seminar on patent act

01-03-2008 Dept. of Pharmaceutics 1

PATENT ACTPATENT ACT (INDIAN SCENARIO)(INDIAN SCENARIO)

Presented by…..Shiva kumar .Y1st M. PharmDept. of PharmaceuticsKLE University, J.N.M.C. campus,Belgaum-10.


ContentsContents IntroductionIntroduction

Indian patent Act Indian patent Act

Patentable inventionsPatentable inventions

Non patentable inventionsNon patentable inventions

Patenting of microbiological inventionsPatenting of microbiological inventions

How to apply?How to apply?

How to apply patent internationally?How to apply patent internationally?

Importance of patentImportance of patent

ReferencesReferences


Intellectual property right (IPR)Intellectual property right (IPR)

IPR have become important in the face of changing trade IPR have become important in the face of changing trade environment like global competition, high innovation risks, environment like global competition, high innovation risks, high investment in R&D, production and marketing.high investment in R&D, production and marketing.

In order to maintain continuous stream of new ideas and In order to maintain continuous stream of new ideas and experimentation IPR is important.experimentation IPR is important.

Introduction Introduction


IPR as a collective term includes the following independent IPR as a collective term includes the following independent IP rights which can be collectively used for protecting IP rights which can be collectively used for protecting different aspects of an inventive work for multiple different aspects of an inventive work for multiple protection:-protection:-

PatentsPatents CopyrightsCopyrights TrademarksTrademarks Registered (industrial) designRegistered (industrial) design Geographical indicationGeographical indication Protection of undisclosed informationProtection of undisclosed information


Indian Patent ActIndian Patent Act

A patent is an exclusive right granted by a country to the A patent is an exclusive right granted by a country to the owner of an invention to make ,use ,manufacture and owner of an invention to make ,use ,manufacture and market the invention, provided the invention satisfies market the invention, provided the invention satisfies certain conditions stipulated in the law.certain conditions stipulated in the law.

Exclusive rights implies that no else can make ,use, Exclusive rights implies that no else can make ,use, manufacture or market the invention without the consent of manufacture or market the invention without the consent of the patent holder.the patent holder.

A patent in the law is a property right and hence can be A patent in the law is a property right and hence can be gifted, inherited, assigned, licensed or sold.gifted, inherited, assigned, licensed or sold.


The patent right is territorial in nature and inventors/their The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in assignees will have to file separate patent applications in countries of their interest.countries of their interest.

There are two kinds of patents namely process and product There are two kinds of patents namely process and product patent.patent.

A product-patent system means that the end result of the A product-patent system means that the end result of the product is patented and not the process by which it is made.product is patented and not the process by which it is made.

India follows both the product and process-patent systems. For India follows both the product and process-patent systems. For the pharmaceutical, drug, food and chemicals industries, we the pharmaceutical, drug, food and chemicals industries, we follow process patents, while for all other industries the follow process patents, while for all other industries the product-patent system. product-patent system.

In India grant of process patents was limited to food and drugs. In India grant of process patents was limited to food and drugs.

However with effect from January 2005 the said limitation is However with effect from January 2005 the said limitation is removed.removed.


Administration Administration The Patent Office, under the Department of Industrial Policy &

Promotion, Ministry of Commerce & Industry, performs the statutory duties in connection with the grant of patents for new inventions and registration of industrial designs.

Patent Offices are located at Kolkata (Headquarter) , Mumbai, Chennai and Delhi to deal with the applications for patents originating within their respective territorial jurisdictions.

Patent Information System (PIS) located at Nagpur maintains a comprehensive collection of patent specifications and patent related literature, on a worldwide basis and provides technological information contained in patent or patent related literature through search services and patent document supply services.

Intellectual Property Training Institute (IPTI) located at Nagpur provides training to the officials of IP offices and other users of the system who are working in the field of Intellectual Property Rights.


HistoryHistory : :

The first Indian patent laws were first promulgated in The first Indian patent laws were first promulgated in 1856,these were modified from time to time.1856,these were modified from time to time.

