Amendments to the Indian Patents Act of 1970

M.Sc. II BiotechnologyIntellectual Property

RightsDariyus Z Kabraji

Introduction• Students now study a roughly similar syllabus of

science and mathematics as their age groups worldwide.

• Thus, the same ideas can be found or undertaken in different parts of the world at the same time.

• Breaks in communication lead to sticky legal situations during unveiling of an invention

• Case in point: In November 1894, J. C. Bose invented radio transmission, but Marconi was credited with the invention since he filed for a patent in May 1897 and Bose didn’t bother filing at all

• Even though he did not care for patents, Bose did receive U. S. Patent 755-840 ‘Detector for electrical disturbances’ in 1904

Introduction• Thus, do we credit both, clearly

acknowledging that neither knew about the other’s experiment?

• Or do we credit Clark Maxwell, who predicted the existence of electromagnetic radio waves in 1887 but died before pursuing his idea?

• Or do we credit Nikola Tesla, who was the first to ever demonstrate a public radio broadcast a year before Bose demonstrated his work?

Introduction• The second biggest concern with unveiling inventions is

claiming responsibility for it • By retaining the controlling interest in a product that you have

created, you have an obligation to be responsible for how it is used, who has access to it and what liberties they may take with it

• Patents were created as a solution to resolve these issues by giving an idea or innovation the characteristics of personal property. This made sure that they could be owned, used, sold or even liquidated under specific circumstances

• Case in point: Nikola Tesla used to work for Thomas Edison but they went their separate ways after certain arguments regarding the ‘War of Currents’ in the 1880s. Tesla developed alternating currents (AC) whereas Edison regarded them as impractical and stuck to his development of direct current (DC).

• Even though Nikola Tesla’s currents are now used in global power systems, Edison is regarded as the greater innovator worldwide since he owned 1093 patents while Tesla owned less than 300. The fact, however, remains that Edison purchased some of his patents

Patents• A patent is a state grant in favour of the

inventor conferring on him a right to use the invention to the exclusion of all others

• The fundamental Principle in awarding a patent is that the right must be granted for an invention, which has novelty and utility

• The extent of legal protection accorded to a patent is based upon the way the patent claim is drafted in the patent application

• After obtaining the grant, the inventor has the right to exploit the patent within the confines of Section 47

PatentsFeatures of Patent Law include:• Both product and process patent provided • Examination on request • A twenty year term• Both pre-grant and post-grant opposition • Fast track mechanism for disposal of appeals • Provision for protection of bio-diversity and

traditional knowledge • Publication of applications after 18 months

with facility for early publication

The Indian Patent Act of 1970

Put forth on 19th September, 1970 as an act to amend and consolidate the law relating to patentsInstalled several safeguards for patent application Consisted of 24 chaptersBegan directly from inventions not patentable to the conditions of filing patents abroad

The Indian Patent Act of 1970

• Safeguards installed include • Compulsory license to ensure availability of drugs

at reasonable prices • Provision to deal with public health emergency • Revocation of patent in public interest and also on

security considerations • Non-patentable Inventions :• There are some products and processes, which are

not patentable in India. They are classified into two categories in the patent act:

• Those, which are not inventions like discovery of a substance freely occurring in nature

• Invention relating to atomic Energy

Patent ConditionsAs per Section 47:• Any machine, apparatus or other article in respect of which the patent

is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use

• Any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils

• In the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette

Amendments in 1999• Put forth on 26th March 1999• Amended sections 5, 40, 64, 116• Omitted section 39• Inserted Section 24(A-F)

Amendments in 1999• Mailbox: Provided the provisions for receiving the

applications for the product patent in the field of drugs, medicines and agro-chemicals

• EMRs (Exclusive Marketing Rights): Grant EMRs for distribution and sale of pharmaceutical products upon fulfillment of certain preset conditions

• Simultaneous Filing: An applicant in India can file an application abroad while simultaneously filing the application in India

• Protection of National Security: The Central Government shall not disclose any information relating to a patentable invention or any application relating to the grant of the patent under this act which it considers prejudicial to the security of India

Amendments in 2002• Put forth on 25th June 2002• Amends sections 2-162• Omitted sections 112 and 161• Inserted section 104A, 107A and new

section 39

Section 39• No person resident in India shall, except under the authority of

a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—

• (a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

• (b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

• The Controller shall dispose of every such application within such period as may be prescribed:Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

• 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 outside India.

Amendments in 2002• Term Extension: Patents now last for 20 years• Appellate Board: Formation of a new board for appeals• Section 3 Amendment: Larger amount of non-patentable

items added to the list• Deposition of Biological Material: Material and relevant data

must be deposited when filing the patent application• Time for Putting Application in Proper Order for Acceptance:

12 months instead of 15• Postpone acceptance of Complete Specification: 12 months

instead of 18 months from the date of filing the application.• Request for examination: No patent application will be

required to be examined unless the applicant or another interested party makes a request in the prescribed manner within 48 months of filing

Amendments in 2002• Additional grounds for opposition to the patent grant: If the

application lacks full disclosure or if there is anticipation regarding the knowledge, oral/otherwise available within a local or indigenous community

• The patent date shall be regarded as the day the application was filed and not the day the complete specification was filed

• Revocation of a patent if it was filed controversial to section 39 or doesn’t match the criteria waiving opposition to its grant (assuming that this is discovered after granting the patent)

• Digitalization and Evidence escrow including the true copy of the application

• Patents granted do not impede public health protection or disallow government rights to protect it

• Substituted provisions pertain to control, related patents, terms, conditions and licensing by the central government

• Increased penalties with respect to infringement and other violations

References• Nikola Tesla versus Thomas Edison, the

‘War of Currents’; Tia Ghose; Live Science Beta journal; July 2014

• Indian Patent Act 1970, First Edition; Indian Parliament Press Release

• Indian Patent (Amendments) Act of 1999; Gazette of India Press Release

• Indian Patent (Amendments) Act of 2002 ; Gazette of India Press Release