MB0051 Unit 14 the Patents Act

8/4/2019 MB0051 Unit 14 the Patents Act

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MB0051-Unit-14-The Patents Act Unit-14-The Patents Act Structure:14.1 Introduction

Objectives

14.2 Inventions not Patentable

14.3 Applications for Patents

Persons entitled to apply for patents (Sec.6)

Form of application (Sec.7)

Information and undertaking regarding foreign applications (Sec.8)

Provisional and complete specification (Sec.9)

Contents of specification (Sec.10)

14.4 Representation and Opposition Proceedings

14.5 Provisions for Secrecy of Certain Inventions

14.6 Grant of Patents and Rights Conferred Thereby

14.7 Patents of Addition

14.8 Restoration of Lapsed Patents

14.9 Compulsory Licenses

14.10 Suits Concerning Infringements of Patents

14.11 Summary

14.12 Terminal Questions

14.13 Answers

14.1 Introduction

In the earlier units, you came to know about the law of Company act and informationrelated laws. In this unit you will study about the Patents Act.

The Patents Act, 1970 extends to the whole of India. The objective is to protect theintellectual property rights of a person to whom the patent has been granted. The Actdescribes the procedure for the grant of patent and protects his rights against

infringement. The Act came into force from21st September, 1970.

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The 1970 Act was amended in 1999 and 2002 to meet India‟s obligations under theAgreement of Trade Related Aspects of Intellectual Property Rights (TRIPs) which formspart of the agreement establishing the World Trade Organisation (WTO). The amendmentsprimarily focused on the obligations which came into force from 1 st January 1995 (inrespect of amendments made in 1999) and obligations which came into force from1st January, 2000 (in respect of amendments notified in 2002).The Patents (Amendment) Act 1999 had, inter alia, provided for the modalities for a 10-year transition facility (which India had negotiated at the time of its accession to theWTO), commencing from January 1, 1995. As a consequence, the law was required to beamended further in respect of India‟s obligations under the TRIPs Agreement, due fromJanuary 1, 2005. Consequently, it was necessary to bring in the required amendments intime and as Parliament was not in session the President of India promulgated the Patents(Amendment) Ordinance, 2004 on December 26, 2004.

ObjectivesAfter studying this unit, you should be able to:

· Define patents

· Describe application of patents

· Explain provisions of secrecy of certain inventions

· Describe lapsed patents restoration

Definitions and InterpretationsThe Act defines certain expressions used therein.

Assignee: It includes an assignee of the assignee and the legal representative of adeceased assignee and references to the assignee of any person include references to theassignee of the legal representative or assignee of that person.

Budapest treaty: It means the Budapest Treaty on the International Recognition of theDeposit of Micro-organisms for the purposes of Patent procedure done at Budapest on 28April, 1977, as amended and modified from time to time.

India as joined the Budapest Treaty and its provisions are applicable to India.

Controller: It means the Controller General of Patents, Design and Trade Marks.

Convention application: It means an application for a patent made by a foreign nationalof a convention country.

Convention country: It means that country or a country which is member of a group of countries or a union of countries or an intergovernmental organization referred to as aconvention country in Sec.133.

Capable of industrial application: In relation to an invention, means that the inventionis capable of being made or used in an industry.

Exclusive licence: It means a licence from a patentee which confers on the licensee, oron the licensee and persons authorised by him, to the exclusion of all other persons



(including the patentee), any right in respect of the patented invention. And “exclusivelicensee” shall be construed accordingly.

Government undertaking: It means any industrial undertaking carried on (i) by adepartment of the Government, or (ii) by a corporation established by a Central or State

Act which is owned or controlled by the Government, or (iii) by a Government company asdefined in Sec.617 of the Companies Act, 1956. It also includes the any institution which isfinanced wholly or for the major part by the government.

Invention: It means a new product or process involving an inventive step and capable of industrial application.

Inventive step: It means a feature of an invention that involves technical advance ascompared to the existing knowledge or having economic significance or both and thatmakes the invents not obvious to a person skilled in that art.

International application: It means an application for patent made in accordance with

the Patent Cooperation Treaty.

New Invention: It means any invention or technology which has not been anticipated bypublication in any document or used in the country or elsewhere in the world before thedate of filing of patent application with complete specification, i.e., the subject matterhas not fallen in public domain or that it does not form part of the state of the art.

Opposition board: It means an opposition board constituted under Sec.25 by thecontroller to examine the opposition to the patent granted and submit its report to thecontroller.

