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PROCEDURE TO OBTAIN A PATENT

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The word “patent” originated from the Latin word “patere” meaning of which is “to lay open,” or to make available for public at large.

A ‘Patent’ is an exclusive right of the inventor to prevents any other person from making use of the patented invention in an unauthorized manner. Patent protection extends upto 20 years from the date of filling of the application with complete specification.

Patents are territorial; the patent protection is, therefore, only in those countries where the applicant has actually applied and received patent protection. Thus, a person who has obtained patent protection in America and India, cannot stop a person in Japan from using his invention. However, he has full rights to prevent anyone in any of those countries from using his invention.

In India, Patents are governed by Indian Patents Act, 1970. A person who has obtained a patent is called “Patentee” or a “Patent-holder.”

Patentability Criteria

Before, applying for a patent, one must always check if the invention passes the Patentability Criteria.

  • Subject – matter: The subject of the invention should not be non-patentable i.e., it should not fall under the purview of Section 3 and 4 of the Indian Patent Act, 1970.
  • Novelty – The invention should essentially be new or something that was not known before. An improved version of already existing things is also considered valid.
  • Utility – The said invention must also be capable of industrial applicability.
  • Non – obviousness – It should not be prior art and not obvious to anyone who is ordinarily experienced in the field.

All of these criteria must be fulfilled, failure to meet even one of these can lead to revocation or opposition to grant of patent.

Procedure to Obtain a Patent

 The procedure to obtain a patent begins with application for patent followed by different stages like publication, examination, opposition and finally ends with the grant of patent. It is a tedious process involving a great amount of time and money.

So let us understand the procedure to obtain a patent in a detailed manner.

The steps of obtaining a patent are:

  1. Application for patent
  2. Provisional and Complete Specifications
  3. Publication
  4. Examination
  5. Opposition
  6. Grant

1.     APPLICATION FOR PATENT

The first step in the procedure, it to make an application for the grant of patent.

Who can apply? – Sec 6 of Indian Patents Act, 1970

Under Sec. 6 a Patent Application for an invention can be made by any of the following persons:

  • True and first inventor of the invention​
  • Assignee of the true and first inventor
  • The legal representative of any deceased person who immediately before his death was entitled to make such an application

This patent application can be made singly by one inventor or jointly by 2 or more inventors.

Canadian General Electric v. Fada Radio[1]– Where two persons have made the same invention independently and not disclosed it then the inventor who applied first for the patent is to be taken as the first and true inventor of the invention, irrespective of the fact that he made the invention later than the other inventor.

Form of Application

According to Section 7, there must be only 1 invention in an application; unlike trademarks one cannot register multiple marks in one application. The application is to be made at the Patent Office or Online. Under the Patents Act, 1970 patent offices are established at Kolkata, Mumbai, Chennai and New Delhi.  An application for a patent is to be made in the prescribed form in the appropriate patent office. Every such application must be made to the office in which jurisdiction lies: where the inventor resides or where the invention is made or where the business of the inventor is located. Eg: For a person whose business is in Bengaluru, he should make the patent application to Chennai Office.

Every international application made under the Patent Cooperation Treaty (PCT) designating India, a corresponding application is to be filed before the Controller General of Patents, Designs and Trade Marks in India. The filing date of such application and its complete specification shall be the international filing date accorded under the PCT. An applicant in respect of an international application designating India has to pay the prescribed national fee and other fee to the patent office within the prescribed time. If the international application is not filed or published in English, then a translation of the application in English, duly verified by the applicant or the person duly authorized by him that the contents thereof are correct and complete is required.

Where an application is made by the assignee, he has to submit the proof of assignment along with the application thereof.

2. PROVISIONAL AND COMPLETE SPECIFICATION – sec. 9 to 11

Every patent application form must be made along with provisional or complete specifications. Specification is a technical document that describes the invention. These specifications contain name of the inventor, full disclosure of the invention and its operation, the claims made, undertaking that he is the true inventor etc. Sometimes they may also include related developments.

 Provisional specifications are those specifications that give incomplete or preliminary details of the invention. The purpose of Provisional specification is to get priority over other inventors who may make applications for similar inventions.

Complete Specifications give the complete details of the invention.

Essential Requirements of Complete Specification  – Sec 10

Every complete specification is to:

  • describe the invention and its operation or use and the method by which it is to be performed;
  • disclose the best method of use of the invention;
  • include claim(s) that outline the scope of the invention;
  • be accompanied by an abstract to provide technical information on the invention

The complete specification must be such that they tell an ordinarily skilled person in the field, how to use the invention, what is the best way to operate such an invention. If the complete specifications do not inform about these things properly, the grant of patent may be opposed on this ground.

If complete specification is not made within 12 months from the date of provisional specification, then the application is abandoned.

In F Hoffmann-la Roche Ltd. and Anr. V. Cipla Limited[2], the court held that the application of anyone desirous of seeking patent has to contain specifications that are to conform to the requirements of Section 10.

Complete specifications must be in line with the provisional specifications. If the complete specifications are completely different from provisional specifications, then the application can be abandoned.

