Patent

Article by Vijay Pal Dalmia, Advocate, Supreme Court of India

The history of Patent law in India starts from 1911 when the Indian Patents and
Designs Act, 1911 was enacted. The present Patents Act, 1970 came into force in
the year 1972, amending and consolidating the existing law relating to Patents in
India. The Patents Act, 1970 was again amended by the Patents (Amendment)
Act, 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the provisions relating to Exclusive Marketing Rights (EMRs) have been repealed,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.

An invention relating to a product or a process that is new, involving inventive

step and capable of industrial application can be patented in India. However, it
must not fall into the category of inventions that are non-patentable as provided
under Section 3 and 4 of the (Indian) Patents Act, 1970.  In India, a patent
application can be filed, either alone or jointly, by true and first inventor or his
assignee.

Procedure for Grant of a Patent in India

1. After filing the application for the grant of patent, a request for
examination is required to be made for examination of the application by
the Indian Patent Office.
2. After the First Examination Report is issued, the Applicant is given an
opportunity to meet the objections raised in the report.
3. The Applicant has to comply with the requirements within 12 months
from the issuance of the First Examination Report.
4. If the requirements of the first examination report are not complied with
within the prescribed period of 12 months, then the application is treated
to have been abandoned by the applicant.
5. After the removal of objections and compliance of requirements, the
patent is granted and notified in the Patent Office Journal.

The process of the grant of patent in India can also 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 Treaty (PCT), 1970, a foreign entity
can adopt any of the aforesaid routes 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 twelve months from the date on which the basic
application was made in the Convention Country i.e. 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

Section 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.

Grounds for Opposition

Some of the grounds for filing pre-and post-grant opposition are 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 convention application, the
application for 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 twenty years from the date of filing the
patent application, irrespective of whether it is filed with provisional or complete
specification. However, in case of applications filed under the Patent
Cooperative Treaty (PCT), the term of twenty years begins from the priority date.

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.

Patent of Biological Material

If the invention uses a biological material which is new, it is essential to deposit

the same in 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 known, in such a case it is not essential to deposit the
same. The IDA in India located at Chandigarh is known as Institute of Microbial
Technology (IMTECH).

What are the Rights granted by Patent?

If the grant of the patent is for a product, then the patentee has a right to
prevent others from making, using, offering for sale, selling or importing the
patented product in India. If the patent is for a process, then the patentee has
the right to prevent others from using the process, using the product directly
obtained by the process, offering for sale, selling or importing the product in
India directly obtained by the process.

Before filing an application for grant of patent in India, it is important to

note "What is not Patentable in India?" Following i.e. an invention which is

(a) frivolous (non-serious), 

(b) obvious (apparent),

(c) contrary to well established natural laws,

(d) contrary to law,

(e) contrary to 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, machine or apparatus,
(j) 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,

(k) a mere arrangement or rearrangement or duplication of known devices,

(l) a method of agriculture or horticulture and

(m) inventions relating to atomic energy, are not patentable in India.

Maintainability of Secrecy by the Indian Patent Office (IPO)

All patent applications are kept secret up to eighteen months from the date of
filing or priority date, whichever is earlier, and thereafter they are published in
the Official Journal of the Patent Office published every week. After such
publication of the patent application, 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 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, i.e.

 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; 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
license 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. However,
before the grant of a compulsory license, the Controller of Patents shall take into
account following factors:

 The nature of invention;

 The time elapsed, since the sealing of the patent;
 The measures 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 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;
 Establishment of a ground of anti-competitive 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 fulfilment of 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.

Infringement of Patent

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
unauthorized 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
claimed.

© 2013, Vaish Associates, Advocates, All rights reserved with Vaish Associates,
Advocates, 10, Hailey Road, Flat No. 5-7, New Delhi-110001, India.
The content of this article is intended to provide a general guide to the subject matter.
Specialist professional advice should be sought about your specific circumstances. The views
expressed in this article are solely of the authors of this article.