for obesity
- &32 million royalty
- San People threatened legal action against the CSIR
on grounds of bio-piracy
- Claimed their Tk had been stolen
- Claimed CSIR had failed to comply with the rules of
the CBD
- March 2002- understanding reached CSIR recognised
San as the custodians of TK
Ayahuaska-( vine of the soul)
Facts: Amazon Basin indigenous tribes ‘shamans
- Ceremonial drink produced from the bark of
Banisteriopsis Caapi .
- it is used in religious and healing ceremonies to
diagnose and treat illness, meet with spirits, divine
and future.
June I986-Loren Miller an American obtained US
patent
- Right over alleged variety of B.Caapi
- He prepared and called it a ‘Da Vine’
- Represented that the plant was discovered growing in
a domestic garden in the Amazon rain forest of South
America
- COICA- Co-ordinating body of Indigenous
Organisations of the Amazon Basin representing over
400 indigenous group came to know in I994
- Centre for intl. Environmental Law( CIEL) filed re-
examination request
 ground-lack of novelty or distinctiveness
I999-USPTO rejected the patent claim on the ground of
prior art.