Bajaj Auto Ltd. v. TVS Motor Co. Ltd.[3] – It has been held that the final specifications cannot be invalidated merely because it gives wider construction than provisional specification.

3. PUBLICATION OF THE APPLICATION – Sec.11A

As per Sec. 11A, every application, that is not restricted by the Act, shall be published within the prescribed period from the date of application. However, an early publication is possible; the applicant must make and application for early publication and pay the prescribed fees.

Exceptions to publication of the applications–

  • in which secrecy direction is imposed under section 35; or
  • has been abandoned under Section 9(1); or
  • has been withdrawn 3 months prior to the prescribed period as aforesaid.

From the date of publication, the applicant has the rights of patent like it has already been granted. However, he has no power to institute any infringement proceedings until actual grant of the patent.

4.EXAMINATION OF THE APPLICATION

Request for Examination–Sec. 11B – No application for a patent is to be examined unless the applicant or any other interested person makes a request for such examination. In case the application or any other interested person does not make a request for examination of the application for a patent within 48 months, then the application is to be considered withdrawn.

First Examination Report (FER) – Sec. 12 – The Controller refers a Patent Examiner to the application. Patent Examiner, within 1 month from such appointment, has to give the First Examination Report as to:

  • Whether the application & specification are in accordance with the requirements of the Act.
  • Whether there are any lawful grounds of objection.
  • The result of investigation made under S.13

Search for Anticipation (sec.13):  The Examiner has to search whether the invention is already patented by any previous application or whether the claims made in the application are the claims in any of the previous patents. Search for anticipation is done to ensure, that the invention is question is essentially a new one. The following are not said to be anticipated:

  • Previous communication to govt. – Sec 30:
  • Public display in exhibition – S.31
  • Public Working , if reasonably necessary – 32

Mariappan v. AR Safiullah[4] – Suppose the examiner reports that there is no anticipation for that particular app., but there turns out to be one. The Central Govt. or any other officers cannot be held liable for the same. This is provided under S. 13(4). 

Power of the Controller to accept, dispose or suggest amendments to the application:

Upon receiving the FER, the Controller has power to dispose of or advice and amendments to the application. He must hear the applicant before rejecting. If the Controller finds that the application or any specification or any other document does not comply with the requirements of the Act, the Controller may refuse the application or may require the application, specification or other documents to be amended to his satisfaction before he proceeds with the application and refuse the application on failure of the applicant to do so.

5.OPPOSITION

Opposition proceedings mean the administrative procedure available in most jurisdictions that allow for third parties to formally challenge the granted patent or the pending application for a patent. The purpose is to filter useless, incomplete, or untrue claims. Therefore, it is called litmus test for the patent applications.

There are 2 types of Opposition proceedings – Pre-grant and Post-grant Opposition.

PRE-GRANT OPPOSITION – SEC. 25(1)

  • Can be instituted by any person
  • It is done after the publication and before the grant of patent. Preferably, within 6 months from the publication date.
  • Necessary to obtain complete specification; not possible with only the abstract
  • Filed by Form 7A

POST-GRANT OPPOSTION – SEC. 25(2)

  • Done after the grant of Patent within 1 year ( Mitra & Co.Pvt.Ltd vs Asst. Controller Of Patents[5]).
  • Only by interested parties
  • By Form 7.

Grounds for opposition

Section 25(1) (a) to (k) of the Patent Act provides a list of the grounds on which a patent application can be opposed. These grounds are:

1.Wrongful obtainment: The invention or any part thereof was wrongfully obtained from the opponent. 

2.Prior publication: The invention was published before the priority date (earliest filing date which discloses the invention) as subjected to Section 29 of the Act, that provides which publication does not constitute an anticipation.

3.Prior claim: The invention was previously claimed in another Indian patent application, which was published on or after the priority date of the applicant’s claim but whose priority date is earlier than that of the applicant.

4.Prior knowledge or use: The invention is known or used by the public before the priority date. In the case of a process that is being patented, it is deemed to have been publicly known or used if a product made by that process was imported in India, before the first date of filing of the application.

Ravi Kamal Bali v. Kala Tech and Ors[6] – Plaintiff used to sell “tech locks”, a patented lock/seal that was tamperproof. The defendants allegedly were selling a similar thing under the name of “Seal tech”. The plaintiff brought a suit for infringement of patent. The defendants claimed that their product was essentially different from that of the plaintiff’s because they had used a different metal to make their spring and also that the products were different even in exterior looks. The Court applied the Doctrine of Equivalents and held that the defendants were indeed infringing the patent of the plaintiff. Merely, because the product looks different or has used some other metal, it does not become a different product while its functioning and principle are all the same.

5.Obviousness: The invention is obvious and does not involve any inventive step. This means that no advancements have been to the existing use or literature on the subject.

6.Non-patentable subject matter: The subject of the application is not considered to be an invention under the Patent Act or falls in the category of “non-patentable inventions”.