Patent cooperation treaty: It means the patent cooperation treaty done at Washingtonon 19 June 1970 as amended and modified from time to time.

Patent: It means a patent for any invention granted under this Act.

Patent Agent: It means a person for the time being registered under this Act as a patentagent.

Patented article and Patented process: It mean, respectively, an article or process inrespect of which a patent is in force.

Patentee: It means the person for the time being entered on the register as the granteeor proprietor of the patent.

Convention country: The expression convention country is defined in Sec.133. It providesthat any country, which is a signatory to an international, regional or bilateral treaty,convention or arrangement to which India is also a signatory or party and which affords tothe applicants for patents in India or to citizens of India similar privileges as are grantedto its own citizens in respect of the grant of patents and protection of patent rights shallbe a convention country.

Self Assessment Questions

1. Application for a patent made by a foreign national is known as ________________.



2. ____________ is a new product or process involving an inventive step and capable of industrial application.

14.2 Inventions not Patentable

Three sections i.e., 3 – 5 deal with this topic.

Sec.3 lists the following as not being inventions within the meaning of the Act andtherefore, are not patentable:

(a) an invention which is frivolous or which claims anything obvious or contrary to the wellestablished natural laws;

(b) an invention, the primary or intended use or commercial exploitation of which wouldbe contrary to public order or morality or which causes serious prejudice to human, animalor plant life or health or to the environment.

(c) the mere discovery of a scientific principle or formulation of an abstract theory;

(d) the mere discovery of any new property or new use for a known substance or of themere use of a known process, machine or apparatus unless such known process results in anew product or employs at least one new reactant;

(e) a substance obtained by a mere admixture resulting only in the aggregation of theproperties of the components thereof or a process for producing such substance;

(f) the mere arrangement or re-arrangement or duplication of known devices eachfunctioning independently of one another in a known way;

(g) a method of agriculture or horticulture;

(h) any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic,or other treatment of human beings or any process for a similar treatment of animals torender them free of disease or to increase their economic value or that of their products.


3. An invention which claims something obvious or contrary to the well established naturallaws cannot be ________________.

4. _______________ of an abstract theory cannot be called as invention.

14.3 Applications for Patents

Secs.6 to 11 deal with applications for patents.

14.3.1 Persons entitled to apply for patents (Sec.6)A patent application can be made by (a) any person claiming to be the true and firstinventor of the invention; or (b) any person being the assignee of the person claiming tobe the true and first inventor in respect of the right to make such an application, or (c)

the legal representative of any deceased person, who immediately before his death wasentitled to make such an application.



The patent application may be made by any of the above persons either alone or jointlywith any other person.

14.3.2 Form of application (Sec.7)

Every application for a patent shall be for one invention only. The application is to bemade in the prescribed form (available in the patent office), and is to be filed in thepatent office. Every international application under the patent cooperative treaty for apatent, as may be filed designating India, shall be deemed to be an application under thisAct, if a corresponding application has also been filed before the Controller of India.Where an application is made by virtue of an assignment of the right to apply for a patentfor the invention, there shall be furnished with the application and within such period asmay be prescribed after the filing of the application, the proof of the right to make theapplication.

14.3.3 Information and undertaking regarding foreign applications (Sec.8)The Act makes special provisions for patent applications. Every foreign application shall be

accompanied by a statement setting out detailed particulars of such application. Further,the foreign patent-applicant is required to give an undertaking that he would keep theController informed in writing of the details and development in any patent applicationfiled outside India.

14.3.4 Provisional and complete specification (Sec.9)Where an application for a patent (not being a convention application or an applicationfiled under the patent cooperation treaty designating India) is accompanied by aprovisional specification, a complete specification shall be filed within 12 months from thedate of filing of the application. If the complete specification is not so filed, theapplication shall be deemed to be abandoned.

14.3.5 Contents of specification (Sec.10)A description of the invention is called the „specification‟. It should describe the inventionand begin with a title sufficiently indicating the subject matter to which the inventionrelates. Drawings may, and shall, if the Controller so requires, be supplied for the purposeof any specification. Any drawings so supplied shall, unless the Controller otherwisedirects, be deemed to form part of the specification. Further, in any particular case, if the Controller may require that an application should be further supplemented by a modelor sample of anything illustrating the invention. However, such model or sample shall notbe deemed to form part of the specification.

