Intellectual Property Rights Law In India (Part - 3) - Industrial Laws | Industrial Laws - B Com PDF Download

Term of date of patent: Earlier the patent protection term was 14 years from the date of filing the complete specification of the patent. However, the proposed bill extended the term to 20 years.

Application requirements: Section 10 of the Patents Act, 1970 mainly clears about the contents of the specifications in a patent. The section mainly tells that a patent must include with title, description of the invention, drawings, model or sample of anything illustrating the invention, description of the operation, use, method of performance of the invention, the best method of performance, ending with a claim defining the scope of the invention. The amendment includes additionally an abstract of the invention, which must be included in to the patent.

Compulsory licensing:

The chapter XVI of the Patents Act, 1970 provides compulsory licensing as a necessary safeguard for protecting public interest. After 3 year of a sealed patent, any interested party can request for a compulsory licensing provided the invention is not reasonably available to the public. Central government has the right to make an application requesting the controller to endorse a patent with the 'license of right'. The amendment removed the provision of the central government. In addition to this necessary amendments were done with reference to requirement of the public are not satisfied, if the invention is not manufactured in India or the patentee refuses to grant a license by removing a presumption that requirements of the public are not satisfied based on local manufacture. The amendment also made a provision to the controller for granting compulsory license under conditions of national emergency. A provision has also been made enabling the third party to seek for compulsory license even the invention is not manufactured in India. The amendment also provides the revocation of the compulsory license by the controller himself if the circumstances that gave raise to it cease to exist.

Right to import and parallel imports:

The Patents Act, 1970 that did not vest on the patentee or a license holder the right to importation a patented product is dissolved. This made an accessibility of products in all ranges of cost in India. However, importing a patented product from the patentee, valid license holder will amount to infringement under TRIPS. The doctrine of exhaustion specifies that the patent holder does not have any control over a buyer or a licensee once the product has been placed in the market. The implied license suggests that a buyer can remanufacture the goods and import them into the same market for a lesser cost thus restricting spurious parallel imports into the country and balance the effect of taking away the need for local production and will also be in line with TRIPS.

Bolar provisions:

For the submission of data relating to bio-equivalence of drugs before the expiration of the patents a provision has been made under the Patents Act, 1970. The stock piling before the expiry of the term of the patent is prohibited. 

Burden of proof:

In case of suits concerning infringement of a patent in which the subject matter is a process for obtaining a new product. Under such conditions the court may ask the defendant to prove that the process used by him to obtain the product, is identical to the product of the patented process is different from the patented process. 

The Patents (Amendment) Ordinance, 2004

As part of the three-stage frame to comply with TRIPS, India passed the Patents (Amendment) Ordinance, 2004. In section 2 of the Patents Act, 1970 definition and interpretation of Budapest Treaty was included. It means the Budapest Treaty on International recognition of the deposition of microorganisms for the purposes of patent procedure done at Budapest on April 28, 1977, as amended and modified from time to time. Section 3 of the Patents Act, 1970 relating to inventions where only methods or processes of manufacture patentable are omitted. The Act gave provisions for patenting a process as well as a product.

In section 7 of the Patents Act, 1970 the filing date of an application referred to in sub-section (1A) shall be considered as the international filing date accorded under the "Patent Cooperation Treaty". The sections 22, 23 and 24 dealing with acceptance, advertisement and effect of acceptance of complete specification are omitted. The sections 24A, 24B, 24C, 24D, 24E and 24F of the Patents Act, 1970 dealing with mainly Exclusive Marketing Rights are omitted indicating that a provision being made during the transition period. A new section 92 A, was introduced for grant of compulsory license for manufacture or export to any country, which has insufficient, or no manufacturing facility provided an application is made by the convention country.