Diamond v. Chakrabarty[7]– The scientists sought to obtain a patent for a modified bacterium, which enabled it to breakdown components of crude oil. The grant of patent was opposed on the grounds of it being a living thing which cannot be patented. The Court found the bacterium modified as the inventors had added plasmids. Held that it could be patented since it was a non-naturally occurring manufacture or a composition of human ingenuity having distinct character and use.

7.Insufficient description: The patent specification does not properly explain the invention or the method of performing it.

Star Textile Engg Work Ltd. V. James Mackie Holding ltd[8]– When there is proof of insufficient description that cannot enable a person skilled in the field of the invention to operate the invention, then it can be revoked.

8.Non-disclosure: The applicant does not disclose all that is required of him to be disclosed under complete specification.

9.False disclosure: Provision of materially false information in the application.

10.Time limit: If complete specification is not made within 12 months from the date of provisional specification; convention applications must be made offline at the Indian Office within 12 months from the date of international filing.

11.Biological material: The specification failed to disclose the origin or source of the biological material, if any, used in making the invention or has mentioned the incorrect source.

12.Traditional knowledge: The invention is actually a part of the ancient knowledge of indigenous communities.

Turmeric Case[9] – University of Mississippi obtained a patent for “wound healing properties” of turmeric. CSIR, India challenged the grant of patent on the grounds that it was traditional knowledge of India. They were able to prove it with ancient texts and therefore, USPTO revoked the patent granted to them.

Neem Case – WR Grace and the Dept. of Agriculture, USA made a discovery of Antifungal property of neem. They developed a technology with neem-oil formulation to prevent the growth of fungi and they filed an application to obtain a patent over this technology. Indian opposed the grant of patent on the grounds that it is traditional knowledge; already known to India through ancient texts.

Novartis AG v. UOI[10] – Novartis AG’s applied for a patent on a product named Gleevec/Glivec, used for treating blood cancer (leukamia) and Gastro-Intestinal Stromal Tumours (GIST). The Cancer Patients Aid Association of India, Mumbai, and the companies producing the generic versions of the product opposed the grant of patent as it lacked novelty, was obvious to a person skilled in the art; it was considered by them as a mere “new form” of a “known substance” which did not lead to enhancement in the efficacy of the substance. The Patent Office refused to grant patent for it did not meet the requirement of the section 3(d).

Rebuttals of oppositions: A notice of opposition by any person who is interested is allowed within 3 months from the date of publication in the Official Gazette. A copy of such notice of opposition shall be  sent to the applicant to show cause. The applicant may file a reply statement within a month from the date of receipt of the copy. Then the process of providing evidences and hearing goes on. The matter is heard and decided. 

Telefonaktiebolaget LM Ericson v. UOI[11] – When the applicant doesn’t show anything to prove wrong the objections in the FER, the application is deemed to be abandoned.

6.GRANT OF PATENT

If the application is in order and the Controller also does not refuse it, then the Patent should be granted as soon as possible – S. 43

It has to be under the seal of the patent office. The Date of the patent is the date of complete specification. Upon the grant of patent, the Controller shall publish the fact that the patent has been granted and also the application, specification and other related documents for public inspection.

CONCLUSION

This is the procedure to obtain a patent in India. It is a very time-consuming and expensive process. At every stage of application, fees are required to be paid; failure to make any due request or payment of fees can cause for the application to be abandoned.

One has to carefully word the specification and the claims thereby, because they are the ones on which opposition proceedings are instituted. If there is any similarity to any prior patent, then sufficient amendments must be made so as to remove those similarities.

Once, the patent has been granted the patentee has exclusive rights to use his invention. He can prevent anyone from using his invention.

[1]  [1927] S.C.R. 520.

[2] (2008) 37 PTC 71 (Del)

[3] CIVIL APPEAL No. 6309 of 2009 (Arising out of S.L.P.(C) No.13933 of 2009)

[4] 2008 (38) PTC 341 (Mad.).

[5] S.L.P. (C) No.15727 of 2008

[6] (2008) 38 PTC 435.

[7] Diamond v. Chakrabarty, 447 U.S. 303 (1980)

[8] O.O.C.S. No. 551 of 1977 Calcutta High Court.

[9] Case of the Turmeric Patent (1997, USPTO)

[10] Novartis AG v. UOI, 13 S.C.R. 148

[11] W.P.(C) No. 9126 of 2009

Procedure To Obtain A Patent And The Importance (ppt format)

Written by Aparna Gupta, University Law College and Dept. of Studies in Law, Bangalore University

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PATENTABILITY CRITERIA

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 When a person uses his intellect to invent something new, he must be rewarded for the same. Patent protection is granted to such inventions, so that no one else can copy or use those inventions without the permission of the Inventor. This gives monopoly rights to the inventor to use his invention however he likes and is considered a reward. This not only encourages more inventions but also contributes to the development of a country.

The word “patent” has been derived from the Latin word “patere” which means “to lay open,” or to make available for public at large.

A ‘Patent’ is an intellectual property right which protects any new invention. It is an exclusive right that protects the rights of the inventor and prevents other people to unauthorizedly use and misappropriate the registered patent. A patent is granted for a term of 20 years from the date of filling of the application.

