Law of patents

Law
of
patents
DR. S. MADHURI PARADESI
ASSOCIATE PROFESSOR
DEPARTMENT OF LAW
SPMVV, TIRUPATI.

Intellectual Property
• Meaning and Scope:- Intellectual property is an Intellectual
work produced by the Intellect of human brain. it is the
product of human ingenuity, knowledge and skills besides
labour and capital.
• Definition: The definition of “Intellectual Property” as
given in WIPO is “Literary, artistic and scientific works,
performance of performing artists, phonograms and
broadcasts, inventions in all fields of human Endeavour,
scientific discoveries, industrial designs, trademarks,
services marks, and commercial names and designations;
protection against unfair competition, and, all other rights
resulting from intellectual activity in the industrial,
scientific, literary and artistic fields.

• CONCEPT: The concept of intellectual property involves the term
‘property.’ The property can relate to a tangible thing e.g. land or
buildings, or to an intangible thing e.g. a copyright. The person who
creates an intellectual piece of work owns it like any other tangible
property like land or movable goods.
• The most important feature of property is that the proprietor or owner
may use his property as he wishes and that nobody else can lawfully use
his property without his authorization. In the legal sense, property refers
to the bundle of rights that the law confers on a person by virtue of the
ownership and possession of an object. However, there are generally
recognized limits of the exercise of that right, for example, limited
duration in the case of copyright and patents.

• OBJECT:
The Intellectual property system must maintain an equitable
balance of interests between public good and private interest, and
should help promote socio-economic improvement, the general
prosperity of society through the advancement and worldwide
application of beneficial technology, the promotion of
competitive trade and encouragement of invocators and creators.

Law of patents
• Meaning:- ‘Patent’ refers to a grant of privilege, property or authority made by the
Government or the sovereign of the country to one or more individuals, such grants are
made by the instrument ‘Patent’. It is recognized as a form of industrial or intellectual
property. It is a right granted to a person who has contributed a new and useful article or
an improvement of existing article or a new process of making an article. the exclusive
right is to manufacture the new article or invented process for a limited period. This
exclusive right granted to the inventor is called ‘Patent’.
• The Patents Act, 1970 does not define the term ‘patent’. It only says that ‘patent’ means a
patent for any invention granted under the Act [Sec. 2(1)(m)]. If we go through the
various provisions of the Act, the term ‘patent’ can be defined as “the exclusive right to
use or exercise an invention granted to a person for a limited period in consideration of
the disclosure of the invention”.

Object and Theory of Patent Grant System
• The object of patent law is to encourage scientific research, new technology and industrial
progress for public good.
• The theory upon which the patent system is based is that the opportunity of acquiring
exclusive rights in an invention stimulates technical progress in four ways: first, that it
encourages, research and invention, second, that it induces an inventor to disclose his
discoveries instead of keeping them as a trade secret, third, that it offers a reward for the
expenses of developing inventions to the stage at which they are commercially practicable,
and fourth, that it provides an inducement to invest capital in new lines of production which
might not appear profitable if many competing producers embarked on them simultaneously.
• Patents systems are thus not created in the interests of the inventor but in the interests of the
national economy, and this is the consideration for the grant of a patent. Patent is granted not
for the benefit of the patentee but for the benefit of the public at large.

Historical Perspective
• The first patent law was passed in British India in the year 1856.
• In 1859, the Act was modified and exclusive privileges were granted to inventors for making, using
and selling their inventions within India for a period of fourteen years from the date or filing of the
specification.
• Later, in the year 1872, the Patterns and Designs Protection Act was passed followed by the Protection
of inventions Act in 1883, and the law was consolidated in 1888 by the Inventions and Designs Act.
• In the year 1911, the Indian Patents and Designs Act, which was repealed by the current Act, was
enacted to replace the 1888 Act.
• The Act provided the right to claim priority from certain countries. The term of a patent under the Act
was initially fourteen years and was later extended to sixteen years through an amendment. The Act
also provided filing of a provisional specification before a complete specification.
• The Patent Act in force today was enacted in 1970, based on the recommendations of the report
submitted by Justice N.Rajagopala Ayyangar and is called The Patent Act, 1970.
• The Act came into force on 20 April 1972. The Act was amended for the second time in 2002, which
amendment came into force on 20 May 2003.
• The latest amendment to the Act was passed in 2005, which came into force from 1 January 2005, It
brought the Indian patent law in conformity with the Agreement on TRIPs.