New patent laws were made after the independence in New patent laws were made after the independence in the form of the Indian patent act 1970.the form of the Indian patent act 1970.

The act has now been radically amended to become The act has now been radically amended to become fully compliant with the provisions of TRIPS. fully compliant with the provisions of TRIPS.


The most recent amendments were made in 2005 which The most recent amendments were made in 2005 which were preceded by the amendments in 2000 and 2003.were preceded by the amendments in 2000 and 2003.

While the process of bringing out amendments was going While the process of bringing out amendments was going on ,India became a member of the Paris convention, patent on ,India became a member of the Paris convention, patent cooperation treaty and Budapest treaty.cooperation treaty and Budapest treaty.

INTERNATIONAL TREATIES

India is a member-state of Word Intellectual Property Organization (WIPO), an International Organization, responsible for the promotion of the protection of intellectual property throughout the world.

India is a member of the following International Organizations and Treaties in respect of Patents:


a) World Trade Organization (WTO) with effect from 01-01 -1995.

b) Convention establishing World Intellectual Property Organization, (WIPO).

c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998.

d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998.

e) Budapest Treaty with effect from 17th December, 2001.


18561856 The act vi of 1856 on protection of inventions based on the The act vi of 1856 on protection of inventions based on the British patent law of 1852. Certain exclusive privileges British patent law of 1852. Certain exclusive privileges granted to inventors of new manufacturers for a period of granted to inventors of new manufacturers for a period of 14 years.14 years.

18591859 The act modified as act xv; patent monopolies called The act modified as act xv; patent monopolies called exclusive privileges (making. Selling and using inventions exclusive privileges (making. Selling and using inventions in India and authorizing others to do so for 14 years from in India and authorizing others to do so for 14 years from date of filing specification).date of filing specification).

18721872 The patents & designs protection act.The patents & designs protection act.

18831883 The protection of inventions act.The protection of inventions act.

18881888 Consolidated as the inventions & designs act.Consolidated as the inventions & designs act.

HISTORYHISTORY


19119111

The Indian patents & designs act.The Indian patents & designs act.

19719722

The patents act (act 39 of 1970) came into force on 20The patents act (act 39 of 1970) came into force on 20thth April 1972.April 1972.

1991999 9

On march 26, 1999 patents (amendment) act, (1999) On march 26, 1999 patents (amendment) act, (1999) came into force.came into force.

2002002 2

The patents (amendment) act 2002 came into force from The patents (amendment) act 2002 came into force from 2o2oth th may 2003may 2003

20020055

the patents (amendment) act 2005 effective from 1st the patents (amendment) act 2005 effective from 1st January 2005January 2005


InventionInvention

It means a new product or process involving an It means a new product or process involving an inventive step and capable of industrial application.inventive step and capable of industrial application.

New invention means any invention or technology which New invention means any invention or technology which has not been anticipated by publication in any has not been anticipated by publication in any document or used in the country or elsewhere in the document or used in the country or elsewhere in the world before the date of filing of patent application with world before the date of filing of patent application with complete specification. complete specification.


Novelty Novelty

An invention will be considered novel if it does not form a An invention will be considered novel if it does not form a part of the global state of the art.part of the global state of the art.

Information appearing in magazines, technical journals, Information appearing in magazines, technical journals, books, newspapers constitute state of prior art.books, newspapers constitute state of prior art.

oral descriptions of the inventions in a seminar or oral descriptions of the inventions in a seminar or conference can spoil novelty. conference can spoil novelty.

Prior use of the invention in the country of the interest Prior use of the invention in the country of the interest before the filing date can destroy the novelty. before the filing date can destroy the novelty.


WHAT ARE PATENTABLE INVENTION?

A new product or process, involving an inventive step and capable of being made or used in an industry. It means the invention to be patentable should be technical in nature and should meet the following criteria

i) Novelty : The matter disclosed in the specification is not

published in India or elsewhere before the date of filing of the patent application in India.

ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.

iii) Industrially applicable: Invention should possess utility, so

that it can be made or used in an industry.


What are Non patentable inventions?What are Non patentable inventions?

Discovery of any living thing or non living substances Discovery of any living thing or non living substances occurring in nature.occurring in nature.

A presentation of information.A presentation of information.

A method of agriculture or horticulture.eg ,the method of A method of agriculture or horticulture.eg ,the method of terrace farming cannot be patented.terrace farming cannot be patented.

Any process for medical, surgical, diagnostic, therapeutic or Any process for medical, surgical, diagnostic, therapeutic or other treatment of human beings.other treatment of human beings.


Plants and animals in whole or any part thereof other than Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species microorganisms but including seeds, varieties and species and essentially biological processes for production and and essentially biological processes for production and propagation of plants and animals.propagation of plants and animals.

An invention whose intended use or exploitation would be An invention whose intended use or exploitation would be contrary to public order or morality or which causes serious contrary to public order or morality or which causes serious prejudice to human, animal or plant life or to the prejudice to human, animal or plant life or to the environment.eg.a process for making brown sugar will not environment.eg.a process for making brown sugar will not be patented.be patented.

A substance obtained by a mere admixture resulting only A substance obtained by a mere admixture resulting only aggregation of the properties of the component thereof or a aggregation of the properties of the component thereof or a process for producing such substance.process for producing such substance.


Patenting of Microbiological inventionsPatenting of Microbiological inventions

The Indian patent act has now a specific provision in The Indian patent act has now a specific provision in regards to patenting of microorganisms and microbiological regards to patenting of microorganisms and microbiological processes.processes.

As it is difficult to describe a microorganism on paper, a As it is difficult to describe a microorganism on paper, a system of depositing strain of microorganisms in some system of depositing strain of microorganisms in some recognized depositories was evolved.recognized depositories was evolved.

An international treaty called Budapest treaty was signed in An international treaty called Budapest treaty was signed in Budapest in 1973 and later on amended in 1980.Budapest in 1973 and later on amended in 1980.


This is an international convention governing the recognition This is an international convention governing the recognition of deposits in officially approved culture collection for the of deposits in officially approved culture collection for the purpose of patent application in any country that is the party purpose of patent application in any country that is the party to this treaty.to this treaty.

Because of this difficulties it is essential to deposit a strain in Because of this difficulties it is essential to deposit a strain in a culture collection centre for testing and examination by a culture collection centre for testing and examination by others.others.

An inventor is required to deposit the strain of a An inventor is required to deposit the strain of a microorganism in a recognized depository, which assign a microorganism in a recognized depository, which assign a registration number to the deposited microorganism.registration number to the deposited microorganism.

This registration no. needs to be quoted in the patent This registration no. needs to be quoted in the patent application dealing with the microorganism.application dealing with the microorganism.

The institute of microbiological technology (IMTEC), The institute of microbiological technology (IMTEC), Chandigarh is the first Indian depository setup under the Chandigarh is the first Indian depository setup under the Budapest treaty.Budapest treaty.


HOW TO APPLY?HOW TO APPLY?

For this, patentee have to give application to patent office For this, patentee have to give application to patent office with necessary requirements.with necessary requirements.

TYPES OF PATENT APPLICATIONS

a) Ordinary Application b) Application for Patent of Addition (granted for

Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

c) Divisional Application (in case of plurality of inventions disclosed in the main application).

d) Convention application , claiming priority date on the basis of filing in Convention Countries.

e) National Phase Application under PCT.


ApplicationApplication

In respect of patent application filed, following aspects will In respect of patent application filed, following aspects will have to kept in mind:have to kept in mind:

Claims or claims can now relate to single invention or group Claims or claims can now relate to single invention or group of inventions linked so as to form a single inventive of inventions linked so as to form a single inventive concept.concept.

