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PATENTS :CHAPTER –V

CONCEPT OF PATENT

1. The creative work of the human mind is protected through several

measures and the main motivation for the same is that such protection is

a definite measure of encouragement for the creative activity. Several

forms of protection of the creative activity have come about including

those which are of particular interest in the industrial development,

patents being one of them.

2. Generally speaking, patent is a monopoly grant and it enables the

inventor to control the output and within the limits set by demand, the

price of the patented products. Underlying economic and commercial

justification for the patent system is that it acts as a stimulus to

investment in the Industrial innovation.

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3. Innovative technology leads to the maintenance of an increase in nations

stock of valuable, tradable and industrial assets. The grant of first patent

can be traced as far back as 500 B.C. It was the city dominated by

gourmands, and perhaps the first, to grant what we now-a-days call

patent right to promote culinary art. For it conferred exclusive rights of

sale to any confectioner who first invented a delicious dish. As the

practice was extended to other Greek cities and to other crafts and

commodities, it acquired a name ‘monopoly’, a Greek Portmanteau word

from mono (alone) and polein (sale).

4. Evidences of grant to private individuals by kings and rulers of exclusive

property rights to inventor’s dates back to the 14th Century, but their

purpose varied throughout the history. History shows that in 15th Century

in Venice there had been systematic use of monopoly privileges for

inventors for the encouragement of invention. Utility and novelty of the

invention were the important considerations for granting a patent

privilege. The inventors were also required to put their invention in

commercial use within a specified period.

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5. In 16th Century the German princes awarded inventors of new arts and

machines and also took into consideration the utility and novelty of

inventions. Early laws in American colonies served primarily to encourage

foreign manufacturers to establish new industries in the colonies by

providing them protected domestic markets.

6. By the late 15th Century, the English monarchy increasingly started using

monopoly privilege to reward court favourites, to secure loyalty and to

secure control over the industry but these privileges were not used to

encourage inventions.

7. In 1623, the English Parliament adopted a Statute of monopolies which

recognized the inventors patent as a justifiable monopoly to be

distinguished from other monopoly privileges. The Statute outlawed the

awarding of monopoly privileges except for first and true inventor of a

new manufacture.

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8. In England during the 16th and 17th Century, the inventor’s patent of

monopoly had become of great national importance. From the mid-

seventeenth Century through the mid-nineteenth Century, the laws

recognizing the patent monopoly spread throughout Europe and North

America, but these privileges were not granted without the opposition.

2. What is the Historical overview of the Patents Law in India?

1. The origin of the Indian Patent System could be traced to the Act of 1856

granting exclusive privileges to inventors. The patent regime at the time

of Independence was governed by the Patents and Designs Act, 1911,

which had provisions both for product and process patents.

2. It was, however; generally felt that the patent law had done little good to

the people of the country. The way the Act was designed benefited

foreigners far more than Indians. It did not help at all in the promotion of

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scientific research and industrialization in the country, and it curbed the

innovativeness and inventiveness of Indians.

3. Shortly after Independence, therefore, in 1949, a committee was

constituted under the chairmanship of Justice (Dr.) Bakshi Tek Chand, a

retired judge of the Lahore High Court, to undertake a comprehensive

review of the working of the 1911 Act. The Committee submitted its

interim report on August 4, 1949 and the final report in1950 making

recommendations for prevention of misuse or abuse of patent rights in

India. It also observed that the Patent Act should contain a clear

indication that food and medicine and surgical and curative devices were

to be made available to the public at the cheapest price commensurate

with giving reasonable compensation to the patentee.

4. Based on the committee’s recommendations, the 1911 Act was amended

in 1950 (by Act XXXII of 1950) in relation to working of inventions,

including compulsory licensing and revocation of patents. In 1952, a

further amendment was made (by Act LXX of 1952) to provide for

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compulsory license in respect of food and medicines, insecticide,

germicide or fungicide, and a process for producing substance or any

invention relating to surgical or curative devices. The committee’s

recommendation prompted the Government to introduce a bill (Bill no.