TYPES OF PATENT:
PATENT
Product
patent
Process
patent

Product Patent
Under this regime, the patent is granted to the original inventor of
the product. Here are a few characteristic features of a Product
Patent:
• The grant of a product patent implies that no other person other
than the inventor can manufacture the same product using the same
process or any other process.
• Product patent provides a ‘True Monopoly’ right to the inventor
• Product patents are considered to be a higher level of protection
compared process patents.

Process Patent
As the name says, a process patent is granted only to a particular process
and not to the end product that is a result of such a process.
• The protection is seen as a limited parent. This is because any other
manufacturer or inventor can create the same product using a different
process.
• A process patent gives a low rage of protection to the inventor. Hence,
the chances of competitors reverse engineering the product are high.
• Also, there can be multiple process patents for a single product.

Patentable inventions
• Novel – An invention will be patentable if it is novel or new in the light of
prior art or it is not anticipated by prior art. It must be new and not
known to public before filing.
• Inventive Step- A feature of an invention that involves technical advance
as compared to the existing knowledge that makes the invention not
obvious to a person skilled in the art.
• Industrial application- Capable of being made or used in an industry. It
must relate to commercialization of patented product for public and
society purpose.

Inventions Not Patentable in India
• Section 3 and Section 4 of the Patent deals with the list of non-patentable inventions
a) Inventions that are frivolous and contrary to natural laws: Inventions which are
frivolous or contrary to well established natural laws. Example– Inventions that are
against the natural laws that are any machine giving 100% efficiency, or any machine
giving output without an input cannot be considered as obvious and cannot be patented.
b) Inventions which go against public morality: Inventions in which the primary or
intended use or commercial exploitation of which could be contrary to public order or
morality (that is against the accepted norms of the society and is punishable as a crime)
or which causes serious prejudice to human, animal or plant life or health or to the
environment. Example– As in Biotechnology, termination of the germination of a seed
by inserting a gene sequence that could lead to the disappearance of butterflies, any
invention leading to theft or burglary, counterfeiting of currency notes, or bioterrorism.

c) Inventions that are a mere discovery of something that already exists in
nature: The mere discovery of a scientific principle or the formulation of an
abstract theory or discovery of any living or non-living substances occurring in
nature. Explanation– Mere discovery of something that is already existing freely in
nature is a discovery and not an invention and hence cannot be patented unless it is
used in the process of manufacturing an article or substance. For instance, the mere
discovery of a micro-organism is not patentable.
d) The mere discovery of a form already existing in nature does not lead to
enhancement of efficacy: 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.
Example: new use of aspirin for heart ailments

e) Mere admixing of mixtures leading in the aggregation of properties are non-
patentable: A substance obtained by a mere admixing of two or more mixtures resulting
only in the aggregation of the properties of the components thereof or a process for
producing such substance is not considered the invention. Example: Paracetamol +
brufen
f) Mere aggregation or duplication of devices working in a known way is not an
invention: The mere aggregation or re-arrangement or duplication of known devices
each functioning independently of one another in a known way. Example: an umbrella
with fan
h) Method of Agriculture or Horticulture: Any method of agriculture or horticulture is not
an invention. Example: A method of producing a plant or a method of producing
improved soil or a method of producing mangoes cannot be patented.
i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in
human and animals are non-patentable: Any process for the 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. Example: Removal of cancer
tumor

j) Essential biological processes for the production or propagation of animals and
plants is not an invention: 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. Example: Clones and new
variety of plants
k) Simple mathematical or business or computer programs are not an invention: A
mathematical or business method or a computer program per se or algorithms;
Explanation– any mathematical calculation, any scientific truth or act of mental skills
any activities related to business methods or algorithms (which are like the law of nature)
cannot be patented.
l) Aesthetic creation is not an invention: A literary, dramatic, musical or artistic work or
any other aesthetic creation whatsoever including cinematographic works and television
productions. Explanation– such activities like writings, painting, sculpting,
choreographing, cinematographing all these which are related to creativity cannot be
patented and fall under the gamut of Copyright Act, 1957.

m) Mental act, rule or method is not an invention: A mere scheme or rule or method of
performing mental act or method of playing a game. Explanation- playing a game such as
chess, sudoku etc are not considered as inventions rather these are mere brain exercises
and hence are not patented.
n) Presentation of information is non-patentable: Explanation- a mere presentation of
information by tables, chars is not an invention and hence are not patentable, for example,
railway timetables, calendars etc.
o) The topography of integrated circuits is non-patentable: Such as semiconductors used
in microchips are not patented.
p) Traditional Knowledge is not an invention: An invention which in effect, is traditional
knowledge or which is an aggregation or duplication of known properties of the
traditionally known component or components. Explanation- the traditional knowledge is
know-how, skills, that is passed from generations to generations of a community and is
already known cannot be patented for example the antiseptic properties of turmeric.
q) Atomic-Energy inventions are non –patentable: Section 4 deals with inventions
relating to atomic energy, that are also not patentable and that fall within sub-section (1)
of section 20 of the Atomic Energy Act, 1962.

