Patents | All you need to know about patent laws
Keywords – Patents, Patent Laws, Intellectual Property Rights, IPR, Patent Protection
Written By – Mansi
What is a Patent?
Patent is an exclusive right in form of a legal document granted by the government to the inventor to exclude others to make, use, and sell an invention for a specified period of time. Patents are also available for significant improvements on previously invented items.
The main motto to enact patent law is to encourage inventors to contribute more in their field by awarding them exclusive rights for their inventions. In modern terms, the patent is usually referred to as the right granted to an inventor for his Invention of any new, useful, non-obvious process, machine, article of manufacture, or composition of matter.
A device, method, composition, or procedure that is original or novel is considered an innovation.
Simply put, a patent is an exclusive right bestowed by a government on the creator of innovation for a limited period of time. This privilege prevents others from making, indulging, creating, utilising, selling, or importing the invention without the creator’s approval.
Brief about Indian Patent System
The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857. In 1872, the Act of 1859 was consolidated to provide protection relating to designs and was renamed as ‘The Patterns and Designs Protection Act’ under Act XIII of 1872. The Act of 1872 was further amended in 1883 (XVI of 1883) .The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the previous Acts. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was further amended in 1920 . In 1952 (Act LXX of 1952) an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices.
• After second amendment this Act came into force on 20th May 2003 with the introduction of the new Patent Rules, 2003 by replacing the earlier Patents Rules, 1972.
• The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1 st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act 2005 (Act 15 Of 2005 ) on 4 th April, 2005 which was brought into force from 1-1-2005 , wherein product patent was extended to all fields of technology including food, drugs, chemicals and micro-organisms. After the amendment, the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
Test for Patentability
There are three basic tests for any invention to be patentable
The government grants a patent for any innovation that is novel, non-tangible and valuable in terms of contemporary application.
- The invention must be novel, meaning invention did not previously exist. An invention considered as new if, on the date of filing the application, any such invention is not known to the public in any form, i.e. oral, writing, or any other form. Anything shall not be termed as inventive if such a thing is already known to the public domain.
- The Invention must be non- obvious, i.e. the Invention must be a significant improvement to the existing technology ; Simple changes to previously known devices do not comprise a patentable invention.
- The invention must be useful in a bonafide manner, meaning thereby that the Invention must not be solely used in any illegal work or immoral purpose.
Under the Indian patent law, a patent can be obtained only for an invention which is new and useful. The invention must relate to the machine, article or substance produced by a manufacturer, or the process of manufacture of an article. A patent may also be obtained for innovation of an article or of a process of manufacture. In respect to medicine or drug and certain classes of chemicals, no patent is granted for the substance itself even if it is new, but the process of manufacturing and substance is patentable.
The application for a patent must be true and the first inventor or the person who has derived title from him, the right to apply for a patent being assignable.
Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc2.
Patentability of Biotechnological Inventions
In view of the Office instructions of the Controller General of Patents, Designs & Trademarks dated 15th July, 1991, view point regarding patentability of biotechnological inventions in India is:
Inventions relating to organisms or biological material per se viz-living entities of natural or artificial origin such as animals, plants and microorganisms, biological material such as plasmids, viruses, gene, recombinant DNA, bacteria, fungi, algae and other materials having self replicating properties and parts thereof,
Naturally occurring substances from living entities, biological materials and also process for their production, are not Patentable under the Act. Hence no claim is allowable for such inventions.
Inventions relating to process or methods of production of tangible and non living substances like enzymes, antibiotics, insulin, hormones, interferon, alcohols, vaccines etc. by bioconversion or using such micro organisms or by utilizing the above referred biologically active substances as well as chemical substances produced by using genetically engineered organisms or such existing substances made more economically by use of biotechnology and/or microbiology are patentable under the Patent Act, 1970.
While claiming the inventions in respect of above subject where strain/bacteria have been used and deposited in depositing authorities and allotted their accession number, such depositions or accession number should be followed by the characteristics of such strain or bacteria.
