patent-act-1970-with-amendment.pptxammendments

patent objective importance

1. THE INDIAN PATENT ACT - 1970

2. 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.

3. 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

4. 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

5. 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

6. 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.

7. What can be patented? In order to be patentable , an invention must pass four tests; 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 The invention must be “useful” The invention must be “novel” The invention must be “ nonobvious ’

8. 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

9. 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

10. Types Of Patents T hree types of patent are granted under the provisions of the act, namely: An Ordinary Patent A Patent Of Addition A Patent Of Convention A second type of classification of patent is: Product Patent Process Patent

11. 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

12. 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

13. “NEW” MEANS………. Invention must not be Published in India or elsewhere In prior public knowledge or prior public use with in India Claimed before in any specification in India

14. 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.

15. Section 3 exclusions Section 3(a) Inventions contrary to well established natural laws Examples Machine that gives more than 100% performance Perpetual machine

16. Section 3(b) Commercial exploitation or primary use of inventions, which is Contrary to public order or Morali t y Examples Gambling machine, Device for house-breaking ,

17. 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

18. 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

19. 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

20. 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.

21. Expiry Of A Patent 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

22. STAGES FROM FILING TO GRANT OF A PATENT

23. 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

24. 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

25. P u b l i c ation Application is kept secret for a period of 18 months from the date of filing In 19 th 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

26. 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

27. 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

28. Issue of FER A period of 1 to 3 months is available to Examiner to submit the report to the Controller 1 m on t h’ s ti m e a vailable t o Con t rol l er 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

29. 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

30. Pre-grant Opposition After publication, an opposition can be filed within a period of 6 months Opportunity of hearing the opponent is also available

31. Examination of Pre-grant Opposition Opposition (documents) is sent to the applicant A period of 3 months is allowed for receipt of response

32. 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 a c c e p t t h e o ppos i ti o n and mo d ify / reje c t t h e patent application This is to be done within a period of 1 month from the date of completion of opposition proceedings

33. Grant of a Patent A certificate of patent is issued within 7 days Grant of patent is published in the official journal

34. 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 M ONT HS WITHIN 12 MONTHS FILING OF APPLICATION PROVNL. / COMPLETE Decision of Controller EXAMINATION-ISSUE OF FER Appell a te Board Appeal

35. Renewal Fee To be paid within 3+6 months from date of recording in the register [sec 142 (4) ] No fee for 1 st and 2 nd 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

36. Rights of a patentee 1. Right to exploit the patent. The patentee has a right to prevent 3 rd 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 .

37. 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 is not new is obvious or does not involve any inventive step is not useful

38. 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. Wr ong f u l use o f w o r d ” p ate n t o ffice” on place or document I mpri s o n men t up to s i x 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

39. AMENDME N TS

40. Three Amendments First Amendment in 1999 Introduced transitional facility to receive and hold patent applications of pharmaceutical and agricultural chemical products till 1 January 2005 and for grant of Exclusive Marketing Rights for 5 years or till grant of patent.

41. 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.

42. Patent Act’1970 New (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 20 th May,2003 can be filed within 18 months from the date of ceasession.

43. Patent Act’1970 New (Amended) Act’ 2002 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,

44. Patent Act’1970 New (Amended) Act’ 2002 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.

45. Patent Act’1970 New (Amended) Act’ 2002 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 19 th May,2003 will now be examined U/S 12 only after filing a request for examination on Form – 19 with prescribed fee.

46. Patent Act’1970 New (Amended) Act’ 2002 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.. 20 th 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.

47. Patent Act’1970 New (Amended) Act’ 2002 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.

48. Patent Act’1970 New (Amended) Act’ 2002 Ground of opposition U/S 25 as well as revocation U/S 64 have been enlarged by adding following grounds: i. Non disclosure or wrongly mentioning the source of geographical origin of biological material used for invention; ii . A nticipa t i o n havi n g r e g a rd t o the k n owl e d ge or a l o r o t her w i s e available with in local or indigenous community in India or elsewhere.