Patents being territorial in nature are valid only in those countries where the applicant has actually applied and received patent protection. For example, a person has registered his invention of a massaging sofa-chair in India. So, the patent protection would be available only in India. If someone in America is copying his invention, he has no power to take any action for his patent is not registered in America.

In India, Patents are governed by Indian Patents Act, 1970. A person who has obtained a patent is called “Patentee” or a “Patent-holder.”

Types of Patents

Depending upon what is protected by the patent, the patents are classified into many types which are as follows:

  • Product patent – This is the patent which protects the actual invention. No one else can manufacture the same invention without the permission of the Patentee. This is especially helpful in addressing reverse engineered manufacturing.
  • Process Patent – The process of manufacturing the invention or a new way of manufacturing an existing product can be patented under Process patent.

There are also utility patents which protect processes, compositions of matter, machines. Design patents are used to patent designs or exterior ornamental design on something.

Patentability Criteria

According to Section 2(j) of the Indian Patent Act, 1970, an invention means “a new product or process involving an inventive step and capable of industrial application.” This definition highlights as to what qualifies to be a patentable invention.

An invention to be patentable must:

  1. Not be under Sec.3 and 4 of the Indian Patents Act, 1970 (patentable subject-matter)
  2. Novelty
  3. Utility
  4. Non-obviousness

1.Patentable Subject-matter:

Any invention that comes under Sec. 3 and 4 of the Patents Act, 1970 cannot be patented. Some of the subject-matters listed under Sec. 3 are:

  1. Frivolous invention – invention against the laws of nature or without any purpose. For example, a device that can give answer without any inputs or a device that can boost even 100% efficiency.
  2. Inventions against morality or public order – Inventions like a device that can cleanup after murder, a device that can open locked cars, a device used to cheat in exams etc.
  3. Mere discovery of naturally occurring substances – The mere formulation of an abstract theory, the finding of any living entity or non-living object happening in nature, or the discovery of any scientific principle is not enough. There must be some human ingenuity involved to make it patentable.

Diamond v. Chakrabarty[1]– The scientists added 4 plasmids to a bacterium, which enabled it to breakdown various components of crude oil. This was opposed on the grounds that it was only a discovery of a naturally occurring bacteria. The Court held that the bacterium was modified because the inventor had added plasmids and that could be patented for it was a non-naturally occurring manufacture or a composition of human ingenuity having distinct character and use.

Association for Molecular Biology v. Myriad Genetics[2] – Myriad discovered the precise location and sequence of 2 human genes BRCA1 and BRCA2, mutations of which could   increase the risk of breast and ovarian cancer. This knowledge was used to test the cancer risk of patients and Myriad obtained a number of patents on this. Later, the Petitioner filed a suit that Myriad’s patents were invalid under S.101 of US Code for being mere discovery of naturally occurring substance. The US SC revoked the patent as there was no modification of the genes and therefore, it did not create anything. It was merely a discovery of naturally occurring substance.

4. Mere discovery that does not enhance any knowledge

Mere discovery of substances like new salts or new forms of a new substance that does not add to any existing knowledge cannot be patented.

Novartis AG v. UOI[3] – The case arose on the order of rejection of Novartis AG’s application for a patent on a product named Gleevec/Glivec, used for treating blood cancer (leukamia) and Gastro-Intestinal Stromal Tumours (GIST). The Cancer Patients Aid Association of India, Mumbai, and the companies producing the generic versions of the product opposed the grant of patent as it lacked novelty, was obvious to a person skilled in the art, and that it was merely a “new form” of a “known substance” and that as required by the new section 3(d) there was no proof of enhancement in the efficacy of the substance. The Patent Office refused to grant patent on the ground that it did not meet the requirement of the new section 3(d).

After appealing before IPAB, Madras HC, the SC was finally approached. Dismissing the appeals filed by Novartis, the Supreme Court stated: “We have, therefore, no doubt that the amendment/addition made in section 3(d) is meant especially to deal with chemical substances, and more particularly pharmaceutical products. The amended portion of section 3(d) clearly sets up a second tier of qualifying standards for chemical substances/ pharmaceutical products in order to leave the door open for true and genuine inventions but, at the same time, to check any attempt at repetitive patenting or extension of the patent term on spurious grounds.“

5. A substance obtained by a mere admixture resulting only in the aggregation of the properties of the component

6. Mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way

7. Section 3(h): a method of agriculture or horticulture; A method of agriculture or horticulture is not patentable as it would not be capable

8. Section 3 (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.

Nuziveedu Seeds Limited and others v. Monsanto Technology LLC[4]– Nuziveedu Seeds Limited and others filed for the revocation of patent on the ground that the technology is not an invention but a mere discovery and as such is not a patentable invention under section 3(j) of the Patents Act, 1970.

Diamond v. Chakrabarty[5]

9. section 3(k), a mathematical methods, business methods, computer programmes per se and algorithms are not considered as patentable subject matter.

