patent act 1970 with amendment
TRANSCRIPT
THE INDIAN PATENT ACT - 1970Sandeep Kr.SharmaIEC College of Pharmacy
INTELLECTUAL PROPERTY• Intellectual property is the product or creation of the mind.
It is different from other properties in term that it is “intangible”. Hence it needs some different way for its protection.
INTELLECTUAL PROPERTY RIGHTS• IPR is the body of law developed to protect the creative
people who have disclosed their invention for the benefit of mankind. This protects their invention from being copied or imitated without their consent.
THE INDIAN PATENT ACT • In India the grant of patents is governed
by the patent Act 1970 and Rules 1972. • The patents granted under the act are
operative in the whole of India.
HISTORY The Patent Law of 1856 The Patent and Designs Act, 1911. The Patents Act, 1970 and Rules 1972 The Patent amendment act 2002 & 2005
Indian Patent Office
The Patent Office, under the Ministry of Commerce & Industry, It has been established to administer the various provisions of the Patents Law relating to the grant of Patents. Locations East – Kolkata (Calcutta ) West – Mumbai (Bombay )North – Delhi South – Chennai (Madras) – includes Bangalore
What is a patent ?
• A patent is a grant from the government which confers on the guarantee for a limited period of time the exclusive privilege of making, selling and using the invention for which a patent has been granted
Purpose of getting a patent……
• To enjoy the exclusive rights over the invention.
• The patent is to ensure commercial returns to the inventor for the time and money spend in generating a new product.
What can be patented?
• In order to be patentable , an invention must pass four tests;
1. The invention must fall into one of the five “statutory classes’: Processes, Machines , Manufactures Compositions of matter, and New uses of any of the above
2. The invention must be “useful” 3. The invention must be “novel”4. The invention must be “nonobvious’
Patent Law - Salient Features• Both product and process patent provided• Term of patent – 20 years• Examination on request• 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• Substantially reduced time-lines
Safeguards in the Patent Law• 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
Types Of Patents
• Three types of patent are granted under the provisions of the act, namely:
1. An Ordinary Patent2. A Patent Of Addition 3. A Patent Of Convention• A second type of classification of patent
is: 1. Product Patent 2. Process Patent
Patent Of Addition Means a patent granted in accordance with section
54.
It shall not be granted before grant of the patent for the main invention.
An application is made in respect of any improvement in or modification of ‘main invention ‘ the controller may , on the request of the applicant , grant the patent of addition for the improvement or the modification as a ‘patent of addition’
At the request of patentee, the controller may revoke the patent for the improvement or modification
Patentable Inventions
Invention must
Relates to a process or product or both
Be new (novel)
Involves an inventive step
Be capable of industrial application
Not fall under section 3 and 4
“NEW” MEANS……….
Invention must not bePublished in India or elsewhereIn prior public knowledge or prior public use with in IndiaClaimed before in any specification in India
Inventive step means…
A feature of an invention that Involves technical advance as compared to the existing knowledge..
Industrial application means…Invention is capable of being made or used in any kind of industry.
Section 3 exclusions
Section 3(a) • Inventions contrary to well
established natural laws
Examples Machine that gives more than 100%
performance Perpetual machine
Section 3(b) Commercial exploitation or primary use of inventions, which isContrary to
public order or Morality
Examples– Gambling machine, – Device for house-breaking ,
Section 3(b) Commercial exploitation or primary use of inventions , which
Causes serious Prejudice to health or human, animal, plant life or to the environment
Examples Biological warfare material or
device, weapons of mass destruction
Terminator gene technology, Embryonic stem cell
Non Patentable Inventions• Inventions falling within Section
20(1) of the Atomic Energy Act, 1920
are not patentable
Eg: Inventions relating to compounds
of Uranium, Beryllium, Thorium,
Plutonium, Radium, Graphite, Lithium
and more as notified by Central Govt.
from time to time.
• a method of agriculture or
horticulture
• A substance obtained by a mere admixture resulting only in the aggregation of properties of the components thereof or a process for producing such substance.
• The mere arrangement, rearrangement or duplication of known devices each functioning independently of one another in a known way.
• Plants or animals in whole or any part thereof other than micro-organisms but including seeds, varieties & species & essentially biological processes for production or propagation of plants & animals.
• A mathematical or business method or a computer programme or algorithms
The Term Of Patent :
In respect of a invention claming process of manufacture of a substance intended to be used as food or medicine ---- 5 yrs from the date of sealing or 7 yrs from the date of patent whichever is shorter.
In case of any other invention ---- 14 yrs from the date of patent.
Expiry Of A Patent • A patent can expire in the following
ways: 1. The patent has lived its full term. 2. The patentee has failed to pay the
renewal fee. 3. The validity of the patent has been
successfully challenged by an opponent by filing an opposition either with the patent office or with the courts.