Impact on business

TRIPs will transform the legal and business framework in India. It is going to fundamentally alter competitive equation for starters; better intellectual property protection will facilitate the transfer of technology. Better intellectual property protection will facilitate transfer of better technology. Foreign firms are often accused of transferring outdated technologies to their Indian partners, but it is often forgotten that a lax intellectual property rights regime does not offer much incentive to do otherwise.

Quality of intellectual property protection improves expenditure on research and development by industry as a whole will climb. The Switch from process patent to product patent will transforms the pharmaceutical industry and will the TRIPs agreement expanding the scope of patent protection to include all fields of technology. 

Pharmaceuticals:

Due to TRIPS new drugs under development for treatment of various diseases will be under patent and hence will be priced beyond the reach of all, meanwhile indigenous industry will be negatively affected. In the 30 years since the patent act, 1970, came into being, the industry moved from trading in transnational brands to producing and exporting pharmaceutical substances and formulations. Since the patents were lined out. Indian firms could freely reverse engineer, the polite term for organized piracy that made drugs available in India at a fraction of their price abroad for a fraction of investment. Naturally numbers mushroomed. India pharmaceutical manufacturers spend on an average, 1.80% of its total turnover on research and development. In the US, the comparable figure is 16 %.( 3)

The number of manufacturers is bound to affect adversely due to the introduction of product patent. To survive, expenditure on research and development must grow exponentially. The basis for sustained competitive advantage in this industry will be research and development. Prices too are bound to rise, but the scope and extent of price rise is exaggerated (4). Patents worldwide cover less than 10% of India’s list of essential drugs. Moreover prices of essential drugs are low cost not because of process patents, but because of drug price control order (DPCO). Sure a patent by definition confers a limited monopoly. But most new drugs are substitutes for existing drugs. Their therapeutic properties and side effects may differ slightly. Thus, it’s making difficult for the monopolist to extract full monopoly prices. Even a monopolist can charge only what the market can bear. The assumption that drugs will retail here at international prices is a mistake. (5). The Indian consumer is used to cheap drugs, and will not prefer 10-12 times more for a basic drug.

The strategic impact

The scope of patent protection is constantly widening. Companies have to spend enormous amount on researching innovations which will circumvent of patents. 

Add the considerable costs of litigation and the possible compensation to be paid in case patent violation is proved, and the costs can be prohibitive.

Effect of change in patent regime

Effect on transnational’s:-

1. Investment will granted better intellectual property rights protection, 
2. Their research and development center can be set up in India. 
3. Technology transfer to Indian joint ventures will be safer. 
4. Patents held by global patents will be recognized in India.

Effects on consumers:  

1. Global product will become more easily available in India. 
2. Better product will be available to the consumer. 
3. More products will meet higher quality standards. 
4. Prices of some patented product will increase.

Effects on research and development

1. Research results must be patented before publication.
2. Technologies development will be licensed out. 
3. Corporate and lab will collaborate on research and development. 
4. Commercialization of research will earn royalties to fund research and development.

Effects on government 

Policies are conforming to the new regime must be created.

1. The process of granting patents must be speeded up. 
2. Patent application fees will become a source of revenue. 
3. Penalties for violation of patent laws will have to be hiked.

Reforms taken by Indian patent offices 

1. Modernization and computerization of patent offices.
2. Initiatives for integrated intellectual property offices in the metro cities. 
3. Logo for intellectual property administration has been designed and put in to use. 
4. 227 additional posts of patent examiners have been created.
5. An intellectual property training institutes has been established at Nagpur, for training of examiners. 
6. Online search facilities have been established. 
7. Work manual for intellectual property office have been prepared. 
8. The patent (amended) act, 2002 introduces examination on request system in place of examination of all application to reduce backlog of pending patent applications. 
9. Digital database of over 1, 00,000 patents record and 48,000 design records are prepared.