Software patents:
• A software patent is a patent on any performance of a computer realized by
means of a computer program. Now the international trend is titling
towards recognizing more sophisticated computer programs as inventions.
Software has become patentable in recent years in most jurisdictions and
the number of software patents has risen rapidly. The recent expansion of
the internet and e-commerce has led to many patents being applied for and
granted for business methods implemented in software.
• In India with regard to patentability of software, the software should
necessarily have technical application to the industry or be intrinsic too or
embedded in hardware. This is to prevent against any future litigation or
claims of infringements being raised, which is a distinct probability even
after the grant of patent. In a country like India, patenting software is of
immense use.

• Today’s computer programs are so complex that they literally contain
thousands of algorithms and techniques, each considered patentable as per
the standards. it is not reasonable to expect a software company to license
each of those patents. Further new programs and algorithms which advance
the existing programs are invented within a short span of time. the upgraded
one’s are sought for immediately and the earlier programs become outdated.
The amount of time taken to patent a software does not suit this system. A
patent search is a slow process that when harnessed to software
development, could stop innovation in its tracks.
• Software patents may be allowed if an effective sui generis system of
protection is evolved. Eliminating software patents is not an advisable
remedy as it impedes development. It should be allowed by tackling the
problems which arise and substantial remedies should be given for the
general good at large. The trend of patenting trivial and obvious software
need, to be discouraged.

Patenting of Micro-organisms and Biotechnology
• The 2002 Amendment provided for patenting of micro-organisms and microbiological
process, thus enabling patent protection for biotechnological inventions both in the
agricultural sector and for pharmaceuticals produced through biotechnology. Under the
2005 Amendment Act, the patenting of micro-organisms has been referred to an expert
committee.
• ‘Biotechnology’ refers to any technological application that uses biological systems.
Living organisms, or derivatives thereof, to make or modify products or processes for
specific purpose. Biotechnology divulges into a variety of fields ranging from agriculture
to medicines.
• The uses of biotechnology have been abundant in the field of agriculture. Genetically
Modified (GM) crops are a product of biotechnology and have various advantages. It
needs to be patented, like the GM microorganisms.

Procedure for obtaining patent
• A patent may be acquired in India by filing an application for a patent in the
prescribed from along with the prescribed fee at the Indian patent office.
• The patent office examines the patent application for satisfaction of
patentability requirements and provides an examination report to the
applicant.
• If the report includes an objection, the patent applicant may respond to the
patent office in writing or may ask the examiner for a hearing.
• If the applicant satisfies the patent office on all patentability requirements,
the patent office will grant a patent over the invention.
• After the application is filed, the patent office will publish the application
within eighteen months from the date of application or priority date.

• The rights of a patent applicant will start from the date of publication.
• A published application will be open for opposition from interested parties for a period of at
least six months form the date of publication.
• After the patent is granted by the patent office, it will be published again. The published
patent will once again be open for opposition for a period of twelve months from the date of
publication of the grant. The decisions of the patent office are appealable to the Appellate
Board.
• The procedure for obtaining a patent (as amended by 2005 Amendment) consists of the
following steps.
1. Filing or submission of application.
2. Publication and examination of application.
3. Amendment/ division of application.
4. Potential infringement and Controller’s power.
5. Opposition proceedings to grant of patent.
6. Grant of patent.

Term of Patent:
• The patent has a limited term of 20 years, which is counted from the date
of filing of the patent application, irrespective of whether it is filed with
provisional or complete specification.
• Payment of Renewal Fee: It is important to note that a patentee has to
renew the patent every year by paying the renewal fee, which can be
paid every year or in lump sum.
• Restoration of Patent: A request for restoration of patent can be filed
within eighteen months from the date of cessation of patent along with
the prescribed fee. After the receipt of the request, the matter is notified
in the official journal for further processing of the request.

Specification
• The object of the specification is to provide complete information to the
public about the invention, and the mode of carrying it out and to define the
boundaries of the invention that must not be crossed by the public during the
validity of the patent. The specification not only discloses the embodiments of
the invention but also provides the manner of practicing or working the
invention. it provides notice of the patent protection sought by an applicant by
clearly defining the boundaries of the invention.
• As specification is the document used by the patent office in order to make a
decision on patent grant and the courts to enforce the patent, the manner in
which a specification is drafted assumes high importance.

