INDIAN PATENTS ACT, 1970

7/31/2019 INDIAN PATENTS ACT, 1970

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MODULE-3SALIENT FEATURES OF THE PATENTS ACT, 1970(alongwith INTERNATIONAL ASPECTS)

- An Act to amend and consolidate the Law relating to Patents1. The Indian Patents and Designs Act, 19112. Patents Enquiry Committee - Report in 1950 - Patents Bill, 1953 - Lapsedwith dissolution of 1st Lok Sabha - based on United Kingdom Patents Act, 19493. The Patents Bill, 1965 - Sri. Justice N. Rajagopala Ayyangar Report, 1959 - Joint Committee of Parliament - Lapsed on dissolution of 3rd Lok Sabha4. The Patents Act, 1970 - from 20.04.19725. 1999 Amendment - To keep it in tune with trade related aspects of Intellectual Property rights (Trips) entered into by WTO and to provide for Public Interest, National Security, Bio-diversity, Traditional Knowledge, Procedure for grant of Patents

EXTANT - Extends to the whole of India

ENFORCEABILITY - 20.04.1972

DEFINITIONS1. Sec. 2(ab) - ASSIGNEE includes as Assignee of the Assignee and the legal representative of a deceased assignee and references to the assignee of any person include references to the assignee of the legal representative or assignee of

that person

2. Sec. 2(ac) - CAPABLE OF INDUSTRIAL APPLICATION in relation to an inventionmeans that the invention is capable of being made or used in an Industry

3. Sec. 2(c) - CONVENTION APPLICATION means an application for Patent made byvirtue of Sec. 135

4. Sec. 2(d) - CONVENTION COUNTRY means a country or a country which is member of a group of countries or an union of countries or an inter-governmental organisation notified as such under Sec. 133(1)

5. Sec. 2(f) - EXCLUSIVE LICENCE means a licence from a Patentee which confer

s on the Licensee, or on the Licensee and persons authorised by him, to the exclusion of all other persons (including the Patentee) any right in respect of thepatented invention and Exclusive Licensee shall be construed accordingly.

6. Sec. 2(g) - FOOD means any Article of Nourishment for human consumption and also includes any substance intended for the use of infants, invalids or convalescents as an article of food or drink

7. Sec. 2(ia) - INTERNATIONAL APPLICATION means an application for Patent made in accordance with the Patent Co-operation Treaty

8. Sec. 2(j) - INVENTION means a new product or process involving an inventive step and capable of industrial application

9. Sec. 2(ja) - INVENTIVE STEP means a feature that makes the invention so obvious to a person skilled in the Art

10. Sec. 2(l) - MEDICINE OR DRUG includesi) All medicines for internal or external use of human beings and a

nimalsii) All substances intended to be used for or in the diagnosis, trea

tment, mitigation of diseases in human beings and animalsiii) All substances intended to be used for or in the maintenance of


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public health, or the prevention or control of any epidemic disease among humanbeings or animals

iv) Insecticides, Germicides, Fungicides, Weedecides and all other substances intended to be used for the protection or preservation of plants

v) All chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances abovereferred to

11. Sec. 2(m) - PATENT means patent granted under the Act

12. Sec. 2(n) - PATENT AGENT means a person for the time being registered under the Act as Patent Agency

13. Sec. 2(o) - PATENTED ARTICLE AND PATENTED PROCESS means respectively an Artcle or Process in respect of which a Patent is in force

14. Sec. 2(oo) - PATENT CO-OPERATION TREATY means the Patent Co-operation Treaty done at Washington on 19th June 1970 as amended and modified from time to time

15. Sec. 2(p) - PATENTEE means a person for the time being entered on the register as the Grantee or Proprietor of the Patent

16. Sec. 2(q) - PATENT OF ADDITION means a Patent granted in accordance with S

ec. 54

17. Sec. 2(t) - PERSON INTERESTED includes a person engaged in, or in promoting research in the same field as that to which the invention relates

18. Sec. 2(y) - TRUE AND FIRST INVENTOR does not include either the First Importer of any invention into India, or to whom an invention is first communicatedfrom outside India