Recommendations 

1. Training of patent examiners and attorneys. 
2. Formation of tribunal/appellate board as soon as possible. 
3. Electronic filling of patent application. 
4. User friendly electronic system. 
5. Appointment of permanent controller general. 
6. Digital bank for traditional bank. 
7. Development of database on lines of PCT gazette and USPTO. 
8. Single set of serially allocated numbers, allotted both PCT and Non PCT application.

Indian Patent System 

Ministry of Commerce & Industry

The Department of Industrial Policy and Promotion under the Ministry of Commerce & Industry is responsible for Intellectual Property Rights relating to Patents, Designs, Trade Marks and Geographical Indication of Goods and oversees the initiative relating to their promotion and protection. These include the outlining of policy and its implementation through the Office of the Controller General of Patents, Designs and Trade Marks. Promoting awareness regarding protection of the Intellectual Property Rights is inherent in industrial property in conjunction with the World Intellectual Property Organization (WIPO) and apex industry organizations apart from similar initiatives involving regional industry associations. It also provides inputs on various issues relating to the Agreement on Trade Related Aspects of Intellectual Properties (TRIPS) related to World Trade Organization (WTO) in these fields. The Department undertakes technical cooperation programs with the World Intellectual Property Organization (WIPO), Geneva for the modernization and up gradation of Intellectual Property (IP) administration.

Office of the Patent Information System (PIS) 

Ministry of Commerce and Industry, Department of Industrial Policy and Promotion established Patent Information System (PIS), in the year 1980 with the following objectives.

• To obtain and maintain a comprehensive collection of patent specification and patent related literature on a worldwide basis to meet the needs for technological information of various users in R&D establishments, Government Organizations, Private Industries, Business, Investors and other users. 
• provide technological information contained in patents or patent related literature through publication services, search services and patent copy supply service; and to meet statutory obligation regarding novelty search under the patent Act, 1970 (Amended). 
• The major initiatives by the Department include modernization of IP infrastructure and establishment of new integrated offices in Delhi, Kolkata, Chennai and Mumbai which was completed during July 2007. A program costing Rs.153 crores implemented in the 10th Five Year Plan of Indian Government.
• The program focused on the following: Infrastructure development; Computerization; Human resource development; Training and awareness. Further modernization of IP Offices to provide additional human resources, higher level of computerization to support on-line processing, strengthening of data-base and novelty search facilities, awareness generation activities, accession to international treaties/ conventions is being taken up in 11th Five Year Plan. 
• The Department has introduced e-filing facility for patent and trademark applications. Along with the legislation, rules have also been amended to install a user-friendly system for processing of IP applications. As a result of modernization, the filing of patent applications has increased.

Technology Information, Forecasting & Assessment Council (TIFAC): 

An autonomous organization under Department of Science and Technology (DST) aims to keep a technology watch on global trends and formulating preferred technology options for India. The Patent Facilitation Centre (PFC) of TIFAC has conducted 305 awareness workshops sensitizing about 3200 scientists, technologists and policy makers from 85 Universities, 100 R&D institutions and 150 industries. Besides providing assistance for filing patent applications, the centre provides patent search services through two databases viz. Ekaswa-A: Patent applications filed in India as published in the issues of the Gazette of India (Part III, Section 2) from January 1995 onwards and Ekaswa-B: Patent applications notified for opposition in the Gazette of India (Part III, Section 2) published from January 1995 onwards.

Patent Facilitating Centre (PCT) by TIFAC under DST

A Patent Facilitating Centre was set up by Department of Science and Technology under Technology Information Forecasting and Assessment Council (TIFAC) in the year 1995. The major objectives of PFC are introduction of patent information as a vital input in the process of promotion of R&D programs. Aim is to provide patent facilities to scientists and technologists in the country for Indian and Foreign patents on a sustained basis, keep a watch on developments in the area of IPR and to make important issues known to policy makers, scientists, industry etc. To create awareness and understanding relating to patents and the challenges, opportunities in this area including arranging workshops, seminars, conferences, etc. This Single Window facility to serve with a smile and "May we help you" approach. PFC has been undertaking specialized studies based on patents granted and also on other patent related subjects. 

