This Article is written by Purvi Srivastava, a student of Bennett University
The Indian Patents and Designs Act, 1911, was adopted in 1911, marking the beginning of the country’s patent legislation. The current Patents Act, 1970, came into effect in 1972, updating and combining the old patent law in India. The Patents Act of 1970 was changed again in 2005 by the Patents (Amendment) Act, which expanded the scope of product patents to include food, pharmaceuticals, chemicals, and microorganisms. The clauses relating to Exclusive Marketing Rights (EMRs) have been deleted as a result of the modification, and a provision allowing for the issue of a compulsory license has been added. The provisions concerning pre-grant and post-grant opposition have all been amended.
In India, a patent can be applied to a new product or technique that has an inventive step and can be employed in the manufacturing industry. non-patentable innovations must be excluded, as stated by sections 3 and 4 of the (Indian) Patents Act, 1970. A patent application can be filed alone or jointly in India by the actual and first inventor or his assignee.
Procedure for Grant of a Patent in India
A request for examination of the application must be submitted with the Indian Patent Office within 48 months after the date of priority of the application or the date of filing of the application. When the initial examination report is issued, the applicant is allowed to react to the objections expressed in it. The applicant must complete the requirements within six months of obtaining the initial examination report, which can be extended for a further three months at the applicant’s request.
If the applicant fails to comply with the requirements of the first examination report within the prescribed time frame of 9 months, the application is considered abandoned. The patent is awarded and published in the Patent Office Journal after all objections have been resolved and all requirements have been met.
Foreigners have filed patent applications in India.
Because India is a signatory to both the Paris Convention for the Protection of Industrial Property (1883) and the Patent Cooperation Treaty (PCT) (1970), a foreign company can file a patent application in India.
If an applicant, or the applicant’s legal representative or assignee, files a patent application for an invention in a Convention Country, the applicant, or the applicant’s legal representative or assignee, can file a similar patent application in India within 12 months of the date on which the basic application was filed in the Convention Country, i.e. the home country. In this scenario, the priority date is the day on which the basic application was filed.
Opposition to the award of the grant of the grant of the
Any person may file a representation for pre-grant opposition under section 11A of the Patents Act, 1970, as amended (the “Patents Act”), within six months of the date of publication of the application, as amended (the “Patents Act”), or before the patent is granted. Section 25(1) of the Patents Act specifies the grounds on which a representation may be filed. There is no charge for filing pre-grant opposition representation. Even if no request for inspection has been made, representation for pre-grant objection can be filed.
After the grant has been made, there is opposition.
Any interested party has twelve months from the date of the patent grant’s publication in the official journal of the patent office to file a post-grant opposition.
Arguments Against Approval
Some of the reasons for filing pre-and post-grant objections are as follows:
- A patent that was obtained wrongly;
- Ahead-of-time publication;
- The invention was publicly known or publicly used in India before the priority date of such claim;
- The innovation is self-evident and does not necessitate any imaginative effort;
- That the claim’s subject is not an invention as defined by this Act, or is not patentable as defined by this Act;
- Inadequate disclosure of the invention or the method to be used to carry it out;
- In the case of a patent awarded based on a convention application, the patent application was not filed within twelve months of the date of the initial application for protection of the invention in a Convention country or India;
- That the full specification fails to reveal or incorrectly mentions the source and geographical origin of biological material utilised in the invention; and
- That the innovation was foreseen based on oral or written knowledge available in any local or indigenous group in India or abroad.
Every patent in India is valid for 20 years from the date of filing, regardless of whether it is filed with a provisional or complete specification. The 20-year term begins on the worldwide filing date for applications filed under the Patent Cooperative Treaty (PCT).
The Renewal Fee must be paid.
Every year, a patentee must renew their patent by paying a renewal fee, which can be paid annually or all at once.
Restoration of a Patent
A request for patent restoration, along with the requisite fee, must be submitted within eighteen months after the patent’s expiration date. After it is received, the item is notified in the official journal for further processing of the request.
Patent on Biological Material
It is important to deposit a novel biological material with the International Depository Authority (IDA) before applying in India so that the description can be enhanced. If biological materials are already known, there is no need to deposit them. The IDA in Chandigarh is well-known throughout India.
