Patent Act, 1970
Questions & AnswersIn legal words, patent means an exclusive and propriety right conferred upon a person who has invented a new thing in this world and thus he is the sole person who can manufacture that invention or use that invention and such person is called the patentee.
In simple words, it is a legal reward to stimulate technology and industrial growth. In order to give monopoly rights for the commercial use of a new invention is called ' grant of patent.
According to S. 2(m) of Patent Act, 1970 as amended up to 2005,
"patent" means a patent for any invention granted under this Act;
The terms 'patentee' 'exclusive right' and invention are defined in the Patent Act, 1970 as follows :
According to S. 2 (p)
"patentee" means the person, the grantee or proprietor of the patent whose name is entered on the register as patentee.
According to S. 2(o) "patented article" and "patented process" means respectively an article or process in respect of which a patent is in force;
In F. Hoffmann-La Roche Limited versus Cipla Limited, 2008 (37) PTC 71, 2008, the concept of patent has been explained as under :
The expression 'patent' connotes a right granted to anyone who invents or discovers a new and useful process, product, article or machine of manufacture, or composition of matter, or any new and useful improvement of any of those.
Patent is a right to exclude others from making, using, importing, or selling patented invention, during its term. Patent is a property right, granted by the State.
Aims and objects for grant of Patent
S. 83 of the Patent Act lays down the objects of grant of patent. Law presumes that the patented inventions shall be used for the benefit of the general public. These statutory presumptions are as under :
a) patents are granted to encourage inventions so that inventions work to their fullest use on a commercial scale in India.
b) The Protection and enforcement of patent rights contribute to the promotion of technological innovations.
c) Patents are not granted merely to enable patentees to enjoy monopoly.
d) Patents should act as an instrument to promote public interest for socio-economic and technological development of India.
e) Patents are granted to make the benefit of the patented invention available at reasonably affordable prices to the public.
f) Patent rights are not abused by the patentee to unreasonably restrain or adversely affect the international transfer of technology
g) Patents do not come in the way of protection of public health and nutrition.
In Bishwanath vs Hindustan Metal Indutries, AIR 1980 SC 1444 SC held that the object of patent law is to encourage and promote scientific research, new technology and industrial progress.
Section 2 (j), (K) and (l) of Patents Act, 1970 define the terms, 'invention', new invention and inventive steps.
According to Section 2 [(j) 'invention' means a new product or process involving an inventive step and capable of industrial application;
According to S. (ja) "inventive step" means a feature that makes the invention not obvious to a person skilled in the art.
Thus, on the basis of above definitions, it can be summed up that Invention means
A new product or process which is capable of Industrial application and which has been made as result of technical advancement to the existing knowledge or economic significance not obvious to the person skilled in that art.
Essential Requirements for grant of Patent for an Invention :
On a conjoint reading of above definitions, it becomes clear that for grant of Patent, the inventions must have the following attributes :
1) Novelty
2) Non-obviousness
3) Useful in Industrial Application
1. Novelty
For grant of patent to an invention, it must be novel. It is the basic ingredient for seeking patent of a product. There would be no novelty if there has been prior publication and prior use of the identical invention.
2.Non-obviousness.
Patent Rights are not available for merely obvious extensions or modifications of prior designs that could be achieved without the lure of patent rights.
In simple words it means that the invention should not be such that a person who made the invention earlier, could have easily made the present advancement made in the invention for which he had an obvious knowledge but he did not apply it at that time.
In Pfizer v. Apotex (U.S.Court of Appeal, 2006-1261), it was held that
" for the test of obviousness only a reasonable expectation of success and not a guarantee is needed.
The United States Supreme Court in KSR International Co. v. Teleflex, 550 US 1 (2007), re-appreciated the test of obviousness popularly known as TSM' i.e. Teaching Suggestion and Motivation. The Court held that such a test was restrictive, and emphasized the need to make an expansive and searching scrutiny as to whether the claim suffers from obviousness, in the following terms :
"The obviousness analysis cannot be confined to a formalistic conception of the words teaching, suggestion and motivation or by overemphasis on the importance of published articles and the explicit content of issued patents...... granting patent protection to advances that would occur in the ordinary course, without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility."
3.Useful in Industrial Application
Utility of an invention means that the invention must be useful for the industrial application.
(i) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(ii) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(iii) the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
(iv) the mere discovery of a new form of a known substance which does not result in 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;
(v) a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
(vi) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(vii) a method of agriculture or horticulture;
(viii) any process for 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;
(ix) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(x) a mathematical or business method or a computer program per se or algorithms;
(xi) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(xii) a mere scheme or rule or method of performing mental act or method of playing game;
(xv) a presentation of information;
(xiii) topography of integrated circuits;
(xvi) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;
(xv) inventions relating to atomic energy;
(a) any person claiming to be the true and first inventor of the invention;
(b) 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;
(c) legal representative of any deceased person who immediately before his death was entitled to make such an application.
An application under sub-section (I) may be made by any of the persons referred to therein either alone or jointly with any other person.
An application can also be made by an employee on behalf of his employer.
Form of application.
According to 7(1)
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.
2. Where the application is made by virtue of an assignment of the right to apply for a patent for the invention,, proof of the right to make the application shall be furnished along with the application or within the prescribed period.
3. Application shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor;
4. Where the person so claiming is not the applicant or the application as named to be the true and first inventor.
5. Every such application shall be accompanied by a provisional or a complete specification of the invention.
Foreign Application :
Section 8 lays down the procedure for making the application for patent outside the country as under :
Where an applicant for a patent is prosecuting either alone or jointly with any other person in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period
(a) a statement setting out detailed particulars of such application; and
(b) an undertaking that, he would keep the Controller informed in writing, from time to time, of detailed particulars in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India within the prescribed time.