59 of 1953) in Parliament, but the bill was not pressed and it was allowed

to lapse.

5. In 1957, another committee came to be appointed under the

chairmanship of Justice N. Rajagopala Ayyangar to take a fresh look at

the law of patent and to completely revamp and recast it to best sub-

serve the contemporary needs of the country. Justice Ayyangar’s report

specially discussed (a) patents for chemical inventions; and (b) patents for

inventions relating to food and medicine. Justice Ayyangar submitted a

comprehensive Report on Patent Law Revision in September 1959 and

the new law of patent, namely, the Patents Act, 1970, came to be enacted

mainly based on the recommendations of the report, and came into

force on April 20, 1972 replacing the Patents and Designs Act, 1911.

However, the 1911 Act continued to be applicable to designs.

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Patents Act, 1970

6. The Patents Act, 1970 remained in force for about 24 years without any

change till December 1994. Being a landmark in the industrial

development of India, the basic philosophy of the Act is that patents are

granted to encourage inventions and to secure that these inventions are

worked on a commercial scale without undue delay; and patents are

granted not merely to enable patentee to enjoy a monopoly for the

importation of the patented article into the country.

7. The said philosophy is being implemented through compulsory licensing,

registration of only process patents for food, medicine or drug, pesticides

and substances produced by chemical processes which, apart from

chemical substances normally understood, also include items such as

alloys, optical glass, semi-conductors, inter metallic compounds etc.

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8. It may, however, be noted that products vital for our economy such as

agriculture & horticulture products, atomic energy inventions and all

livingthings are not patentable. Thus, the Patents Act 1970 was expected

to provide a reasonable balance between adequate and effective

protection of patents on the one hand and the technology development,

public interest and specific needs of the country on the other hand.

9. Uruguay round of GATT negotiations paved the way for WTO. Therefore,

India was put under the contractual obligation to amend its Patents Act

in compliance with the provisions of TRIPS. India had to meet the first set

of requirements on 1-1-1995. Accordingly an Ordinance effecting certain

changes in the Act was issued on 31st December 1994, which ceased to

operate after six months. Subsequently, another Ordinance was issued in

1999. This Ordinance was subsequently replaced by the Patents

(Amendment) Act, 1999 that was brought into force retrospectively from

1st January, 1995. The amended Act provided for filing of applications for

product patents in the areas of drugs, pharmaceuticals and agro

chemicals though such patents were not allowed.

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10. However, such applications were to be examined only after 31-12-2004.

Meanwhile, the applicants could be allowed Exclusive Marketing Rights

(EMR) to sell or distribute these products in India, subject to fulfilment of

certain conditions.India amended its Patents Act again in 2002 through

the Patents (Amendment) Act, 2002 increasing the term of patent to 20

years for all technology, Reversal of burden of proof, compulsory licences

etc. This Act came into force on 20th May 2003 with the introduction of

the new Patent Rules, 2003 by replacing the earlier Patents Rules, 1972.

11. The third amendment to the Patents Act 1970 was introduced through

the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005

incorporating provisions for granting product patent in all fields of

Technology including chemicals, food, drugs & agrochemicals. This

Ordinance was later replaced by the Patents (Amendment) Act 2005 on

4th April, 2005 which is in force now having effect from 1-1-2005.

Patents Rules:

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1. Under the provisions of Section 159 of the Patents Act, 1970 the Central

Government is empowered to make rules for implementing the Act and

regulating patent administration. Accordingly, the Patents Rules, 1972

were notified and brought into force w.e.f. 20.4.1972. These Rules were

amended from time to time till 20th May 2003 when new Patents Rules,

2003 were brought into force by replacing the 1972 rules.

2. These rules were further amended by the Patents (Amendment) Rules,

2005 and the Patents (Amendment) Rules, 2006. The last amendments

are made effective from 5th May 2006.

3. There are four Schedules to the Patents (Amendment) Rules 2005;

a. the First Schedule prescribes the fees to be paid;

b. the Second Schedule specifies the list of forms and the texts of various

forms required in connection with various activities under the Patents Act.