Patent application will be published in 18 months after the Patent application will be published in 18 months after the date of filing date of filing

Applicants has to request for examination in 12 months Applicants has to request for examination in 12 months within publication or 48 months from date of application, within publication or 48 months from date of application, whichever is later.whichever is later.


No person resident in India shall make or cause to be No person resident in India shall make or cause to be made any application outside India for the grant of a made any application outside India for the grant of a patent for an invention unless,patent for an invention unless,

a)a) An application for a patent for the same invention has An application for a patent for the same invention has been made in India, not less than six weeks before the been made in India, not less than six weeks before the applicationapplication

b)b) Either no direction has been given under the secrecy Either no direction has been given under the secrecy clause of the act or such directions have been revoked.clause of the act or such directions have been revoked.


Provisional specificationProvisional specification

A provisional specification is usually filed to establish A provisional specification is usually filed to establish priority of the invention in case the disclosed invention is priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in only at a conceptual stage and a delay is expected in submitting full and specific description of the invention.submitting full and specific description of the invention.

It is very important documents to establish the earliest It is very important documents to establish the earliest ownership of an invention.ownership of an invention.

The provisional specification is a permanent and The provisional specification is a permanent and independent scientific cum legal document and no independent scientific cum legal document and no amendment is allowed in this and no patents are granted amendment is allowed in this and no patents are granted on the basis of this specification.on the basis of this specification.


Complete specificationComplete specification

Submission of complete specification is necessary to obtain Submission of complete specification is necessary to obtain a patent it must be submitted within 12 months of filing the a patent it must be submitted within 12 months of filing the provisional specification.provisional specification.

It is not necessary to file an application with provisional It is not necessary to file an application with provisional specification before the complete specification. An specification before the complete specification. An application with complete specification can be filed right at application with complete specification can be filed right at the first instance.the first instance.

Contents of complete specification would include following,Contents of complete specification would include following,


1)1) Title of the inventionTitle of the invention

2)2) Field to which the invention belongsField to which the invention belongs

3)3) Background of the invention including prior art giving Background of the invention including prior art giving drawbacks of the known inventions and practicesdrawbacks of the known inventions and practices

4)4) Complete description of the invention along with Complete description of the invention along with experimental resultsexperimental results

5)5) Drawings (if necessary)Drawings (if necessary)

6)6) Claims, which are statements Claims, which are statements of technical facts expressed

in legal terms, related to the invention on which legal related to the invention on which legal proprietorship is being sought. therefore the claims have proprietorship is being sought. therefore the claims have to be drafted very carefully.to be drafted very carefully.


Compulsory licenseCompulsory license

Any time after three years from date of sealing of patent, Any time after three years from date of sealing of patent, application for compulsory license can be made provided,application for compulsory license can be made provided,

1)1) Reasonable requirements of public have not been metReasonable requirements of public have not been met

2)2) Patented invention is not available to public at a Patented invention is not available to public at a reasonably affordable pricereasonably affordable price

In case of national emergency or other circumstances of In case of national emergency or other circumstances of extreme urgency or public non commercial use or an extreme urgency or public non commercial use or an establishment of a ground or anti competitive practices establishment of a ground or anti competitive practices adopted by patentee, all the rights snatched from the adopted by patentee, all the rights snatched from the patentee.patentee.

Patentee must disclose the invention in a patent Patentee must disclose the invention in a patent document for anyone to practice it after the expiry of the document for anyone to practice it after the expiry of the patent.patent.


Timing for filing a patent applicationTiming for filing a patent application Filing of an application for aFiling of an application for a patent should be completed patent should be completed

at the earliest possible date and should not be delayed.at the earliest possible date and should not be delayed.

Delay in filing an application may entail some risks like,Delay in filing an application may entail some risks like,

1)1) Other inventors might forestall the first inventor by Other inventors might forestall the first inventor by applying for a patent for the said invention.applying for a patent for the said invention.

2)2) There may be either an inadvertent publication of the There may be either an inadvertent publication of the invention by the inventor himself or by others.invention by the inventor himself or by others.

