Exclusive Right

Conferred on
Inventor

For an invention

Certain
Period(term of
patent)
Basics relating to patent
◦ Term protection granted in India: 20 years.
◦ Right to exclude others from commercially exploiting his
invention.
Rationale – Right not to Publish?
wasteful duplication of effort and the multiplication of cost.

Whether mandatory to get a patent?

History of Patent Law
◦ Act VI of 1856 patent monopoly for 14 years.

◦ Patents and Designs Protection Act, 1872, and protection of

Inventions Act was adopted in 1883.

◦ In 1911 Indian Patents and Designs Act was enacted.

 Novelty

Inventive step

Industrial
Application
Patent(Sec. 2(m))
◦ Definition : Patent for any invention granted under this Act

NEW

INVENTION PRODUCT OR
PROCESS

INVENTIVE STEP

INDUSTRIAL
APPLICATION
NEW OR NOVEL
◦ Something which does not form part of the prior art.

◦ Prior Art : A state of art which comprises all matter made

available to the public before the priority date of the invention by
written or oral description, by use or in any other way.

◦ Bishwanath Prasad Radhey Shyam v. Hindustan Metal

Industries : Novelty and utility equally important.
◦ Question of law and fact.
NEW OR NOVEL
◦ Something which does not form part of the prior art.

◦ Prior Art : A state of art which comprises all matter made

available to the public before the priority date of the invention by
written or oral description, by use or in any other way.

◦ Bishwanath Prasad Radhey Shyam v. Hindustan Metal

Industries : Novelty and utility equally important.
◦ Question of law and fact.
What are not inventions
◦Sec. 3 and 4 deals with Inventions which are
not patentable. (2002 Amendement)
 Mere discovery of
What are not inventions a. New form
b. New property
Discovery of
Frivolous a. scientific
c. New use
d. Use of known process
Eg: Perpetual
principle e. Mere use of known
motion machines
b. an abstract machine
theory Hoffman La Roche Ltd. V. Cipla Ltd
Ordre public c. Non living
Novartis v. UOI

or morality substance Process for

Method of medicinal
a.Agriculture treatment, etc
Mere b.horticulture Eg: process of
Mere arrangement treating
admixture or malignant
rearrangement Plants and tumor
results in Animals except
or duplication (Vanda
Agregation of known Microorganism Pharmaceuticals v.
of properties device (Diamond v. Chakroborty) West Ward
Pharmaceuticals)
What are not inventions
Mathematical Mere scheme
or business or rule or
method or Aesthetic
method of
Computer creation
playing a
program or game
algorithms
Traditional
A Topography of Knowledge
presentation Nil Kamal Craters v.
IC Dhanpath
of information

S. 4: Invention relating
to atomic energy.
Discovery, Idea and Invention
◦ Reynolds v. Smith

◦ Innovation and Invention

◦ Downstream application.

◦ Patentabl subject matter – Invention, inventive step, novel,

capable of industrial application.

◦ Manner of manufacture.
◦ Word of mouth
◦ Ingenuity Rickman thierry
◦ Shining industries v. Shri Krishna industries – invention is not property right. Patent is.
Patent Office
◦ Head office @ Kolkata

◦ Branches: Mumbai, Delhi and Chennai

◦ Controller General of Patents Designs and Trademarks

◦ S. 3 of the TMs Act.
Procedure
Submission of Communication
Application
Provisional and
Complete Grant
Specification

Publication Opposition

Examination
Submission of Application
◦ Persons entitled to apply for patent:
◦ 1. True and First Inventor.(Canadian General Electric v. Fada Radio)
◦ 2. An assignee of a person claiming to be first inventor.
◦ 3. A legal representative of any deceased person who was entitled to make a
patent application.

◦ Pachett v. Sterling
◦ Employee Employer releationship
◦ Assignee
◦ Legal representative.
◦ International Application under PCT
Provisional and Complete specification
◦ An application of Patent can be accompanied by either
Provisional or complete specification.