Sony Communication Network v. USPTO – The subject of the application was of a method for facilitating exchange of electronic messages between two parties, where the message can be sent only if the receiver of the message has signified that he or she is willing to receive any message from that sender. The functions of this invention were controlled by software running on the computers. The Examiner held that the invention was excluded by section 1(2)(c) of the UK Act, which disentitled a business method and a programme for a computer from patentability. Holding that the invention was a case of using known technology to solve a business problem, the Patent Office ruled that it was excluded from patentability as a method of doing business and a program for a computer as such.

10. 3 (l)“A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions” Following type of work comes under the domain of Copyright Act, 1957, hence not-patentable

11. 3 (m)“A mere scheme or rule or method of performing mental act or method of playing game”- Mere scheme or rule or method of performing mental acts or method of playing games, are not patentable because these simply comes from human mind

12. Traditional Knowledge– An invention that effectively duplicates or aggregates the known properties of a traditionally known component or components is defined in Section 3(p). Traditional knowledge is information that was previously available (in prior art). This wisdom has been passed down from generation to generation for a very long, ancient, and historical time.

Turmeric Case[6] – University of Mississippi had gotten a patent for “wound healing properties” of turmeric. CSIR, India challenged the grant of patent on the grounds that it was traditional knowledge of India. They were able to prove it with ancient texts and therefore, USPTO revoked the patent granted to them.

Neem Case – WR Grace and the Dept. of Agriculture, USA made a discovery of Antifungal property of neem. They developed a technology with neem-oil formulation to prevent the growth of fungi and they filed an application to obtain a patent over this technology. Indian opposed the grant of patent on the grounds that it is traditional knowledge; already known to India through ancient texts.

13. Inventions relating to atomic energy not patentable – Section 4: Section 4 states that “No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962.” Section 4 of the 1970 Act prohibits the grant of a patent in respect of any invention relating to atomic energy falling within section 20(1) of the Atomic Energy Act, 1962

2.Novelty (Newness)

According to section 2(1)(1) a “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.  

Simply put, an invention is something that the inventor has himself devised and it could be a product or a process to produce a product. It must be the result of his steps to bring it about and one that did not exist before he commenced his work of invention. This is because, the inventions can be opposed later on the grounds of being prior anticipation or prior claims by someone else.

The invention must be new or something that was not known before or it can be a more developed version of something that is already known. Eg: When mouse was made for the first time, it was considered as an invention. But mouse in a different color is no “invention” as it is different only in its exterior design. However, if a person made wireless mouse, it would be considered an invention for it involves an “inventive step” or is more developed than the previous version.

In Bishwanath Prasad Radhe Shyam v. Hindustan Metal Industries: The SC held –“ In order to be patentable, an improvement on something known before or a combination of different matters already known, should be something more than mere workshop improvement, and must independently satisfy the test of invention or inventive step. It must produce a new result, or a new article or better or cheaper article than before. The new subject matter must involve “invention” over what is old. Mere collection of more than one, integers or things, not involving the exercise of any inventive faculty does not qualify for the grant of a patent. To decide whether an alleged invention involves novelty and an inventive step, certain broad criteria can be indicated. Firstly, if the “manner of manufacture patented, was publicly known, used or practiced in the before or at the date of patent, it will negate novelty or “subject matter”. Prior public knowledge of the alleged invention can be by word of mouth or by publication through books or other media. Secondly, of the alleged invention discovery must not be the obvious or natural suggestion of what was previously known.”

Mariappan v. AR Safiullah[7] – Manufacturing food grade paper in the shape of leaf is considered as an inventive step and therefore, the validity of the patent was upheld.

Turmeric Case[8] – A US-based University got a patent for a turmeric’s “wound healing properties”. Now, the fact of turmeric being used in India from the ancient times for its wound healing properties is considered traditional knowledge and this was challenged by CSIR on the ground of lack of novelty and inventive step. The USPTO revoked the patent granted to The University for lack of novelty and inventive step.

  1. Non-obviousness

Under Section 2(ja) of the Patents Act provides “the characteristic of an invention that involves technological advancement or is of economic importance or both, as compared to existing knowledge, and invention not obvious to a person skilled in the art.” This means that the invention should not be obvious to a person ordinarily skilled in the same field where the invention is concerned. It should not be inventive and obvious for a person ordinarily skilled in the same field.

Eg: If a person has made a robot that can finish tasks on voice commands, anybody else in the field of robotics should not be able to make the same. This is non-obviousness. If the invention can be made by anyone else, it is not an “invention” within the meaning of the Act.

The Supreme Court in the Novartis v. UOI[9] case broke down Section 2(ja) into its elements in the following way: “It [The product] must come into being as a result of an invention which has a feature that:

(a) entails technical advance over existing knowledge; Or

(b) has an economic significance And

(c) makes the invention not obvious to a person skilled in the art”

Rado v. John Tye& Son Ltd.[10] – It is: “Whether the alleged discovery lies so much out of the track of what was known before as not naturally to suggest itself to a person thinking on the subject, it must not be the obvious or natural suggestion of what was previously known.