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These forms are to be used wherever required and if needed, they can be

modified with the consent of the Controller.

c. The Third Schedule prescribes form of Patent to be issued on Grant of

the Patent.

d. The Fourth Schedule prescribes costs to be awarded in various

proceedings before the Controller under the Act.

3. Patents for Invention

1. Most laws dealing with the protection of inventions do not actually define

what an invention is. A number of countries, however, define inventions

as new solutions to technical problems. The problem may be old or new,

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but the solution, in order to be considered an invention, must be a new

one. Merely discovering something that already exists in nature will not

generally qualify as an invention; an adequate amount of human

ingenuity, creativity and inventiveness must be involved. But an invention

need not be technically complex: the safety pin was an invention that

solved a “technical” problem.

2. Patents, also referred to as patents for invention, are the most

widespread means of protecting technical inventions. The patent system

is designed to contribute to the promotion of innovation and the transfer

and dissemination of technology, to the mutual advantage of inventors,

users of inventions and the general public.

3. Simply put, once a patent is granted by a state or by a regional office

acting for several states, the owner of a patent has the right to prevent

anyone else from commercially exploiting the invention for a limited

period, generally 20 years. The patent applicant must disclose the

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invention in order to obtain protection, and their rights can be enforced

only within the territory in which the patent was granted.

4. Patents are the most widespread means of protecting technical

inventions. By granting an exclusive right, patents provide incentives,

offering inventors recognition for their creativity and material reward for

their marketable inventions. These incentives encourage innovation,

which in turn contributes to continued enhancement of the quality of life.

In return for the exclusive right, the inventor must adequately disclose the

patented invention to the public, so that others have access to the new

knowledge, leading to further innovation. The disclosure of the invention

is thus an essential consideration in any patent granting procedure.

5. The word “patent”, or “letters patent”, also denotes the document issued

by the relevant government authority. In order to obtain a patent for an

invention, the inventor, or often the inventor’s employer, submits an

application to the national or regional patent office concerned. In the

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application, the applicant must describe the invention in detail and

compare it with previous existing technologies in the same field in order

to demonstrate that it is new. Not all inventions are patentable.

6. Patent laws generally require that an invention fulfill the following

conditions, known as the requirements or conditions of patentability:

A. Patentable subject matter. The invention must fall within the scope of

patentable subject matter as defined by national law. This varies from

one country to another. Many countries exclude from patentability such

subject matter as scientific theories, mathematical methods, plant or

animal varieties, discoveries of natural substances, methods for medical

treatment (as opposed to medical products), and any invention where

prevention of commercial exploitation is necessary to protect public

order, morality or public health.

B. Industrial applicability (utility). The invention must be of practical use,

or capable of some kind of industrial application.

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C.Novelty. The invention must show some new characteristic that is not

known in the body of existing knowledge (referred to as prior art) in its

technical field.

D.Inventive step (non-obviousness). The invention must show an

inventive step that could not be deduced by a person with average

knowledge of the technical field.

E.Disclosure of the invention. The invention must be disclosed in a clear

and complete manner in the patent application to be carried out by a

person skilled in the art (a person conversant in the field of technology

concerned).

8. The conditions of novelty and inventive step must be fulfilled by a certain

date, generally the date on which the application is filed. An exception to

this rule, covered by an applicant’s right of priority, is regulated by the

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Paris Convention. The rights of priority means that, having filed an

application in one member country of the Paris Convention, the same

applicant (or their successor in title) may, within a specified time period,

apply for protection for the same invention in any of the other member

countries. These subsequent applications will not be invalidated by

reason of any acts occurred between the filing date of the earliest

application and the subsequent applications.

For example, if an inventor first files an application for patent

protection in Japan, and later a second application, with respect to the

same invention, in France, it is sufficient that the conditions of novelty

and non-obviousness existed at the date on which the Japanese

application was filed. In other words, the later, French application retains

priority over any applications relating to the same invention filed by other

applicants between the date of the inventor’s first and second

application. This is subject to the period between the two dates not

exceeding 12 months.