◦ Provisional Specification – if the applicant finds an

invention but has not attained final stage, he would
prepare a report and submit it to Patent office.
Priority date : Sec. 11.
◦in 3 cases priority date can be earlier than filing
date.
◦1 continuation application.
◦2. Domestic application based on foreign
applications.
◦3. In case of provisional patent applications.
Priority date
◦Novelty depends on priority date
◦Why priority date?
◦ i. a complete spec. will not turn invalid, only
because of the publication or use of the invention
on or after the priority date.
◦ Ii. The grant of another patent filed on or after the
priority date in so far as it is claimed in the
provisional spec. (first mentioned claim) is barred
after the priority date.
Provisional and Complete specification
◦ 12 months time period.
◦ Multiple provisional specs. Can be filed.

◦ Imperial Chemical Industries Ltd Application : description in general

nature of the invention is only needed and the expected result.

◦ It is to ascertain and describe the nature of invention.

◦ Whereas complete spec. must explain in what manner the invention is
to be carried out and description of nature of invention.
Complete specification
◦ Gives full and sufficient details of the invention

◦ A person skilled in the art must able to use the

invention by following the description.
◦ The time period of 12 months can extended to 15
months on application. If exhausted the patent will be
considered abandoned.
Complete specification
◦ Essential requirements of a complete spec.
1. Title – (which is sufficiently indicating the subject – matter to which
invention relates.)
2. Abstract (Concise summary of the matter, chemical formulas,
principle use, technical probole, solution, etc. less than 150 words)
3. full and particular description.
4. Disclosure of best method.
5.Claim or claims – explain scope of invention.
6. Drawings or technical information if required.
7. Declaration as to the inventorship.
Claim
◦ Statement of technical facts, expressed in legal terms
defining the scope of invention sought to be protected.
◦ Claims cover all the aspects of protection sought.
◦ It should not be too broad nor too narrow.
◦ It should distinguish from prior art.(EMI v. Lissen (1939))
◦ Eg: a chemiocal compound consisting 30% of compound A,
20 % compound B and 50% of Compound C. The use of
compound X is for treating illness X.
Publication – S.11(A)
When
◦ No application for patent shall ordinarily be open to
public before 18 months of priority date/filing date,
whichever is earlier.
◦ If no such application is filed, a patent application shall
be published.
◦ exceptions – secrecy for defence purposes, if
abandoned either by non filing of complete spec./ by
way of withdrawal of patent.
Publication – S.11(A)
How
◦ Purticulars:
◦ 1. name and address of the applicant
◦ 2. date and number of application
◦ 3. abstract.

◦ Privilege as if patent is granted to you

Opposition by representation (S. 25)
◦ Opposition before grant but after publication
◦ Grounds:
◦ i. wrongfully obtained the invention
◦ Ii. Another claims before priority date.
◦ Iii. Publicly known
◦ Iv. Not patentable subj. matter.
◦ V. violative s. 3 and 4
◦ Vi. Application not made within 12 months after filing in
any country or after provisional spec.
Examination 11(B)
When
◦ Within 36 months after filing it can be examined upon
application by the applicant.

◦ 11(b)(4)If application to examine is not made even after

36 months: it will be considered as abandoned.
◦ Exceptions: sec. 35 secrecy agreement (defence
purpose)
Examination 12
How
◦ Examiner checks mainly 3 things.(within 30 days)
◦ i. complies the Act.
◦ Ii. Any lawful ground for objection.
◦ Iii. Any previous publication or prior claim regarding any
claim in complete spec.(Novartis AG v. Adarsh Pharma)
◦ 13(4) : M/s Standipack Pvt. Ltd v. Oswal Trading Co. Ltd.

◦ Power to Require amended application

Potential Infringment
◦ Sec. 19
Reference of another patent in the claim, if there is
substantial risk of infringing another patent.
Grant of Patent (43)
If the application is found to be in order.

It will be published and open for public inspection

Rights of Patentee
I. Right to exclusively exploit
1. In case of product patent: Exclusive right to prevent third parties from making,
using, offering for sale, selling or importing for those purpose that product in India.

2. In case of process patent: Exclusive right to prevent third parties from using the
process, from the act of using, offering for sale, selling or importing for those
purposes that product obtained directly by that process in India.
II. Right to transfer
III. Right to surrender the patent.
IV. Right to sue for infringement.

Rights of Co owner
1. Each of the co – owners are entitled to an
equal undivided share in the patent, unless
an agreement to the contrary.
Limitations of Patent rights
Government Use

Compulsory Licensing

Revocation

Parallel Imports
Government Use
Article 5 (A) of the Paris Convention
Article 31 of TRIPS : “other use without authorization of the right holder”
in certain circumstances :
(a) national emergencies,
(b) other circumstances of extreme urgency, and
(c) public non-commercial use.