INVENTIONS NOT PATENTABLESec. 3 - WHAT ARE NOT INVENTIONS1. Frivolous and contrary to laws of nature2. Commercial exploitation of which is contrary to public order or morality

and causes prejudice3. Discovery of : Scientific principle / FormulationLiving thingNon-living substance occurring in natureNew property or new use of a known substanceNew use of known process, machine or appratus unless res

ulting in new product4. A substances obtained by admixture5. Mere arrangement or re-arrangement or duplication of known devices6. Method of agriculture and horticulture7. Any process for medicinal, surgical, curative, prophylactic, diagnostic,therapeutic treatment of human beings and animals to render them free of disease or which increases its economic value

8. Plants and animals and its biological process for production or propagation9. Mathematical or business method or computer program10. Literary, dramatic, musical or artistic work or aesthetic creation including cinematographic works and television productions11. Scheme or role or method of performing mental act or method of playing game12. Presentation of Information13. Topography of integrated circuits14. An invention involving traditional knowledge


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Sec. 4 - INVENTIONS relating to ATOMIC ENERGY NOT PATENTABLE as per Atomic Energy Act, 1962

Sec. 5 - INVENTIONS where only METHODS OR PROCESSES OF MANUFACTURE PATENTABLE1. Substances used in drugs or medicines2. Substances produced by Chemical processes. Eg. Alloys, Optical glass, Semi-Conductors and Inter-metallic compounds - But methods and processes of manufacture patentable

PROCEDURE FOR OBTAINING PATENT- Submit Application - Provisional and Specific Application- Publication of Application and Opposition- Examination of Application and points to be kept in mind by Examiner- Powers of Controller inclusive of fixing priority date and acceptance ofComplete Specification and its Advertisement- Opposition and Anticipation- Grant and Sealing of Patents- Provision of Secrecy of some Inventions- Rights make, use, market - import- Restoration of lapsed Patents within 18 months and on payment of renewalfee- Surrender and Revocation of Patents

PATENT OF ADDITION (Sec. 54)Patent of Addition can be granted to any improvement in or modification of a Patent wherein a Complete Specification has been filed and the Complete Specification should have been filed on or later than date of specification in main invention.

REGISTER OF PATENTS (Chap. XIII)The Register of Patents maintained in Patent Office- Contains the name of Patentee and Assignee- Register can be rectified- Register is open for public inspection, can obtain certified copies on paying prescribed fee

PATENT OFFICE AND ITS ESTABLISHMENT (Chap. XIV)- The Controller General of Patents, Designs and Trade Mark appointed under Trade Marks Act is Controller of Patents- Assisted by Examiners and Officers- Provision for branches- Confidentiality to be maintained

POWER OF CONTROLLER (Chap. XV)1) Some powers of Civil Court2) To correct clerical errors3) Power to take oral evidence

4) Discretionary powers5) Extension of time to do acts under the Act

PROVISIONS FOR SECRECY OF CERTAIN INVENTIONS- When Controller is of opinion that an Application if of a class notifiedby Central Government as relevant for defence purposes, Controller to give direction for its non-publication and inform Central Government, Central Governmentto revoke direction or direct if directions not given (Sec. 35)- The above direction to be periodically reviewed at 12 months intervals or on application of Applicant and Applicant to be informed of same (Sec. 36)


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- Consequences of Secrecy Directions :i) Controller not to pass Ordersii) No Appeal to lie from direction of Controlleriii) Secs. 100 - 103 to applyiv) If hardship is caused to Applicant, Solatium to be paid by Centr

al Governmentv) If Patent is granted subsequently, no renewal fee during pendenc

y of directions- When revocation of Secrecy Directions has taken place Applicant to be given extension of time for doing what he has to carry out (Sec. 38)- No Application can be preferred outside India for grant of Patent relating to defence purposes or atomic energy without written permission of Controllerand prior consent of Central Government (Sec. 39)- Violation of Sec. 35 & 39 results in abandonment and revocation of Patent (Sec. 40)- Orders of Controller and Central Government - Final and cannot be questioned in Court (Sec. 41)- All disclosures by Controller to Central Government valid (Sec. 42)

