Indian Patents

Act, 1970
Harsh Saxena

History

The first patenting related act in India was passed in 1911

by the name of patent and design Act ,1911.

Later after Independence the patent bill was unsuccessfully

introduced before the parliament in 1949 & 1965 and finally
the bill was passed in the year 1970 and the act came into
force in 1972.

The patent system in India is governed by the Patent Act

1970 (No.39 of 1970) and the patent Rules 2003.

The patent act has been amended several times in 1974,

1985, 1999 ,2002 and in 2005 and the rules have been
amended in 2006.

What is a patent?
O

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

O A patentable invention can be a product or a

process that gives a new technical solution to a

problem. It can also be a new method of doing
things, the composition of a new product, or a
technical improvement on how certain objects
work.

What can be Patented?

In order to be patentable , an invention must pass four
test :
1.
The invention must fall into one of five statutory
classes:

Processes

Machine

Manufactures

composition 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 Non obvious.

Inventions not Patentable

(section 3-5)
The following are not inventions within the meaning of this Act,
O (a) an invention which is frivolous or which claims anything
obviously contrary to well established natural laws;
O (b) an invention the primary or intended use or commercial

exploitation of which could be contrary public order or morality

or which causes serious prejudice to human, animal or plant
life or health or to the environment;
O (c) the mere discovery of a scientific principle or the

formulation of an abstract theory or discovery of any living

thing or non-living substance occurring in nature;

Section 3
O (d) the mere discovery of a new form of a known

substance which does not result in the enhancement of

the known efficacy of that substance or the mere
discovery of any new property or new use for a known
substance or of the 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.
Explanation.For the purposes of this clause, salts,
esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance
shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy;

O (e) 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;
O (f) the mere arrangement or re-arrangement or duplication

of known devices each functioning independently of one

another in a known way;
O (g) Omitted by the Patents (Amendment) Act, 2002
O (h) a method of agriculture or horticulture;
O (i) 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 of disease or to increase their
economic value or that of their products.

O j) plants and animals in whole or any part thereof other than micro

organisms but including seeds, varieties and species and essentially

biological processes for production or propagation of plants and animals;
O (k) a mathematical or business method or a computer programme per se

or algorithms;
O (l) a literary, dramatic, musical or artistic work or any other aesthetic

creation whatsoever including cinematographic works and television

productions;
O (m) a mere scheme or rule or method of performing mental act or

method of playing game;

O (n) a presentation of information;
O (o) topography of integrated circuits;
O (p) an invention which in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known

component or components.

Section 4 & 5
O Inventions relating to atomic energy

not patentable.No patent shall be

granted in respect of an invention
relating to atomic energy falling within
sub section (1) of section 20 of the
Atomic Energy Act, 1962 (33 of 1962).
O 5. Inventions where only methods
or processes of manufacture
patentable: [Omitted by the Patents
(Amendment) Act, 2005]

Application for Patents

(Section 6-11)
An application for a patent for an invention may be made by
any of the following persons, that is to say,
O (a) by any person claiming to be the true and first inventor
of the invention;
O (b) by any person being the assignee of the person
claiming to be the true and first inventor in respect of the
right to make such an application;
O (c) by the legal representative of any deceased person
who immediately before his death was entitled to make
such an application.
(2) An application under sub-section (1) may be made by
any of the persons referred to therein either alone or jointly
with any other person.

Section 7
(1) Every application for a patent shall be for one
invention only and shall be made in the prescribed form
and filed in the patent office.
(3) Every application under this section shall state that the
applicant is in possession of the invention and shall name
the person claiming to be the true and first inventor; and
where the person so claiming is not the applicant or one of
the applicants, the application shall contain a declaration
that the applicant believes the person so named to be the
true and first inventor.
(4) Every such application (not being a convention
application or an application filed under the Patent
Cooperation Treaty designating India) shall be
accompanied by a provisional or a complete specification.

Section 8
Filing of Application for Grant of Patent in India by
Foreigners
O 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.
O 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.

Procedure for Grant:

O 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
O After the First Examination Report is issued,
the Applicant is given an opportunity to
meet the objections raised in the report.
O The Applicant has to comply with the
requirements within 12 months from the
issuance of the First Examination Report.

O 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.
O After the removal of objections and

compliance of requirements, the

patent is granted and notified in the
Patent Office Journal.