Graham v. John Deere Co[11]. – US SC has devised a test to find out the obviousness of an invention. There must be 3 checks –

  1. The difference btw prior art and challenged claims
  2. The level of ordinary skill in the field relating to the patent
  3. Whether one possessing that level of skill would have deemed to be obvious from the prior art reference.

Pfizer Inc. v. Teva Pharmaceuticals USA, Inc.[12] – Pfizer had obtained a patent on it drug “Protonix”. Few years later, Teva & Sun Pharma got a patent on “Pantoprozole”, an essential ingredient of Protonix. They started selling generic version of Protonix and made huge profits.

Pfizer challenged the grant of patent on the ground of it being obvious. They were able to prove that Teva had done this before with another drug called Prilosec where the defendants patented omeprazole. The Court ruled in the favour of Pfizer and Teva and Sun Pharma were asked to huge sums of money as damages.

4.Utility/Industrial Application

Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the invention is capable of being made or used in an industry”. This basically means that the Invention cannot exist in the abstract. It must be capable of being applied in any industry, which means that it must have practical utility in respect of patent.

Eg: You discovered a bacterium which excretes a certain chemical “X”. This alone cannot be patented. There must be some use of the invention in question.

Melia’s application: The person had applied patent for his business model to exchange prison sentence to corporal punishment. The application was refused for the lack of industrial applicability.

CONCLUSION

These are the most important factors to be kept in mind while applying for a patent. Applying for a patent without checking for Subject-matter patentability, novelty, utility and non-obviousness would only lead to waste of time and money. Plus, there is always a threat from others that the invention infringes their patent rights. It is always better to have a thorough check of prior art regarding the invention that it to be patented. Therefore, it is always advisable to conduct a pre-application search for prior claims and obviousness, to avoid opposition later.

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Written by- Aparna Gupta, University Law College & Dept. of Studies in Law

[1] Diamond v. Chakrabarty, 447 U.S. 303 (1980)

[2] Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013)

[3] Novartis AG v. UOI, 13 S.C.R. 148

[4] Monsanto Technology LLC v. Nuziveedu & Ors, AIR 2019 SC 559

[5] Diamond v. Chakrabarty, 447 U.S. 303 (1980)

[6] Case of the Turmeric Patent (1997, USPTO)

[7] 2008 (38) PTC 341 (Mad.)]

[8] Ibid, see footnote 6.

[9] Ibid, see footnote 3.

[10]  (1967) R.P.C. 297

[11] 383 U.S. 1 (1966)

[12] Civil No. 2:10cv128.

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Delhi High Court has set aside the order passed by the Assistant Controller of Patents & Designs under section 15 of the Patents act.

Uncategorized , , , , , ,

Title: NIPPON STEEL CORPRATION vs THE ASSISTANT CONTROLLER OF PATENTS AND DESIGNS

Date of Decision: 7th July, 2023

+ C.A.(COMM.IPD-PAT) 36/2022

CORAM: JUSTICE PRATHIBA M. SINGH

Introduction

Delhi High Court has set aside the order passed by the Assistant Controller of Patents & Designs under section 15 of the Patents act and remanded for fresh consideration to the Respondent- Controller of Patents and Designs within a period of two months from today.

Facts of the case

The Appellant, Nippon Steel Corporation, filed the current appeal according to section 117A(2) of the Patents Act, 1970 (hereafter, “Act” disputing the contested ruling dated March 5, 2012 made under Section 15 of the Act.

According to the impugned order, the Respondent-Assistant Controller of Patents & Designs rejected the Appellant’s application bearing no. 435/DEL/2006 for the grant of a patent in respect of an invention titled “Non-Oriented Electrical Steel Excellent in Magnetic Properties in Rolling Direction and Method of Production of Same” (hereinafter, “subject invention”).

The Tribunals Reforms Act of 2021 allowed for the transfer of the current appeal, which was first brought in 2012 before the Intellectual Property Appellate Board (the “IPAB”), to this Court.

Analysis of the court

In Agriboard International LLC v. Deputy Controller of Patents and Designs [C.A.(COMM.IPD-PAT) 4/2022, dated March 31, 2022], this Court held that discussion of the prior art, the subject invention, and how the subject invention would be obvious to a person skilled in the art would be mandatory while rejecting an application for lack of inventive step. It is inadequate to simply get to the plain judgement that the subject invention lacks creative step since doing so would violate Section 2(1)(ja) of the Act.

Following the ruling in Agriboard (supra), this Court once more, in Gogoro Inc. v. Controller of Patents and Designs [C.A. (Comm.IPD-PAT) 25/2021, dated 24th August 2022], set aside the Respondent’s unjustified order refusing the grant of the patent, and restored the patent application to its original position.

Reading the contested order will reveal that the originality and innovative step concerns under Section 2 of the Act were not properly discussed before the order was made. The patent application was abruptly dismissed by the challenged ruling, which makes no mention of any of the FER’s stated previous art. This Court believes that the issue merits being remitted to the Respondent-Controller of Patents and Designs for new consideration after reviewing the contested ruling.