A patent is a legal document that grants you certain rights.
If a patent is granted for a product, the patentee has the right to ban others in India from creating, using, offering for sale, selling, or importing the patented product. If the patent is for a method, the patentee has the right to prevent others from using the method, using the product directly produced by the method, offering for sale, selling, or importing the product directly obtained by the method in India.
It’s crucial to know “What isn’t Patentable in India” before filing a patent application in India. Any invention that is (a) frivolous, (b) apparent, or (c) in violation of well-established natural laws is prohibited.
The ability of the Indian Patent Office to retain secrecy (IPO)
Before being published in the Patent Office’s Official Journal, which is published weekly, all patent applications are kept confidential for eighteen months from the date of filing or priority date, whichever comes first. The public has the right to inspect the documents and receive a photocopy for a fee after the patent application is published. (d) contrary to law, (e) morality, (f) injurious to public health, (g) a mere discovery of a scientific principle, (h) the formulation of an abstract theory, (i) a mere discovery of any new property or new use for a known substance or process, the machine or apparatus, (j) 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, (k) a mere arrangement or rearrangement or duplication of known devices, (l) a method of agriculture or horticulture and (m) inventions relating to atomic energy, are not patentable in India.
The ability of the Indian Patent Office to retain secrecy (IPO)
Before being published in the Patent Office’s Official Journal, which is published weekly, all patent applications are kept confidential for eighteen months from the date of filing or priority date, whichever comes first. The public has the right to inspect the documents and receive a photocopy for a fee after the patent application is published.
Licensing is a legal requirement.
One of the most important features of the Indian Patents Act, 1970 is the need that a patent is licensed provided certain requirements are met. Any interested person may apply to the Controller of Patents for a compulsory license of a patent at any time after the patent’s sealing date has passed the three-year mark, provided the following conditions are met:
- The patented innovation does not meet the public’s reasonable requirements;
- the patented invention is not available to the public at a reasonable price;
- or the patented invention is not being used in the territory of India.
It’s also worth mentioning that anyone, even if he already holds a patent licence, can file a forced licencing application.
Any admission made by him, whether in such a license or by his acceptance of such a license, cannot prevent him from alleging that the public’s reasonable requirements for the patented invention are not met or that the patented invention is not available to the public at a reasonable price for compulsory licensing.
If the Controller finds that the public’s reasonable requirements for the patented innovation have not been met, or that the patented invention is not available to the public at a reasonable price, he may compel the patentee to provide a licence under any terms he deems appropriate. However, before issuing a compulsory licence, the Controller of Patents must consider the following factors:
- The nature of inventiveness;
- The number of years that have passed since the patent was issued;
- The actions that the patentee or licensee has taken thus far to fully commercialise the innovation;
- The applicant’s ability to use the invention for the benefit of the public;
- If the application for a compulsory license is granted, the applicant’s ability to take on the risk of providing funds and working the innovation;
- If the applicant has made reasonable attempts to obtain a licence from the patentee on acceptable terms and conditions;
- National emergency or other situations requiring immediate action; public non-commercial use; and
- Establishment of ground for the patentee’s anti-competitive practices.
Compulsory licences are not available on a first-come, first-served basis because they are subject to the aforementioned conditions as well as the Controller of Patents’ judgement. Any arbitrary or illegal order for the issuance of a compelled licence by the Controller of Patents can be contested in court. Natco Pharma was granted the first compulsory authorisation to market a generic version of the patented cancer drug ‘Nexavar’ in India by the Controller of Patents in 2012. BDR Pharmaceuticals’ application to sell generic copies of Bristol-Myers Squibb’s Dasatinib was denied, as was Lee Pharma’s attempt to sell generic versions of AstraZeneca’s Saxagliptin.
Patent Assignment and Licensing
It is allowed to assign a patent or a stake in a patent, as well as to mortgage, licence, or create any other type of patent interest. An assignment of patents is only valid if it is made in writing and the agreement is reduced to the form of a document that contains all of the terms and circumstances that govern the parties’ rights and duties. The transferee must fill out an application for registration in the manner that has been approved.