4. As soon as the patent expires, it pass to the general public domain and now anybody can use it without the permission of the original inventor
STAGES FROM FILING TO GRANT OF A PATENT
Obtaining A Patent
• File an application for patent– With one of the patent offices based
on territorial jurisdiction of the place of office or residence of the applicant /agent
– Pay the required fee
Formality Check• An Examiner checks the formal
requirements before accepting the application and the fee – this is done immediately
• Issue of application number and the cash receipt – this is done the same day
• In case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days
Publication• Application is kept secret for a period of
18 months from the date of filing• In 19th month, the application is
published in the official journal – this journal is made available on the website weekly
• Applicant has an option to get his application published before 18 months also
• In that case, application is published within one month of the request
Request for Examination
• Application is examined on request• Request for examination can be made
either by the applicant or by a third party• A period of 48 months, from the date of
filing, is available for making request for examination
Examination
• Application is sent to an Examiner within 1 month from the date of request for examination
• Examiner undertakes examination w.r.t.– whether the claimed invention is not
prohibited for grant of patent – whether the invention meets the
criteria of patentability
Issue of FER
• A period of 1 to 3 months is available to Examiner to submit the report to the Controller
• 1 month’s time available to Controller to vet the Examiner’s report
• First Examination Report (FER) containing list of the objections is issued within 6 months from the date of filing of request
Response from the Applicant
• 12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections
• If objections are met, grant of patent is approved by the Controller – within a period of 1 month
Pre-grant Opposition
• After publication, an opposition can be filed within a period of 6 months
• Opportunity of hearing the opponent is also available
Examination of Pre-grant Opposition
• Opposition (documents) is sent to the applicant
• A period of 3 months is allowed for receipt of response
Consideration of Pre-grant Opposition• After examining the opposition and the
submissions made during the hearing, Controller may – Either reject the opposition and grant
the patent – Or accept the opposition and
modify/reject the patent application • This is to be done within a period of 1
month from the date of completion of opposition proceedings
Grant of a Patent
• A certificate of patent is issued within 7 days
• Grant of patent is published in the official journal
STAGES - FILING TO GRANT OF PATENT
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION
GRANT OF PATENT
3rd Party Representation
Revocation/Amendment
OPPOSITION
• PROMPTLY AFTER 18 MONTHS FROM DATE OF PUBLICATION
• WITHIN 48 MONTHS FROM DATE OF FILING.
• ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS
• WITHIN 12 MONTHS
FILING OF APPLICATIONPROVNL. / COMPLETE
Decision of Controller
EXAMINATION-ISSUE OF FER
Appellate BoardAppeal
Renewal Fee• To be paid within 3+6 months from date
of recording in the register [sec 142 (4) ]• No fee for 1st and 2nd year• Renewal fee, on yearly basis, is required
to be paid • Delay upto six months from due date
permissible on payment of fee for extension of time
• Patent lapses if renewal fee is not paid within the prescribed period
Rights of a patentee1. Right to exploit the patent. The patentee has a right to prevent 3rd parties,
from exploiting the patented invention.2. Right to grant license. The patentee has a power to assign rights or
grant license.3. Right to surrender. The patentee is given the right to surrender the
patent by giving notice in prescribed manner to the controller.
4. Right to sue for infringement. A patentee is given the right to institute
proceeding for infringement of the patent in a district court .
Revocation of Patents
A patent , whether granted before or after the commencement of this act may be revoked by the Appellate board/High court on any of the following grounds:
• That the patent was granted on the application of a person not entitled to apply therefore;
• That the patent was obtained on a false suggestion or representation;
• That the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for invention;
• That the subject of any claim of the complete specification is(i) is not new(ii) is obvious or does not involve any inventive step(iii) is not useful
Offences & Penalties
Sr. No Nature of offence Punishment
1. Falsification of entry in the register and tendering such entries in evidence.
Imprisonment up to two yrs. or fine or both
2. Unauthorized claim of patent rights. Fine up to rupees one lakh
3. Wrongful use of word ”patent office” on place or document
Imprisonment up to six months or fine or both
4. Refusal or failure to supply information required under section 100(5) and sec. 146 regarding working of patent.
Fine up to rupees ten lakh
5. Practice by unregistered patent agent.
In case of first offence fine up to rupees one lakh in case of second offence up to rupees five lakh
AMENDMENTS
Three Amendments
First Amendment in 1999 Introduced transitional facility to receive and hold
patent applications of pharmaceutical and agricultural chemical products (mail box) till 1 January 2005 and for grant of Exclusive Marketing Rights for 5 years or till grant of patent.