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Written By – Shreyanshu Gupta

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Impact of Covid-19 pandemic on IPR Laws in India

Articles , , , ,

Introduction 

The covid-19 pandemic has led to a dramatic loss of human life worldwide and presents an unprecedented challenge to the world of work. It has generated health concerns as well as social and economic crises which induced an acceleration of digitalization practices. It also exposed the existing inequalities of age, income, race, sex and geographical location which led to the inordinate impact of the pandemic on the vulnerable sections of the society.

The Covid-19 pandemic is very different from other forms of crisis as it had an impact on all forms of business, organisations, creative workers and users. The people were unable to feed themselves and their families due to no means of earning income during lockdown. The pandemic has shattered jobs and placed millions of livelihoods at risk.

Intellectual property is a category of property which includes intangible creations of the human intellect. It refers to the creations of the mind, such as invention, literary and artistic works, designs, symbols and many more. Article 2(viii) of the World Intellectual Property Organization defines intellectual property as, “Intellectual property shall include rights relating to literary, artistic, and scientific works, discoveries throughout all areas of human endeavour, scientific advances, industrial design rights, trademarks, service marks, and commercial names and designations, protection against unfair competition.” The World Trade Organization defines intellectual property rights as the rights given to the creators of the creations. These rights give a monopoly to the creator over their ideas for a specific time period and enable them to prevent others from using their creations. 

Now, the question arises, what intellectual property has got to do with Covid-19? Well, this article answers this question. In intellectual property, particularly patents are an inherent aspect when we talk about global healthcare or dealing with pandemics. In the context of Covid-19, vaccines, software applications, medical equipment, diagnostics and other innovations have critical intellectual property implications. 

TRIPS Agreement

The agreement on Trade-Related Aspects of Intellectual Property Rights is an international legal agreement between all the member nations of the World Trade Organization. It establishes minimum standards for the regulation of different forms of intellectual property.

The TRIPS Agreement requires member countries to make patents available for any inventions, whether products or processes, in all fields of technology without discrimination, subject to the normal tests of novelty, inventiveness and industrial application.

Article 7 of the TRIPS Agreement describes the objectives of the IP system in terms of a balance of rights and obligations.

Article 8 states that members may adopt measures necessary to protect public health and nutrition and to promote public interest in sectors of vital importance to their socio-economic and technological development that are consistent with the provisions of the TRIPS Agreement.

The Doha Declaration on the TRIPS Agreement and Public Health, a landmark declaration adopted at the WTO Ministerial Conference in 2001, reaffirmed the objectives and principles of the Agreement as guidance for the implementation of TRIPS provisions in a manner that is responsive to public health objectives.

The Doha Declaration also clarified certain policy options, or “flexibilities”, within the framework of the TRIPS Agreement. It is thus a well-established principle that the TRIPS Agreement can be interpreted and implemented in line with public health policy objectives and that it provides wide latitude for members to take action to protect public health.

Policy options and flexibilities regarding other IPRs

As mentioned earlier, the role of policy options in other areas of IP rights has also been raised in discussions about intellectual property and Covid-19.

Copyright 

Copyright is a type of intellectual property that protects original works of authorship as soon as an author fixes the work in a tangible form of expression. 

Copyright provides exceptions and limitations that allow access to those works under certain special cases. Both copyright and exceptions and limitations to copyright have equal importance when considering the question of access to medical technology and innovation. 

During the Covid-19 pandemic, some of the copyrights-holders have taken action to make copyright protected content freely available to public access. 

Article 13 of the TRIPS Agreement permits limitations and exceptions to copyright if they are confined to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.

The COVID-19 pandemic has raised many questions about the permissible use of materials and content as campuses have migrated courses that were traditionally taught in-person to a virtual format. Faculty are understandably concerned about how to best use their course materials in this new digital format, including works from third parties that may be protected by copyright.

There are several exceptions to the Copyright Act that may allow faculty to use some copyrighted materials created by third parties in their educational content. This includes the Fair Use exception and the TEACH Act (Technology, Education and Copyright Harmonization Act of 2002), also known as the Distance Learning exception.

Trademarks

Trademark is a type of intellectual property consisting of a recognizable sign, design or expression that identifies products or services from a particular source and distinguishes them from others.

The trademark rules under the TRIPS Agreement also aim to provide for a balance between the rights of trademark-owners and the public interest. Article 17 of the TRIPS Agreement provides for exceptions that members may provide limited exceptions  to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Industrial Designs

An industrial design right is an intellectual property right that protects the visual design of objects that are purely utilitarian. Article 26.2 of the TRIPS Agreement provides for members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties.

Patents

A patent is a type of intellectual property that gives its owner the legal right to exclude others from making, using or selling an invention for a limited period of time. The patent law forms an important part of a country’s national innovation system as it encourages technological progress and innovation.

Article 28 of the TRIPS Agreement grants exclusive rights to a patent holder to prevent others from producing, using or selling the patented product without their consent.

The TRIPS Agreement contains certain adaptability provisions which provide for exceptions where the World Trade Organization members can permit the use of patents without the authorization of the patent holder.