PROVISION IS THERE FOR USE OF INVENTIONS FOR PURPOSES OF GOVERNMENT AND ACQUISITION OF INVENTIONS BY CENTRAL GOVERNMENT

SUITS CONCERNING INFRINGEMENT OF PATENTS- District Court to have jurisdiction concerning Suits for Infringement of

Patents and in case of parallel Suit for revocation to be transferred to High Court (Sec. 104)- Burden of Proof :

Plaintiff - Product identical to Patented productDefendant - Process and Product different (Sec. 105)

- Court has power to declare a Product as Non-Infringing (Sec. 106)- In case of threats of Suits of Infringement Court may direct :

a) By Declaration of Threats as unjustifiableb) Grant Injunction against Threatsc) Damages (Sec. 106)

- All defenses available under Revocation available for in defense of Infringement (Sec. 107)- Following Acts not Infringement :

i) Use as per Lawii) Import by Authorised Person (Sec. 107)- Relief in Suits for Injunction :

i) Injunctionii) Damages / an Account of Profitsiii) Goods may be seized, forfeited or destroyed (Sec. 108)

- Licencee has same Rights for Infringement of his Rights and in case of Infringement of Patent Suit by Licencee, Patentee is Plaintiff otherwise Defendant (Sec. 110)- In case of Infringement of Patent, Licencee (under Sec. 84) may requestPatentee to file Suit of Infringement and if Patentee fails within two months, Licencee to file same and Patentee to be included as Defendant (Sec. 110)- Court not to grant damages under following circumstances :

i) Infringer was not aware of existence of Patentii) Plaintiff has failed to pay Renewal Feeiii) Amendment of Specification by way of Disclaimer not allowedAnd above not to effect Grant of Injunction (Sec. 111)

- High Court may grant Certificate of Validity of Suit for Infringement but the same not to effect Appeals (Sec. 113)- Court to grant Relief in case of Valid Claims (Sec. 114)- Court to take advise of Scientific Advisor on Application or Sou Motu (Sec. 115)


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PROVISION FOR APPEAL TO APPELLATE BOARD

PATENT AGENT

INTERNATIONAL ARRANGEMENTS- Notification as Convention Country when another Country is given same Rights as Indians based on Treaty, Convention or Arrangement (Sec. 133)- Notification as to Countries not providing for Reciprocity then that National cannot :

i) Apply for Grant of Patentii) Registered as Proprietor of Patentiii) Apply and hold Licence (Sec. 134)

- Convention Application - Made in more than One Country (Sec. 135)- Special Provisions relating to Convention Application are :

i) Accompanied by Complete Specificationii) Specify Date and Countries where Application is submittediii) No Application prior to Date of receiving Authority- Patents of Additions Application- Convention Application cannot be Post-Dated (Sec. 136)

- One Application sufficient in case Convention Application is made in more than One Country in respect of same Invention and Priority Date is Date of First Application (Sec. 137) and disclosure to have taken place in First Application- Supplementary Provisions as to Convention Application -

i) To give information of all Applicationsii) Translation if in Foreign languageiii) Date of Application as given by Head in that Countryiv) Complete Specification in International Application can be used

for purposes of this Actv) Date of Filing to be Date of Filing under Patent Co-operation Tr

eatyvi) Amendment to be considered as made before Patent Office

- All other Provisions to apply to Convention Application (Sec. 139)

INTERNATIONAL ASPECTS- United States Patent and Trade Mark Office has granted 5 million Patentsduring its existence of 200 years First Patent granted to Samuel Hopkins in 179

0 for improvement in making of potash and pearl ash- Today novelty must be global

PROTECTION UNDER TRIPS (Trade Related Intellectual Property)Article 27 of the TRIPS Agreement deals with the patentable subject-matter and has the following provisions relating to what is patentable in the member countries.