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10. It is customary to distinguish between inventions that consist of products

and inventions that consist of processes. The creation of a new alloy is an

example of a product invention. The invention of a new method or

process of making a known or new alloy is a process invention. The cor-

responding patents are usually referred to respectively as a product

patent and a process patent.

11. The person to whom a patent is granted is known as the patentee, the

owner of the patent or the patent holder. Once a patent has been

granted with respect to a particular country, anyone who wishes to

exploit the invention commercially in that country must obtain the

patentee’s authorization. In principle, anyone who exploits a patented

invention without the patentee’s authorization commits an illegal act.

Protection is granted for a limited period, generally 20 years.

12. Once a patent expires, the protection ends, and the invention enters the

public domain (also known as being “off patent”). The patentee no longer

holds exclusive rights to the invention, which then becomes available for

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commercial exploitation by others. The rights conferred by a patent are

described in the patent law of the country in which the patent is granted.

The patent owner’s exclusive rights generally consist of the following:

a) In the case of a product patent, the right to prevent third parties

from making, using, offering for sale or selling the product, or

importing it for these purposes, without the owner’s consent; and

b) in the case of a process patent, the right to prevent third parties

from using the process without the owner’s consent; and to prevent

third parties from using, offering for sale or selling the products

obtained directly by that process, or importing them for these pur-

poses, without the owner’s consent.

13. The patentee is not given a statutory right to exploit the invention, but

rather a statutory right to prevent others from commercially exploiting it.

Patentees may give permission, or grant a license, to other parties to use

their inventions on mutually agreed terms. They may also sell their patent

rights to someone else, who then becomes the new patent owner.

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14. There are certain exceptions to the principle that a patented invention

cannot legally be exploited without the authorization of the patent

owner. These exceptions take into account the balance between the

legitimate interests of the patent holder and those of competitors, con-

sumers and others.

For example, many patent laws allow a patented invention to be

exploited without the patentee’s authorization:

a. private acts for non-commercial purposes;

b. acts for experimental purposes or scientific research; and

c. acts for obtaining regulatory approval for pharmaceuticals.

In addition, many laws provide for various situations under which

compulsory licenses may be granted and government’s use of patented

inventions without the authorization of the patent owner may be allowed

in the wider public interest.

Once a patent expires, the protection ends and the invention enter the

public domain.

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Industrial Applicability

An invention is capable of industrial application if it satisfies three

conditions, cumulatively:

• can be made;

• can be used in at least one field of activity;

• can be reproduced with the same characteristics as many times as

necessary.

1. An invention to be patentable must be useful. If the subject matter is

devoid of utility it does not satisfy the requirement of invention.

2. For the purpose of utility, the element of commercial or pecuniary success

has no relation to the question of utility in patent law.

3. The usefulness of an alleged invention depends not on whether by

following the directions in the complete specification all the results not

necessary for commercial success can be obtained, but on whether by such

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directions the effects that the application/patentee professed to produce

could be obtained.

4. The meaning of usefulness is therefore useful for the purpose indicated

by the applicant or patentee whether a non-commercial utility is involved.

5. The usefulness of the invention is to be judged, by the reference to the

state of things at the date of filing of the patent application, if the invention

was then useful, the fact that subsequent improvement have replaced the

patented invention render it obsolete and commercially of no value, does

not invalidate the patent.

6. Speculation or imaginary industrial uses are not considered to satisfy the

industrial application requiremen

NON PATENTABLE SUBJECT MATTER

An invention may satisfy the condition of novelty, inventiveness and

usefulness but it may not qualify for a patent. The following are not

inventions within the meaning of Section 3 of the Patents Act, 1970:

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(a) an invention which is frivolous or which claims anything obviously

contrary to well established natural laws;

(b) 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;

(c) the mere discovery of a scientific principle or the formulation of an

abstract theory or discovery of any living thing or non-living substances

occurring in nature;

(d) 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 property or mere 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;

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Explanation to clause (d) clarifies that salts, esters, polymorphs, metabolites,

pure form, particle size, isomers, mixtures of isomers, complexes,

combinations and other derivatives of known substance shall be considered

to be the same substance, unless they differ significantly in properties with

regard to efficacy.

