India: Patents Law In India - Everything You Must Know

Updated on : 2021-Jan-16 13:48:44 | Author :

The history of patent law in India starts from 1911 once the Indian Patents and Designs Act, 1911 was enacted. the current Patents Act, 1970 came into force in the year 1972, amending and consolidating the existing law with reference to Patents in India. The Patents Act, 1970 was again amended by the Patents (Amendment) Act, 2005, whereby product patent was extended to all fields of technology together with food, drugs, chemicals, and micro-organisms. once the modification, the provisions relating to Exclusive Marketing Rights (EMRs) are repealed, and a provision for sanctioning grant of mandatory license has been introduced. The provisions relating to pre-grant and post-grant opposition are also introduced.

 

An invention relating to a product or a process that is new, involving an inventive step, and capable of business application can be patented in India. However, it must not fall into|constitute|represent| makeup |comprise|be} the category of inventions that are non-patentable as provided under sections 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed, either alone or jointly, by the true and first creator or his assignee.

 

Procedure for Grant of a Patent in India

 

After filing the application for the grant of a 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 appliance or from the date of filing of the application. the application the primary 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 possess been abandoned by the applicant. After the removal of objections and compliance with requirements, the patent is granted and notified in the Patent Office Journal. The process of the grant of patent in India can even be understood from the following flow chart:

 

 

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 written agreement (PCT), 1970, a foreign entity will adopt any of the aforesaid treaties for filing of an 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 the similar application may also be filed in India for grant of a 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 within the Convention

Country, ie, the home country. The priority date in such a case is considered as the date of making of the essential application.

 

Pre-grant Opposition

 

A representation for pre-grant opposition can be filed by any person below 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 below section 25(1) of the Patents Act. there is no fee for filing illustration for pre-grant opposition. representation for pre-grant opposition may 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 a patent within the official journal of the patent office.

 

Grounds for Opposition

 

Some of the grounds for filing pre-and post-grant opposition area unit as under:

 

(a) Patent wrongfully obtained;

 

(b) Prior publication;

 

(c) The invention was publicly known or publicly used in India before the priority date of that claim;

 

(d) The invention is obvious and does not involve any inventive step;

 

(e) That the subject of any claim is not an invention within the meaning of this Act, or is not patentable under this Act;

 

(f) Insufficient disclosure of the invention or the method by which it is to be performed;

 

(g) That in the case of a patent granted on a convention application, the application for the patent was not made within twelve months from the date of the first application for protection for the invention made in a convention country or in India;

 

(h) That the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention; and

 

(i) That the invention was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

 

Term of Patent

 

The term of every patent in India is 20 years from the date of filing the patent application, regardless of whether it's filed with provisional or complete specification. However, just in the case of applications filed under the Patent Cooperative treaty (PCT), the term of 20 years begins from the international filing date.

 

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 each year or in a lump sum.

 

Restoration of Patent

 

A request for restoration of patent can be filed within eighteen months from the date of the stop of patent along with the prescribed fee. after the receipt of the request, the matter is notified within the official journal for further process of the request.

 

Patent of Biological Material

 

If the invention uses a biological material that is new, it is essential to deposit constantly within the International depository Authority (IDA) prior to the filing of the application in India in order to supplement the description. If such biological materials are already famous, in such a case it's not essential to deposit the same. The IDA in India located at Chandigarh is known as the Institute of Microbial Technology (IMTECH).

 

Rights granted by a Patent

 

If the grant of the patent is for a product, then the patentee has a right to prevent others from making, using, offering available, selling, or commerce the patented product in India. If the patent is for a method, then the artificer has the right to prevent others from using the method, using the product directly obtained by the process, offering available, selling, or India the merchandise in the Asian nation directly obtained by the process.

 

Before filing an application for grant of patent in India, it's important to note "What isn't Patentable in India?" Any invention which is (a) frivolous, (b) obvious, (c) contrary to well established natural laws, (d) contrary to law, (e) morality, (f) injurious to public health, (g) a mere discovery of a scientific principle, (h) the formulation of an abstract theory, (i) a mere discovery of any new property or new use for a known substance or process, the machine or equipment, (j) a substance obtained by a mere admixture resulting only within the aggregation of the properties of the components thereof or a process for manufacturing such substance, (k) a mere arrangement or producing or duplication of notable devices, (l) a method of agriculture or horticulture and (m) inventions about nuclear energy, are not patentable in India.

 

Maintainability of Secrecy by the Indian Patent Office (IPO)

 

All patent applications are unbroken secret up to eighteen months from the date of filing or priority date, whichever is earlier, and thereafter they're published in the Official Journal of the patent office printed each week. after such publication of the patent application, the public can inspect the documents and may take the photocopy thereof on the payment of the prescribed fee.

 

Compulsory Licensing

 

One of the most important aspects of the Indian Patents Act, 1970, is compulsory licensing of the patent subject to the fulfillment of sure conditions. At any time when the expiration of three years from the date of the waterproofing of a patent, any person interested might create an application to the Controller of Patents for grant of compulsory license of the patent, subject to the fulfillment 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 an that associate application for compulsory licensing may be made by anyone notwithstanding that he is already the holder of a license under the patent.

 

For the purpose of compulsory licensing, no person can be stopped from alleging that the reasonable necessities of the public with respect to the are not invention don't seem to be happy or that the patented invention is not available to the public at reasonable worth by reason of any admission made by him, whether in such a license or by reason of his having accepted such a license.

 

The Controller, if satisfied that the reasonable requirements of the public with relation to the patented invention have not been satisfied or that the patented invention is not available to the public at a reasonable value, may order the patentee to grant a license upon such terms as he may see fit. However, before the grant of a compulsory license, the Controller of Patents shall take into account the following factors:

 

  • The nature of invention;
  • The time elapsed, since the sealing of the patent;
  • The measures are already taken by the patentee or the licensee to make full use of the invention;
  • The ability of the applicant to work the invention to the public advantage;
  • The capacity of the applicant to undertake the risk in providing capital and working the invention, if the application for a compulsory license is granted;
  • As to the fact whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions;
  • national emergency or other circumstances of extreme urgency;
  • Public non-commercial use; and
  • Establishment of a ground of anticompetitive practices adopted by the patentee.

The grant of compulsory license cannot be claimed as a matter of right, as the same is subject to the fulfillment of the above 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. In 2012, the Controller of Patents has granted the primary compulsory license to Natco Pharma to sell a generic version of the proprietary cancer drug 'Nexavar' in India. However, the subsequent applications, by BDR Pharmaceuticals for Bristol-Myers Squibb's Dasatinib and Lee Pharma for AstraZeneca's Saxagliptin, to sell a generic version of these patented drugs were rejected.

 

The Government of India has while exercising its power under section 66 of the Patents Act, 1970 in the Public Interest, revoked Patent No. 252093, entitled "a synergistic, ayurvedic functional food bioactive composition (Cinta) and a process of preparation thereof" granted to m/s Avesthagen Ltd., on the ground that the aforesaid patent is prejudicial to the public.

 

Infringement of Patent

 

Patent infringement proceedings can only be initiated after the 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 unauthorized making, importing, using, offering for sale, or selling any patented invention within 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 defense, revocation of Patent can also be claimed.

 

Licensing and Assignment of Patent

 

An assignment in a patent or a share in a patent or a mortgage, license, or the creation of any other interest in a patent is permissible. In the case of patents, the assignment is valid only when it is in writing and the agreement is reduced to the form of a document embodying all the terms and conditions governing the rights and obligations of the parties to the agreement. The application for registration is required to be made by the transferee in the prescribed form.

 

 

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