Term of the patent will be 20 years from the date of filing Term of the patent will be 20 years from the date of filing for all type of inventions.for all type of inventions.

But the exception being seven years for pharmaceutical But the exception being seven years for pharmaceutical and food industry.and food industry.


DOCUMENTS REQUIRED FOR FILING AN APPLICATION

1) Application form in duplicate (Form 1).

2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months. Form 2).

3) Drawing in duplicate (if necessary).

4) Abstract of the invention in duplicate.

5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).


6) Priority document (if priority date is claimed) in convention

application, when directed by the Controller. 7) Declaration of inventor-ship where provisional specification

is followed by complete specification or in case of convention/PCT national phase application (Form 5).

8) Power of attorney (if filed through Patent Agent).

9) Fee (to be paid in cash/by cheque /by demand draft)


REGISTER OF PATENT The Register of Patents are kept in the Patent offices and

can be inspected or extract from it can be obtained on payment of prescribed fee. Register of Patent contains the name and address of the patentee, notification of assignment etc., particulars in respect of validity or proprietorship of patent and payment of renewal fee.

RENEWAL FEE

i. To keep the patent in force, Renewal fee is to be paid every year. The first renewal fee is payable for the third year and must be paid before the expiration of the second year from the date of patent .

ii. If the renewal fees is not paid within the prescribed time, the patent will cease to have effect. However, provision to restore the patent is possible provided application is made within eighteen months from the date of cessation.


How to apply Patent Internationally?

PATENT COOPERATION TREATY

Patent Laws differ from country to country and there is no "World Patent" or "International Patent". However, there is an international filing system that is accessible in accordance with patent cooperation treaty (PCT).

When a PCT application is filed in one of the member-states of the PCT, this is legally in effect equivalent to filing in all PCT member states.


Patent right is granted only by the particular member

country after entering the national phase in that country.

If any application is to be filed abroad ,without filing in India ,it should be made only after taking a written permission from the Controller .

The request for permission for making patent application outside India shall be made in Form-25 along with a fee of Rs 1000/- or Rs 4000/- for natural person and other than natural person respectively.


Importance of PatentImportance of Patent

It maintain continuous stream of new ideas and It maintain continuous stream of new ideas and experimentation so it directly point out at growth of a experimentation so it directly point out at growth of a country.country.

The burden of duplication of the invention is avoided : it The burden of duplication of the invention is avoided : it saves further spending of time and money.saves further spending of time and money.

Any interested person may buy the Patent, wherein the Any interested person may buy the Patent, wherein the Patent becomes a nice tool for the transfer of technology.Patent becomes a nice tool for the transfer of technology.

Patent provides protection to the Patentee, wherein, if the Patent provides protection to the Patentee, wherein, if the Patent is infringed, the Patentee may seek the legal Patent is infringed, the Patentee may seek the legal remedies. Thus Patent is a form of social security to an remedies. Thus Patent is a form of social security to an inventor.inventor.

Once, the life of the Patent is over, any person may freely, Once, the life of the Patent is over, any person may freely, without paying any royalty to the Patentee, may enjoy the without paying any royalty to the Patentee, may enjoy the invention.invention.


References…..References…..

1. Management of Intellectual property rights in India, R. Saha, Adviser, Department of 1. Management of Intellectual property rights in India, R. Saha, Adviser, Department of science and technology and director, patent facilitating centre, technology information, science and technology and director, patent facilitating centre, technology information, forecasting and assessment council, New Delhi.forecasting and assessment council, New Delhi.

2. Patent law and pharmaceutical industries : An examination of the Drug price competition 2. Patent law and pharmaceutical industries : An examination of the Drug price competition and patent term restoration act of 1984, Congressional Research Service, The library of and patent term restoration act of 1984, Congressional Research Service, The library of congress, January 2005.congress, January 2005.

3. www.ipindia.nic

4. www.patentoffice.nic

5. www.wikipedia.org

6. www.patentoffice.nic.in/ipr/patent

seminar on patent act

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