patent act 1970 with amendment

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.


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,


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.


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.


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.


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.


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.


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.


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).


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.

patent act 1970 with amendment

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