National Research Development Council (NRDC) under DST

The NRDC team has a singular purpose which is to identify and satisfy the potential investor in the use of innovative, reliable and competitive technologies co-developed or marketed by the corporation. 

1. To this purpose, NRDC harnesses its human resources to promote, through flexible funding schemes, the development of marketable technologies in close association with industry and national R&D institutions. 
2. To evaluate the technological merits and commercial potential of incipient or mature technologies by conducting techno-economic surveys; technology and business forecasts and investment appraisals, preemptively protect intellectual property rights worldwide. 
3. To design and engineer manufacturing plants of commercial scale.
4. To shape and manage technology contracts those are fair and equitable. 
5. To test -market products and assist in obtaining certifications for products and their quality, where these are prerequisites for entering commerce. 

This Institute's Research Department undertakes to research in Intellectual Property Rights (IPRs) issues and aims at establishing, maintaining and managing center(s) of research to promote the knowledge of intellectual property laws of India as well as intellectual property systems of other countries. The Institute aims at establishing rapport with research bodies, Chambers of Commerce, businessmen and other professional institutes to ensure promotion of Intellectual Property research. The Institute provides training in the field of Intellectual Property research and management to lawyers, scientists of R&D labs, students and other professionals. 

Confederation of Indian Industry (CII) Initiatives in IPR 

Confederation of Indian Industry (CII) has a National Committee of Intellectual Property (IP) Owners, Chaired by Mr. Shanker Annaswamy, MD, IBM India Ltd. and having members from IP Owners' Industry. Andhra Pradesh Technology Development & Promotion Centre (APTDC--jointly promoted by CII, TIFAC and Government of AP) Governing body, Chaired by Secretary, Department of Science & Technology, Government of India and having members from Industry, Government of India & Andhra Pradesh. APTDC established in the year 2000 as an autonomous organization in Hyderabad to help SMEs in technology and IPR areas. APTDC's IPR Facilitation Cell is the pioneer institution in the country in providing various IPR services towards Training, Information & Advisory services and IP protection facilitation. The overall objective of CII's initiatives in IPR is to enhance competitiveness of Industry through wealth creation through IPR. The primary focus of the initiative is to take policy initiatives, awareness creation, capacity development, IPR services, international networking and also combating the menace of counterfeiting & piracy.

Biotechnology Patent Facilitating Cell (BPFC) under Department of Biotechnology 

The BPFC has organized a series of national seminars on "Patenting in Biotechnology" and "IPR in Biotechnology" at various Institutions and Universities around the country, in collaboration with World Intellectual Property Organization (WIPO), Geneva, to enhance the awareness of the scientists about the inventions, process of patenting, issues in IPR in biotechnology and the strategic importance of the IPR in post-GATT era, the procedures and nuances of writing patent documents with description, claims and issues associated with the protection of live forms, international patenting, product patents etc. TKDL access agreement with International Patent office’s has been permitted by the Government. Access to TKDL would be secured and shall be utilized by the examiners of Patent Offices for patent search and examination purpose only. Negotiations with leading International Patent Offices are in an advanced stage. Two journals published by the institute namely National Institute of Science Communications and Information Resources (NISCAIR) Indian Journal of Traditional Knowledge (IJTK) and Medicinal and Aromatic Plants Abstracts (MAPA) have been included in the PCT minimum list.

Ministry of Health and Family Welfare (MoH&FW)

The WTO Cell in the Ministry of Health and Family Welfare works on ascertaining impacts on public health due to globalization and suggests ways to formulate effective legislation and policy initiatives to deal with it. In particular, the function of the WTO Cell includes providing technical assistance to the MoH&FW in the area of international trade related agreements, such as TRIPS, GATS, SPS and TBT.

