Patent law

Presented by-
Deepak Khandelwal
Patent
 A patent is a set of exclusive rights granted by a state (national
government) to an inventor or their assignee for a limited
period of time in exchange for a public disclosure of an
invention.

 The term patent usually refers to a right granted to anyone who

invents or discovers any new and useful process, machine,
article of manufacture, or composition of matter, or any new
and useful improvement thereof
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Patent law
 Patent law is a specific area of law that encompasses the
legal regulation, jurisprudence, and enforcement of
specific intellectual property rights known as patent rights.

 A patent law is a government issued right granted to

individuals or groups that protects their original inventions
from being made, used, or sold by others without their
permission for a set period of time.
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Etymology

 The word patent originates from the Latin patere, which

means "to lay open" (i.e., to make available for public
inspection).

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History
 In 500 BC, in the Greek city of Sybaris was held out to all
who should discover any new refinement in luxury, the profits
arising from which were secured to the inventor by patent for
the space of a year.
 Patents in the modern sense originated in 1474, when the
Republic of Venice enacted a decree that new and inventive
devices, once put into practice, had to be communicated to the
Republic to obtain the right to prevent others from using
them.
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History
 In the United States several states adopted patent systems
of their own. The first Congress adopted a Patent Act, in
1790, and the first patent was issued under this Act on
July 31, 1790.

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First Patent Law of India
 The Act VI of 1856 on Protection of Inventions in India enacted on 28
February 1856

 Based on the British Patent Law of 1852

 Objectives:
 encouragement of inventions of new and useful manufacture.
 To secure the knowledge of the invention from being lost, and … to
enable any person … to avail himself of the invention on expiry of the
exclusive privilege

 14 year period.
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THE INVENTIONS & DESIGNS
ACT 1888
 Act V of 1888 replaced Act XV of 1859 and its amendments
 Reasons
 Patent applications: 33 applications under the 1856 Act and 3417
under the 1859 Act; of which 234 were from Indians
 No design application
 Changes
 Cheap and graduated fee to correspond with increasing value as the
invention becomes popular
 Compulsory licences
 Provisions for protection of “New or Original Designs.”
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THE INDIAN PATENTS &
DESIGNS ACT , 1911
 Act II of 1911
 Incorporated provisions of 1907 Act of United Kingdom
 Substituted the expression ‘exclusive privileges' with
‘patent’
 Made duration of Indian patent independent of duration of
UK patent
 Established Patent Office under a Controller of Patents and
Designs.
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1970 Act
 No product patent for chemicals, food and medicine
 No patents for agriculture and horticulture products
 Compulsory licences
 Patents to be worked in India.

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Patents Enquiry Committee 1948-1950
 Invention’ to include processes
 No product patent for chemicals, food, medicine except
when made by the invented process
 ‘Novelty’ to be based on prior knowledge or prior user in
India
 ‘Inventive step’ to be an essential prerequisite
 ‘Usefulness’ to be judged on technical advancement also

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Towards Patents Law 1970
 Based on the Ayyangar Committee recommendations, a
Patents Bill introduced on 21 September 1965
 Referred to a Joint Parliamentary Committee (JPC) on 25
November1965
 Amended Bill introduced in November 1966
 Lok Sabha passed, but lapsed in Rajya Sabha
 Revised Bill introduced in 1967
 Passed in 1970.
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Patent Applications in India 1970-
2001

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Domestic and Foreign Patent
Applications in India, 1970-1999
9000

8000

7000
Number of Applications

6000

5000
Domestic
Foreign
4000

3000

2000

1000

0
19 19 19 19 19 19 19 19 19 19 19 19 19 19 19 19 19 19
70- 75- 80- 84- 85- 86- 87- 98- 89- 90- 91- 92- 93- 94- 95- 96- 97- 98-
71 76 81 85 86 87 88 89 90 91 92 93 94 95 96 97 98 99
Year
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Why one should go for a 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.

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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’

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What can not be patented?
 An invention which claims anything obvious contrary to
well established natural laws.
 An invention the intended use of which can be injurious
to public health.
 The mere discovery of a scientific principle or the
formulation of an abstract theory.

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What can not be patented?
 The mere discovery of any new property of 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.
 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;

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Who can apply for a patent
 A patent can be made by any person whether a citizen of
India or not, claiming to be the true or first inventor of
the invention or by his “assignee” or legal representative.
 Application may be made alone or jointly with any other
person.
 A company or firm cannot be named as the true inventor.
The term person includes the Government.

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What is the term of patent?
 In respect of a invention claiming 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.