Opposition Proceedings
to Grant of Patents
1). Pre Grant Opposition

O 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
O There is no fee for filing representation for
pre-grant opposition

2). 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:
O (a) Patent wrongfully obtained;
O (b) Prior publication;
O (c) The invention was publicly known or publicly used in India before the priority

date of that claim;

O (d) The invention is obvious and does not involve any inventive step;
O (e) That the subject of any claim is not an invention within the meaning of this
Act, or is not patentable under this Act;
O (f) Insufficient disclosure of the invention or the method by which it is to be
performed;
O (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;
O (h) That the complete specification does not disclose or wrongly mentions the
source and geographical origin of biological material used for the invention; and
O (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
O 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 international filing date.

Restoration of Patent
O 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
Matter
O 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).

O 43. Grant of patents.(1) Where an application for a

patent has been found to be in order for grant of the

patent and either
O (a) the application has not been refused by the Controller
by virtue of any power vested in him by this Act; or
O (b) the application has not been found to be in
contravention of any of the provisions of this Act,
O the patent shall be granted as expeditiously as possible to
the applicant or, in the case of a joint application, to the
applicants jointly, with the seal of the patent office and the
date on which the patent is granted shall be entered in the
register.
O (2) On the grant of patent, the Controller shall publish the

fact that the patent has been granted and thereupon the
application, specification and other documents related
thereto shall be open for public inspection.

48. Rights of patentees.

O 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.

Maintainability of
Secrecy
O 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
(Section 92)
O One of the most important aspects of Indian Patents Act, 1970,

is compulsory licensing of the patent subject to the fulfillment

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
fulfillment 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.

O 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.
O 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.

O 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:

O The nature of invention;

O The time elapsed, since the sealing of the patent;
O The measures already taken by the patentee or the

licensee to make full use of the invention;

O The ability of the applicant to work the invention to the
public advantage;
O The capacity of the applicant to undertake the risk in
providing capital and working the invention, if the
application for compulsory license is granted;
O As to the fact whether the applicant has made efforts to
obtain a license from the patentee on reasonable terms
and conditions;
O National emergency or other circumstances of extreme
urgency;
O Public non commercial use;
O Establishment of a ground of anti competitive practices
adopted by the patentee.

Patent Infringement
O Patent infringement is the unauthorized making, using,

offering for sale, selling any patented invention within India,

or importing into India of any patented invention during the
term of a patent. In India, Section 104 to section 114 of the
Indian Patents Act 1970 provides guidelines relating to
patent infringement.
O Patent infringement occurs when a product infringes one or

more patents. To determine patent infringement, firstly a

product or a process is analyzed and compared with all
relevant patents that may claim an invention similar to the
product. Secondly, the product or the process is scrutinized
to see if the product or the process .reads on. one or more
patents and is substantially described by the claims of the
one or more patents.

Direct infringement
O Direct patent infringement. is the most

obvious and the most common form of

patent infringement. In the most basic
definition, direct patent infringement
occurs when a product that is
substantially close to a patented
product or invention is marketed, sold,
or used commercially without
permission from the owner of the
patented product or invention.

O .Indirect patent infringement. suggests that there was

some amount of deceit oraccidental patent

infringement in the incident.
O For e.g. a person A holds a patent for a device and a

person B manufactures a device which is substantially

similar to the person A.s device. The person B is
supplied with a product from a Person C to facilitate
manufacturing of the person B.s device. If the device
so manufactured by the person B infringes on the
Person A.s patent, then the person C indirectly
infringes the Person A.s patent. Further, if such a
product is knowingly sold or supplied, it may lead to
.contributory infringement.. For example, in the above
example if the person C knowingly supplies the
product to the Person B then the infringement is
construed as contributory infringement..

O As per section 104(A) of the Indian Patents Act,

1970, in a patent infringement suit, where the

subject matter of patent is a process for obtaining
a new product or there is substantial likelihood
that an identical product is made by the patented
process and the patent holder or a person deriving
title or interest in the patent from him, has proved
that the product is identical to the product directly
obtained by the patented process but the patent
holder could not establish through reasonable
efforts to determine the process actually used by
the infringer, then the court may direct the
defendant to prove that the process used by him
to obtain the product, identical to the product of
the patented process, is different from the
patented process.

Exception to the Infringement or Non-Infringing Activities

Government Use:
O As per section 47 of the Indian Patents Act, 1970, an invention
can be used anytime after the application for a patent is filed, or
after the patent is granted by the Central Government and by
any person authorized by it. The patented product may be
imported or made by or on behalf of the government. Similarly,
the patented process may be used by or on behalf of the
government for its own use.
Research Exemption:
O Any person may use or make the patented invention merely for
the purposes of experiment or research including and imparting
instructions to students.
Supply of Patented Drugs to Health Institutions:
O A patented invention in respect of any medicine or drug may be
imported by the Government for the purpose merely of its own
use or for distributing in any dispensary, hospital or medical
institution maintained by or on behalf of the government.