Article 30 of the TRIPS Agreement provides exceptions to rights conferred. It states that members may provide limited exceptions to the exclusive rights conferred by a patent, provided that such exceptions do not unreasonably conflict with the normal exploitation of the patent and do not unreasonably prejudice the legitimate interests of the patent owner, taking account of the legitimate interests of third parties. 

Another key exception to patent rights, confirmed in TRIPS dispute settlement practice is the Bolar exception. It allows potential competitors to use a patented invention during the patent term without the consent of the patent owner for the purpose of obtaining marketing approval for a prospective generic product. In the context of COVID-19, this may be important in cases where the term of patent protection of possible treatments is approaching expiry.

Waiving patent rights for Covid-19 vaccine

The proposal for waiving IP and patent rights for Covid-19 vaccines was first introduced in October 2020, by South Africa and India at the World Trade Organization. This proposal was opposed by the UK and European Union, among other countries.

In June 2022, the World Trade Organization announced a compromise text that gained consensus among its members including the UK and European Union.

For five years, developing countries will be allowed to authorise the use of patented materials and ingredients for the manufacture of Covid-19 vaccines without the consent of the rights holder to produce vaccines, for domestic and eligible markets. Rights holders will be compensated.

Compulsory licences

Compulsory licence is an authorization granted by the Government to someone else i.e., a third party to produce a patented product without the consent of the patent owner who has been taking undue advantage of exclusive rights granted by patent.

According to Indian Patent Act, compulsory licence can be granted after the expiration of a period of three years from the date on which the patent has been granted.

Article 31 of the TRIPS Agreement allows compulsory licensing and government use of a patent without the authorization of its owner under a number of conditions aimed at protecting the legitimate interests of the patent-holder. The patent holders are entitled for remuneration. All members may grant such licences for health technologies, such as medicines, vaccines and diagnostics, as well as any other product or technology needed to combat COVID-19.

Compulsory licensing may serve as a useful policy tool to increase access to eventual treatments or vaccines for COVID-19, in particular in situations in which from a member’s perspective access to affordable health technologies in sufficient quantities cannot be otherwise secured.

Regarding the basis for a compulsory or government use licence, the TRIPS Agreement does not specifically list the reasons that might be used to justify compulsory licensing and thus leaves members the freedom to define the grounds for issuing a compulsory licence. Many laws include national emergency as one of the grounds for issuing a compulsory licence. A number of members have declared a national emergency in the context of the COVID-19 pandemic.

India’s first case of granting compulsory licence was to an Indian company called Natco Pharma for the generic production of Bayer Corporation’s Nexavar.

This medicine called Aspirin drug was used for treating Liver and Kidney Cancer, and one month’s worth of dosage costs around Rs 2.8 Lakh. Natco Pharma offered to sell it for around Rs 9000 making this potentially life saving drug easily accessible to all parts of the society and not just the rich people. The Government took this decision for the general public benefit. However, it was heavily criticised by the Pharmaceutical Companies as they felt the licence should not have been given.

However, Natco Pharma is paying the royalties to Bayer at a rate of 6% of all sales on a quarterly basis in accordance with the guidelines set by the United Nations Development Programme (UNDP).

Conclusion

The impact of covid-19 pandemic on India has been largely disruptive in terms of economic activity as well as a loss of human lives. Almost all the sectors have been adversely affected as domestic demand and exports sharply plummeted with some notable exceptions where high growth was observed.

Thus, when it comes to the impact of Covid-19 on the essential medicine laws under the Patents Act, the Indian Patent laws are self-sufficient and protect the interests of the general public.

When it comes to India’s role on a global platform, the argument for a global IP waiver in times of pandemics is an important argument that has been raised by India. Even though Indian laws may be self-sufficient, it may not be the case for all countries and thus it is necessary that companies and nations place the interests of the general public before their individual interests of obtaining patents and royalties arising from the use of such patents.

Works Cited

Introduction to TRIPs Agreement, https://www.jpo.go.jp/e/news/kokusai/developing/training/textbook/document/index/TRIPs_Agreement.pdf. Accessed 2 July 2023.

“15 October 2020 Page: 1/13 Original: English 1 THE TRIPS AGREEMENT AND COVID-19 INFORMATION NOTE1 Key points • A full response.” World Trade Organization, 15 October 2020, https://www.wto.org/english/tratop_e/covid19_e/trips_report_e.pdf. Accessed 2 July 2023.

Sehgal, Diganth Raj. “Intellectual property and COVID-19 : lessons for the future.” iPleaders, 18 November 2021, https://blog.ipleaders.in/intellectual-property-and-covid-19-lessons-for-the-future/. Accessed 2 July 2023.

“WTO | intellectual property – overview of TRIPS Agreement.” World Trade Organization, https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm. Accessed 2 July 2023.

 

“PRIME LEGAL is a full-service law firm that has won a National Award and has more than 20 years of experience in an array of sectors and practice areas. Prime legal fall into a category of best law firm, best lawyer, best family lawyer, best divorce lawyer, best divorce law firm, best criminal lawyer, best criminal law firm, best consumer lawyer, best civil lawyer.”

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