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How does a patent get expire?
 A patent can expire in the following ways:
 The patent has lived its full term.
 The patentee has failed to pay the renewal fee.
 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.
 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
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What Does Patent System Do ?
 It encourages RESEARCH.
 Induces an inventor to disclose his inventions instead of
keeping them as secret.
 Provides inducement for capital investment Encouraging
technological development.
 It encourages establishment of new industries.

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Why one should access the patent
literature?
 Before the start of the research and development project,
one should scan the patent literature to stop re-inventing
the wheel. or During the development phase, when stuck
up with a technical problem, to find a technical solution.
or Once the research is complete i.e. at the time of filing
the patent application, to narrow down or broaden the
claims and/or to draft the application for getting a patent.

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 National Patent offices, International Information
vendors like Dialog, Orbit, Questel STN, free or charge
based patent web sites on Internet. Which are the main
sources for patent information?

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Patent application
 A patent application is a request pending at a patent
office for the grant of a patent for the invention described
and claimed by that application.

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Type of Patent application
 Standard application
 Provisional applications
 Continuation applications
 Divisional applications

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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.

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Second Amendment
 Bill introduced on 20 December 1999
 Referred to a JPC on 22 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.
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Third Amendment
 2005
 Based on
 Observations of JPC
 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.
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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.
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Safeguards in the Patent Law
 Compulsory licences to ensure availability of drugs at reasonable prices
 Bolar Provision for early manufacture of generics
 Parallel, import to check prices.
 Provision to deal with public health emergency.
 Revocation of patent in public interest and also on security
considerations.
 Provisions to prevent grant of patents based on frivolous or trivial
inventions.
 Provisions to prevent misappropriation of Genetic Resources and
Traditional Knowledge.
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Patent Protection: Policy Trends
 Become part of the Global Patent Regime
 Meet International Obligations.
 Safeguard the Rights of Patent Holders as also Protect Public
Interest.
 Modernise the Patent Administration.
 Create Awareness regarding Patents.
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India: Global Player
 India acceded to the Paris Convention on Industrial Property
on 7 December 1998.
 India acceded to Patent Cooperation Treaty also on same date.
 Plays active role in World Trade Organisation and World
Intellectual Property Organisation
 Doha Round and Public Health Concerns
 Development Agenda in WIPO
 Mandatory Disclosure of Source in Patent applications.

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Modernization of Patent Administration
 Four state-of-the-art integrated IP Office buildings constructed.
 Rs. 153 crore project implemented.
 Number of Patent Examiners increased four-fold
 Patent search facilities improved.
 IT enabled efficient systems established.
 E-filing facility for patent applications launched on 18 July
2007.
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 …Contd.
 Foundation Stone for a National Institute of Intellectual
Property Management laid in Nagpur on 20 August, 2007.
 Indian Patent Office recognized as an International
Searching Authority (ISA) and an International Preliminary
Examining Authority (IPEA) under the Patent Cooperation
Treaty by the World Intellectual Property Organization in
early October 2007.
 45,000 patent documents uploaded on Patent Office
website, viz. http://ipindia.nic.in in November 2007.
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Impact
 Time lines for patent and trademark processing
reduced.
 Possible to obtain a patent in 8 months as against 6-8
years earlier and a trade mark in 10-12 months as
against 8-10 years earlier.
 Backlog of over 44,000 patent applications liquidated in
the last three years.

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International Cooperation for
Improving Patent Administration
 Cooperation with WIPO.
 EU –India Technology and Investment Development Programme.
 Bilateral Agreements signed with
 UK Patent Office
 France
 European Patent Office
 USPTO
 Japan Patent Office
 Switzerland
 Germany.
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Main Elements of Co-operation
 Human Resource Development.
 Public awareness programmes.
 Development of IP- profession.
 Joint studies and research.
 Exchange of experience in the area of protection of
traditional knowledge.
 Capacity building.
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Future Milestones
 Commencement of International Searching Authority
(ISA) and an International Preliminary Examining
Authority (IPEA) functions.

 Setting up of the National Institute of Intellectual

Property Management – training, education, research and
IP think tank functions.

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Conclusion
 Pre-Independent policy dictated more by developments in Britain.
 Now policy formulation is a consultative process involving all
stake holders and the civil society – Demand driven.
 Protection of national interest is the primary concern of Patent
Policy.
 Local needs shape the course of choosing policy options- both
domestic and international.
 Patent Policy dependent on overall economic policy.
 The policy has been one of balancing developmental concerns with
the need for promoting innovations.
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THANK YOU

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