An Introduction to Patent Law in India

This article was originally written as an academic paper and is republished here as a knowledge-sharing resource. It has been lightly formatted; statutory references reflect the law as it stood at the time of writing.

Definition Of Patent

Patent is a set of exclusive rights granted by a state to an inventor or his assignee for a fixed period of time in exchange for the disclosure of the invention. An invention is the creation of intellect applied to capital and labour to produce something new and useful. Such creation becomes the exclusive property of the inventor on the grant of patent.

Patent Act does not provided an exhaustive definition of patent [u/s 2(m)] it simply states that ‘Patent’ means a patent granted under this Act. But it does defines invention [u/s 2(j)] as:

“a new product or process involving an inventive step and capable of industrial application.”

Patentable & Non-Patentable Subject Matter

The question of whether a particular subject matter is patentable is one of the substantive requirements for patentability. For getting an invention patented, it must fulfil some basic conditions which are: invention is novel and non-obvious, it involves inventive step and has some industrial applicability.

Whereas Section 3 speaks about invention not patentable. Inventions which are 'frivolous, contrary to Natural Law, Contrary to Law or morality or injurious to public health or formulation of an abstract theory, discovery of any new property or new use for a known substance or a substance obtained out of a mere admixture or it is a mere arrangement or re-arrangement or duplication or horticulture, or any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings', are not patentable.

Non-Patentable Subject Matters

Frivolous inventions and inventions contrary to natural laws.

Any invention which is frivolous or which claims anything obviously contrary to well established natural laws is not patentable. An invention that lacks utility because it serves no purpose or use is called a frivolous invention. It was held in Indian Vacuum Brake Co. Ltd. v. E.S. Luard , that patent for making in one-piece articles which were formerly prepared in two or more pieces could not be called to be a valid patent and was frivolous.

Inventions contrary to public order or morality

Inventions whose primary or intended use or commercial exploitation is contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment are not patentable.

Discovery not an Invention

Generally an idea or a discovery cannot be a subject matter of a patent. A practical application of an idea or a discovery can, however, qualify for a patent. Such a discovery will be patentable even though the practical application of the discovery is inherent in the discovery itself or becomes obvious once the discovery is made.

Inventions Pertaining to Known Substances etc.

The mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance is not patentable. Section 3(d) includes a category of inventions pertaining to known substances and known processes that are not patentable.

Similarly, the mere discovery of any new property or new use for a known substance or of a mere use of a known process, machine or apparatus, unless such known process results in a new product or employs at least one new reactant, shall not be a subject matter of a patent.

Invention Pertaining to Mere Admixture or Arrangement

Section 3 (e) of the Indian Patent Act 1970 provides that “a substance obtained by a mere admixture resulting only in the aggregation the properties of the components thereof or a process for production such substance” is not patentable.

For instance, a composition of two drugs, i.e., Paracetamol and Ibuprofen for curing fever and pain or a process of preparation thereof, will not be patentable as the composition is a mere admixture of two drug components resulting in an aggregation of analgesic and anti-inflammatory actions of their respective components.

Method of agriculture or horticulture

A method of agriculture or horticulture cannot be the subject matter of a patent under the Patents Act

Methods of Medical Treatment of Human and Animals

Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free from disease or to increase their economic value cannot be a subject matter of patent.

Plants and Animal Varieties

Plants and animals, in whole or in their parts, are excluded from patent protection. Seeds, varieties and species are also included under the section 3(j). The section also excludes ‘essentially biological processes’. However, micro-organisms can be a patentable invention. Plant varieties are protected, by a sui generis system under the Protection of Plant Varieties and Farmers’ Right Act 2001.

Business Method, Computer Program etc.

A mathematical or business method or a computer program per se or algorithms is not patentable under the Patents Act. In India, patent protection is not afforded to business methods and computer programs though Article 27 of the TRIPs agreement does not exclude them from patentability. Computer programs are excluded from patent protection as they are protected as a literary work under the Copyright Act 1957.

Scheme or Rule

A scheme does not amount to a manner of manufacture as it is a mere idea. Here too, an exception is entertained with regard to those ideas which could have a practical effect. Every invention should have begun as an idea. An invention may lie in an idea or in the way in which the idea is carried out or both. Such an idea must either suggest a new way of making something or it should show a new way of producing a new article.

Traditional Knowledge

An invention which is a part of traditional knowledge cannot be the subject matter of a patent. Similarly, an aggregation or duplication of known properties of traditionally known component or components is also excluded from patent protection. An invention based on traditional knowledge may be opposed or revoked under the Patents Act on the ground that the invention is anticipated.