(e) 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;

(f) The mere arrangement or re-arrangement or duplication of known

devices each functioning independently of one another in a known way;

(g) Omitted by Patents (Amendment) Act, 2002.

(h) A method of agriculture or horticulture;

(i) any process for the medicinal, surgical, curative, prophylactic diagnostic,

therapeutic or other treatment of human beings or any process for a similar

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treatment of animals to render them free of disease or to increase their

economic value or that of their products;

(j) plants and animals in whole or any part thereof other than micro-

organisms but including seeds, varieties and species and essentially

biological processes for production or propagation of plants and animals;

(k) A computer programme per se other than its technical application to

industry or a combination with hardware;

(l) a literary, dramatic, musical or artistic work or any other aesthetic creation

whatsoever including cinematographic works and television productions;

(m) A mere scheme or rule or method of performing mental act or method

of playing game;

(n) A presentation of information;

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(o) Topography of integrated circuits;

(p) An invention which in effect, is traditional knowledge or which is an

aggregation or duplication of known properties of traditionally known

component or components.

Section 4 prohibits the grant of patent in respect of an invention relating to

atomic energy falling within Subsection (1) of Section 20 of the Atomic

Energy Act, 1962.

Section 20 of the Atomic Energy Act, 1962 contains special provision relating

to inventions. Under Section 20 (1) of the Atomic Energy Act, 1962 “no

patents shall be granted for inventions which in the opinion of the Central

Government are useful for or relate to the production, control, use or

disposal of atomic energy or the prospecting, mining, extraction,

production, physical and chemical treatment, fabrication, enrichment,

canning or use of any prescribed substance or radioactive substance or the

ensuring of safety in atomic energy operations”.

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4. Kinds of Patents

PATENT CLASSIFICATION: The International Patent Classification is a

hierarchical classification system comprising sections, classes, subclasses and

groups (main groups and subgroups). The Act of the IPC, which is in force

from January 1, 2000, consists of 8 sections, 120 classes, 628 subclasses and

approximately 69,000 groups.

Every subdivision of the IPC is indicated by a symbol and has a title. The IPC

divides all technological fields into eight sections designated by one of the

capital letters A through H. Each section is subdivided into classes which

symbols consist of the section symbol followed by a two-digit number. In its

turn, each class contains one or several subclasses which symbols consist of

the class symbol followed by a capital letter, for example, A 01 B.

Each subclass is broken down into subdivisions referred to as "groups",

which are either main groups or subgroups. Main group symbols consist of

the subclass symbol followed by a one- to three-digit number, the oblique

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stroke and the number 00, for example, A 01 B 1/00. Subgroups form

subdivisions under the main groups. Each subgroup symbol includes the

subclass symbol followed by the one- to three-digit number of its main

group, the oblique stroke and a number of at least two digits other than 00,

for example, A 01 B 1/02.

TYPES OF PATENTS: -

There are three types of Patents granted: -

1. Utility Patent - This is the most important type of Patent it is granted on

the functional aspect of the invention. This type of Patent is most sought

after and requires a lot of skill in drafting of the application and prosecuting

it before a Patent Office. The functional utility of the invention is protected.

2. Design Patent - This type of Patent is granted to the ornamental or

external appearance of the invention. If a design is of functional necessity

then it cannot be registered for Design Patent. For e.g the aerodynamic

shape of a plane cannot be registered as design patent, as the shape is very

important for the smooth functioning of the invention itself.

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3. Plant Patent - This type of Patent is granted for Plant variety made

through asexual reproduction of plant varieties. (In US)

An International Patent, which protects inventor internationally; In India

Plant patents are not yet given nor its law is formulated yet.

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