(1) Patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application

(2) Members may exclude from patentability, inventions, the prevention within their territory of the commercial exploitation of which is necessary to pr

otect Ordre Public or morality, including to protect human, animal or plant lifeor health or to avoid serious prejudice to the environment, provided that suchexclusion is not made merely because the exploitation is prohibited by law.

(3) Members may also exclude from patentability:(a) Diagnostic, therapeutic and surgical methods for the treatme

nt of humans or animals;(b) Plants and animals other than micro-organisms and essentiall

y biological processes for the production of plants or animals other than non-biological and microbiological processes. However, members shall provide for the p


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rotection of plant varieties either by patents or by an effective sui generis system or by any combination thereof.

- India is in full compliance of TRIPS from 2005

GLOBAL PATENTING TRENDS- As per WIPO (World Intellectual Property Organisation) statistics 5.4 million Patents are in force as on 2004- The leading is as follows - United States, Japan, United Kingdom, Germany, France and South Korea- Patents can be filed first in country of origin (provides for recognition of invention) to establish priority and then in several countries (in tune with globalisation) or through Paten Co-operation Treaty (PCT)

FRAMEWORK FOR PATENTING : SELECTED COUNTRY SCENARIOS- Patent laws differ across countries : Reasons :

a) Patent laws are territorial in natureb) Differences in the scope of Patent claims from country to countr

y- Regional and International Organisations are attempting to minimise thedisparities

1. UNITED STATES OF AMERICA (U.S.A.)- The Office is USPTO i.e. United States Patent and Trade Marks Office.

- Role : a) administers the relevant lawb) creation of valid Intellectual Property Rightsc) advises United States Government on domestic and

global aspects of Intellectual Propertyd) examination of Applicationse) issuance of Patentsf) dissemination of information to publicg) receives Applications from all over the World

- Act applicable is The Patent Act- Utility Patents - duration 20 years from date of filing

- enforceable from date of issuance- Design Patents - protect ornamental designs- Plant Patents - protects new varieties of asexually reproducing

plants- Concepts:a) Patentability of Subject Matters refers to area of science rathe

r than product i.e. under which head to be patentedb) Prior Art refers to similar or comparable inventions already pre

valent in the particular area of subject matter of Patentc) First Inventor eligible for Patentd) Novelty i.e. newnesse) Non-obvious improvement to prior artf) Utility means commercial use

- Procedure:a) Patent Application / filing of Complete Specification

b) English languagec) Accompanied by required feed) With relevant specifications and drawingse) Priority Date on basis of First to Filef) Provision for Provisional Applicationg) Examinationh) Provision for appeal in case of non-acceptancei) Grant of Patent


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2. EUROPE- The Office is European Patent Office (EPO)- Applicable to 30 European countries on the basis of a Single Patent Application and an unitary grant procedure- Comes with purview of European Patent Convention supplemented by European directives and National Legal System- Procedure:

a) Filing of Application - sought for each country, by Inventorb) Provisional Application can be filedc) Complete Application to be filedd) Examination and Report (inclusive of search, whether prior art a

nd a patentable invention)e) Patent sealed if accepted by Examinerf) Third Party Oppositiong) Validated for each designate Stateh) Term is 20 years from date of filing

3. JAPAN- The Office is Japan Patent Office (JPO)- Function:

1) granting adequate rights for Patents2) drafting plans for Intellectual Property policies3) international exchange and co-operation

4) review of the Intellectual Property system5) dissemination of information on Intellectual Property- Procedure:

1) Application2) Application checked to see if they are in line with procedural an

d formal requirements3) First to File System recognised4) Publication in Official Gazette5) No formal Examination except on request of Applicant and Third P

arty request - then examined by Examiner - no formal request within 3 years of filing then it is considered that Application is withdrawn

6) Then grant or refusal of ApplicationGrant :

i) If granted then registered on payment of fee and publishedii) Provision for appeal for invalidation of PatentRefusal of Application :i) Notice of Refusal, heard, then refusedii) Then appeal to Intellectual Property High Court and Supr

eme Court

Documents

INDIAN PATENTS ACT, 1970