Self Assessment Questions5. Every application for a patent shall be for one invention only. (True/False)

6. Contents of specification comes under ……………….

14.4 Representation and Opposition Proceedings

Secs.25, 26 and 28 deal with the matters relating to opposition to grant of patents.

Opposition to grant of patent (Sec.25). This section provides for pre-grant opposition

procedure, and post-grant opposition procedure for revocation of a patent.

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Pre-grant opposition: A representation, by way of opposition, can be made to thecontroller where an application for a patent has been published but a patent has not beengranted, on the ground of (a) patentability including novelty, inventive step and industrialapplicability, or (b) non-disclosure or wrongful mentioning in the complete specification,source and geographical origin of biological material used in the invention and anticipationof invention by the knowledge, oral or otherwise, available within any local or indigenouscommunity in India.

The controller shall consider and dispose of such representation in such manner and withinsuch period as may be prescribed.

Post-grant opposition: At any time after the grant of a patent but before the expiry of aperiod of one year from the date of publication of grant of a patent, any person interestedmay give notice of opposition to the controller on the same eleven grounds. In the case of the post-grant opposition the controller shall constitute an „opposition board‟ to disposeoff the opposition and lay down the procedure for conducting the examination of suchopposition by the board. The controller is empowered to order either to maintain or to

amend or to revoke the patent on the recommendation of the opposition board. If thespecification or other documents are amended by the order of the controller, the patentshall stand amended accordingly. The application for grant of a patent can be opposed onany one or more of the following grounds only:

(a) the applicant had wrongfully obtained the complete invention or a part thereof from aperson under or through whom he claims;

(b) the invention has been published before the priority date of the claim in any (i) Indianspecification or (ii) other document in India or else where;

(c) the invention has been the subject matter of a prior claim in an application which isprior in time than the applicant‟s claim;

(d) the invention as claimed in the complete specification was publicly known or publiclyused in India before the applicant‟s claim;

(e) the invention as claimed by the applicant in his complete specification is obvious anddoes not involve any inventive step;

(f) the invention is not patentable or its patenting is prohibited under the Act;

(g) the complete specification of the applicant does not sufficiently and clearly describethe invention or the method by which it is to be performed.

(h) the applicant has failed to disclose to the controller the information required by Sec.8or has furnished the information which in any material particular was false to hisknowledge;

Self Assessment Question

7. The controller is empowered to order either to maintain or to amend or to revoke thepatent on the recommendation of the opposition board. (True/False)

14.5 Provisions for Secrecy of Certain Inventions



Secs. 35 to 42 make certain provisions for secrecy of certain inventions. Where in respectof an application for a patent, it appears to the Controller that the invention is one of aclass notified to him by the central government as relevant for defence purpose, then hemay give directions for prohibiting or restricting the publication of information withrespect to the invention or the communication of such information. However theController shall revoke the directions if the central government feels that the publicationof the invention would no longer be prejudicial to the defence of India.

Further, if in respect of an application for a patent any person contravenes any directionas to secrecy given by the Controller, the application for patent shall be deemed to havebeen abandoned and the patent granted, if any, shall be liable to be revoked.

Residents not to apply for patents outside India without prior permission (Sec.39). Noperson resident in India shall, except under the authority of a written permit by thecontroller, make application outside India for the grant of a patent for an inventionunless:

(a) an application for grant of a patent for the same invention has been made in India, notless than six weeks before the application outside India; and

(b) either no direction has been given under Sec.35 (regarding secrecy of certaininventions) in relation to the application in India, or all such directions have beenrevoked.

If the invention, however, is relevant for defence purposes or atomic energy, then thecontroller shall not grant permit without the prior approval of the central government.

Further, this section shall not apply in relation to an invention for which an application for

protection has first been filed in a country outside India by a person resident outsideIndia.


8. Secs.33 to 42 make certain provisions for secrecy of certain inventions. (True/False)

14.6 Grant of Patents and Rights Conferred Thereby

Secs.43 to 53 deal with the grant of patents and the rights conferred on the patentee.

Grant of patents (Sec.43). The patent shall be granted as expeditiously as possible to theapplicant, where the application for a patent has been found to be in order for grant of the patent and either:

(a) the application has not been refused by the controller; or

(b) the application has not been found to be in contravention of any of the provisions of the Act.

Further, on the grant of the patent, the controller shall publish the fact that the patenthas been granted and thereupon the application, specification and other documents

related thereto shall be open for public inspection.