Under the Indian law the following are Non-Patentable
(as under sections 3 and 5 of Indian Patents Act, 1970)
1. An invention which is frivolous or which claims anything obvious contrary to well established natural laws.
2. An invention the primary or intended use of which would be contrary to law or morality or injurious to public heath.
3.The mere discovery of a scientific principle or the formulation of an abstract theory.
4. 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.
5. A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance .
6. The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.
7. A method or a process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.
8. A method of agriculture or horticulture. Any process for the medicinal, surgical, curative, prophylactic or other treatment of human being or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.
9. No Patent shall be granted in respect of an invention relating to Atomic energy.
10. Claiming substances intended for use, or capable of being used, as food or as medicine or drug Relating to substance prepared or produced by chemical processes (including Alloys, optical glass, semiconductor and inter-metallic compounds), no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable.
The criteria under the US laws are also quite similar as above. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.
In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.
Procedure for Grant of Patents in India
In India as per the Patent Act of 1970, an application for a patent may be made by the actual inventor of the invention, or an assignee of the right to make an application or a legal representative of either. It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant. A person who has merely communicated the idea to another, who actually gave practical shape to the idea and developed the invention, cannot claim to be the first and true inventor. A foreign national resident abroad is not prohibited from making an application and obtaining a Patent in India.
In India, a patent application can be filed, either alone or jointly, by true and first inventor or his assignee.
An application for a patent in the prescribed form along with the prescribed fee should be filed in appropriate office of the patent office. An application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business places or domicile in India, the appropriate office will be according to the address of service in India given by the applicant or party in a proceeding.
Types of Patent Applications
- Provisional Patent Application
- Convention Patent Application
- PCT National Phase Patent Application
- Ordinary Patent Application
- Patent of Addition
- Divisional Application
After filing the application for the grant of patent, a request for examination is required to be made for examination of the application in the Indian Patent Office within 48 months from the date of priority of the application or from the date of filing of the application. After the first examination report is issued, the applicant is given an opportunity to meet the objections raised in the report. The applicant has to comply with the requirements within 6 months from the issuance of the first examination report which may be extended for further 3 months on the request of the applicant.
If the requirements of the first examination report are not complied with within the prescribed period of 9 months, then the application is treated to have been abandoned by the applicant. After the removal of objections and compliance of requirements, the patent is granted and notified in the Patent Office Journal.
Filing of Application for Grant of Patent in India by Foreigners
India being a signatory to the Paris Convention for the Protection of Industrial Property, 1883 and the Patent Cooperation Treaty (PCT), 1970, a foreign entity can adopt any of the aforesaid treaties for filing of application for grant of patent in India.
Where an application for grant of patent in respect of an invention in a Convention Country has been filed, then similar application can also be filed in India for grant of patent by such applicant or the legal representative or assignee of such person within 12 months from the date on which the basic application was made in the Convention Country, ie, the home country. The priority date in such a case is considered as the date of making of the basic application.
Pre-grant Opposition
A representation for pre-grant opposition can be filed by any person under s 11A of the Patents Act, 1970 within six months from the date of publication of the application, as amended (the “Patents Act”) or before the grant of patent. The grounds on which the representation can be filed are provided under section 25(1) of the Patents Act. There is no fee for filing representation for pre-grant opposition. Representation for pre-grant opposition can be filed even though no request for examination has been filed. However, the representation will be considered only when a request for examination is received within the prescribed period.
Post-grant Opposition
Any interested person can file post-grant opposition within twelve months from the date of publication of the grant of patent in the official journal of the patent office.
Term of Patent
The patent has a limited term of 20 years, which is counted from the date of filing of the patent application. A patent is a territorial right. Thus it can only be applied in the country where it has been granted. Therefore, any legal action against infringement or infringement of patent rights can only be taken in that country. To obtain patent protection in different countries, each country must apply for a patent. The Patent Cooperation Treaty (PCT) provides a way to file an international patent application in which a patent can be filed through a single patent application in a large number of countries. However, the PCT of a patent remains discretionary of the individual patent office only after the application is filed.
Payment of Renewal Fee
It is important to note that a patentee has to renew the patent every year by paying the renewal fee, which can be paid every year or in lump sum.