Opposition Proceedings to Grant of Patent
• These provide an opportunity to the public to challenge frivolous and
legally invalid patents. Under the 1970 Act, the patent could be opposed
before it was granted (pre-grant opposition). The person opposing the
patent is party to the proceedings. Under the 2005 Amendment Act, the
opposition procedure is streamlined by having both pre-grant and post –
grant opposition in the Patent office. The pre-grant opposition has been
strengthened as the time for filing opposition to patent application has
been extended from three months to six months from the publishing date
of the patent. The controller shall, if requested by such person (opponent)
for being heard, hear him

Pre-grant Opposition
• An application for a patent (which has been published but a patent has
not been granted) may be opposed by ‘any person’ in writing to the
Controller on any of the grounds mentioned in Sec.25(1) of the Act.
• The grounds in brief are:
(a) obtaining wrongfully
(b) prior publication
(c) prior claim in a concurrent application
(d) prior public use or public knowledge in India
(e) obviousness and lack of inventive step
(f) non-patentable invention

(g) insufficient description of the invention
(h) failure to disclose information relating to foreign applications
(i) if convention application, not made within the prescribed time
(j) source of biological material used for invention not disclosed or
wrongly mentioned, and
(k) anticipation of invention by knowledge within local or indigenous
community.

Post-grant Opposition
• Sec.25(2) lays down that at any time 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 (opponent) may give notice of opposition to
the controller on any of the following grounds [similar to those mentioned
in Sec.25(1)]. In addition to the notice, the opponent must file a written
statement in support of the notice, and evidence, if any.
• Sec. 25(2) expressly provides that only a “person interested” may oppose an
application for a patent. such a person includes a person engaged in or in
promoting research in the same filed as that to which the invention relates.

Licensing of Patents
• The ‘licensee’ given by the owner of a patent to another person or firm is
the legally accepted way to exploit the invention (for instance, manufacture
the product developed via the patented innovation). Use of a patented
invention without the licensee will be deemed an infringement on the patent
rights of the owner. Patent owner, for allowing the use of the invention,
receives a royalty. In some countries, there are legal provisions for
compulsory licensing. In such cases, under certain conditions (such as
public welfare/health). the law empowers a court to issue a compulsory
licensee and also stipulate the payment involved etc
• In India, an obligation is imposed on a patentee to work the patent in India
on a commercial scale and to the fullest extent. The patent may be worked
by the patentee himself or through licensees. Failure to fulfill this
obligation will entail in the granting of compulsory licenses or the
revocation of the patent itself.

Infringement of a patent
• ‘Infringement’ is the unauthorized use of a patented invention. An
infringement of a patent occurs when the exclusive rights of a patentee are
violated. What constitutes an ‘infringement’ has not been defined in the
patents Act. Whether the act of a person other than the patentee amounts to
infringement or not would depend upon.
1. The extent of the monopoly right conferred by the patent which is
interpreted from the specification and claims contained to the application
of the patentee. An action which falls outside the scope of the claims
would not amount to infringement.
2. Whether he is infringing any of the monopoly rights of the patentee to
make, distribute or sell the invention.

Infringement Suit
• The right to move to the court of law to enforce a patent is vested with any
person who holds a valid claim on the subject matter of the patent. Thus, an
infringement suit may generally be filed by the holder of a patent or his
licensee/assignee.
• A suit for enforcing a patent has to be filed before a District Court having
jurisdiction to try the suit, Provided that where a counter-claim for
revocation of the patent is made by the defendant, the suit, along with the
counter-claim, shall be transferred to the High Court for decision (Sec.104).
• The decision of a District Court is appealable to the High Court. An appeal
from a decision of the High Court may be filed before the Supreme Court.
• The burden of proving infringement of a patent is on the patent holder i.e.
the plaintiff.

Relief in Suit
• The relief that a court may grant in a patent
infringement suit, would be either damages
or account of profits.
• It is common and possible for the plaintiff to
move an interim application for ‘temporary
injunction’. The court may on the basis of
prima facie evidence grant a temporary
injunction restraining the infringer from
working the invention.

Conclusion:
• Patents are considered to be one of the most important forms of
intellectual property. Patents have played a decisive role in scientific
and technological advancements.
• Patents can provide great value and increased returns to individuals
and companies on the investment made in developing new technology.
• Patenting in India has protected the intellectual property of many
innovators and has been useful in the growth of commerce and
technology in India.

Law of patents

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