Amendment of patent granted to deceased applicant (Sec.44). Where, at any timeafter a patent has been sealed the patentee dies, (or in the case of a body corporate, thesame has ceased to exist before the patent is sealed) then the Controller may amend thepatent by substituting for the name of that person the name of the person to whom thepatent ought to have been granted.

Date of Patent (Sec.45). Every patent shall be dated as of the date on which theapplication for patent was filed. The date of every patent shall be entered in the Registermaintained in the Patient office.

Form, extent and effect of patent (Sec.46). Every patent shall be in the prescribed formand shall have effect throughout India. Further a patent shall be granted for one inventiononly.

Grant of patents to be subject to certain conditions (Sec.47). The rights granted to apatentee under SEC.48 are subject to certain conditions. The government maymanufacture or import the patented invention for the purpose of its own use. Similarly,

any patented process or product may be used for the purpose of experiment or research orimparting of instructions to pupils.

Rights of patentee. Section 48 provides that the following rights are conferred on apatentee:

(a) where the matter of the patent is a product, the exclusive right to prevent thirdparties, who do not have his consent, from the act of making, using, offering for sale,selling or importing for these purposes that product in India;

(b) where the subject matter of the patent is a process, the exclusive right to prevent

third parties, who do not have his consent, from the act of using that process, and fromthe act of using, offering for sale, selling or importing for those purposes the productobtained directly by that process in India.

Term of Patent (Sec.53). Subject to the provision of this act, the term of every patentgranted after the commencement of the patents (amendment) Act, 2002, and the term of every patent which has not expired and has not ceased to have effect, on the date of suchcommencement, shall be20 years from the date of filling of the application for the patent.

Self Assessment Question9. ______________ deal with the grant of patents and the rights conferred on thepatentee.

14.7 Patents of Addition

Secs.54 to 56 deal with patents of addition. An application may be for a patent in respectof any improvement in or modification of a patented invention (known as main invention).The Controller may grant the patent for the improvement or modification as a “patient of addition” the term of the patent of addition shall run concurrently and terminate with the

main patent. No renewal fee is payable for the patent of addition so long as the mainpatent remains in force.





10. An application may be for a patent in respect of any improvement in or modification of a patented invention. (True/False)

14.8 Restoration of Lapsed Patents

Secs.60 – 62 make provision as regards restoration of patents which have been lapsed.

Application for restoration of lapsed patents (Sec.60). Where a patent has ceased tohave effect by reason of failure to pay any renewal fee within the prescribed time, thenan application may be made to the Controller within 18 months for the restoration of thepatent.

Procedure for disposal of applications for restoration of lapsed patents (Sec.61). If the Controller is satisfied that the failure to pay the renewal fee was unintentional heshall advertise the application. Any person interested may oppose the restoration. TheController shall give to both the applicant and the opponent an opportunity of being heardbefore he decides the application.

Rights of Patentees of lapsed patents which have been restored (Sec.62). When apatent is restored, the rights of the patentee shall be subject to such provisions as may beprescribed.


11. Rights of Patentees of lapsed patents which have been restored under _________________

14.9 Compulsory Licenses

Sec.84 provides as follows:

1. At any time after the expiration of 3 years from the date of the sealing of a patent, anyperson interested may make an application to the controller for grant of compulsorylicence on patent or any of the following grounds: (i) that the reasonable requirements of the public with respect to the patented invention have not been satisfied; or (ii) thepatented invention is not available to the public at a reasonably affordable price, or (iii)the patented invention is not worked in the territory of India.

2. An application for a compulsory license can be made by any person notwithstandingthat he is already the holder of a licence under the patent. Further no person shall beestopped from alleging that the reasonable requirements of the public with respect to thepatented invention are not satisfied or that the patented invention is not worked in theterritory of India or that the patented invention is not available to the public at areasonably affordable price by reason of any admission made by him, whether in such alicence or otherwise or by reason of his having accepted such a licence.

3. Every application for a compulsory licence shall contain a statement setting out thenature of the applicant‟s interest together with such particulars as may be prescribed andthe facts upon which the application is based.



4. The controller, if satisfied that the reasonable requirements of the public with respectto the patented invention have not been satisfied or that the patented invention is notworked in the territory of India or that the patented invention is not available to thepublic at a reasonably affordable price, may grant a licence upon such terms as he maydeem fit.