Restoration of Patent
A request for restoration of patent can be filed within eighteen months from the date of cessation of patent along with the prescribed fee. After the receipt of the request, the matter is notified in the official journal for further processing of the request.
Compulsory Licensing
One of the most important aspects of Indian Patents Act, 1970, is compulsory licensing of the patent subject to the fulfilment of certain conditions. At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller of Patents for grant of compulsory license of the patent, subject to the fulfilment of following conditions, ie.
• the reasonable requirements of the public with respect to the patented invention have not been satisfied;
• that the patented invention is not available to the public at a reasonable price; or
• that the patented invention is not worked in the territory of India.
It is further important to note that an application for compulsory licensing may be made by any person notwithstanding that he is already the holder of a licence under the patent.
For the purpose of compulsory licensing, no person can be stopped from alleging that the reasonable requirements of the public with respect to the patented invention are not satisfied or that the patented invention is not available to the public at a reasonable price by reason of any admission made by him, whether in such a licence or by reason of his having accepted such a licence.
The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable price, may order the patentee to grant a licence upon such terms as he may deem fit.
The grant of compulsory license cannot be claimed as a matter of right, as the same is subject to the fulfilment of certain conditions and discretion of the Controller of Patents. Further judicial recourse is available against any arbitrary or illegal order of the Controller of Patents for grant of compulsory license.
Patent Office
The Patent Office functions under the superintendence and control of the Controller General of Patents, Designs and Trade Marks (CGPDTM), Mumbai.
The Office of CGPDTM is a sub-ordinate office under the Department of Industrial Policy and Promotion (DIPP), Ministry of Commerce & Industry, Government of India.
The Controller referred to Section 73(1) of the Act means the Controller General of Patents, Designs and Trademarks. The Government appoints the as per Section 3 of the Trademarks Act, 1999[1], the Controller General of Patents, Designs and Trademarks is appointed. The person so appointed under the Trademarks Act, 1999, by the Government will be the Controller of Patents for the purposes of the Patents Act, 1970. The Central Government is also authorized to appoint examiners and other required officers with designations as the government deems fit. The officers so appointed by the Central Government should discharge their duties, under the directions and superintendence and of the Controller General of Patents, Designs and Trademarks, and such functions of the Controller of Patent under the Patent Act, 1970, as he/she may authorize in writing from time to time, by special or general order.
Infringement of Patents
Patent Infringement” in simple words means intrusion or encroachment upon the patent rights of patent holder or patentee, where the patent is valid and legally enforceable in a given jurisdiction (patent rights are territorial and the patent granted in a specific jurisdiction is valid and enforceable only in that jurisdiction).
What acts constitute Infringement?
Section 48 of the Patents Act, 1970 grants the following rights to the patentee:
• In case of a product patent, the following sections would amount to infringement – making, using, offering for sale, selling or importing for these purposes, the product in India without the permission of the patentee.
• In case of a process patent, the following would amount to infringement – using, offering for sale, selling or importing for these purposes the product obtained directly by that process in India without the permission of the patentee.
Any person who, without the consent of the patentee performs the above activities, infringes the patent.
Types of Patent Infringement
• Direct infringement – which is the most apparent and common type of infringement. This type of infringement includes marketing, sale or commercial use of an exact patented item or invention that performs substantially identical functions. Direct infringement may be literal or nonliteral (also known as the doctrine of equivalents).
• Indirect infringement is when infringement does happen but the direct infringement is facilitated by someone else. Indirect infringement are of two types, inducted infringement wherein one actively induces the other person to infringe a patent by encouraging, assisting, aiding, inducing him/her to do so and contributory infringement, wherein there is an intentional participation/assistance by one party in an act of infringement to the other party making them vicariously liable for the acts of the infringer.
What acts do not constitute Infringement?
There are certain acts which do not constitute/result in infringement. Section 107A states that the following acts do not constitute infringement –
• Any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any Indian law or law of a country other than India, that regulates the manufacture, construction, use, sale or import of any product.
• The importation of patented products by any person from a person who is duly authorised by patentee under the law to produce and sell and distribute the products.