Second Amendment
• Bill introduced on 20 December 1999• Report submitted on 19 December 2001• Bill passed in 2002• Major changes
20 year patent period Reversal of burden of roof on the infringer Establishment of an Appellate Board Public interest safeguards and measures for
protecting Traditional Knowledge.
Patent Act’1970New (Amended) Act’ 2002
Salient features of the Patents (Amendment) Act, 2002 and the Patents Rules,2003
Term of every patent which is in force including a patent restorable, U/S. 60 as on 20.5.2003 has now become 20 years from date of filing.
• Time for restoration of a ceased patent, U/S 60 has now increased from 12 months to 18 months as such an application for restoration of a patent ceased on or after 20th May,2003 can be filed within 18 months from the date of ceasession.
Patent Act’1970New (Amended) Act’ 2002
A new definition of "Invention" means a new product or process involving inventive step and capable of industrial application; has now come in force.
A method or process of testing during the process of manufacture will now be patentable.
Process defined, U/S 3(i) in case of plants, are now patentable while a process for diagnostic and therapeutic has now been considered as non patentable,
Patent Act’1970New (Amended) Act’ 2002
A list of Authorized Depository Institutions have been notified (annexed hereto) in the Gazette Of India, Part II, Section 3 sub-section (ii) dated 20.5.2003 for depositing the biological materials mentioned in the specification at the time of filing a patent application.
The source of Geographical origin of the biological material used in invention is required to be disclosed in the specification.
Patent Act’1970New (Amended) Act’ 2002
18 months publication has been introduced, therefore, every patent (except in which a secrecy direction is given U/S 35) will now be published just after 18 months from the date of filing/priority and will be open for public on payment. As such the filing intimation being published in the Gazette immediately after filing has been stopped.
A request for examination system has been introduced and therefore all the patent applications in which First Examination Report has not been issued on or before 19th May,2003 will now be examined U/S 12 only after filing a request for examination on Form –19 with prescribed fee.
Patent Act’1970New (Amended) Act’ 2002
The applications for patent will now be examined in serial order in which the request for examination is filed.
In case the application has been filed before the commencement of this Act, the request shall be made within a period of twelve months from the date of commencement of the Act i.e.. 20th May 2003 or 48 months from the date of application, whichever is later.
Provision for filing request for examination by any other interested person (other than applicant) also has been introduced.
Patent Act’1970New (Amended) Act’ 2002
Provision for the withdrawal of application by applicant any time before grant has been introduced.
Time for putting the application in order for acceptance U/S 21 has now been reduced from 15/18 months to 12 months.
Patent Act’1970New (Amended) Act’ 2002
Ground of opposition U/S 25 as well as revocation U/S 64 have been enlarged by adding following grounds:
I. i. Non disclosure or wrongly mentioning the source of geographical origin of biological material used for invention;
II. ii. Anticipation having regard to the knowledge oral or otherwise available with in local or indigenous community in India or elsewhere.
Patent Act’1970New (Amended) Act’ 2002
Section 39 in modified form prohibiting filing patent application outside India, inventions limited to the fields of defense purposes or atomic energy has been reintroduced.
Opposition Proceedings U/S 25 have been simplified and shortened, fixing hearing is not compulsory, if the applicant does not file reply statement and evidence, application will be deemed to have been abandoned.
Provision for extension of time up to 6 months for paying the overdue renewal fees initially i.e. renewal fees, which have become due, due to the late grant of patent can now be paid within 9 months from the date of recordal by taking an extension on Form – 4.
Patent Act’1970New (Amended) Act’ 2002
Charges for supplying the photocopies of the documents available in the Patent Office have now been reduced from Rs. 10/- to Rs. 4/- per page.
Charges for amendments in name, address, nationality, and address for service, payable on Form – 13 have been drastically reduced from Rs. 1000/ 6000 to Rs. 200/500.
Patent Applications and other documents (except PCT International application) are now required to be filed only in duplicate. Documents can now be filed 1 copy in electronic form with one hard copy (paper form).
Patent Act’1970New (Amended) Act’ 2002
Fees required to be paid on documents can now be paid within 1 month from its date of filing.
Provision for allowing Paris Convention Priority has been extended to group or union of countries or inter governmental organizations, therefore, 12 month priority will also be available to applications filed in EPO, AIRPO, OAPI and EAPO.
The Patents (Amendment) Act, 2002 (except the provisions relating to the Appellate Board) and the Patents Rules, 2003 have come into force with effect from 20.5.2003.
Third Amendment
• 2005• Based on
Widespread consultations through country wide interactive sessions with interest groups
Extensive inter ministerial consultations• Removed transitory provisions• Introduced various flexibilities provided in the TRIPS
Agreement including the Doha Round.