12. An application for a compulsory license can be made by any person notwithstandingthat he is already the holder of a licence under the patent. (True/False)

14.10 Suits Concerning Infringements of Patents

Secs.104 to 115 deal with the subject of suits concerning infringement of patents. Section104 provides for the jurisdiction of a court for suits to be instituted for infringement of apatent. Section 105 provides that a person may obtain a declaration from the court to theeffect that the use by him of any process or the making, use or sale of an article does not

constitute infringement of a patent claim even though the patentee or licensee has notalleged any infringement. Section 106 empowers the court to grant relief in cases of groundless threats of infringement, including an injunction (subject to such terms, if anyas the court thinks fit) and damages or an account of profit.

Certain acts not to be considered as infringement (Sec.107A). This section allows import of patented commodity from anywhere in the world where it is cheaper, even though it ispatented here. However, the foreign exporter must be duly authorized under the law toexport (he need not be authorized by the patentee to sell and distribute the product).Such type of imports are known as „parallel imports‟ and is a powerful tool that helps inprice control. In other words, this provicsion is made from the user‟s point of view, and

therefore the act of such import will not be considered to be an infringement of thepatent.


13. Foreign exporter must be duly authorized under the law of export. (True/False)

14. ___________ deals with the subject of suits concerning infringement of patents.

(a) Secs.104 to 116

(b) Secs.104 to 117

(c) Secs.104 to 118

(d) Secs.104 to 115

14.11 Summary

The 1970 Act was amended in 1999 and 2002 to meet India‟s obligations under theAgreement of Trade Related Aspects of Intellectual Property Rights (TRIPs) which forms

part of the agreement establishing the World Trade Organisation (WTO). The amendmentsprimarily focused on the obligations which came into force from 1 st January 1995 (in




respect of amendments made in 1999) and obligations which came into force from1stJanuary, 2000 (in respect of amendments notified in 2002).The Patents (Amendment) Act 1999 had, inter alia, provided for the modalities for a 10-year transition facility (which India had negotiated at the time of its accession to theWTO), commencing from January 1, 1995. As a consequence, the law was required to beamended further in respect of India‟s obligations under the TRIPs Agreement, due fromJanuary 1, 2005. Consequently, it was necessary to bring in the required amendments intime and as Parliament was not in session the President of India promulgated the Patents(Amendment) Ordinance, 2004 on December 26, 2004.

GlossaryPatents: A patent for any invention granted under the patent act.

Assignee: It includes an assignee of the assignee and the legal representative of adeceased assignee and references to the assignee of any person include references to theassignee of the legal representative or assignee of that person.

Invention: It means a new product or process involving an inventive step and capable of industrial application.

Patentee: It means the person for the time being entered on the register as the granteeor proprietor of the patent.

14.12 Terminal Questions

1. What do you mean by Patent?

2. Describe the procedure for obtaining a patent.

3. Mention the inventions which are not patentable under the Act.

4. Describe the provisions as regards examination of application for the grant of a patent.

5. Write short notes on:

(a) Revocation of patents

(b) Register of patents

(c) Relief for infringement

14.13 Answers

Answers to Self Assessment Questions1. Convention application

2. Invention

3. patented

4. Formulation



5. True

6. Section 10

7. True

8. False

9. Secs.43 to 53

10. True

11. Sec.62

12. True

13. True

14. (d)

Answers to Terminal Questions1. Refer 14.1 – Patent means a patent for any invention granted under the patent Act.

2. Refer 14.3 – Secs.6 to 11 deal with applications for patents.

3. Refer 14.2 – for more detail

4. Refer 14.6 – Secs.43 to 53 deal with the grant of patents and the rights conferred on thepatentee.

5. For detail please refer full unit.

Mini-caseSuven Life Sciences said the European Patent Office (EPO) has issued three patents to itschemical entities which are used in treating nerve disorders.

"The company gets three patents – EP1537113, EP1704154 and EP1856132 and the said arevalid until 2023, and 2024, 2022, respectively," Suven said in a filing to the Bombay StockExchange.

The granted claims of the patents include therapeutic agents, useful in the treatment of neurodegenerative disorders like alzheimer‟s, parkinson, and schizophrenia, the filingadded.

"We are very pleased by the grant of these patents to Suven by EPO for our pipeline of molecules in central nervous system arena that are being developed for cognitivedisorders," the company CEO, Mr Venkat Jasti, said.

With these new patents, Suven has a total of seven granted EPO patents on new chemicalentities.



These patents are exclusive intellectual property of Suven and are achieved throughinternal discovery research efforts, it added.

Question

What is the importance of these patents to Suven? (Hint: Its no one involved in the samepatent.)

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MB0051 Unit 14 the Patents Act