49. Patent Act’1970 New (Amended) Act’ 2002 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 .

50. Patent Act’1970 New (Amended) Act’ 2002 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).

51. Patent Act’1970 New (Amended) Act’ 2002 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.

52. Third Amendment The Patent (amendment) Act 2005 came into force from 1st January 2005,which brought changes in the previous patent system of India wherein product patent was extended to all subjects of technology consisting of food, drugs, chemicals and micro organisms.

53. SECTION 3(D) STIPULATES THAT 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, is not patentable.

54. MERE DISCOVERY OF A NEW FORM OF KNOWN SUBSTANCE A mere discovery of a new property of known substance is not considered patentable . For instance, the paracetamol has antipyretic property. Further discovery of new property of paracetamol as analgesic can not be patented. Similarly, ethyl alcohol is used as solvent but further discovery of its new property as anti knocking, thereby making it usable as fuel, can not be considered patentable.

55. MERE DISCOVERY OF ANY NEW USE OF KNOWN SUBSTANCE For instance, new use of Aspirin for treatment of the cardio-vascular disease, which was earlier used for analgesic purpose, is not patentable. However , a new and alternative process for preparing Aspirin is patentable. Similarly , the new use of methyl alcohol as antifreeze in automobiles is not patentable. The use of methanol as a solvent is known in the prior art. A new use has been claimed in this claim as antifreeze which is not allowable

56. TRIPS Agreement The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by the World Trade Organization. TRIPS is the most important and comprehensive international agreement on Intellectual Property rights It was formed at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994. The TRIPS agreement introduced intellectual property law into the international trading system for the first time.

57. After the Uruguay round, the GATT became the basis for the establishment of the World Trade Organization (WTO) in 1995 WTO was established to supervise and liberalize trade Adoption of TRIPS is a compulsory requirement of World Trade Organization membership Any country seeking to obtain easy access to the numerous international markets opened by the World Trade Organization must enact the strict intellectual property laws mandated by TRIPS. There are now 153 WTO member nations and 29 observer nations

58. When the TRIPs Agreement took effect on January 1, 1995, all developed countries were given twelve months from the date of signing the agreement to implement its provisions. Developing countries and transition economies (under certain conditions) were given five years, until 2000. Least developed countries (LDCs) were given 11 years, until 2006, to comply. For pharmaceutical patents in these LDCs, the term for compliance has been extended to 2016. There are currently 30 LDCs within the WTO organization bound by TRIPs and another 10 LDCs are waiting accession.

59. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is an international legal agreement between all the member nations of the World Trade Organization (WTO). It sets down minimum standards for the regulation by national governments of many forms of intellectual property (IP) as applied to nationals of other WTO member nations . TRIPS was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) between 1989 and 1990 and is administered by the WTO.

60. The TRIPS agreement introduced intellectual property law into the multilateral trading system for the first time and remains the most comprehensive multilateral agreement on intellectual property to date. In 2001, developing countries, concerned that developed countries were insisting on an overly narrow reading of TRIPS, initiated a round of talks that resulted in the Doha Declaration . The Doha declaration is a WTO statement that clarifies the scope of TRIPS, stating for example that TRIPS can and should be interpreted in light of the goal "to promote access to medicines for all."

61. Specifically, TRIPS requires WTO members to provide copyright rights, covering authors and other copyright holders, as well as holders of related rights, namely performers, sound recording producers and broadcasting organizations; geographical indications; industrial designs; integrated circuit layout-designs; patents; new plant varieties; trademarks; trade names and undisclosed or confidential information.

62. The three main features of the Agreement are: Standards . In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. The Agreement sets these standards by requiring, first, that the substantive obligations of the main conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) in their most recent versions, must be complied with.

63. Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures .

64. Dispute settlement The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.