Section 11A of the Act provides that no application for patent shall ordinarily be open to the public for the prescribed period which is 18 months after the 2005 amendment Act from the date of filing the application.
Examination
After the application has been filed, the applicant requests for its examination. The examination of an application is generally in two parts :
a) Procedural examination, i.e, relating to complying of the procedure to file the application in the prescribed format and within the prescribed manner with prescribed fees.
b) Substantial Examination, i.e, relating to whether the matter is an invention and whether the specifications have been filed. It also includes the search of prior use, prior claims, prior working and prior publication.
Acceptance and Advertisement of Publication
On the acceptance of the complete specifications, the Controller shall give notice of acceptance to the applicant and shall also advertise in the official Gazette. Thereafter, the application and the specifications shall be open to the public for inspection.
The purpose of advertisement is to make the public know that the applicant claims to be true owner and first inventor of the invention and to call for objections/opposition to such claim.
The opposition to the grant of patent can be made even before the grant of patent and also after the grant of patent. The only difference is that before the grant of patent, the opposition can be filed by any person, whereas after the grant of patent, the opposition can be filed only any an interested person.
Grounds before the grant of Patent Section 25(i) :
After the publication of an application for a patent but before the grant of patent any person may, in writing, represent by way of opposition to the Controller against the grant of patent on the ground of-
(a) patentability including novelty, inventive step and industrial applicability, or
(b) non-disclosure or wrongful mentioning
- Of complete specification, source and geographical origin of biological material used in the invention and anticipation of invention by the knowledge, oral or otherwise within India or elsewhere,
The Controller shall consider and dispose of such representation in the prescribed manner and in prescribed period.
Grounds after the grant of Patent Section 25(ii) :
After the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent, any person interested may give notice of opposition to the Controller in the prescribed manner on any of the following grounds, namely :
(a) the patentee or his person wrongfully obtained the invention or any part thereof from the interested person.
(b) the invention claimed in complete specification has already been published before the priority date of the claim-
(i) in any specification filed in an application for a patent made in India on or after the 1st day of January, 1912; or
(ii) in India or elsewhere, in any other document but not where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) the invention claimed has already been claimed in another claim application for grant of patent in India.
(d) the invention claimed was already publicly known or publicly used in India before the priority date of that claim.
(e) the invention claimed is obvious and clearly does not involve any inventive step,
(f) the subject is not an invention within the meaning of this Act, or is not patentable under this Act;
(g) the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
(h) the patentee has failed to disclose the necessary information or has furnished the information which in any material particular was false to his knowledge to the Controller the information required by section 8 or;
(i) in the case of a patent granted on convention application, the application 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.
(j) the complete specification does not disclose or wrongly mentions the source and geographical origin of biological material used for the invention;
(k) the invention was anticipated having regard to the knowledge, oral or otherwise, available in India or elsewhere.
a) the Controller shall notify the patentee :
b) On receipt of such notice of opposition, the Controller shall, order to constitute an Opposition Board and the notice of opposition to the Board for examination and submission of its recommendations to the Controller
c) Every Opposition Board shall conduct the examination as per the prescribed procedure.
On receipt of the recommendation of the Opposition Board and after giving the patentee and the opponent an opportunity of being heard, the Controller shall order either to maintain or to amend or to revoke the patent.
According to section 53, Term of the patent is 20 years from the date of filing for all types of inventions. Q10. How does one keep a patent in force for the full patent term ?
A patent has to be maintained by paying the maintenance fees every year. If the maintenance fees are not paid, the patent will cease to remain in force and the invention becomes open to public. Anyone can then utilize the patent without the danger of infringing the patent.
i) by the Controller under S. 63 and S, 85
ii) By the High Court under S. 64
iii) By the Central Government under S. 66
1. Civil Remedies
2. Criminal Remedies
3. Administrative Remedies
1. Civil Remedies
Section 108 of the Act provides for various Reliefs which a Court may order in suit for infringement of a Patent.-
Sub-section (1)
i. injunction (subject to such terms, if any, as the court thinks fit) and
ii. either damages or an account of profits, at the option of the plaintiff
iii. the delivery-up the infringing labels and marks for destruction or erasure.
Sub-section (2) further provides that the court may also order that the goods which are found to be infringing and materials and implement, the predominant use of which is in the creation of infringing goods shall be seized, forfeited or destroyed, as the court deems fit under the circumstances of the case without payment of any compensation
Penal Remedy
Section 118 to 124 of Patents Act provide for the penalties for various offences committed under the Patent Act as under:
1. Contravention of secrecy provisions (S. 118)
2. Falsification of entries in register of Patents (S. 119).
3. Un-authorized claim of patent rights (s. 120)
4. Wrongful use of word 'patent office' (S. 121)
5. Refusal or failure to supply information (S. 122)
6. Practice by non-registered patent agent (S. 123)
7. Offences by Companies.
The Patent is a valuable intangible property and its unauthorized use can land the user in criminal proceedings as well as defined in Indian Penal Code. Civil and Criminal, both the remedies can be availed simultaneously as there is no bar to initiation of criminal proceedings even if the recourse has been taken to civil proceedings.,
Administrative Remedy
A Patent can be ordered to be revoked by the Controller on any application by the Central Government or person interested in case by infringement of the patent.