Indian Patent Act - Essay, UPSC MAINS | Course for UPPSC Preparation - UPPSC (UP) PDF Download

Indian Patent Act

structure

(1) Opening    —    Different Conventions.

(2) Body    —    India would be bene

-fited. 

    —    Problems in finding patent.

    —    Benefits of joining PCT .

    —    Amendment options.

    —    The criticism.

(3) Closing    —    Need for other important legislation.

The Paris Convention and the Patent Co-operation Treaty (PCT), which India has joined are, however, only two of the many conventions and treaties which impact on intellectual property rights, Some of the other important ones are the Berne Convention for Literary and Artistic Works (125 member countries); Madrid Agreement on Deceptive Indications on sources of goods (31 member countries); Madrid Agreement on Registration of Marks (54 member countries); Strasbourg Agreement on International Patent Classification (38 member countries); Hague agreement on Industrial designs (29 member countries); Budapest Treaty on Deposits of Micro-organisms (41 member countries); and Treaty of the Union for Protection of New Plant Varieties (UPOV).

India would be benefited if efforts are made to join many of these international treaties. Already, with membership of the World intellectual Property Organisation (WIPO), Paris convention and the PCT, a major step has been taken to smoothen and simplify the procedure of international patenting.

Under the 1970 Indian Patents Act, an Indian inventor was oblige, under Section 39 of the Act, to first file his application in India and only in the absence of a negative response from the Government, was allowed to file the corresponding application abroad. This stipulation was made to ensure that non-patentable subject matter as defined under section 3 and 4 of the India Patents Act; 1970 will not be made the subject of an application abroad.

In addition the priority date of the Indian application had no sanctity in other countries except for six countries earlier designated, due to India application to the Commonwealth. 

Apart from the costs involved, problems in finding patent agents in many countries to prosecute the application and the need for certified translations of the application in many gauges were serious deterrents to filing patent applications abroad. Majority of Indian inventions was thus filed only in India which in effect was more damaging than not filing anywhere, since filing in India discloses the invention with no protection in other countries in the absence of foreign filing.

    The specific advantages of joining the PCT are:

• Application for the protection of inventions in any of the contracting states can be used to obtain protection in a larger number of counties;
• The chances of getting a valid patent can be assessed by obtaining an international search report as well as an international preliminary examination report;
• Costs and time for foreign filing can be saved;
•  Since the international patent application is valid in all designated PCT countries, costs of filing separate applications for all those states are not incurred;
• The language in which patent applications are filed, are restricted only by the requirements of the receiving office;
• International Patent search is carried out in one of the approved searching authorities in the national offices of Australia, China, Japan, Russia, Spain, Sweden, the U.S., and the European Union;
• Until the international publication (18 months after the priority date), no third-party has access to the international patent application; and 
• All national procedures including filing in designated  states, can be delayed by 20 months from priority date and if an international preliminary examination is requested, by 30 months. This period can be gainfully employed to assess the chance of getting patents and the commercial importance of the invention.

It is, thus, obvious that there are several major advantages for the Indian inventor as a consequence of India being a member of PCT. The filing fees for a single international application 

could be as low as Rs. 20,000 as against Rs. 4 to 5 lakhs when individual applications in important countries are filed by Indian inventors. There is also a provision to obtain major waivers in fees for individual inventors from countries whose annual per capita income is less than $ 3000.

While considering amendments to the Indian patents Act, 1970 to meet its obligations to the World Trade Organisation (WTO) India had two options. It was imperative that one of the two is implemented before the agreed deadline of April 19, 1999. The first option is to advance the deadline of January 1, 2005 for implementation of a state-of-the-art patent legislation consistent with those of the patent strong counties. This would mean immediate implementation of product patent system for all segments of business, term of the patent extended to 20 years from the date of filing, compulsory licences permitted only in cases of national emergencies and that too, on mutually agreed terms between the patentee and the licensee, working of the patent to include also marketing of imported products and the onus of proof in case of an infringement litigation to rest with the defendant. The argument of those in favour of this option was that the provision of compulsory licences would be advantageous particularly if it can be diluted to include encouragement of local production by indigenous companies.

The second option, the one accepted by the government, is to amend the Act only to the extent needed at present, namely to permit filing of product patents for all fields including food, agrochemicals and pharmaceuticals and to provide for exclusive marketing rights (EMR) to the patentee, or his assignee for five years after the EMR is granted or until the patent concerned is granted or rejected, whichever is earlier.

The criticism against this option rested with the contention that EMR is an indirect way of granting protection even in the absence of a valid patent. In reality, considering the time frame required for grant of an EMR, this provision is largely of academic interest, since in the case of pharmaceuticals particularly, it takes a minimum of 8 to 10 years after the patent is filed for the product to be ready for commercialisation. And the ultimate authority to clear the product rests with the Drugs Controller General if India who can take into account, apart from the safety and efficacy aspects of the new drug, medical needs and cost-benefit analysis. To ensure that even patented drugs are priced equitably, the Drug Prices Control Order (DPCO) can take into account costing and pricing norms.

It has been reported that the Congress Party insisted on a fresh clause to be incorporated under Section 24, subsection A(3) to include a provision saying that exclusive right to market a product will not be granted to articles based on Indian Systems of Medicine, which is already in the public domain.

This amendment is of little consequence, since as per the norms of patentability, Articles on Indian Systems of Medicine, which are already known and therefore in public domain, are not patentable in any case. It would, therefore, appear that this amendment is without substance and is not needed to protect Indian Systems of Medicine.

Apart from the strengthening of the patent system, much more needs to be done to ensure that the rich bio-diversity and germplasm assets of India are protected from exploitation by third parties. Some of the important legislations which need to be put in place expeditiously are 

• Plant Varieties Protection Act under sue generis system stipulated under the TRIPS Agreement;
• Bio-diversity Protection Act, as discussed under the Convention on Bio-diversity, and
• Geographical Appellation Act.
• Our position in patenting of microorganisms, recombinant DNA products, gene patenting, transgenic plants and animals, and other such areas, need to be clearly defined through appropriate policies and legislations.