Inventions Relating to Atomic Energy

Section 4 prohibits the grant of patents for inventions relating to atomic energy. It is widely accepted that countries can provide for security exceptions for the protection of essential security interests relating to fissionable material.

Criteria For Grant Of Patent

Most patent systems use three standards to determine if the government should patent an invention:

Novelty of the invention;

Inventive steps, and;

Industrial application.

The TRIPS Agreement also reflects these standards. Apart from the above three standards, there are other two requirements that should be met for the inventions to be patentable: eligibility and adequate disclosure.

Novelty

Under the novelty standard, the invention must not be identically disclosed in the "prior art" (i.e., the entirety of publicly accessible knowledge existing before the inventor filed the patent application). This requirement generally means that the information must not have been available to the public prior to the original application date (the priority date)."

Inventive step

This standard measures the degree of "inventiveness" of the invention relative to the prior art. An invention must involve an inventive step-meaning that the invention must not have been obvious from the prior art to a person of ordinary skill in that particular field of technology at the time the inventor filed the patent application. An invention that is "novel" can still lack an inventive step, and therefore the Member will deny the patent. In other words, the invention must not merely be something new; it must represent a development over prior art.

Industrial applicability

The invention must be capable of being used any kind of (including agriculture). Industry, in this sense, is any physical activity of a technical character. An invention only needs to be operable and capable of satisfying some function of benefit to humanity (i.e. Useful). This concept is broader than the industrial applicability required in Europe and other countries.

Procedure For Grant Of Patent

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. After the First 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 12 months from the issuance of the First Examination Report. 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. 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.

Infringement Of Patents

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.

Compulsory License

The basic concept of compulsory licensing is a system whereby the Government allows third parties (other than the patent holder) to produce and market a patented product or process without the consent of the patent owner. To promote a fair balance between IP protection and public interest Licensing was made a compulsory part of the Act.

No CLs have been issued in India under the amended Patents Act. In September 2007, three applications under section 92A of the Patents Act, 1970 were received for grant of compulsory licence for the manufacture and export of patented drugs to countries which reportedly did not have manufacturing capacity nor had insufficient capacity. The process envisaged under the Act was initiated. However, the applicant subsequently withdrew his applications.

Any interested person after expiry of 3 years from grant of patent even though if he is a license under the patent, may make an application to the Controller for grant of compulsory license on the grounds that:

the reasonable requirements of the public with respect to the patented invention have not been satisfied; and

the patented invention is not available to the public at a reasonable price.

the invention is not worked commercially to fullest extent in territory of India.

Sections 84 to 94 of the Patents Act relate to compulsory licensing of patented products. A person may apply for a compulsory license three years after the grant of a patent on the following grounds:

• the reasonable requirements of the public have not been satisfied, or

• patented invention is not available at a reasonable affordable price or

• the patented invention is not worked in India.

Compulsory license may also be granted on notification by Central Government on exceptional circumstances related to public interest namely national emergency, extreme urgency example scarcity of petroleum products, earthquake etc, and public non-commercial use. The Controller will notify and grant licenses without any consideration as in other cases in respect of patents on such terms and conditions that the article is available to the public at lowest price. The Compulsory license provisions is aimed at curbing the practice of meeting the demand for patented articles solely by importation from abroad thereby discouraging:

transfer of technology,

development in existing trade & industry,

non-establishment of new trade & industry,

refusal to grant licenses to work the patent locally,

imposing unreasonable terms on licenses thereby discouraging voluntary licensing and imposing restrictive conditions on the use,

sale or lease of the patented articles thereby prolonging the patent monopoly rights even after the patent has expired.

Revocation of the patent for non-working has been adopted in almost all countries.

In considering the application for the grant of compulsory license, the Controller shall take into account the nature of the invention; the time which has elapsed since the sealing of the patent; the measures already taken by the patentee or any licensee to make full use of the invention; the ability of the applicant to work the invention to the public advantage; capacity of the applicant to undertake the risk in providing the capital and working the invention; whether the applicant has made efforts to obtain a license from a patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period (6 months) as the Controller may deem fit.

Where the Controller is satisfied that a prima facie case has been made, the Controller will direct the applicant to serve copies of the application on patentee and any other person appearing in the Register of Patents and upon hearing the parties may give his decision. An appeal lies to the appellate board. The Controller can terminate the compulsory license when circumstances that gave rise to the grant no longer exist.

Further, in determining royalty Controller shall keep in mind the nature of the invention; the expenditure incurred in making and developing the invention; expenditure in obtaining patent and its maintenance; patented invention is worked and the licensee gets reasonable profit; patented article is available to public at reasonably affordable price; license granted is non-exclusive; the right of the licensee is non assignable; that the license is for a balance period of the term of the patent or shorter term.