Burden of Proof in case of Patent Infringement
In any suit for infringement of a process patent, the defendant may be directed to prove that the process used by him to obtain the product that is identical to the product of the patented process, is different from the patented process. Such direction may be passed by the court, if, the subject matter of the patent is a process for obtaining a new product; or, there is a substantial likelihood that the identical product is made by the process, and the patentee or a person deriving title or interest in the patent from him, has been unable through reasonable efforts to determine the process actually used. However, before obtaining such a direction, the plaintiff (claimant) has to prove that the product is identical to the product directly obtained by the patented process.
In an infringement action, the main function of the court is to construe the claims which are alleged to have been infringed, without reference to the body of the specification, and to refer to the body of the specification only if there is any ambiguity or difficulty in the construction of claims in question.
Patent infringement proceedings can only be initiated after grant of patent in India but may include a claim retrospectively from the date of publication of the application for grant of the patent. Infringement of a patent consists of the unauthorised making, importing, using, offering for sale or selling any patented invention within the India.
Under the (Indian) Patents Act, 1970 only a civil action can be initiated in a Court of Law. Further, a suit for infringement can be defended on various grounds including the grounds on which a patent cannot be granted in India and based on such defence, revocation of Patent can also be done.
Remedy for Infringement of Patents
Section 108(1) of the Patents Act provides for the remedies to the plaintiff in case his patent rights have been infringed.
There are three types of remedies available against infringement of copyright: (1) Civil (2) Criminal, and (3) Administrative All the three remedies are independent and can be pursued simultaneously or separately.
An action for infringement must be instituted by way of a suit in any District Court or a High Court having jurisdiction to entertain the suit.
The plaintiff on satisfying the court about infringement of his patent would be entitled to the following relief:
1.Injunction
2. Damages
3.Account of profits
These remedies are not cumulative but alternative.
1.Injunction: It is a preventive civil remedy. It is of two kinds:
• Temporary/ interlocutory injunction: It is limited to a specific period or till the time the case is finally decided on merit. Relief by way of interlocutory injunction is granted to mitigate the risk of injustice to the plaintiff during the period before the uncertainty could be resolved. Its object is to protect the plaintiff against injury by violation of his right for which he could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial.
This is passed in order to prevent the defendant from getting further profits by using other patented products. In order to invoke a temporary injunction, it is important for the patentee to prove that the patent is valid by all terms and has been infringed by the defendant. Also, the subsequent infringement of his patent rights has caused irreparable loss to him.
• Permanent injunction: A permanent injunction is invoked when the case is finally decided by the court on merit. The interim injunction is transferred to a permanent injunction if the defendant is found guilty of patent infringement rights and the decision is on the side of plaintiff. But if the defendant is absolved from the liability and proved to be innocent, then the interim injunction stands dissolved and is not converted into a permanent injunction. It is limited to the duration of the patent.
• EX parte interim injunction:
Following guidelines may be taken into consideration by the trial courts before granting ex parte ad interim injunction:
• Where the plaintiff and the defendant are residing outside the state and their information like identity, address, etc. are easily known.
• Where sales of the infringed products are not on a commercial scale.
• Where the interim injunction is going to result in the closure operation/ business of the defendant.
• The trial court should carefully scrutinize the certificates, infringing marks, etc. in case of patent/ trade mark disputes.
• No ex parte interim injunction can be granted if no evidence of infringement has been produced by the plaintiff.
The owner of a patent is entitled to either damages or an account of profits. He may either obtain damages in respect of losses caused by infringing activities of the defendant or an account of profits obtained by the infringer – but he cannot seek both. When drafting particulars of claim, the claimant will generally request these remedies as the alternative. It will be granted in addition to the remedy of injunction.
2. Damages – In assessing the damages the important question is what is the loss sustained by the patentee.
The loss must be the natural and direct consequence of the defendants acts. The object of damages is to compensate for loss or injury.
3. Accounts of Profits – Where a patentee claims the profits made by the unauthorised use of his patent, it is important to ascertain how much of his invention was appropriated, in order to determine what proportion of the net profits realised by the infringer was attributable to its use.
4. Seizure or forfeiture of infringing goods: Apart from other reliefs which a court may grant, the court may also order that the goods which are found to be infringing and materials which are predominantly used in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation.