S. 47, 99 and 100 deals with Government Use.

Sections 47 refers to the use of the invention under the doctrine of
eminent domain, concerned with the discharge of sovereign duties and
performance of departmental functions as made obvious from the
absence of any requirement of payment of royalty to the patentee.
“Garware Wall Ropes Ltd. v. A. I. Chopra government can implement
compulsory licensing “merely of its own use”
Government Use
Section 99 prescribes a meaning to “use of an invention
for the purposes of government” basis which an invention
is understood to be used for the purposes of government
if it is made, used, exercised or vended for the purposes
of the Central Government, State Government or a
Government undertaking.

Congruently, Section 100 outlines the Central

Government’s power to make such use.
Compulsory Licensing
Compulsory licensing a legal mechanism for the government
to use the patented services or goods for the benefit of the
society as a whole without the permission of the patentee.
This intervention is handled by the Controller of the General
of Patents to authorize.

The grounds on which a compulsory license can be granted

under the Patents Act can be divided into the following
categories:
(i) Abuse of patent rights; [Section 84]
(ii) Public interest; [Section 92 & 92A]
(iii) Licensing of related patents. [Section 91]
Compulsory Licensing

First compulsory license that was granted in India

in the case of NATCO v. Bayer for the drug of
NATCO called Nexaver(Sorafenib Tosylate)
Difference between Compulsory License
and Government Use
1. Compulsory License granted upon request.

2. Government use permits use by government or an

agent/contractor appointed by government without
request.
Revocation (S. 64)
On a petition by (i) any person interested,
(ii) Central government
(iii) Decided in a suit
Grounds of revocation
i. Invention claimed in Complete specification is already
claimed in India before the priority date.
ii. Granted to a person not entitled under the Act.
iii. Wrongful obtainment of patent
iv. Claim is not an invention under the Act
v. Not new invention
vi. Invention is Obvious
vii. Not useful invention
viii.Non disclosure of best method
ix. Non disclosure of invention regarding foreign applications.
x. Interest of security of India
Parallel Imports and Bolar Exemption
S. 107 A(a) : Act of making, constructing, selling, using or
importing a patented invention solely for the purpose of
development and submission of any information required
under law is not infringment
Parallel Imports and Bolar Exemption
S. 107 A(b): Importation of patented products by any person,
from a person who is duly authorised under law to produce
and sell or distribute a product is not infringement.

Parallel imports and exhaustion regime

Parallel importation are goods manufactured or sold in one
country under the protection of one or more intellectual
property is imported into another country through an
unofficial trade channel without the authorization of the
owner of the intellectual property in the importing country.
Ownership and Transfer of Patent
rights
Patent is a transferable and heritable (transmission of patent)
property.
Patent can be transferred by:
a. License (i. voluntary license and ii. Statutory license)
b. Assignment (transfer of interest in patent. can be whole or
part)
c. Transmission (when a patentee dies his right would devolve
upon his heirs)
P.S. voluntary license is the written authority given by the
owner to another person to use the invention
statutory license is the collective term used for compulsory
licensing and government use)
Infringment and remedies
S. 104 and 105 deals with Infringment suit.

Suit shall be instituted in any court not inferior than

District Court.
104 – jurisdiction
105 – suit for declaration
107 – Defences
Persons entitled to sue – patentee, licensee, compulsory
licensee, assignee, co owner.
Burden of proof is on the plaintiff.
Reliefs available
Injunction
An order of the court prohibiting a person from doing
something. i. Temporary injunction (granted before the
final decision) and ii. Perpetual injunction (granted at the
end of the suit).
Temporary injunction is granted if :
a. If there is a prima-facie case against the defendant.
b. Balance of convenience is in favour of plaintiff.
Reliefs available
Damages
Plaintiff entitled for the relief of compensation

Mareva Injunction (attachment before

judgment. O.38 R. 5 CPC)
Ex parte order freezing the assets of the party to
an action or stopping the assets from moved to
another country.
Mareva v. International Bulkcarriers
Reliefs available
Anton Pillar order (search order)
Anton Pillar v. Manufacturing Processes
Ltd(1976)