Patenting Process in India

When the inventor finds value in his/her invention and starts thinking to protect invention Patenting starts. Process of obtaining patent begins when the inventor discloses the full details of invention in written format to the patent office details such as the nature of the invention, details process steps involved in the development of the invention, the various merits and demerits of the invention over other existing methodologies, usefulness of the invention etc. If the inventor discloses the invention by means of illustrations, drawings and it is important that whatever has been described in written format should be similar to when has been explained through drawings the possibility of obtaining patent is more. At last, the inventor should sign at the end of disclosure and clearly specify the date on which the disclosure was made which ensures there was somebody who had witnessed the invention disclosure.

Every application shall be accompanied by a provisional or complete specification. Filing of a provisional specification allows the applicant to get an early application date. Provisional Specification contains Title, Written Description, Drawings, if necessary and Sample or model if required. The complete specification shall contain Title, Abstract, Written Description, Drawings (where necessary), Sample or Model (if required by the examiner), Enablement and Best Mode, Claims and Deposit (Microorganisms).

The following documents have to be submitted at the time of filing patent applications are:

Form 1--Application for the grant of patent, 

Form 2--Provisional or Complete Specification, 

Form 3--Statement and undertaking by the applicant,

Form 5--Declaration as to inventor ship, 

Form 26--Authorization of patent agent or any other person.  

Priority document details have to be filed for a Convention application. To get a U.S. patent, it should be filled in U.S. Patent and Trademark Office. There are two types of patent applications namely provisional and non-provisional patent application. Patent Application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai. A patent provides protection for the invention to the owner of the patent. A patent is granted by a national patent office or by a Regional Office. The protection is granted for a limited period, generally 20 years. Priority date is the date of first filing allotted by the patent office to an application. There are three different types of patents utility patent, design patent and plant patent on a new variety of living plant.

By filing of a patent application patentee is securing a patent. Before filling the application, Patent search should be conducted. After submission with the Patent Office, the officer then starts publication and examining the authenticity of invention. If everything is in order, the patent would be granted to the inventor. If the application gets rejected, the inventor has to make the necessary amendments and resubmit the application. It is advisable to use help from the Patent professionals or IPR firms so that the entire process is smooth and painless. Once the application is submitted to the Patent Office, the office then starts examining the authenticity of invention. If everything is in order, the patent is granted to the inventor. If the application gets rejected, the inventor has to make the necessary amendments and re-submit the application. Usually there are specialized firms that take care of patent applications and it is advisable to use help from these professionals so that the entire process is painless and smooth. 

Patent Application Examination

Any application is filed for a patent in a Patent Office, the application is examined for patentability by a Patent Examiner Examining the value of a particular invention is an aspect that is very much important while issuing a patent. A Patent examiner looks for in inventions which include novelty, usefulness and non-obviousness. An invention should not be an elaboration of a fact that was already explained nor should it be an extension of something that already exists. Every application must meet all these three conditions otherwise patent application would be rejected. Non-obviousness is the most difficult criterion that is to be explained in a patent application. Obviousness of an invention refers to previous arts, printed publications and several other patent applications that were successfully filed earlier.

Electronic (e)-Filings of patent Applications

During July 2007, Indian Intellectual Property Office (IPO) has commenced e-filings of patent and trade mark applications. With this facility, India joined elite group of dozen countries including U.S., Japan, South Korea, China and the EPO having e-filing of patent applications, with this first phase of modernization of Indian Patent Office’s came to an end. 

Indian patent trends ISA & IPEA 

By the World Intellectual Property the Indian Patent Office recognized as the International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) Organization (WIPO) which consists of more than 170 member nations. As an ISA and IPEA, major functions of the Indian Patent Office will be to approve or establish the title and conduct international searches. The recognition of India as an ISA and IPEA places India among 15 nationals currently recognized at a global level. This status would also generate an income through fees. India is the only country in the Asian region recognized as an ISA and IPEA.